Complainant is Fiorucci Holdings Limited, United Kingdom, represented by Bird & Bird LLP, United Kingdom.
Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Bo Yu, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2020. On December 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 11, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 14, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 15, 2020. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 7, 2021. The Center appointed John C. McElwaine as the sole panelist in this matter on January 15, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background Complainant is the owner of the following trademark registrations relevant to this proceeding: - FIORUCCI – China Registration No. 136498, registered on April 5, 2010, in Class 25; On September 28, 2020, Respondent registered the Domain Name through the Registrar. 5. Parties’ Contentions A. Complainant Complainant contends that the Domain Name should be transferred because each of the three elements required in paragraph 4(a) of the Policy has been established. As factual background, Complainant asserts that it is an iconic Italian fashion brand, established in 1969 and renowned for its graphic logos and statement denim and vinyl pieces. Complainant asserts that its product range includes clothing, footwear and accessories sold under the FIORUCCI brand. Complainant further asserts that after the revival of the FIORUCCI brand in 2017, Complainant’s products have received widespread coverage both online and in well-known fashion publications including Vogue, Wonderland, Tatler and Harper’s Bazaar. Complainant claims that its goods are sold through various retailers in Australia, China, United Kingdom, and United States, including by Urban Outfitters, Kith, Neiman Marcus, Lane Crawford, Tast and Myer. Complainant’s goods are also sold through major online retailers including Asos.com, Zalando.com, and Yoox.com. With respect to the first element of the Policy, Complainant asserts that it is the owner of an extensive international portfolio of trademark registrations for the FIORUCCI trademark, which are registered for a range of goods and services, including in relation to clothing, footwear and headwear and the retail sale of these goods. These registrations include registration of FIORUCCI in China, European Union, United Kingdom, and United States, which are listed in Annex 4 to the Amended Complaint (the “FIORUCCI Mark”). Complainant alleges that the Domain Name is identical to the FIORUCCI Mark, except for the addition of the descriptive territorial indication “china” and the non-distinctive hyphen “-”. With respect to the second element of the Policy, Complainant asserts that to the best of its knowledge, Respondent is not known by the Domain Name, nor does it hold any trademark or intellectual property rights in the word “fiorucci”. Complainant alleges that the Domain Name resolves to a website which is and has been hosting explicit pornographic and gambling related content. Complainant further alleges that the content hosted on Respondent’s website is highly offensive and is tarnishing and causing reputational damage to Complainant’s longstanding and prestigious brand. Complainant additionally claims that the absence of any reference to the FIORUCCI Mark on Respondent’s website indicates that content has no connection to the Domain Name. Complainant concludes by asserting that because the Domain Name incorporates the FIORUCCI Mark in full and without any other distinctive element, it could never be used for a legitimate, noncommercial or fair purpose. With respect to the third element of the Policy, Complainant alleges that Respondent must have been aware that Complainant’s FIORUCCI Mark is well known on an international basis in registering the Domain Name. Complainant asserts that Respondent is using the Domain Name to attract Internet users to Respondent’s website containing pornographic and gambling content and that such use of the FIORUCCI Mark is seriously detrimental to Complainant’s reputation because it creates a risk that members of the public may be deceived into believing that there is some kind of association between Respondent’s website and Complainant’s business, or that Complainant has authorized or endorsed the use of its FIORUCCI Mark for a pornographic website. In addition, Complainant points out that FIORUCCI is an unusual and distinctive name that was picked to take advantage of Complainant’s reputation and goodwill. Complainant further asserts that Respondent’s use of the Disputed Domain Name will, at the very least, cause initial interest confusion because a user of Respondent website will, based on the Domain Name alone, be visiting Respondent’s website with the intention of visiting the Fiorucci website or an official website of the Chinese branch of Complainant’s business. Based upon the foregoing, Complainant concludes that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the FIORUCCI Mark in breach of paragraph 4(b)(iv) of the Policy. Complainant also asserts that Respondent’s registration of the Domain Name has also prevented Complainant from registering a domain name which corresponds with the FIORUCCI Marks contrary to paragraph 4(b)(ii) of the Policy. As additional evidence of bad faith, Complainant alleges that Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Even though Respondent did not formally reply to the Complaint, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; Because of the absence of a formal Response, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc.,WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires Complainant shows that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainants have rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2 . Here, Complainant has provided evidence that the FIORUCCI Mark has been registered in China, the European Union, United Kingdom, and United States. The Domain Name is wholly comprised of the FIORUCCI Mark plus the additional word, “-China”. It is well-established that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to a trademark in a domain name does not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8. In fact, multiple panels have found that the use of a mark in its entirety together with a geographic term in a domain name creates a domain name that is confusingly similar to the mark. See, e.g., Playboy Enterprises International Inc. v. Melancia,WIPO Case No. D2006-1106; AT&T Corp. v. WorldclassMedia.com,WIPO Case No. D2000-0553; Six Continents Hotels, Inc. v. CredoNic.com / Domain Name for Sale,WIPO Case No. D2005-0755; Six Continents Hotels, Inc. v. Midas Search Limited,WIPO Case No. D2004-0986; Six Continents Hotels, Inc., Inter-Continental Hotels Corporation. v. South East Asia Tours,WIPO Case No. D2004-0388; America Online, Inc. v. Dolphin@Heart.,WIPO Case No. D2000-0713; Sysco Corporation v. Jose Castaneda,WIPO Case No. D2007-0197; Inter-IKEA Systems B.V. v. Evezon Co. Ltd.,WIPO Case No. D2000-0437. Here, the addition of “-China” does not prevent Complainant’s FIORUCCI Mark from being recognizable in the Domain Name. Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s FIORUCCI Mark in which Complainant possess valid trademark rights under the UDRP. Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under the Policy paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant needs only make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has some rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. See also Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi,WIPO Case No. D2000-0252. Here, Complainant asserts that Respondent is not authorized to have registered the Domain Name and set up a website seeking to lure Internet users seeking Complainant to Respondent’s website which contains pornographic content. Although properly notified by the Center, Respondent failed to submit any response on this point. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond,WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainant, it can be assumed in appropriate circumstances that respondents have no rights or legitimate interests in the disputed domain name. See AREVA v. St. James Robyn,WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269. Under paragraph 4(c) of the Policy, a respondent’s rights or legitimate interests to a domain name may be established by demonstrating any of the following three conditions: (i) before any notice to respondent of the dispute, respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel finds that Respondent will not be able to show rights or legitimate interests under any of the three conditions. As an initial matter, Respondent cannot satisfy paragraph 4(c)(ii) of the Policy. There is no evidence in the record that Respondent is commonly known by the name “Fiorucci”. Complainant also asserts that the Domain Name resolved to a website that displays pornographic content and links to gambling. With no apparent connection between the word “Fiorucci-China” and such content, the Panel concludes that Respondent has not demonstrated a legitimate interest in the Domain Name, which contains the FIORUCCI Mark. See VKR Holding A/S v. 甄晶鑫（jing xin zhe),WIPO Case No. D2020-0352 (Finding that a webpage displaying advertising for gambling and pornography websites not to be a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy); Unilabs AB v. Domain Administrator, See PrivacyGuardian.org / Xian Xing Hao,WIPO Case No. D2019-2599 (Finding no rights or legitimate interests where respondent is using the Domain Name for commercial gambling and pornography site with no apparent connection to the Domain Name); Hartsfield Area Transportation Management Association, Inc. v. Max Davidovich, WIPO Case No. D2006-0743 (Finding no legitimate use by Respondent of a domain name confusingly similar to the complainant’s mark that had links to pornography and gambling websites, alien to the business of the complainant, with the consequential tarnishing of the complainant’s trade name and service mark). In addition, where a domain name consists of a trademark plus a geographic term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See section 2.5.1 of the WIPO Overview 3.0. In sum, Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate. For all these reasons, the Panel is entitled to accept that the second element of the Policy is established by Complainant, and Respondent has no rights or legitimate interests in respect of the Domain Name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy. Bad faith registration can be found where a respondent “knew or should have known” of a complainant’s trademark rights and nevertheless registered a domain name in which it had no right or legitimate interest. See Accor v. Kristen Hoerl,WIPO Case No. D2007-1722. As discussed herein, Respondent registered the Domain Name in 2020 which is long after Complainant established distinctive trademark rights in the FIORUCCI Mark. Respondent linked it to a website displaying pornographic and gambling content. The Domain Name is not a dictionary word and nothing on Respondent’s webpage indicates any meaning that the Domain Name might have other than as a reference to Complainant’s FIORRUCI Mark. Given the well-known nature of Complainant’s FIORUCCI Mark, and the lack of any connection whatsoever between the words “Fiorucci China” and the content of Respondent’s website, there can be no other reasonable explanation for Respondent to have chosen to register the Domain Name other than to intentionally trade off the goodwill and reputation of Complainant’s trademark or otherwise create a false association with Complainant. With no response from Respondent, this claim is undisputed. As detailed above, the Panel finds on the record before it that Respondent’s intention in registering the Domain Name was to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the FIORUCCI Mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. Thus, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, John C McElwaine
- FIORUCCI – European Union Trade Mark (“EUTM”) Registration No. 14755573, registered on March 31, 2020, in Classes 9, 16, 18, 25, 35, 41;
- FIORUCCI – EUTM Registration No. 367250 registered on February 2, 2001, in Classes 3, 9, 14, 16, 18, 24, 25, 26, 42;
- FIORUCCI – United Kingdom Registration No. 1119863, registered on August 30, 1979, in Class 25;
- FIORUCCI – United States Registration No. 1264655, registered on January 24, 1984, in Classes 14, 25; and
- FIORUCCI – United States Registration No. 4539590, registered on May 27, 2014, in Class 25.
(i) Respondent utilized an identity protection service to register the Domain Name;
(ii) Respondent did not respond to the cease and desist letter that was sent by Complainant’s representatives by email;
(iii) the address associated with the Domain Name was invalid as the courier service used by Complainant’s representatives was unable to deliver the letter to Respondent’s address provided in the WhoIs entry for the Domain Name; and
(iv) the courier service used by Complainant’s representatives was unable to contact Respondent using the phone number, provided in the WhoIs entry for the Domain Name. B. Respondent
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
(ii) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
Sole Panelist
Date: January 28, 2021
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