The Complainant is FABIANA FILIPPI S.P.A. of Italy, represented by Barzanò & Zanardo Roma SpA, Italy.
The Respondent is International Crystal of the Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with AE Domain Administration (.aeDA). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 29, 2016. On September 29, 2016, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrar verification in connection with the disputed domain name. On October 3, 2016, AE Domain Administration (.aeDA) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's contact details.
The Center verified that the Complaint satisfied the formal requirements of the UAE Domain Name Dispute Resolution Policy for – UAE DRP approved by .aeDA (the "Policy"), the Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the "Rules"), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 5, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was October 25, 2016. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on October 26, 2016.
The Center appointed Eduardo Machado as the panelist in this matter on November 3, 2016. 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 company in the fashion clothing industry, established in 1985.
Complaint owns numerous trademark registrations for the FABIANA FILIPPI trademark worldwide, as noted below:
Italian registration no. 1353073 filed on December 22, 2009 and granted on October 5, 2010, claiming goods in classes 3, 18 and 25;
International registration no. 1048526 granted on May 19, 2010, claiming goods in classes 3, 18 and 25, designating Armenia, Australia, Azerbaijan, Switzerland, China, the European Union, Japan, the Republic of Korea, Kazakhstan, Mexico, Norway, the Russian Federation, Singapore, Turkey, the United States of America and Viet Nam;
Saudi Arabian registration no. 1309/65 filed on June 12, 2010 and granted on January 10, 2012, claiming goods in class 3;
Saudi Arabian registration no. 1309/66 filed on June 12, 2010 and granted on January 10, 2012, claiming goods in class 18;
Saudi Arabian registration no. 1282/33 filed on June 12, 2010 and granted on October 3, 2011, claiming goods in class 25;
Hong Kong, China registration no. 302567638 filed and granted on April 3, 2013, claiming goods in classes 3, 14, 18, 25 and 35;
The Complainant is also the owner of several domain names, including the following:
, , , , , , , , , , , , , , , , , , , , , , , , , , , and . 5. Parties' Contentions A. Complainant
The Complainant alleges that it is a renowned company in the fashion clothing industry, established in 1985, whose brand is distributed in 30 countries throughout the world under the trademark FABIANA FILIPPI and is promoted in the main fashion capitals, including the Republic of Korea.
The Complainant affirms that it is also promoting its trademark worldwide through massive press advertisements and that the FABIANA FILIPPI goods are advertised in the local press of the Republic of Korea, as it appears in press releases and articles.
The Complainant states that it is present on several social networks, such as Facebook, Instagram, Twitter, Pinterest, YouTube, and also that is the owner of several domain names that includes the trademark FABIANA FILIPPI.
Moreover, the Complainant argues that the trademark FABIANA FILIPPI is registered worldwide, including in Italy, India, Saudi Arabia, Armenia, Australia, Azerbaijan, Switzerland, China, the European Union, Japan, the Republic of Korea, Kazakhstan, Mexico, Norway, the Russian Federation, Singapore, Turkey, the United States of America and Viet Nam.
The Complainant alleges that the disputed domain name is being used to access a webpage promoting several web services, which contains a copyright notice stating "Copyright © 2014 MEGAZONE CORP. All rights reserved."
Furthermore, the Complainant affirms that it sent a cease-and-desist letter to the Respondent on June 23, 2016, requesting the immediate transfer of the disputed domain name, along with the domain names , and . As the Respondent did not reply to the Complainant's letter, its attorney tried to reach the Respondent over the phone, and the individual who answered informed the Complainant that that the phone number belonged to IP Mirror (i.e., the Registrar) and that IP Mirror uses the name "International Crystal" to register domain names. This individual also promised to check and revert back on the matter.
The Complainant asserts that a company named Megazone Corp, which alleged to be the reseller of Hi-Tek Co., called back and stated that they managed the domain names and for their client International Crystal, and that it was not aware of the purpose of the domain names, but "that could also be due to use them as a shopping mall".
The Complainant alleges that the disputed domain name is identical to the Complainant's FABIANA FILIPPI trademark, as the second-level domain name consists in the name "Fabiana Filippi", while the country code Top-Level Domain ("ccTLD") ".ae" is a mere technical requirement of registration.
Also, the Complainant argues that the Respondent lacks rights and legitimate interest in the disputed domain name, as (i) it is not an authorized dealer, agent, distributor, wholesaler or retailer of the Complainant; (ii) it is not commonly known by the disputed domain name; (iii) it is not using, nor making demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services, but is using it to promote websites and is thus taking unfair advantage of the reputation of the Complainant's trademark; and (iv) it is not making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant affirms that, currently, the disputed domain name leads to a parking page displaying a "Coming Soon! " notice, and advertises several services in the Internet and telecommunication field.
Therefore, the Complainant states that those circumstances coupled with the fact that the Respondent failed to take any action to cease the infringement, even after having received the Complainant's demand letter, are sufficient to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Regarding the issue of bad faith registration and use of the disputed domain name, the Complainant contends that the Respondent was well aware of the Complainant's activities, trademark and reputation at the time it registered the disputed domain name, as the trademark FABIANA FILIPPI is a personal feminine Italian name, quite uncommon even in Italy, and due to the fact that the trademark is substantially being used by the Complainant in many countries, including the Republic of Korea, which is the country of origin of the Respondent. Also, the Complainant owns several shop-in-shop stores in the most prestigious shopping malls of Seoul, Ulsan, Daegu and Daejon.
Furthermore, the Complainant argues that the Respondent is using the disputed domain name in bad faith, as it leads to a page stating that a Fabiana Filippi website is coming soon and promoting several web services for commercial purposes, taking unfair commercial advantage from the distinctive character and reputation of the Complainant's trademark.
Also, the Complainant affirms that the fact that the Respondent did not cooperate to reach an amicable solution of the dispute is another element showing bad faith, preventing the owner of the trademark from reflecting its mark in a corresponding domain name. Moreover, the Respondent did not only register the disputed domain name under the ccTLD ".ae", but also registered the domain names and in Viet Nam, and the domain name in India.
Finally, the Complainant states that the Respondent in the present case can be assumed to have been the respondent in Nike, Inc. v. Crystal International,WIPO Case No. D2001-0102, which ended with the transfer of the disputed domain names to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions and is therefore in default. 6. Discussion and Findings
Paragraph 6(a) of the Policy provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered or is being used in bad faith.
Paragraph 6(c) of the Policy sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interests in the disputed domain name.
Paragraph 6(b) of the Policy sets out circumstances which, in particular but without limitation, if found the Panel to be present shall be evidence of the registration or use of the disputed domain name in bad faith. A. Identical or Confusingly Similar
The Complainant owns trademark rights throughout the world for the FABIANA FILIPPI mark and operates in several places, including the Republic of Korea, which is the country of origin of the Respondent.
The Panel finds that the disputed domain name is indeed confusingly similar to the Complainant's marks and domain names, as it incorporates the FABIANA FILIPPI trademark in its entirety with the mere addition of the ccTLD ".ae".
It is well established that ccTLD suffixes such as ".ae", when assessing the confusing similarity, can be disregarded (see paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")).1
The Panel finds that the conditions in paragraph 6(a)(i) of the Policy are therefore fulfilled. B. Rights or Legitimate Interests
As to the second requirement, the Panel is satisfied that the Respondent has no legitimate interest in using the disputed domain name. In particular, the Respondent does not appear to have used or made any preparations to use the disputed domain name in connection with any bona fide offering of goods or services prior to the dispute in accordance with the Policy.
The Respondent is using the disputed domain name in connection with a link parking page, which redirects Internet users to a website featuring third-party links. Previous UDRP panels have held that the respondent's use of a domain name, which incorporates a third party's trademark, in connection with an Internet website that merely lists links to third-party websites, is not a bona fide offering of services and is not a legitimate noncommercial or fair use of the disputed domain name.
Also, the disputed domain name contains the "Coming Soon! " notice, which can confuse Internet users by suggesting sponsorship or endorsement by the Complainant.
Furthermore, there is no evidence to suggest that the Respondent has ever been known by "Fabiana Filippi" or any name identical or similar to the disputed domain name, and the WhoIs information does not indicate otherwise.
The Panel also finds that no license or authorization of any kind has been given by the Complainant to the Respondent to use the FABIANA FILIPPI trademark.
Therefore, considering that the Respondent did not present any allegations or evidence of rights it might have in the disputed domain name, the Panel concludes that the Respondent lacks rights or legitimate interests in the disputed domain name.
Thus, the Panel finds that the conditions in paragraph 6(a)(ii) of the Policy are also fulfilled. C. Registered or is Being Used in Bad Faith
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the FABIANA FILIPPI mark at the time the disputed domain name was registered. The Panel notes that the FABIANA FILIPPI mark, which is an unusual personal feminine Italian name, has been extensively promoted by the Complainant both in the Republic of Korea and internationally, as demonstrated by the Complainant through press releases and articles.
Furthermore, the Respondent's bad faith is confirmed by the fact that the disputed domain name redirects Internet users to a webpage stating the Complainant's mark, the expression "coming soon" along with several active web services for commercial or advertising purposes.
Also, the Panel considers that bad faith is indicated by the registration of a series of domain names which are confusingly similar to the Complainant's trademark. The Panel considers that the registration of a series of four domain names (i.e., , , and ) is suggests a pattern of conduct as described under paragraph 6(b)(iii) of the Policy.
The Panel notes that in a previous dispute in which International Crystal also figured as the Respondent, the panel found that the Respondent acted in bad faith when registering several domain names which were confusingly similar to a famous brand name, constituting a pattern of such conduct. See Nike, Inc. v. Crystal International, supra.
Moreover, the Panel finds no exceptional circumstances in this case for the failure of the Respondent to submit a Response. Thus, the Panel infers that the Respondent does not deny the facts stated by the Complainant. Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994; RX America, LLC v. Matthew Smith,WIPO Case No. D2005-0540. As other previous UDRP panels have also established, asserted facts that are not unreasonable will be taken as true and the respondent will be subject to the inferences that flow naturally from the evidence provided by the complainant.
In light of the above and documents provided, and in the absence of a response, the Panel finds that the Complainant has met the requirements of paragraph 6(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Eduardo Machado
Panelist
Date: November 16, 2016
1 Given the similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy ("UDRP"), the Panel cites UDRP decisions and other UDRP jurisprudence when appropriate.
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