ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Valentino S.p.A. v. Qiu Xiaofeng Case No. D2023-4096 1. The Parties The Complainant is Valentino S.p.A., Italy, represented by Studio Barbero, Italy. The Respondent is Qiu Xiaofeng, China. 2. The Domain Names and Registrar The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and are registered with Paknic (Private) Limited (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 29, 2023. On October 2, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 4, and October 8, 2023, the Registrar transmitted by email to the Center its verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Whois Agent, Web Domains By Proxy) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 8, 2023 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 amendment to the Complaint on October 9, 2023. The Center verified that the Complaint together with the amendment to 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"). page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 17, 2023. In accordance with the Rules, paragraph 5, the due date for Response was November 6, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 13, 2023. The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on November 17, 2023. 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 a fashion house founded in 1960 that operates under the brands VALENTINO, V, ROCKSTUD, and VALENTINO GARAVANI. It offers a wide range of luxury products from Houte Couture and Prèt-à-Porter to an extensive accessories collection that includes bags, shoes, small leather goods, belts, eyewear, silks, and perfumes. The Complainant's products are available internationally in over 90 countries through a net of 160 directly operated stores and 1,300 points of sale, as well as over the Internet at the Complainant's official website and online store "www.valentino.com". The Complainant holds numerous trademark registrations for its brands, including: - International Trademark Registration No. 570593, VALENTINO (word), registered on April 24, 1991, in classes 3, 14, 18, and 25, designating, among other jurisdictions, China; - International Trademark Registration No. 969844, VALENTINO GARAVANI (word), registered on July 2, 2008, in classes 8, 11, 19, 20, 21, 27, 36, 42, and 43, designating, among other jurisdictions, China; - International Trademark Registration No. 1522424, V (figurative), registered on December 19, 2019, in classes 3, 9, 14, 18, 25, and 35; and - International Trademark Registration No. 1130628, ROCKSTUD, registered on July 31, 2012, in class 25. The aforementioned trademark registrations will collectively be referred to as the "VALENTINO marks", and, individually, as the "VALENTINO mark", the "VALENTINO GARAVANI mark", the "V logo", and the "ROCKSTUD mark", respectively. Prior decisions under the Policy have recognized the international reputation and famous character of the VALENTINO mark.1 The Complainant further owns over 1,000 domain names corresponding to its trademarks, including (registered on July 21, 1998), which resolves to its official website and main online store. The disputed domain names were registered as follows: - , , , , , , , , , , , , , , , , 1 See, e.g., Valentino S.p.A. v. hong chen, chen hong, WIPO Case No. D2014-2129; Valentino S.p.A. v. Qiu Yufeng, Li Lianye, WIPO Case No. D2016-1747; Valentino S.p.A. v. Wu Dong, WIPO Case No. D2018-0641, and Valentino S.p.A. v. Lijin Liu, WIPO Case No. D2020-0011. page 3 , , , , , , , , , , , , , , , , , , and were registered on May 11, 2023; and - was registered on June 2, 2023. The disputed domain names resolve to the same or similar websites that display the Complainant's trademarks (V logo, VALENTINO, ROCKSTUD and/or VALENTINO GARAVANI), as well as various copyrighted photographs of the Complainant's products, and purportedly offer for sale these products at discounted prices. These websites further include the Complainant's official website favicon, consisting of its V logo. These websites are in various languages, corresponding to the geographical terms included in the respective disputed domain names, include no information about their owners, and no information about their relationship or lack of relationship with the Complainant and its trademarks. At the time of drafting this decision, the content linked to some of the disputed domain names has apparently been blocked resolving to Internet browser error messages that alert about their potential malicious or deceptive content. On June 1, 2023, the Complainant sent a cease-and-desist communication to the Respondent through the Registrar's abuse email address, and, on June 21, 2023, the Complainant sent a cease and desist communication to the hosting provider of the Respondent's websites, requesting the deactivation of these websites. The Complainant indicates that it has not received any response to these cease-and-desist communications. 5. Parties' Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names. Notably, the Complainant contends that the disputed domain names are confusingly similar to the VALENTINO mark, as all contain this trademark followed by a geographical term or abbreviation and the generic Top-Level Domain ("gTLD") ".net" or ".com", which is merely instrumental and shall be disregarded in the assessment of confusing similarity. The Respondent has no rights or legitimate interests in the disputed domain names, as he is not commonly known by the term "valentino" and is not authorized to use the Complainant's trademarks. The Respondent is using the disputed domain names to offer for sale prima facie counterfeit VALENTINO products, in view of the low prices at which these goods are offered. The disputed domain names and the Respondent's websites generate a likelihood of confusion and affiliation with the Complainant and its trademarks. The disputed domain names were registered and are being used in bad faith. Due to the well-known character of the VALENTINO mark, it is inconceivable that the Respondent was not aware of the Complainant's rights at the time of the registration of the disputed domain names. The use of the disputed domain names corroborates the Respondent's bad faith. The Respondent registered and uses the disputed domain names to generate confusion and affiliation in an attempt to increase the traffic to its websites for a commercial gain, and prevents the Complainant from reflecting its trademarks in corresponding domain names being engaged in a pattern of bad faith conduct. The Respondent has also been involved in prior cases under the Policy that were resolved against the Respondent ordering the transfer of the concerned disputed domain names to the respective complainants, such as Perrigo Pharma International DAC v. page 4 Qiu Xiaofeng, WIPO Case No. D2022-4960; and Alpargatas S.A, ALPARGATAS EUROPE, S.L.U v. Qiu Xiaofeng, WIPO Case No. D2022-4299. The Respondent's lack of response to the cease-and-desist letter is further evidence of bad faith. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules. A. Preliminary Issue: Consolidation The Respondent used privacy services for the registration of the disputed domain names, and, before being revealed his name by the Registrar, the Complainant requested the consolidation of the Complaint against multiple registrants. According to the Registrar verification, all the disputed domain names were registered by the same individual. This registrant should be the Respondent in this case pursuant to paragraph 1 of the Rules, and therefore, the Panel finds there is no need to consolidate the Complaint because there is only one Respondent pursuant to paragraph 3(c) of the Rules. B. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain names. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("WIPO Overview 3.0"), section 1.7. Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy, namely the VALENTINO mark. WIPO Overview 3.0, section 1.2.1. The Panel finds the entirety of the VALENTINO mark is reproduced within the disputed domain names. Accordingly, this trademark is recognizable in all the disputed domain names, which are, therefore, confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. While the addition of other terms here, various geographical terms and abbreviations,2 may bear on assessment of the second and third elements, the Panel finds the addition of such terms do not prevent a finding of confusing similarity between the disputed domain names and the VALENTINO mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. 2 Such as "peru", "chile", "suomi" ("Finland" in Finnish), "norge" ("Norway" in Norwegian), "mexico", "canada", "greece", "schweiz" ("Switzerland" in German), "danmark", "romania", "ireland", "hungary", "portugal", "argentina", "colombia", "australia", "southafrica", "belgique" ("Belgium" in French), "bulgaria", "hrvatska" ("Croatia" in Croatian), "nederland" ("Netherlands (Kingdom of the)" in Dutch), "slovenia", "brasil", "israel", "kuwait", "latvija" ("Latvia" in Latvian), "lietuva" ("Lithuania" in Lithuanian), "srbija" ("Serbia" in Croatina), "uruguay", "eesti" ("Estonia" in Estonian), "japan", "praha" ("Prague" in Czech), "belgium", and "suisse" ("Switzerland" in French); and the abbreviations "uae" and "uk", respectively abbreviations for United Arab Emirates and United Kingdom. page 5 Therefore, based on the available record, the Panel finds the first element of the Policy has been established. C. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. While the overall burden of proof in UDRP proceedings is on the complainant, 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 3.0, section 2.1. Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainant's prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise. The Panel has corroborated that, according to the evidence provided by the Complainant, the disputed domain names resolve to the same or similar websites that reproduce the Complainant's logo as favicon, as well as displays the Complainant's trademarks and copyrighted photographs of its products, and purportedly commercialize clothing and accessories of the Complainant at discounted prices. The Panel finds that these websites do not indicate their lack of relationship with the Complainant and its business. On the contrary, the Respondent's sites generate the impression of being affiliated with or owned by the Complainant or any official retailer of the Complainant. In this respect, the Panel notes that the Respondent's websites reproduce the design, combination of colors and general look and feel of the Complainant's official website and online store at "www.valentino.com", include official promotional copyrighted material of the Complainant's products, as well as the Complainant's trademarks and logos. The Panel further notes the Respondent's websites also do not include any reference to the Respondent's identity. Additionally, the Panel finds that the inclusion of the reputed VALENTINO mark in all the disputed domain names with the additional geographical terms or abbreviations in the disputed domain names generates an implied affiliation, as the Complainant operates internationally. Internet users may think that the Respondent's websites are affiliated to or owned by the Complainant, and correspond to the Complainant's online stores for the respective indicated jurisdictions, which is contrary to the fact. These circumstances cannot not confer rights or legitimate interests to the Respondent under the Policy. Panels have recognized that resellers or distributors using a domain name containing the complainant's trademark to undertake sales may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name only when certain cumulative requirements outlined in the "Oki Data test" are met, which do not concur here noting at least the lack of an accurate and prominent disclaimer regarding the relationship between the Parties on the websites at the disputed domain names. WIPO Overview 3.0, section 2.8. page 6 The Panel further finds that, on a balance of probabilities, the circumstances of this case indicate that the goods commercialized on the Respondent's websites may be counterfeits, particularly noting the reduced prices. The panel also considers the reproduction of copyrighted images from the Complainant's official website, the concealment of the Respondent's identity on his websites. In this respect, panels have held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. Therefore, based on the available record, the Panel finds the second element of the Policy has been established. D. Registered and Used in Bad Faith The Panel notes that for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel finds that due to the reputation and famous character of the VALENTINO mark and its continuous and extensive use internationally as well as online, the Respondent knew or should have known about the Complainant and its prior rights over the VALENTINO mark when he registered the disputed domain names. The use of the disputed domain names further corroborates this knowledge, as the Respondent's websites include the Complainant's VALENTINO marks, as well as copyrighted promotional material of the Complainant's products and purportedly offer for sale these products at discounted prices. The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users by generating a likelihood of confusion with the Complainant and its trademarks. All circumstances of this case indicate, on a balance of probabilities, that the Respondent targeted the Complainant and its trademarks in the registration and use of the disputed domain names, in bad faith, in an attempt to increase the traffic to a lucrative apparently illegal business in connection to the commercialization of counterfeits of the Complainant's products. Panels have held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods) constitutes bad faith. WIPO Overview 3.0, section 3.4. The Panel further finds remarkable the Respondent's lack of response to the Complaint or the prior ceaseand-desist communication. The Respondent has not come forward to provide any evidence of rights or legitimate interests in the disputed domain names, and has not rebutted the Complainant's allegations of bad faith. Therefore, having reviewed the record, the Panel finds the Respondent's registration and use of the disputed domain name constitutes bad faith under the Policy. Furthermore, the Panel finds that the high number of the disputed domain names registered by the Respondent in this case targeting the VALENTINO mark, and the prior UDRP cases that considered the Respondent acted in bad faith in connection with the registration and use of other domain names, show a pattern of abusive domain name registration and use. WIPO Overview 3.0, section 3.1.2. In this respect, at the time of drafting this decision the Panel has conducted an independent search at "https://www.wipo.int/amc/en/domains/search/" and notes that the Respondent is related to six prior UDRP cases, in which the respective domain names were transferred to the respective trademark owners.3 3 Namely, Perrigo Pharma International DAC v. Qiu Xiaofeng, supra; Alpargatas S.A, ALPARGATAS EUROPE, S.L.U v. Qiu Xiaofeng, supra; Autumnpaper Ltd v. Qiu Xiaofeng, WIPO Case No. D2023-3671; Alpargatas S.A and Alpargatas Europe, S.L.U v. Qiu Xiaofeng, WIPO Case No. D2023-2640; Dansko, LLC v. Qiu Xiaofeng, WIPO Case No. D2023-3370; and On AG and On Clouds GmbH v. Qiu Xiaofeng; BAUER Ines; Kathy Metoyer; Ben Harrison; Milene Rafia Faridi; MarkoFreud; Harvir Besal; Client Care, Web Commerce Communications Limited; Kim Mineo; and Jan Weissmuller, WIPO Case No. D2023-3454. page 7 Therefore, based on the available record, the Panel finds the third element of the Policy has been established. 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 names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and be transferred to the Complainant. /Reyes Campello Estebaranz/ Reyes Campello Estebaranz Sole Panelist Date: December 1, 2023
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