The Complainant is Furla S.P.A. of San Lazzaro Di Savena, Italy, represented by Cavelier Abogados, Colombia.
The Respondent is Cai Jin Yong of Fu Jian Sheng, China. 2. The Domain Name and Registrar
The disputed domain name is registered with 1API GmbH. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2012. On May 9, 2012, the Center transmitted by email to 1API GmbH a request for registrar verification in connection with the disputed domain name. On May 11, 2012, 1API GmbH 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 22, 2012. In accordance with paragraph 5(a) of the Rules, the due date for Response was June 11, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 13, 2012.
The Center appointed Brigitte Joppich, Angelica Lodigiani and C. K. Kwong as panelists in this matter on July 11, 2012. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. 4. Factual Background
The Complainant is an Italian company that has been creating and distributing high-quality Italian bags, shoes, and accessories worldwide since 1927. The Complainant offers its products online at “”.
The Complainant is registered owner of numerous trademarks for FURLA worldwide, inter alia Columbian trademark registrations No. 270161 FURLA applied for on May 29, 2003, No. 264108 FURLA applied for on September 20, 2002, No. 264109 FURLA applied for on March 12, 2002, and No. 264430 FURLA applied for on March 12, 2002 (hereinafter referred to as the “FURLA Marks”). The FURLA Marks registrations cover various products, inter alia bags, apparel, and glasses.
The disputed domain name was registered on January 5, 2012 and is being used in connection with a website where what appears to be counterfeit bags and women’s handbags are sold. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The Complainant contends that the disputed domain name is identical to the FURLA Marks as the top-level domain “.” is not relevant in determining whether a domain name is identical or confusingly similar to a trademark.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name as he is not commonly known by the disputed domain name, as he has neither been authorized to use the FURLA Marks in Colombia in connection with a “.co” top-level domain name nor is an agent or licensee of the Complainant in Colombia, as the use of the disputed domain name in connection with a website offering counterfeit products is not bona fide under the Policy, and as the Respondent’s use of the disputed domain name is neither noncommercial nor fair.
(3) With regard to bad faith, the Complainant contends that the Respondent surely knows the Complainant and its rights in the FURLA Marks in Colombia, and that there is no other possible explanation for the Respondent’s use of the FURLA Marks than for attracting Internet traffic towards the Respondent's website for commercial gain. The Complainant further states that the Respondent's registration and use of the disputed domain name also prevents the Complainant from using the logical choice for a website for Colombian customers, where products identified by its Colombian registered trademarks may be sold, causing a disruption to its business.
The Complainant therefore requests that the disputed domain name be cancelled. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant's trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s FURLA Marks and is identical to such marks. It is well established that the specific top-level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and a domain name (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374).
Therefore, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy,
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or 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 the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among UDRP panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the Respondent’s rights or legitimate interests in the disputed domain name will then shift to the Respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name.
Based on the evidence before the Panel, the Respondent’s use of the disputed domain name was not bona fide under the Policy. The Complainant alleges that the Respondent offers counterfeit goods at the website available at the disputed domain name. Such use would not confer rights or legitimate interests under paragraph 4(c)(i) of the Policy. Even if the goods sold at the website available at the disputed domain name were not counterfeit goods, the Respondent’s use would not have been bona fide under the Policy either. The Panel acknowledges that a reseller can make a bona fide offering of goods and services and thus have rights or legitimate interests in a domain name if the use fits certain requirements, including the actual offering of goods, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder (cf. Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“Oki Data case”); Mariah Boats, Inc. v. Shoreline Marina, LLC, NAF Claim No. 94392; Nikon, Inc. and Nikon Corporation v. Technilab, Inc.,WIPO Case No. D2000-1774; Experian Information Solutions, Inc. v. Credit Research, Inc.,WIPO Case No. D2002-0095). According to the documents available to the Panel, the website available at the disputed domain name does not disclose the registrant's relationship with the trademark holder in any way. Therefore, the Respondent’s use of the disputed domain name does not meet the criteria set out in the Oki Data case.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out of pocket costs directly related to the domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the trademark in a corresponding disputed domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on line location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The Panel is satisfied that the Respondent must have registered the disputed domain name with full knowledge of the Complainant and its rights in the FURLA Marks. Given that the Complainant's bags have been sold under the trademark FURLA for many years, that the FURLA Marks are highly distinctive with regard to bags and that the Respondent is using the disputed domain name to offer what appears to be counterfeit products, it is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant and its rights in the FURLA Marks.
As to bad faith use, the Complainant contends that the Respondent uses the website at the disputed domain name to offer counterfeit goods, which would be an attempt to divert traffic intended for the Complainant's website to its own for commercial gain as set out in paragraph 4(b)(iv) of the Policy (cf. Wellquest International, Inc. v. Nicholas Clark,WIPO Case No. D2005-0552; Fabergé Ltd. v. Management Services,WIPO Case No. D2009-0425). However, the Complainant only alleged that the goods offered by the Respondent are counterfeit goods but did not provide any related evidence. It is questionable whether the Complainant’s mere allegation that the goods are counterfeit are - in the absence of any further explanation and/or related evidence - sufficient to meet its burden of proof in this regard. The Panel, however, does not need to decide this question as the Respondent does not meet the Oki Data case criteria either and was therefore in any case trying to divert traffic intended for the Complainant's website to its own for commercial gain as set out in paragraph 4(b)(iv) of the Policy.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For all 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 cancelled.
Brigitte Joppich
Presiding Panelist
Angelica Lodigiani
Panelist
C. K. Kwong
Panelist
Dated: July 23, 2012
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