Complainant is Gianni Versace S.r.l., Italy (hereinafter, “Complainant”), represented by Studio Barbero, Italy.
Respondent is Nisar Ahmad Zafar, Saudi Arabia (hereinafter, “Respondent”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2021. On March 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the following day, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 March 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 1, 2021. The Center appointed M. Scott Donahey as the sole panelist in this matter on April 6, 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 a leading international fashion company founded by Gianni Versace, which company is engaged in the design, manufacture, distribution, and retail sale of clothing and lifestyle products, including accessories, jewelry, watches, and perfumes. In the marketing and sale of such products, Complainant has for the past forty years used the VERSACE trademark. See, generally, Complaint, Annexes 4.1.1, 4.1.2, 4.2, 4.3, 4.4, 4.5, 4.6, and 4.7. After the untimely death of its founder and namesake, the trademark continued to be used in the conduct of the business by the founder’s siblings. In January 2019, Complainant joined Capri Holdings Limited, forming a new fashion group including Michael Kors and Jimmy Choo. Among celebrity fashion models wearing Complainant’s clothing and fashion accessories are Carolyn Murphy, Angela Lindvall, Daria Werbowy, Christy Turlington, and Kate Moss. Complainant distributes its products worldwide, including over 200 boutiques in principal cities and over 1500 wholesalers worldwide. Complainant has a Versace boutique in Saudi Arabia, home of Respondent, as well as a number of trademarks issued by the Saudi Arabian Trademark Office. Annexes 6.1, 4.5, 4.6, and 4.7. Complainant is the source of numerous articles in the fashion press and on the Internet, including “Vogue.com”, “Elle.com”, “WWD.com”, and “GQ.com”. Complaint, Annexes 6.2.1, 6.2.2, 6,2.3, and 6.2.4. Complainant’s website at Respondent, a resident of Saudi Arabia, registered the disputed domain name on June 14, 2016. Complaint Annexes 1.1,1.2 and 1.3. The disputed domain name redirects a user to a blank page. Complaint, Annex 8. In June 2016, Complainant directed a web agency to attempt to purchase the domain name. The web agency offered respondent an amount in line with Respondent’s out of pocket costs. Respondent declined the offer and said that he planned to offer the domain name for sale on eBay. Complaint, Annex 9. The web agency requested the amount that Respondent would be will willing to accept for the transfer of the domain name. Respondent refused the request, but asked the web agency to give Respondent Complainant’s best offer. Id. The web agency proposed an offer of USD 400, but Respondent did not reply to the counter-offer. Id. On December 18, 2017, Complainant caused a cease and desist letter to be sent to Respondent. Receiving no response, Complainant caused “reminder” cease and desist letters on December 13, 2019, and again on December 2, 2020. Complaint, Annex 12. Again, there was no response to Complainant’s letters. A. Complainant Complainant alleges that the disputed domain name is identical to Complainant’s trademark of long standing. Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name. Finally, Complainant contends that Respondent has registered and is using the disputed domain name in bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 5. Discussion and Findings According to paragraph 15 of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the complainant must prove each of the following: (i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and, (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and, (iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The disputed domain name consists of Complainant’s trademark of long-standing VERSACE and the generic Top-Level Domain (“gTLD”) “.store”. Accordingly, the Panel finds that the disputed domain name is identical to Complainant’s trademark. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. In the present case, Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith Respondent registered the disputed domain name long after the use and registration of the famous trademark VERSACE. Respondent declined Complainant’s reasonable offers for the domain name, which Respondent has used to resolve to a blank page. Respondent has ignored Complainant’s cease and desist letters. Moreover, noting the nature of the disputed domain name (being identical to Complainant’s trademark), it is impossible to conceive of a legitimate use to which the disputed domain name could be put by Respondent. The Panel finds that the disputed domain name has been registered and is being used in bad faith. 6. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name M. Scott Donahey
Sole Panelist
Date: April 19, 2021
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