WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Salvatore Ferragamo S.p.A. v. Brian E. Nielsen

Case No. D2014-1123

1. The Parties

The Complainant is Salvatore Ferragamo S.p.A. of Italy, represented by Studio Legale SIB, Italy.

The Respondent is Brian E. Nielsen of the United States of America.

2. The Domain Names and Registrar

The disputed domain names <ferragamobyhalljp.org>, <ferragamobyhamburgerjp.org>, <ferragamobyharejp.org>, <ferragamobyharmjp.org>, <ferragamobyharnessjp.org>, <ferragamobyhazardjp.org>, <ferragamobyhealthyjp.org>, <ferragamobyhedgejp.org>, <ferragamobyhellojp.org>, <ferragamobyhelpjp.org>, <ferragamobyhelplessjp.org>, <ferragamobyherselfjp.org> (the “Domain Names”) are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2014. On July 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On July 3, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing 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 discharged its responsibility to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint, and the proceedings commenced on July 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 3, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2014.

The Center appointed Alan L. Limbury as the sole panelist in this matter on August 12, 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.

4. Factual Background (undisputed facts)

The Complainant is a well-known Italian company in the business of manufacturing, marketing and selling in many countries, including Japan and the United States, fine shoes, handbags and other articles, including wallets, luggage, belts, apparel, fragrances, gift items and costume jewelry.

The Complainant has used the trademark FERRAGAMO since at least 1927 with respect to shoes and 1968 with respect to handbags. It has registered the FERRAGAMO trademark in numerous countries, including the United States, No. 1338774, registered on June 4, 1985. The FERRAGAMO mark is extremely well known worldwide due to the Complainant’s extensive advertising. The Complainant is also the registrant of and promotes its products through the domain names <ferragamo.com>, <ferragamo.net> and <ferragamo.jp>.

All of the Domain Names were registered on the same day, March 27, 2013, in the name of the Respondent. None of the Domain Names presently resolve to an active website. Prior to their expiry on March 27, 2014 they were and presently remain placed on server locks by the Registry pursuant to a preliminary injunction issued on January 16, 2014 by a judge of the United States District Court, Southern District of New York, in Civil Action No. 13-CV-9071(LAK)(FM). The Complainant is not one of the plaintiffs in those proceedings.

In seeking to notify the Respondent of the Complaint, the Center’s emails to <postmaster@[each of the Domain Names]> were undeliverable, as was a notification sent by courier to the New York address for the Respondent shown in the registration details for all of the Domain Names. However, the email notification addressed to the Respondent at <xingya7679@163.com> does appear to have been delivered.

5. Parties’ Contentions

A. Complainant

The Complainant says that each of the Domain Names is confusingly similar to the Complainant’s FERRAGAMO mark since each comprises “ferragamoby [dictionary word beginning with h] jp.org”. While “jp” is the code for Japan and, in the context of the Domain Names, the “jp.org” suffix does no more than indicate Japan and the generic “org” domain identifier, the other words used in the Domain Name are generic terms that are not sufficient to dispel the risk of confusion. In Hermes International v. Brian E. Nielsen, WIPO Case No. D2013-1407, in which the same Respondent had registered a very large number of similarly structured domain names featuring the brand HERMES, the learned panelist found that:

“None of the dictionary words preceded by the word “by” is sufficiently distinctive to disturb the distinctiveness of the Complainant’s trade mark, HERMES”.

The Complainant arguess the Respondent has no rights or legitimate interests in the Domain Names since he is not affiliated in any way with the Complainant, is not known to own any trademark applications or registrations for FERRAGAMO or any similar mark in connection with any goods or services and is not authorized by the Complainant to use its FERRAGAMO trademark. In choosing domain names consisting of the Complainant’s mark and descriptive terms, the Respondent intentionally violated the Complainant’s rights.

The Complainant says the Domain Names were registered and are being used in bad faith. They were registered to take unfair advantage of the reputation of the Complainant’s FERRAGAMO mark, so the use of the Domain Names is blatantly in bad faith, as was their registration, which obviously confuses potential customers as to the Respondent’s affiliation with the Complainant. Passive holding can still be considered as acting in bad faith.

The Complainant says the Respondent is notorious for registering hundreds of domain names which correspond to well-known third parties’ trademarks in the field of fashion. See Hermes International v. Brian E. Nielsen, WIPO Case No. D2013-1407 and Guccio Gucci S.p.A. v. Brian E. Nielsen, WIPO Case No. D2013-1919.

B. Respondent

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

6. Discussion and Findings

A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International plc v. Mark Freeman, WIPO Case No. D2000-1080 and Alta Vista Company v. Grandtotal Finances Limited et al., WIPO Case No. D2000-0848.

A. Identical or Confusingly Similar

The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone: Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812. The top level domain “org” is generally disregarded: 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.

Here the addition to the Complainant’s trademark FERRAGAMO of “by” followed by a descriptive word and “jp.org” does nothing to detract from the distinctiveness of the Complainant’s mark. Accordingly each of the Domain Names is confusingly similar to the Complainant’s FERRAGAMO mark.

The Complainant has established this element.

B. Rights or Legitimate Interests

The Panel finds that the FERRAGAMO mark is distinctive and very well known. The Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in the Domain Names on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that the Respondent does have rights or legitimate interests in those names: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited. The Respondent has made no attempt to do so.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in any of the Domain Names.

The Complainant has established this element.

C. Registered and Used in Bad Faith

The Panel notes that on the very same day on which the Respondent registered the 12 Domain Names which are the subject of this Administrative Proceeding, March 27, 2013, the Respondent also registered the 182 domain names that were the subject of Hermes International v. Brian E. Nielsen, WIPO Case No. D2013-1407 (“Hermes”) and the 184 domain names that were the subject of Guccio Gucci S.p.A. v. Brian E. Nielsen, WIPO Case No. D2013-1919 (“Gucci”). All of the domain names the subject of the Hermes and Gucci proceedings were structured in the same way as the Domain Names in this proceeding, namely “[famous trademark] by [dictionary word] jp.org”. The 184 domain names in Gucci included all twelve of the dictionary words used in the present case. The 182 domain names in Hermes included 10 of the present 12 dictionary words, “hare” and “helpless” being the two not featured in Hermes.

The fame of the Complainant’s FERRAGAMO mark and the circumstances of the registration of the Domain Names just described lead to the conclusion that the Respondent was well aware of the Complainant’s mark when registering the Domain Names and did so in order to gain some advantage from the reputation of the Complainant’s mark. This constitutes registration in bad faith.

As to use, in both Hermes and Gucci the domain names resolved to websites offering what were said to be counterfeit goods. In the present case there is no evidence of active use of any of the Domain Names. However, the ‘use’ requirement does not require positive action, inaction being within the concept: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Barney’s, Inc. v. BNY Bulletin Board, WIPO Case No.D2000-0059; CBS Broadcasting, Inc. v. Dennis Toeppen, WIPO Case No. D2000-0400; Video Networks Limited v. Larry Joe King, WIPO Case No.D2000-0487; Recordati S.P.A. v. Domain Name Clearing Company, WIPO Case No.D2000-0194 and Revlon Consumer Products Corporation v. Yoram Yosef aka Joe Goldman, WIPO Case No. D2000-0468.

In the leading case of Telstra, the learned panelist held that:

“…in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith.”

The particular circumstances of that case which led to a finding of bad faith use were, in summary:

(i) the complainant’s trademark had a strong reputation and was widely known:

(ii) the respondent provided no evidence of actual or contemplated good faith use;

(iii) the respondent took steps to conceal its true identity;

(iv) the respondent provided false contact details, in breach of its registration agreement; and

(v) it was not possible to conceive of any use of the domain name by the respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the complainant’s rights under trademark law.

The Panel finds that present case includes circumstances (i), (ii), (iv) and (v) above. The only email address for the Respondent which does appear to be genuine, <xingya7679@163.com>, gives rise to a suspicion that the name and address of the Respondent provided upon registration are not genuine. However, it is not necessary for the Panel to come to a conclusion on that point.

Taking all these circumstances together with the circumstances of the Respondent’s registration of the Domain Names discussed above, the Panel finds that the Respondent’s passive use of the Domain Names constitutes use in bad faith.

The Complainant has established this element.

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 Domain Names

<ferragamobyhalljp.org>

<ferragamobyhamburgerjp.org>

<ferragamobyharejp.org>

<ferragamobyharmjp.org>

<ferragamobyharnessjp.org>

<ferragamobyhazardjp.org>

<ferragamobyhealthyjp.org>

<ferragamobyhedgejp.org>

<ferragamobyhellojp.org>

<ferragamobyhelpjp.org>

<ferragamobyhelplessjp.org> and

<ferragamobyherselfjp.org>

be transferred to the Complainant.

Alan L. Limbury
Sole Panelist
Date: August 14, 2014