The Complainant is Fendi S.r.l., Italy, represented by Dreyfus & associés, France.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America / Wu Yu, China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2021. On June 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 30, 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 July 13, 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 July 16, 2021.
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 July 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 1, 2021.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on September 3, 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 BackgroundThe Complainant is an Italian luxury fashion house specialized, inter alia, in high fashion clothing, accessories, and furniture.
The Complainant is the owner of the trademark FENDI, throughout the world, including China, where the Respondent is located, among others:
- FENDI Chinese trademark registration No. 262675, registered on September 20, 1986;
- FENDI Chinese trademark registration No. 261724, registered on September 10, 1986; and
- FENDI International trademark registration No. 561438, registered on November 19, 1990.
The Respondent registered the Disputed Domain Name
The Complainant’s contentions can be summarized as follows:
Identical or confusingly similarThe Complainant states that the Disputed Domain Name
The Complainant alleges that the Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating the FENDI trademark.
The Complainant further states that the Respondent cannot claim prior rights or legitimate interests in the Disputed Domain Name as the FENDI trademark precedes the registration of the Disputed Domain Name for years.
In addition, the Respondent is not commonly known by the Disputed Domain Name. What is more, the Respondent did not demonstrate use of, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services.
Also, the Complainant alleges that the Respondent registered the Disputed Domain Name with a privacy shield service to hide his identity and prevent the Complainant from contacting him. Thus, such behavior highlights the fact that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
Finally, the Complainant states that, an email server has been configured on the Disputed Domain Name and thus, there might be a risk that the Respondent is engaged in a phishing scheme.
Registration and use in bad faithThe Complainant claims that it is implausible that the Respondent was unaware of the Complainant when he registered the Disputed Domain Name.
The Complainant further claims that its FENDI trademark is highly distinctive and associating it with the letter “s” as well as with the pejorative term “ugly” confirms that the Respondent was aware of the Complainant and its trademark. Such composition could be extremely harmful to the Complainant’s business.
Finally, the Disputed Domain Name randomly redirects toward various websites, numerous of them being fraudulent and with a high risk of phishing activity. An email server is also configured on the Disputed Domain Name. Thus, the Respondent is likely to be engaged in a phishing scheme aiming at stealing valuable information such as credit cards from the Complainant’s clients through the use of the email address and litigious websites.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy lists the three elements, which the Complainant must satisfy with respect to the Disputed Domain Name in this case:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
A. Identical or Confusingly SimilarBased on the evidence submitted, the Panel finds that the Disputed Domain Name
The addition of the term “ugly” with the letter “s” does not avoid the confusing similarity between the Disputed Domain Name and the FENDI trademark.
Moreover, the addition of the generic Top-Level Domain (“gTLD”) “.com” does not change this finding, since the gTLD is generally disregarded in such an assessment of confusingly similarity.
Therefore, this Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) Before any notice to the Respondent of the dispute, his use of, 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 he has acquired no trademark or service mark rights; or
(iii) The Respondent is making a legitimate non-commercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the FENDI trademark in any domain name. The Complainant has prior rights over the FENDI trademark, which precede the Respondent’s registration of the Disputed Domain Name by decades.
The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name. Moreover, it had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contentions.
As such, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithParagraph 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 used its trademarks long before the Disputed Domain Name was registered.
The Complainant’s trademarks are well-known as it has been recognized by previous decisions under the Policy (See, e.g.,WIPO Case No. D2021-1387, FENDI S.r.l. v. Sainabou Bojang, AAL Domains).
The Respondent was well aware of the Complainant’s prior rights and business, since the Disputed Domain Name was registered on 2021, while the Complainant had the registration of one of its trademarks since 1986. Thus, and also considering the nature of the Disputed Domain Name, it is very unlikely that the Respondent could have been unaware of the Complainant’s trademark and business when it registered the Disputed Domain Name.
The Respondent has not denied these assertions. The Panel infers from the current circumstances that the Respondent knew of the Complainant’s trademark and prior rights at the time of registering the Disputed Domain Name.
In the case at hand, the Respondent’s registration of the Disputed Domain Name confusingly similar to the Complainant’s FENDI trademark, its use for PPC links, the absence of any documented rights or legitimate interests of the Respondent in the Disputed Domain Name, and its failure to respond to the Complaint, constitute bad faith.
Due to this conduct, it is obvious that the Respondent intentionally created a likelihood confusion with the Complainant’s trademark and the Disputed Domain Name in order to attract Internet users for its own commercial gain, as required by paragraph 4(b)(iv) of the Policy.
Therefore, taking all circumstances into account and for all the above reasons, the Panel concludes that there is bad faith in the registration and use of the Disputed Domain Name.
The third element of paragraph 4(a) of the Policy is, therefore, satisfied.
7. DecisionFor 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,
Pablo A. Palazzi
Sole Panelist
Date: September 17, 2021