WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Peuterey Group S.p.A. v. Zhengjs76 zhengjs75

Case No. D2014-0088

1. The Parties

The Complainant is Peuterey Group S.p.A. of Altopascio, Italy, represented by Studio Legale Lusini & Tognato, Italy.

The Respondent is Zhengjs76 zhengjs75 of Aosta, Italy.

2. The Domain Name and Registrar

The disputed domain name <peutereysitoufficialeit.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2014. On January 21, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 13, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2014.

The Center appointed Anna Carabelli as Sole Panelist in this matter on February 21, 2014. 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.

On March 7, 2014 the Center notified the Parties that due to exceptional circumstances it was necessary for the Panel to extend the date due for decision to March 14, 2014, in accordance with its general powers under UDRP Rules 10.

4. Factual Background

The Complainant (formerly G&P Net s.p.a.) is in the business of producing, marketing and selling articles of clothing and accessories under the trademark PEUTEREY.

The trademark is protected as a registered trademark in Italy and in many other countries. Annexed to the Complaint are copies of several National, International and Community trademark registrations for PEUTEREY filed by the Complainant (Annexes 7 and 8).

The Complainant’s products are sold in Flagship Stores as well in retail stores throughout Italy and in many other countries (Annex 5 to the Complaint) and online through the Complainant’s official website “www.peuterey.it” and “www.peuterey.com” (Annex 9 to the Complaint). The domain name <peuterey.it> was registered by the Complainant in 2000.

The disputed domain name <peutereysitoufficialeit.com> was registered on December 3, 2012 as shown by a copy of the Registrar’s WhoIs database, annexed to the Complaint.

According to the evidence submitted by the Complainant, the disputed domain name was redirected to a website offering for sale PEUTEREY branded products at prices that are considerably lower than those of original PEUTEREY products (Annex 11 to the Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant contends that disputed domain name <peutereysitoufficialeit.com> is confusingly similar to its registered trademark PEUTEREY since it clearly recalls the identical name of the Complainant’s trademark, and the addition of the words “sito ufficiale” (“official website”, in Italian) strengthens the confusion between the disputed domain name and the Complainant’s trademark by inducing consumers to believe that the Respondent’s website located at the disputed domain name is related to the Complainant. In addition, according to the Complainant, the expression “Peutereysitoufficialeit” would be phonetically, graphically and conceptually virtually identical to the registered trademark PEUTEREY.

In addition, the Complainant asserts that the Respondent has no rights to or legitimate interests in the disputed domain name. Indeed, the Respondent is not affiliated in any way with Complainant and does not appear to own any trademark applications or registrations for PEUTEREY or any similar marks in connection with any good or services.

Moreover, the Complainant emphasizes that it has not licensed or otherwise authorized the Respondent to use its PEUTEREY trademark, or to apply for any domain name incorporating such mark. The Respondent is not commonly known by the disputed domain name and does not trade under the name “peuterey” or make any legitimate use thereof.

The Complainant states that the disputed domain name was registered and has been used in bad faith given that:

- the Respondent chose a domain name which consists of the Complainant’s mark, thereby intentionally violating the Complainant’s rights;

- the Respondent could not ignore the existence of the Complainant when the disputed domain name was registered given the strong reputation and distinctive character of the Complainant’s mark PEUTEREY; to the best of the Complainant’s knowledge, the goods offered for sale on the Respondent’s website are counterfeit;

- the Respondent is using the disputed domain name to offer for sale counterfeited PEUTEREY goods causing considerable damage to the Complainant’s trademark rights and business, to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website;

- the fact that the disputed domain name includes the words “sito ufficiale” (“official website”, in Italian) is an additional element of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) the disputed domain name in issue is identical or confusingly similar to the Complainant’s trademark or service mark; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) shall be evidence of registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the Domain Name for the purpose of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

The Complainant has proved that it owns numerous trademark registrations for the trademark PEUTEREY in several countries including Italy.

The disputed domain name is confusingly similar to the Complainant’s trademark, as it entirely incorporates the Complainant’s trademark PEUTEREY. On the other hand, the addition of generic terms (i.e., “sito”, “ufficiale” and “it”) does not create a different trademark in which the Respondent has right, and cannot be considered sufficient to avoid confusion between the disputed domain name and the Complainant's trademark (see GA Modefine SA v Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022; Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp, WIPO Case No. D2000-0464).

On this issue, the Panel further notices that the term “sitoufficialeit” can likely be associated with the Complainant’s business and products, therefore its combination with the Complainant’s trademark PEUTEREY clearly is confusing (see Christian Dior Couture v. Carl Lim, WIPO Case No. D2008-1038; Hermes International, SCA v. cui zhenhua, WIPO Case No. D2010-1743; Hermes International v. BAG12, Nick, Kim, WIPO Case No. D2010-2290).

Accordingly, the Panel finds that the Complainant has established element 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has not authorized, licensed or permitted the Respondent to use its trademark PEUTEREY.

The Complainant asserts that the Respondent is not commonly known by the disputed domain name and cannot demonstrate any legitimate noncommercial or fair use of the disputed domain name, particularly because the Respondent is using the disputed domain name to sell what appears to be counterfeited PEUTEREY goods.

In the light of the above, the Complainant has established prima facie evidence that none of the three circumstances establishing rights or legitimate interests mentioned above applies. As stressed by many UDRP decisions, in such a case the burden of production shifts to the Respondent to rebut the prima facie case (see, among others, Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management - IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).

Because the Respondent failed to submit a response to the Complaint, and given that the allegations of the Complaint prima facie do not raise substantial doubts, the Panel accepts as true all allegations set forth in the Complaint and holds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Accordingly, the Panel finds that the Complainant has established element 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Given the international reputation of the PEUTEREY trademark and PEUTEREY branded products, the Panel finds that in all likelihood the Respondent must have been aware of the Complainant’s well-known trademark at the time it registered the disputed domain name (see Revlon Consumer Product Corp v. Domain Manager, PageUp Communications, WIPO Case No. D2003-0602; Microsoft Corporation v. Superkay Worldwide Inc., WIPO Case No. D2004-0071; Revlon Consumer Product Corporation v. Easy Weight Loss Info, Augustinus Ferry Yonatan, WIPO Case No. D2010-0936; Hermes International SCA v. Cui Zhenhua, supra.

The evidence shows that the website at the disputed domain name was being used by the Respondent to offer for sale PEUTEREY branded products at prices that are considerably lower than the original PEUTEREY products. The Complainant asserted that this fact suggests that the products offered on the Respondent’s website are counterfeited PEUTEREY branded products and this assertion has not been rebutted by the Respondent.

The sale of what appears to be counterfeited goods under the Complainant’s trademark amounts to bad faith (see Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019; Hermes International SCA v. Cui Zhenhua, Supra; Hermes International v. BAG12, Nick, Kim, Supra)

The Panel finds that by using the disputed domain name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s 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 the Respondent’s website or location.

Accordingly, the Panel finds that the Complainant has established element 4(a)(iii) 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 <peutereysitoufficialeit.com> be transferred to the Complainant.

Anna Carabelli
Sole Panelist
Date: March 14, 2014