ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Etro S.p.A. v. Timoh Mudrik Mudrik, N A Case No. D2025-1918 1. The Parties The Complainant is Etro S.p.A., Italy, represented by Studio Barbero S.p.A., Italy. The Respondent is Timoh Mudrik Mudrik, N A, United States of America (“United States”). 2. The Domain Name and Registrar The disputed domain name is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2025. On May 14, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 16, 2025, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on May 23, 2025. In accordance with the Rules, paragraph 5, the due date for Response was June 12, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 16, 2025. The Center appointed Theda König Horowicz as the sole panelist in this matter on June 25, 2025. 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.
page 2 4. Factual Background The Complainant is an Italian luxury fashion company founded in 1968 in Milan which specializes in fabrics, clothing (ready-to wear fashion) and leather accessories. In 2013, it launched its official e-commerce platform and otherwise operates through boutiques established in several countries worldwide. The Complainant has been the owner since decades of several registrations for trademarks including ETRO, such as - United States Trademark Registration No. 1408590 for ,filed on January 3, 1984, registered on September 9, 1986, in international class 25; and - United States Trademark Registration No. 1386792 for , filed on February 4, 1985, registered on March 18, 1986, in international classes 18 and 25. The Complainant also owns many domain names comprising ETRO, such as which was registered on June 21, 1996, and which resolves to Complainant’s official online presence. The ETRO trademarks are widely used by the Complainant in relation to the goods it commercializes worldwide as well as in advertising campaigns and in social media. The disputed domain name was registered on November 18, 2024. It redirects to a website featuring Complainant’s trademarks and offers ETRO products for sale at discounted prices. On April 1, 2025, the Complainant’s representative sent a cease and desist letter to the Respondent and to the hosting provider notably requesting the transfer of the disputed domain name. The Respondent and the hosting provider did not reply. 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 name. Notably, the Complainant contends that the disputed domain name is confusingly similar to the registered trademark ETRO in which the Complainant has rights. The disputed domain name incorporates the whole ETRO trademark. The mere addition of the term “clothing” does not affect the confusing similarity and may to the contrary increase the likelihood of confusion, as the term “clothing” refers to the industry sector in which the Complainant operates. Furthermore, the Complainant is of the opinion that the Respondent has no rights or legitimate interests in the disputed domain name, particularly for the following reasons: - The Respondent is not a licensee or an authorized agent of the Complainant. - The Respondent is not commonly known by the disputed domain name. - The Respondent has not provided any evidence of use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. To the contrary, the Respondent is using the disputed domain name for a website misappropriating Complainant’s trademarks and offering for sale purported ETRO products at discounted prices without providing any disclaimer as to Respondent’s lack
page 3 of relationship with the Complainant. In the “About Us” and “Terms and Conditions” sections of the website, the Respondent actually uses terms such as “Etro Official Shop” thus increasing the risk of confusion for the Internet users. - The Respondent is using the disputed domain name to advertise and offer for sale prima facie counterfeit ETRO products, in view of the very low prices at which the purported ETRO goods are offered which cannot be considered as a legitimate use of the disputed domain name. - The composition of the disputed domain name, combining Complainant’s trademark ETRO with the term “clothing” carries a high risk of implied affiliation with the Complainant. - The Respondent did not reply to the cease and desist letter sent by the Complainant. The Complainant further states that the disputed domain name was registered and is being used in bad faith reiterating most of its arguments in relation to the lack of rights or legitimate interests of the Respondent in the disputed domain name. In addition, the Complainant raises that ETRO has been used since over 50 years and is a well-known trademark including in the United States where the Respondent is based. The Respondent thus knew or should have known of the existence of Complainant’s ETRO trademark. The Respondent attempts to attract Internet users seeking Complainant’s branded products to its own website for commercial gain, creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its website and the goods offered and promoted through the said website. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. 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 name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of the trademark ETRO for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the ETRO mark is reproduced within the disputed domain name and is clearly recognizable in the disputed domain name. The addition of the generic term “clothing” does indeed not prevent a finding of confusing similarity between the disputed domain name and the ETRO mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. 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.
page 4 Although 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 difficult 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 (although the burden of proof always remains on the complainant). 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 available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. 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 name such as those enumerated in the Policy or otherwise. The Complainant has notably evidenced that the Respondent has directed the disputed domain name to a website which prominently uses Complainant’s ETRO trademark without authorization. The Panel notes in particular that the Respondent not only uses the ETRO word mark but also the very distinctive logo of a horse which is registered by the Complainant in the following combined mark . Furthermore, the said website offers purported ETRO products for sale for a very discounted price which tends to indicate that the said products are most likely counterfeits. In this regard, Panels have held that the use of a domain name for an illegal activity such as impersonation or the sale of counterfeit goods can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The absence of disclaimer and the composition of the disputed domain name, combining Complainant’s trademark ETRO with the term “clothing” carries a risk of implied affiliation with the Complainant. The Panel therefore finds the second element of the Policy has been established. C. 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 notes that the Respondent obviously knew about Complainant’s ETRO trademark when he registered the disputed domain name since the Respondent has been prominently using both the distinctive trademark and logo of the Complainant on the website to which the disputed domain name directs. Furthermore, the disputed domain name contains the term “clothing” as a direct reference to the Complainant’s core business. Additionally, the ETRO trademark has been used since about 50 years and has obviously acquired a notoriety worldwide in relation to clothing and fashion, notoriety which the Respondent could not ignore. As already stated above, the Complainant has shown that the products sold on the website to which the disputed domain name resolves are most likely counterfeits, notably considering their very low price. The Respondent also uses terms in the said website such as “Etro Official Shop” which reinforces the false impression that the website is legit and authorized by the Complainant. The website at issue does not contain any disclaimer distancing itself from the Complainant. For all these reasons, there is a risk for the
page 5 Internet users into believing that the disputed domain name and its corresponding website are belonging to the Complainant. The Respondent thus intentionally attempts to attract, for commercial gain, Internet users by creating a likelihood of confusion with the complainant’s mark in contravention of paragraph 4(a) of the Policy. The distinctiveness and reputation of the Complainant’s ETRO trademark, the composition of the disputed domain name which contains a direct reference to Complainant’s trademark and field business as well as the silence of the Respondent in these proceedings are additional factors showing that the Respondent is using the disputed domain name in bad faith. Under these circumstances, the Panel finds that the Complainant has established the third element 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 disputed domain name be transferred to the Complainant. /Theda König Horowicz/ Theda König Horowicz Sole Panelist Date: July 14, 2025
Full & Egal Universal Law Academy