ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Calzificio Pinelli S.r.l. v. 马钦鹏 (Ma Qinpeng) Case No. DCN2024-0038 1. The Parties The Complainant is Calzificio Pinelli S.r.l., Italy, represented by Dr. Modiano & Associati S.p.A., Italy. The Respondent is 马钦鹏 (Ma Qinpeng), China. 2. The Domain Name and Registrar The disputed domain name is (the “Disputed Domain Name”). The Disputed Domain Name is registered with 海南美洁达科技有限公司(the “Registrar”). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2024. On September 24, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 25, 2024, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the Disputed Domain Name and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the China ccTLD Dispute Resolution Policy (the “Policy”), the China ccTLD Dispute Resolution Policy Rules (the “Rules”), and the WIPO Supplemental Rules for China ccTLD Dispute Resolution Policy and China ccTLD Dispute Resolution Policy Rules (the “WIPO Supplemental Rules”). In accordance with the Rules, Articles 5, 6, 14, 15 and 16, and the WIPO Supplemental Rules, Paragraph 4(d), the Center formally notified the Respondent in Chinese and English of the Complaint on September 26, 2024, and the proceedings commenced on September 26, 2024. In accordance with the Rules, Articles 17 and 49, the due date for response by the Respondent was October 16, 2024. The Respondent did not submit any response. Accordingly, the Center notified of the Respondent’s default on October 17, 2024.
Page 2 The Center appointed Andrew Sim as the sole panelist in this matter on October 21, 2024. 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, Article 29. 4. Factual Background The Complainant is a company existing under the laws of Italy. The Complainant is a family-owned company with a 46-year history as a hosiery manufacturer, specializes in the production of graduated compression stockings, tights and knee-highs under the SOLIDEA brand. Its products are exported to 70 countries (including China) and are available in more than 15,000 retail stores in Europe. It annually manufactures over 7,500,000 pieces of products. The Complainant holds registered trademarks for SOLIDEA (the “SOLIDEA Trademark”) (or similar trademarks) in various jurisdictions, as listed below. Jurisdiction Mark Registration Number Registration Date Class(es) Covered Status Italy SOLIDEA 595342 April 15, 1993 25 Registered European Union MICROMASSAGE MAGIC BY SOLIDEA 001862218 November 28, 2001 25 Registered SOLIDEA 001862275 August 11, 2005 25 Registered SOLIDEA 002443604 March 20, 2003 25 Registered SOLIDEA 002754828 May 25, 2004 3, 5 and 10 Registered SOLIDEA 003166287 June 17, 2004 10 Registered SOLIDEA 016042574 July 10, 2017 10 and 25 Registered SOLIDEA 016042591 July 10, 2017 10 and 25 Registered International (designating China) SOLIDEA 599504 April 15, 1993 25 Registered S SOLIDEA 1072626 October 29, 2010 10 and 25 Registered
Page 3 The Complainant operates many domain names associated with the SOLIDEA Trademark. For example, the Complainant owns and maintains these primary domain names: , , and . Such domain names redirect to the global official website of the Complainant (i.e., “www.solidea.com”) (the “Global Website”), which displays information about the Complainant’s stores, offerings, and promotional and other corporate material. The Complainant also operates other domain names containing the characters “solidea”, followed by a generic or a country code Top-Level Domain (“TLD”). In relation to domain names with the country code TLD “.cn”, the Complainant owns and maintains various “.cn” domain names, for example: <索丽蒂雅.cn> (Solidea in Chinese characters), and , all of which redirect to the Global Website aforementioned. The Disputed Domain Name was registered on March 11, 2024. Based on the Complainant’s evidence, upon entering “www.solidea.com.cn”, there is nothing shown on the website and only a blank page is displayed. Little information is known about the Respondent. Available information provided by the Registrar covers only the registrant’s name, postal address, telephone number, and email address. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under Article 8 of the Policy. First, the Complainant contends that the Disputed Domain Name is identical to the Complainant’s SOLIDEA Trademark in its entirety and is confusingly similar to its registered domain names in which the Complainant should have valid rights and interests. The only difference between the Complainant's SOLIDEA Trademark and the Disputed Domain Name is the addition of and the [Second-Level Domain (“SLD”)] and the country code TLD “.com.cn”, hence the Disputed Domain Name should be found to be confusingly similar to the SOLIDEA Trademark. Second, the Complainant contends that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Complainant asserts that no agreements, authorizations, or licenses have been granted to the Respondent to use the Complainant’s trademarks. The registration and use of the Disputed Domain Name, which contains the SOLIDEA trademark in full, makes it difficult to infer any legitimate use or plausible explanation. There is no evidence that the Respondent has trademarks registered or conducted any company activities under the name Solidea or any similar name, and it has never been known under the Solidea or any similar name. Further, since the registration of the Disputed Domain Name, the Respondent has never made any bona fide use of it. This can be supported by the fact that the Respondent is merely passively holding the Disputed Domain Name as no information is displayed upon accessing the Disputed Domain Name. Third, the Complainant contends that the Disputed Domain Name was registered and is being used in bad faith. The Complainant’s trademarks have been registered and used for many years, particularly in the Asian region including in China, where SOLIDEA-trademarked goods have been sold for over 20 years. The Complainant has also registered numerous domain names corresponding to its trademark, including several in China. Additionally, the Complainant has published its company information online since 1998 through various official websites, including the Global Website. The SOLIDEA Trademark has no meaning other than referring to the Complainant’s trademark. The Disputed Domain Name is written in Latin characters, indicating that the Respondent is not targeting the Chinese public. The Respondent is passively holding the Disputed Domain Name. The Respondent has never received authorization to use or register the SOLIDEA Trademark as a domain name, further confirming bad faith. Given the international recognition of the Complainant’s trademarks, the Respondent could not have been unaware of them. By choosing a domain name consisting of the SOLIDEA Trademark, the Respondent intentionally created a situation conflicting with the legal rights and obligations of the Parties. Furthermore, the Respondent has a pattern of cybersquatting
Page 4 and typosquatting in registering over 300 domain names, several of which target third-party trademarks, indicating a strategy to prevent trademark owners from using corresponding domain names. The Complainant is hindered and penalized by the use of the Disputed Domain Name, which misleads internet users and creates confusion with the Complainant’s trademarks and domain names. The Complainant requests that the Disputed Domain Name be transferred to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Issue: Language of the Proceeding Pursuant to Article 6 of the Policy, Article 8 of the Rules, and Paragraph 18(a) of the WIPO Supplemental Rules, unless otherwise agreed by the parties or determined by the Panel under exceptional circumstances, the language of the administrative proceeding shall be Chinese. The Complaint was filed in English. The Complainant requested that the language of the proceeding be English for several reasons, including but not limited to the fact that the Complainant is not able to communicate in Chinese and requiring all documents to be submitted in Chinese would unduly delay the proceedings and incur substantial translation expenses, that the Disputed Domain Name is registered in Latin script rather than in Chinese characters, that “Solidea” is not a Chinese word, has no meaning in Chinese, and is not written in Chinese characters, and that the Respondent appears to have registered more than 350 domain names, none of which are in Chinese characters, hence it is reasonable to assume that the Respondent understands English and is targeting an English-speaking public. As noted above, the Respondent did not comment on the Complainant’s request for the language of the proceeding to be English. This is despite the fact that the Center had sent the notification of the Complaint which includes instructions on the language of the proceeding to the Respondent in both Chinese and English. Having considered all the matters above, the Panel determines that English be the language of the proceeding, and this decision is accordingly rendered in English. 6.2. Substantive Issues Article 8 of the Policy states that support for the Complaint is subject to the following conditions being satisfied for each of the Disputed Domain Name: (a) the Disputed Domain Name is identical with or confusingly similar to the Complainant’s name or mark in which the Complainant has civil rights or interests; (b) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name or major part of the Disputed Domain Name; and (c) the Respondent has registered or has been using the Disputed Domain Name in bad faith. For the below reasons, support for the Complaint can be found due to the satisfaction of the three conditions for each of the Disputed Domain Name. A. Identical or Confusingly Similar to the Complainant’s Name or Mark in which the Complainant has Civil Rights or Interests The Complainant has shown valid civil rights in respect of its trademarks for the purposes of the Policy, including the valid registration of its SOLIDEA Trademark (and other similar trademarks) in various classes in jurisdictions including China, and the long-term and intensive use of its name and trademarks globally.
Page 5 The entirety of the SOLIDEA Trademark is reproduced within the Disputed Domain Name. Accordingly, the Disputed Domain Name is identical to the SOLIDEA Trademark for the purposes of the Policy. The SLD and country code TLD “.com.cn” is viewed as a standard registration requirement and as such is to be disregarded for the purpose of determining identity or confusing similarity. The Panel finds that the first condition under Article 8 of the Policy has been established based on the Complainant’s submissions. B. Rights or Legitimate Interests The Panel notes that Article 10 of the Policy provides a list of non-exhaustive circumstances which may be evidence of the Respondent’s rights to or legitimate interests in the Disputed Domain Name in support of Article 8(b) of the Policy. Based on the website content viewed from accessing the Disputed Domain Name (which is just a blank page), as well as the lack of any permission from the Complainant to use the SOLIDEA Trademark, the Panel does not find that the Respondent has used the Disputed Domain Name in connection with any bona fide offering of goods or services under Article 10(a) of the Policy, and does not find that the Respondent has made any legitimate noncommercial or fair use of the Disputed Domain Name without intent of or commercial gain to misleadingly divert consumers under Article 10(c) of the Policy. Based on the name of the individual Respondent, the Panel does not find that the Respondent has been commonly known by the Disputed Domain Name under Article 10(b) of the Policy. For the reasons above and otherwise stated in the Complainant’s submissions, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights to or legitimate interests in the Disputed Domain Name. The Respondent has not rebutted the Complainant’s prima facie case and has not come forward with any relevant evidence demonstrating rights to or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise. The Panel finds that the second condition under Article 8 of the Policy has been established. C. Registered or Used in Bad Faith The Panel notes that, for the purpose of Article 8(c) of the Policy, Article 9 of the Policy provides a list of circumstances that, if found by the Panel to be present, may be evidence of the registration and use of a domain name in bad faith. The Complainant’s SOLIDEA Trademark and other similar marks were registered many years before the Respondent’s registration of the Disputed Domain Name which is not only identical or confusingly similar to the Complainant’s trademarks but also to its registered domain names such as and . A simple Internet search for the SOLIDEA Trademark shows results overwhelmingly relating to the Complainant. Therefore, the Panel finds that the Respondent knew or should have known of the Complainant at the time of registering the Disputed Domain Name. The Respondent’s knowledge of the Complainant’s trademarks, combined with the absence of any association between the Respondent and the Disputed Domain Name, suggests the Respondent’s registration of the Disputed Domain Name in bad faith. Although the Respondent is merely holding the Disputed Domain Name passively without displaying any content on it, considering the distinctiveness and reputation of the Complainant’s SOLIDEA Trademark, the composition of the Disputed Domain Name clearly targeting the Complainant’s trademark, and the lack of response from the Respondent, such use does not prevent a finding of the Respondent’s bad faith.
Page 6 Further, the Respondent’s well-documented history, provided by the Complainant, demonstrates that the Respondent has registered other domain names possibly in order to prevent owners of other marks from reflecting their brands in corresponding domain names under Article 9(b) of the Policy. Based on the above evidence, the Panel finds that the third condition under Article 8 of the Policy has been established. 7. Decision For the foregoing reasons, in accordance with Article 14 of the Policy and Article 40 of the Rules, the Panel orders that the Disputed Domain Name be transferred to the Complainant. /Andrew Sim/ Andrew Sim Sole Panelist Date: November 4, 2024
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