The Complainant is FENDI S.r.l., Italy, represented by Dreyfus & associés, France.
The Respondent is Sainabou Bojang, AAL Domains, United States of America (the “United States” or the “U.S.”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2021. On May 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 6, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 11, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 14, 2021. On May 12, 2021, the Center received an informal communication from the Respondent asking: “what's the next step? ”. On May 15, 2021, the Center acknowledged receipt of this communication and informed the Respondent about the verification of the Complaint and its further notification. 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 the Respondent of the Complaint, and the proceedings commenced on May 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 7, 2021. The informal Response was filed with the Center on May 27, 2021, and on the same day, the Center acknowledged receipt of the communication and informed the Parties about the possibility to settle the dispute. On May 28, 2021, the Complainant formally requested the suspension of the proceeding in order to negotiate with the Respondent. After an extension of the suspension and due to the lack of agreement between the Parties, on July 29, 2021, the Complainant requested the restitution of the proceeding. On August 6, 2021, the Parties were notified of the Commencement of the Panel Appointment Process. The Center appointed John Swinson as the sole panelist in this matter on August 17, 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 The Complainant is an Italian luxury fashion house that specializes in high fashion clothing, accessories, and furniture. The Complainant derives from a business, The Fendi House, that was established in 1925 in Rome, Italy. The Complainant owns a number of trademark registrations for FENDI, including U.S. Trademark No. 1244466, filed on October 29, 1976 and registered on July 5, 1983, covering goods in classes 18 and 25. The disputed domain name was registered on December 13, 2020. The Respondent did not file a formal response, so little is known about the Respondent. Based on the information provided by the Registrar, the Respondent is located in Maryland in the United States. The Respondent asserts that the disputed domain name was acquired for a fan club in Africa. The disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant makes the following submissions: The Complainant went to great efforts to contact the Respondent and to resolve this dispute amicably. The Complainant is a famous Italian luxury fashion house that has been owned by the LVMH Group since 2000 The Complainant has numerous registrations for FENDI. This trademark enjoys a worldwide reputation. The disputed domain name is virtually identical to the Complainant’s FENDI trademark. The structure of the disputed domain name enhances the false impression that this disputed domain name is somehow officially related to the Complainant, as it may be perceived as an official domain name. Indeed, the structure of the disputed domain name, which reproduces entirely the Complainant’s trademark FENDI with the mere adjunction of the extension “.africa” is likely to confuse Internet users into believing that the disputed domain name will direct them to the Complainant’s official website offering information about the Complainant’s products intended for the African market, or at least is endorsed by or affiliated to the Complainant. The Respondent is not affiliated with the Complainant and has not been authorized by the Complainant. The Respondent is not commonly known by the disputed domain name or by FENDI. The disputed domain name is identical to the FENDI trademark and carries a high risk of implied affiliation. The Respondent has not made any bona fide or noncommercial uses of the disputed domain name. The Respondent did not reply to any correspondence from the Complainant, and thus it can be assumed that the Respondent has no rights or legitimate interests in the disputed domain name because the Respondent would have defended any rights if it had any. It is implausible that the Respondent was unaware of the disputed domain name at the time it was registered. The lack of use of the disputed domain name suggests bad faith registration. The Respondent registered the disputed domain name due to the attractiveness of the Complainant’s famous and highly distinctive trademark to divert Internet traffic. This suggests opportunistic bad faith. The Respondent had a duty to establish that the registration of the disputed domain name would not infringe on the rights of another. In the absence of permission from the Complainant to use its widely known trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed. Passive holding does not preclude a finding of bad faith. It is likely that the Respondent registered the disputed domain name to prevent the Complainant from using their trademarks in the disputed domain name. An inference can be drawn that the Respondent intended to mislead consumers into believing that the Respondent was authorized by the Complainant. B. Respondent The Respondent did not file a formal response. The Respondent sent an email to the Center that stated that the disputed domain name “was bought for a fan club in africa. and has since decided to be repurposed. If they are interested they can get it for i great discount or i can transfer it to the complainant's account. i am not looking to start any littige or dispute”. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and The onus of proving these elements is on the Complainant. Paragraph 15(a) of the Rules directs the Panel to decide the 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. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the disputed domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights. The Complainant has clearly proven ownership of numerous long-standing registered trademarks for FENDI. The disputed domain name captures, in its entirety, the Complainant’s FENDI trademark. The Panel accordingly concludes that the disputed domain name is identical to the Complainant’s FENDI trademark, disregarding the Top-Level Domain “.africa”. The Complainant succeeds on the first element of the Policy in relation to the disputed domain name. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or (iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. The onus of proving this requirement, like each element, falls on the Complainant. Previous UDRP panels have recognized the difficulties inherent in proving a negative, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden of production will shift to the respondent to rebut that prima facie case. The Panel concludes that none of the circumstances listed in paragraph 4(c) apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the FENDI trademark. The Complainant has rights in the FENDI trademark which clearly predate the Respondent’s registration of the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name. There is no website at the disputed domain name, and so there is no evidence that the Respondent is making a bona fide use of the disputed domain name. William Grant & Sons Limited v. Tobias Schopf,WIPO Case No. D2017-2096. In the case file provided to the Panel, there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name by the Respondent. The Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain name. The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Respondent states that the disputed domain name was purchased to operate a fan club in Africa, but it is no longer required for this purpose. Even assuming that the original acquisition was to operate a fan club, the Panel notes that no evidence has been provided of preparations to use the disputed domain name for a bona fide offering of goods or services. In addition, the Panel notes the composition of the disputed domain name, being identical to the Complainant’s FENDI trademark (disregarding the Top-Level Domain). Finally, the Respondent states that it has no current purpose for owning the disputed domain name. The Complainant succeeds on the second element of the Policy in relation to the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith. The Complainant has been in operation for many decades and is a famous brand. As claimed by the Complainant (and unrebutted by the Respondent), with the appointment of Karl Lagerfeld as the House designer, the Complainant acquired the status of being an iconic brand, well-known all over the world. Since the Respondent has made no active use of the disputed domain name, it is impossible to assess with any certainty what the Respondent's precise motives were at time of registration. The Respondent says that the disputed domain name was acquired for the purposes of establishing a fan club in Africa. Presumably, this would have been a fan club for fans of the Complainant. Due to the fame of the Complainant’s trademark, noting the composition of the disputed domain name, and that the Respondent was supposedly intending to operate a fan club, the Panel considers that it is likely that the Respondent registered the disputed domain name knowing of the Complainant. The Respondent did not provide any actual evidence regarding the fan club, and provided no evidence of intended good faith use of the disputed domain name other than an unsupported and unsworn assertion in an email. The Complainant has a famous longstanding and distinctive trademark. Respondent has abandoned its plans to operate a fan club, and it is unlikely that the Respondent can use the disputed domain name in good faith. Even if the Respondent had operated a fan club at the disputed domain name, in the circumstances of this case where the disputed domain name is identical to the Complainant’s trademark, that may not have been sufficient to demonstrate that the Respondent’s registration and use was not in bad faith. See, for example, The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC,WIPO Case No. D2009-0057; David Gilmour, David Gilmour Music Limited and David Gilmour Music Overseas Limited v. Ermanno Cenicolla,WIPO Case No. D2000-1459. The fact that the website to which the disputed domain name resolve is currently inactive does not prevent a finding of bad faith under the doctrine of passive holding. See for example 537397 Ontario Inc. operating as Tech Sales Co. v. EXAIR Corporation,WIPO Case No. D2009-0567. The Complainant’s trademark is famous and distinctive. The Respondent did not submit a formal response in this proceeding and did not provide any evidence of actual or contemplated good faith use. The Respondent appears to have abandoned the disputed domain name and has expressed a willingness to sell the disputed domain name to the Complainant, but then did not engage in any negotiations with the Complainant in relation thereto. Thus, for the above reasons, the Panel concludes that the registration and use of the disputed domain name was in bad faith. The Complainant succeeds on the third element of the Policy in relation to the disputed domain name. 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 disputed domain name John Swinson
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Sole Panelist
Date: August 31, 2021
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