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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Valentino S.p.A. v. Chris Love and Chris Cookie

Case No. D2016-1086

1. The Parties

The Complainant is Valentino S.p.A. of Milan, Italy, represented by Studio Barbero, Italy.

The Respondents are Chris Love of Waterbury, Connecticut, Unites States of America ("United States") and of Xiamen, Fujian, China and Chris Cookie of Waterbury, Connecticut, United States.

2. The Domain Names and Registrars

The disputed domain names <valentinoshoesale.com>, <valentinoshoes2u.com>, <valentinostores.com> and <valentino4u.com> are registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 31, 2016. On June 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 1 and June 2, 2016, the Registrar transmitted by email to the Center its verification responses confirming that the Respondents are 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").

On June 6, 2016, the Center informed the parties that there appeared to be at least prima facie grounds sufficient to warrant accepting the Complaint for the Panel's final determination of the consolidation request on appointment. The Center would accordingly proceed to commencement and formal Complaint notification on that basis. The Center would accept a response from any identified registrant who wished to submit a reply to the Complaint, which would be forwarded to the Panel for consideration when appointed.

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the Complaint, and the proceeding commenced on June 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 26, 2016. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on June 27, 2016.

The Center appointed Steven A. Maier as the sole panelist in this matter on July 4, 2016. 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. Consolidation of Proceedings

The Complainant applies to consolidate its claims in respect of each of the four disputed domain names. The criteria for consolidation are that (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties (see paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").

The Complainant has submitted evidence including the WhoIs records relating to each of the four disputed domain names which shows that:

(a) the registrant contact telephone number and email address are the same in the case of each of the four disputed domain names; and

(b) while the disputed domain name <valentinostores.com> is registered in the name of Chris Cookie as opposed to Chris Love (the registrant of the other three disputed domain names) the postal address for Chris Cookie is the same as that stated for Chris Love in the case of one of the other disputed domain names.

On this basis, the Panel finds on balance that the four disputed domain names are in common control. The Respondents have not opposed the Complainant's application for consolidation and the Panel is aware of no reason why consolidation would not be just and equitable to all parties. Accordingly the Panel directs that the proceedings be consolidated. The Respondents are hereinafter referred to as the Respondent.

5. Factual Background

The Complainant is a corporation registered in Italy. It is a fashion house which offers an extensive range of luxury products including shoes.

The Complainant is the owner of trademark registrations for the word mark VALENTINO in numerous territories. These registrations include, for example:

- United States trademark number 0910955 for VALENTINO registered on April 6, 1971 in Class 25;

- International trademark number 570593 for VALENTINO registered on April 24, 1991 in Classes 3, 14, 18 and 25 and designating a total of nine countries;

- European Union trademark number 001990407 for VALENTINO filed on December 7, 2000 and registered on September 18, 2008 in numerous classes.

The Complainant is also the owner of the following trademark registrations:

- International trademark number 979223 for a figurative mark comprising the letter V and an oval (the "V Logo") registered on July 22, 2008 in numerous classes and designating a total of 48 countries;

- International trademark number 1130628 for the word mark ROCKSTUD registered on July 31, 2012 in Class 25 for goods including footwear and shoes and designating a total of 27 countries;

- International trademark number 969844 for the word mark VALENTINO GARAVANI registered on July 2, 2008 in numerous classes and designating a total of 40 countries;

- International trademark number 723754 for a figurative mark comprising the word VALENTINO with the V Logo above it (the "Valentino Logo") registered on October 21, 1999 in numerous classes for goods and services including footwear in Class 25 and designating two countries.

The disputed domain names were registered on the following dates:

<valentinoshoes2u.com> on March 21, 2013

<valentinostores.com> on July 14, 2014

<valentinoshoesale.com> on August 21, 2014

<valentino4u.com> on July 4, 2015

The Complainant has provided evidence by way of web page screen prints that the disputed domain names have been used in the following manner:

- The disputed domain name <valentinoshoes2u.com> has resolved to a website at "www.valentinoshoes2u.com" which prominently featured the mark VALENTINO and purported to offer the Complainant's products including its "Valentino Rockstud" shoes for sale.

- The disputed domain name <valentinostores.com> has resolved to a website at "www.valentinostores.com" which prominently featured the marks VALENTINO and VALENTINO GARAVANI and purported to offer the Complainant's products including its "Valentino Rockstud" shoes for sale.

- The disputed domain name <valentinoshoesale.com> has resolved to a website at "www.valentionshoesale.com" which included the heading "Valentino Online Store" and purported to offer the Complainant's products including its "Valentino Rockstud" shoes for sale; and more recently to the Registrar's "parking page".

- The disputed domain name <valentino4u.com> has resolved to a website at "www.valentino4u.com" which featured the marks VALENTINO, VALENTINO GARAVANI and the Valentino Logo and purported to offer the Complainant's products including its "Valentino Rockstud" shoes for sale.

6. Parties' Contentions

A. Complainant

The Complainant states that it was founded in 1960 by the fashion designer Valentino Garavani and his business partner. It submits that it is a major player on the world fashion scene, offering a wide range of luxury goods including bags, shoes and small leather goods. It operates 160 retail stores in over 90 countries. It has consistently used its VALENTINO mark in connection with its products for several decades and it invested over EUR 13 million in advertising under that brand in 2013. The Complainant submits that VALENTINO is widely recognized as one of the world's leading luxury brands and produces media coverage in support of this contention. The Complainant also provides evidence of its presence on social media including Facebook, Twitter and Instagram and states that it owns over 300 domain names incorporating the VALENTINO mark. It provides evidence of its official website at "www.valentino.com" where its products are promoted and offered for sale.

The Complainant submits that the disputed domain names are identical or confusingly similar to a trademark or service mark in which it has rights. It states that each of the disputed domain names incorporates the whole of its mark VALENTINO together with the non-distinctive additions "2u", "stores", "shoesale" and "4u". The Complainant submits that the inclusion of those terms is apt to increase the likelihood of confusion and to induce Internet users wrongly to believe that the Respondent is connected with the Complainant.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant states that it has never licensed or authorized the Respondent to use its VALENTINO mark and denies that the Respondent has ever commonly been known by the disputed domain names. The Complainant states that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain names and disputes that the Respondent is using the disputed domain names in connection with any bona fide offering of goods or services. On the contrary, the Complainant submits that the Respondent has used the disputed domain names for the purpose of commercial websites which are intended to mislead Internet users into believing that they are owned or controlled by the Complainant or its affiliated companies. The Complainant points to the use of its trademarks on the Respondent's websites and also provides evidence that the Respondent has copied a number of the Complainant's product images from the Complainant's own promotional materials. The Complainant also alleges that the Respondent's products are highly likely to be counterfeit in view of the very low prices at which they are offered. The Complainant submits that the Respondent has failed to make clear on any of its websites that it is not connected with the Complainant and that the website at "www.valentino4u.com" also offers the Complainant's competitors' goods for sale, namely Christian Louboutin shoes.

The Complainant contends that the disputed domain names have been registered and are being used in bad faith. The Complainant submits that, owing to the extensive reputation of the Complainant's mark VALENTINO, it is inconceivable that the Respondent was unaware of that mark at the date it registered the disputed domain names. Furthermore, it is clear from its use of the disputed domain names to offer what purport to be the Complainant's products that the Respondent was aware of and intended to refer to the Complainant's trademark. The Complainant refers to the Respondent's choice of the disputed domain names and its use of the Complainant's trademarks and images for its websites, as well as its sale of apparently counterfeit versions of the Complainant's goods and competing goods. The Complainant submits that the Respondent can have had no other intention in the circumstances than to ride in bad faith on the coat-tails of the Complainant. The Complainant submits that the Respondent intends to mislead Internet users seeking the Complainant's genuine branded products by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of its websites or of products on its websites.

With regard to the disputed domain name <valentinoshoesale.com>, the Complainant submits that it should not prejudice any finding of bad faith that the disputed domain name has more recently redirected to a "parking page". While a purely passive holding can still amount to bad faith in all the circumstances, in this case the Respondent is taking advantage of the Complainant's trademarks to redirect Internet users to sponsored links. The Complainant produces a print of the relevant the Registrar's web page, which is headed "Welcome to valentinostores.com" and offers links to a variety of different goods and services.

The Complainant also alleges that the Respondent has provided false or incomplete contact information in connection with the registration of each of the disputed domain names, including in two cases incomplete postal addresses supposedly in China.

The Complainant produces copies of "cease and desist" letters sent to the Respondent in connection with the disputed domain names <valentinoshoes2u.com> and <valentinostores.com> on May 20, 2014 and December 17, 2014 respectively. The Complainant states that the Respondent did not reply to these letters and went on to register further of the disputed domain names after they had been sent.

The Complainant requests the transfer of the disputed domain names.

B. Respondent

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

7. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

(iii) that the disputed domain names have been registered and are being used in bad faith.

Even in a case where the Respondent has not contested the Complaint, it is still necessary for the Complainant to establish that all of the three above elements are present.

A. Identical or Confusingly Similar

The Complainant has established that it is the owner of registered trademark rights in the mark VALENTINO in numerous territories throughout the world. The Panel also accepts the Complainant's evidence that its mark VALENTINO is widely known in the fashion sector and has a longstanding reputation in connection with luxury goods including footwear. Each of the disputed domain names includes the Complainant's mark VALENTINO in its entirety, together with the respective additions "2u", "stores", "shoesale" and "4u". In the view of the Panel, none of these additions is effective to distinguish the disputed domain names from the Complainant's mark VALENTINO and, instead, each gives the impression of a sales channel for the Complainant's branded goods. In the circumstances, the Panel finds that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

In the view of the Panel, the contentions advanced by the Complainant as set out above give rise to a prima facie case for the Respondent to answer that it has no rights or legitimate interests in respect of the disputed domain names. While it was open to the Respondent to answer that case, the Respondent has not participated in this administrative proceeding and has not provided any explanation for its registration or its use of the disputed domain names, whether in accordance with any of the criteria set out in paragraph 4(c) of the Policy or otherwise.

Under certain conditions, a respondent who sells trademarked goods under a domain name reflecting that trademark may have rights or legitimate interests in the domain name, even where such sales may be unauthorized by the trademark owner (see, e.g., paragraph 2.3 of the WIPO Overview 2.0). One such condition, however, is that the respondent makes clear its relationship (or lack thereof) with the trademark owner and, in the view of the Panel, that condition has not been met in the case of any of the disputed domain names. Based on the Panel's review of the evidence submitted by the Complainant, the Panel finds that the Respondent's websites have used the Complainant's trademarks and product images and were designed misleadingly to give the impression of an official or authorised outlet for the Complainant's branded goods. The Panel has seen no material on any of the websites which sufficiently identified the Respondent as an independent operator unconnected with the Complainant.

A further condition of legitimate use is that the respondent uses the domain name in question to sell only the trademark owner's products. In this case of the website at "www.valentino4u.com", however, the Panel accepts the Complainant's evidence that the Respondent has offered products including both the Complainant's and those of one of the Complainant's competitors.

The Panel notes that the disputed domain name <valentinostores.com> has more recently resolved to a "parking page".

The Panel concludes in all the circumstances that Respondent's use of the disputed domain names did not amount to any bona fide offering of goods or services for the purposes of the Policy and that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

Based on the evidence of the Respondent's websites as submitted by the Complainant, the Panel infers that the Respondent registered and has used the disputed domain names in the knowledge of the Complainant's trademark VALENTINO and with the intention of making reference to that trademark by offering goods purporting to be the Complainant's branded goods for sale. Further, the Panel infers that the Respondent has used the disputed domain names with the intention of benefitting from the Complainant's substantial goodwill in its widely-known VALENTINO trademark. In particular, the Respondent has used the disputed domain names for the purposes of websites which reproduce the Complainant's trademarks and product images and are likely to mislead Internet users into believing that they are operated or approved by the Complainant. In circumstances where the Respondent has failed to establish that the Complainant's trademark was used legitimately, the Panel finds that the Respondent has intentionally attempted 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 its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy).

While the Panel notes the Complainant's contentions that the goods offered by the Respondent are likely to be counterfeit, this factor is not material to the Panel's conclusions in circumstances where the Respondent has failed to establish legitimate use of the Complainant's trademark.

The fact that the disputed domain name <valentinostores.com> has more recently resolved to a "parking page" does also not affect the Panel's conclusions, namely, that that the disputed domain names have been registered and are being used in bad faith.

8. 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 names <valentinoshoesale.com>, <valentinoshoes2u.com>, <valentinostores.com> and <valentino4u.com> be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: July 8, 2016

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