WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Salvatore Ferragamo S.p.A. v. Holbach Reynalda, Fundacion Private Whois
Case No. D2012-2153
1. The Parties
The Complainant is Salvatore Ferragamo S.p.A.of Florence, Italy, represented by Studio Legale SIB, Italy.
The Respondent is Holbach Reynalda of Aberdeen, Guam, Unincorporated Territory of the United States of America; Fundacion Private Whois of Panama.
2. The Domain Names and Registrars
The disputed domain name <ferragamo-mart.com> is registered with Internet.bs Corp. The disputed domain name <ferragamomarts.com> is registered with GoDaddy.com, LLC. Both domain names will hereafter be referred to as the “Disputed Domain Names”.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 30, 2012. On October 31, 2012, the Center transmitted by email to Internet.bs Corp. and GoDaddy.com, LLC (the “Registrars”) a request for registrar verification in connection with the Disputed Domain Names. On November 1 and November 20, 2012, the Registrars transmitted respectively by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended the Complaint on November 26, 2012.
The Center verified that the Complaint together with the amended 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 27, 2012. In the email of Notification of Complaint, the Center noted that the Complainant had argued that the Disputed Domain Names are in fact controlled by the same person in the Complaint. In light of this, the Center found there was at least a prima facie case for consolidation warranting consideration by a Panel in this case. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 18, 2012.
The Center appointed Dawn Osborne as the sole panelist in this matter on December 21, 2012. 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 Disputed Domain Names are controlled by the same underlying entity (see discussion at Section 6, below).
Complainant is a well-known Italian company in the business of manufacturing and selling fine shoes, handbags and similar items. The Complainant owns many registered trade marks for FERRAGAMO worldwide for its goods including in the United States since 1976.
The Disputed Domain Names were registered in 2011 and 2012. They have been pointed to a website apparently selling goods which are sold under the FERRAGAMO mark.
5. Parties’ Contentions
The Complainant's submissions can be summarised as follows:
The Disputed Domain Names are controlled by the same person, the Respondent, albeit that one <ferragamo-mart.com>, has been registered using a privacy protection service. The other one <ferragamomarts.com> redirects to “www.ferragamo-mart.com” a web page which sells articles bearing a counterfeit SALVATORE FERRAGAMO mark. The Respondent has acted similarly with other brands such as Oakley with domain names registered with the same privacy protection service.
Complainant is a well-known Italian company in the business of manufacturing and selling fine shoes, handbags and similar items such as wallets, luggage, belts, apparel, fragrances, gift items and costume jewellery. It has used the FERRAGAMO trade mark since at least 1927 with respect to shoes and 1968 with respect to handbags. Salvatore Ferragamo achieved a worldwide reputation as "shoemaker to the stars" in movies in California and has been the subject of exhibitions at museums. It has retail stores in many countries including the United States. It is the owner of many domain names including the FERRAGAMO mark including <ferragamo.com>. It has spent worldwide an average of EUR 40 million per year recently promoting its products including products bearing the FERRAGAMO mark. The FERRAGAMO mark is well-known in the fashion industry and to the general public. The Complainant owns many registered trade marks for FERRAGAMO worldwide for its goods including in the United States.
The Disputed Domain Names are confusingly similar to the Complainant’s FERRAGAMO mark. The suffixes "mart" and "marts" should be considered irrelevant in the comparison between the Complainant’s mark and the Disputed Domain Names. The Disputed Domain Names are phonetically, graphically and conceptually similar including the FERRAGAMO mark in its entirety and as the initial part of the Disputed Domain Names. “Mart” is a common English word related to the function of the website hosted or linked to on the Disputed Domain Names and is descriptive. The use of the Disputed Domain Names will cause visitors to believe that these domain names are intended to host a local website created by the Complainant for its customers.
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Respondent is not affiliated with the Complainant and does not appear to own any trade marks corresponding to the Disputed Domain Names. The Complainant has not licensed or otherwise authorised the Respondent to use the FERRAGAMO mark. The Respondent is not commonly known as Ferragamo.
The Respondent has chosen the Disputed Domain Names because of the Complainant's existing intellectual property rights and to the best of the Complainant's knowledge the goods offered for sale on the Respondent's website are counterfeit. The Respondent is falsely suggesting it is the trade mark owner by making the website look like an official site of the Complainant.
The Disputed Domain Names were registered and are being used in bad faith to sell counterfeits and pass off the Respondent as the Complainant. A privacy service has been used to make it more difficult to identify the Respondent.
The Respondent owns several domain names corresponding to other well-known trade marks including <fashionableoskley.com>, <hipoakley.com>, <oakleys.me> and <raybans.me>.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
As a preliminary issue the Panel finds that on the basis of the evidence submitted, the Disputed Domain Names have both been registered by the same underlying entity, the Respondent. <ferragamo-mart.com> has been registered using a privacy protection service. <ferragamomarts.com> redirects to <ferragamo-mart.com>. As the Respondent controls both the Disputed Domain Names the Complainant has shown a good basis for bringing the action against both Disputed Domain Names in this single Complaint. See
Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2012-0281.
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) The Disputed Domain Names have been registered and are being used in bad faith.
A. Identical or confusing similarity
The Complainant has trade mark registrations consisting of or containing the FERRAGAMO word mark around the world including the United States since 1976. The Panel finds the Disputed Domain Names are confusingly similar to the Complainant’s trade mark consisting of the Complainant’s FERRAGAMO registered trade mark and the generic text “mart” or "marts", being a generic term for a selling place. The distinctive part of the Disputed Domain Names is the FERRAGAMO mark. The addition of the non-distinctive text “mart" or "marts" does nothing to prevent the confusing similarity of the Disputed Domain Names with the Complainant's FERRAGAMO trade mark. As such the Panel holds that the Disputed Domain Names are confusingly similar to a trade mark in which the Complainant has rights for the purpose of the Policy.
B. Rights or Legitimate Interest of the Respondent
The Respondent has not filed a Response. It has no consent from the Complainant, has not used the Disputed Domain Names for a bona fide offering of goods and services given the confusing use, as discussed below, and is not commonly known by the Disputed Domain Names. Nor is it making noncommercial fair use of it. In the circumstances of this case, and in view of the Panel’s discussion below, the Panel finds that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
“by using the 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 mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.”
The Respondent has not provided any explanation why it would be entitled to register the Disputed Domain Names incorporating the Complainant’s trade mark with only generic terms added which reflect the nature of the website as a selling place. Further, in the opinion of the Panel the use made of the Disputed Domain Names is deceptive. It is not at all clear whether the site to which they point is or is not connected with the Complainant. As such the Panel finds that the Disputed Domain Names have been used in a way likely to confuse people into believing the Disputed Domain Names were registered to or connected to the Complainant.
The use of the trade marks on the site shows that the Respondent is well aware of the Complainant, its trade marks and goods. In the absence of a Response from the Respondent, considering the fame of the Complainant and the material attached to the Disputed Domain Names, the Panel is satisfied that the Complainant has shown that the Respondent registered the Disputed Domain Names in bad faith and has used the Disputed Domain Names to attract Internet traffic to its site for commercial gain by creating a likelihood of confusion that its website is connected to the Complainant. As such the Panel finds that the Disputed Domain Names have been registered and used in bad faith satisfying the third limb of the Policy. It is, therefore, not necessary to consider further the Complainant’s representations as to use of a privacy service and the registration of other domain names containing other famous trade marks.
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, <ferragamo-mart.com> and <ferragamomarts.com> be transferred to the Complainant.
Date: December 31, 2012