WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

René Caovilla S.p.A. v. luis acosta, luis acosta coyote

Case No. D2018-0013

1. The Parties

The Complainant is René Caovilla S.p.A. of Fiesso d’Artico, Italy, represented by Studio Legale Bird & Bird, Italy.

The Respondent is luis acosta, luis acosta coyote of Owatonna, Minnesota, United States of America.

2. The Domain Name and Registrar

The disputed domain name <renecaovilla-shoes.com> is registered with 1API GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2018. On January 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 8, 2018, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 29, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2018.

The Center appointed Cherise Valles as the sole panelist in this matter on February 21, 2018. 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 Complainant is a well-known and prestigious maker of luxury shoes, and has been in business since 1923. The Complainant is the owner of multiple trademarks for the term RENÉ CAOVILLA AND RENE’ CAOVILLA (“the Trademark”), including the following:

- European Union trade mark registration No. 3698057 for RENÉ CAOVILLA, registered on June 20, 2005, in classes 9, 18 and 25;

- International trademark registration No. 834807 for RENÉ CAOVILLA, registered on May 5, 2005, in class 25;

- Italian trademark registration No. 1530818 for, registered on March 4, 2013, in classes 18 and 25;

- Italian trademark registration No. 1208776 for RENE’ CAOVILLA, registered on July 30, 2009, in class 3;

- European Union trade mark registration No. 3128311 for RENE’ CAOVILLA, registered on June 30, 2004, in classes 9, 18 and 25;

- European Union trade mark registration No. 8305963 for RENE’ CAOVILLA, registered on November 11, 2009, in class 3;

- United States of America trademark registration No. 5103531 for RENE’ CAOVILLA, registered on December 20, 2016, in class 3; and

- International trademark registration No. 874523 for RENE’ CAOVILLA, registered on August 16, 2005, in classes 18 and 25.

The Complainant’s shoes are sold through official boutiques in Milan, Rome, Venice, Paris, London, Doha, Beijing, Macau, Dubai, Taipei and São Paulo, and through distributors and dealers in several countries, as well as on its official website at “www.renecaovilla.com”.

The disputed domain name was registered on February 18, 2018 and resolves to a website that displays the Complainant’s official logo and offers for sale shoes purportedly made by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:

The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

- The disputed domain name is identical to the Complainant’s Trademark, in light of the fact that it wholly incorporates the Complainant’s mark.

The Respondent lacks rights or legitimate interests in the disputed domain name.

- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use or to register any domain name that included the Trademark.

The disputed domain name has been registered and is being used in bad faith.

- The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.

The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:

(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;

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

(iii) the domain name was registered and is being used in bad faith.

The Complainant has the burden of proof in establishing each of these elements.

The Respondent has failed to file a Response in this proceeding and is therefore in default and the Panel may draw appropriate inferences from the available evidence submitted by the Complainant.

A. Identical or Confusingly Similar

To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s Trademark.

The Complainant is the sole and exclusive owner of multiple registrations worldwide for the Trademark, as indicated in Section 4 above.

The disputed domain name wholly incorporates the Complainant’s Trademark. Earlier UDRP decisions have held that when a domain name wholly incorporates a complainant’s registered trademark, it is sufficient to establish that the domain name is identical or confusingly similar for the purpose of the Policy.

The addition of the descriptive word “shoes” to the term “renecaovilla” in the disputed domain name does not preclude the confusing similarity between the disputed domain name and the Complainant’s Trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition

(“WIPO Overview 3.0”), Section 1.8.

In the light of the foregoing, the Panel finds that the disputed domain name <renecaovilla-shoes.com> is identical or confusingly similar to the Complainant’s Trademark and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production of evidence shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name: “[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

Previous UDRP panels have established that in order to shift the burden of production of evidence to the Respondent, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no right or legitimate interests in the disputed domain name.

The Complainant has neither authorised, nor given its consent to, the Respondent or anyone else to register and use the disputed domain name <renecaovilla-shoes.com>, and the Respondent is not known by the name “Rene Caovilla”. The Respondent has not registered, or applied for, any trademarks for “Rene Caovilla”. Previous UDRP panels have found that in the absence of any license or permission from the complainant to use a widely-known trademark, generally no actual or contemplated bona fide or legitimate use of the domain name can reasonably be claimed. See, e.g., Groupe Auchan v. Gan Yu, WIPO Case No. D2013-0188.

The disputed domain name resolves to a website that displays the Complainant’s official logo and offers for sale shoes purportedly made by the Complainant, thereby exploiting the Complainant’s Trademark. The disputed domain name resolves to a website that looks like the Complainant’s website. This demonstrates that the disputed domain name was registered by the Respondent with the Complainant’s Trademark and business in mind, and, in the circumstances, is contrary to a bona fide offering of goods. The Respondent’s use of the disputed domain name cannot amount to a legitimate noncommercial or fair use, as such use generates a likelihood of confusion with the Complainant’s trademark and it is aimed at disrupting, for commercial gain, the Complainant’s business.

In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) 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, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

As indicated in Section 4 above, the Complainant’s Trademark was registered long before the disputed domain name. The Respondent must have been well aware of the Complainant’s rights in and to the Complainant’s Trademark and has consciously and deliberately incorporated the Complainant’s Trademark in the disputed domain name to attract consumers for commercial gain, taking unfair advantage of the reputation and distinctiveness of the Complainant’s Trademark.

The disputed domain name resolves to a website that looks like the Complainant’s official website. The website prominently displays (without any authorization or approval) the Complainant’s logo and registered Trademark, and offers for sale shoes purportedly made by the Complainant at cheap prices, significantly lower than the Complainant’s usual prices. This increases the likelihood of confusion between the disputed domain name and the Complainant’s Trademark. The website appears to be targeted at distracting Internet users away from the Complainant’s official website and business, so as to attain commercial gain. Previous UDRP panels have found that in the case of a domain name resolving to a website misleading Internet users as to the source, affiliation, sponsorship or endorsement of the website and the products offered for sale thereon, and where the respondent must clearly have known that its domain name was confusingly similar to a complainant’s existing trademark, such a domain name must have been intentionally registered and used in order to attract, for commercial gain, Internet users to its website in accordance with paragraph 4(b)(iv) of the Policy. See Swarovski Aktiengesellschaft v. Susan Kelly, WIPO Case No. D2013-0709.

Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 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 <renecaovilla-shoes.com> be transferred to the Complainant.

Cherise Valles
Sole Panelist
Date: March 5, 2018