WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Salvatore Ferragamo Italia S.P.A. v. Ashot Rostomian
Case No. D2000-1187
This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, (the "Rules") and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), Paragraph 3(b).
The Administrative Panel consisting of three members was appointed on October 21, 2000, by WIPO.
2. The Parties
The Complainant in this administrative proceeding is Salvatore Ferragamo Italia, S.P.A., an Italian corporation having a place of business in Florence, Italy.
The Respondent in this Administrative Proceeding is Ashot Rostomian, whose address is listed as P.O. Box 873, Glendale, California 91209-0873, United States of America.
3. The Domain Names and Registrar
"salvatoreferragamo.org" and "salvatoreferragamo.net"
Network Solutions, Inc ("NSI")
505 Huntmar Park Drive
Herndon, VA., 20170
United States of America
4. Jurisdiction and Related Matters
By registering the subject domain names with the Registrar, the Respondent agreed to the resolution of disputes pursuant to the Policy and Rules.
5. Procedural History
Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on September 7, 2000, by email and by September 12, 2000, in hard copy. An Acknowledgment of Receipt dated September 12, 2000, was sent by e-mail by the WIPO Center to the Complainant. The WIPO Center dispatched to the Registrar a Request for a Registrar Verification by email on September 13, 2000. On September 15, 2000, having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the Center formally commenced this proceeding and notified the Respondent that its Response would be due by October 4, 2000. The Respondent did not file a response by the due date.
An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.
Neither party requested an opportunity to make further submissions and the Administrative Panel is content to proceed on the basis of the existing record.
6. Factual Background
The Administrative Panel sets out the factual background as stated in the Complaint, which has not been contested by the Respondent.
The Complainant is in the business of producing, marketing and selling, among other products, fine women's shoes and handbags and has been in this business since at least as early as 1927, with respect to shoes and 1968, with respect to handbags. It also produces, markets and sells a wide variety of other types of products, including wallets, luggage, belts, apparel, gift items and costume jewelry.
The Complainant has used the names and trademarks SALVATORE FERRAGAMO and FERRAGAMO (the "SALVATORE FERRAGAMO Mark and Name") since at least as early as 1927. The Complainant's products bearing the SALVATORE FERRAGAMO mark and name can be found at retail stores around the world. The products are marketed through both its own showrooms and high-end department stores.
The Complainant has extensively marketed and promoted its products bearing the SALVATORE FERRAGAMO Mark and Name through well-known trade and consumer publications, including GQ Magazine, Vanity Fair, Vogue and The New York Times.
It has received substantial publicity by virtue of the quality and uniqueness of its products, such as a retrospective exhibition at the Los Angeles County Museum of Art and a featured spot at a Solomon R. Guggenheim Museum exhibition in New York City.
The Complainant currently spends in excess of $9,000,000 on promotional efforts in the United States alone. United States sales of Complainant's products bearing the SALVATORE FERRAGAMO Mark and Name exceeded $270,000,000 in 1999.
In addition, since 1997, the Complainant has owned the domain name registration for salvatoreferragamo.it, an Italian web site whereon it promotes its products bearing the SALVATORE FERRAGAMO Mark and Name, as well as its other products. Since 1996, the Complainant also has owned, in association with an affiliated company Moda Imports, Inc., now known as Ferragamo USA Inc., the domain name registration for ferragamo"ferragamo.com", whereon the Complainant also promotes its products bearing the SALVATORE FERRAGAMO mark and name, as well as its other products.
The Complainant is the owner of several United States trademark or service mark registrations for the marks SALVATORE FERRAGAMO and FERRAGAMO, covering various products, including, but not limited to, shoes, apparel, bags, and costume jewelry. In addition, the Complainant owns more than 400 applications and registrations for the marks SALVATORE FERRAGAMO and FERRAGAMO in other countries, including Armenia.
The SALVATORE FERRAGAMO mark and name are recognized and relied upon by the trade and purchasing public as a symbol of quality shoes, handbags and other products produced and marketed exclusively by the Complainant. The goodwill associated with such mark and name is among the most valuable and important assets of the Complainant.
In or about February 2000, the Complainant learned that Ashot Rostomian had registered with NSI the Internet domain names "salvatoreferragamo.org" and "salvatoreferragamo.net". On March 1, 2000, counsel for the Complainant wrote to the Respondent's asserting the Complainantís rights and requesting the Respondent to assign the subject domain names to the Complainant. Having received no response, counsel wrote again on March 17, 2000, and that day spoke by telephone with Mr. Joe Ricci, who represented himself as the developer of the site. He asserted that his 8 year-old grandson, allegedly named Salvatore Ferragamo, is a famous singer in Armenia and that the domain names are to be used to promote the boyís career. Mr. Ricci promised to provide the Complainant with a compact disc of songs.
On March 27, 2000, Mr. Ricci advised a para-legal in counselís office that a birth certificate of and promotional materials for the grandson together with the compact disc would be sent. It was not received by the Complainant. On April 12, 2000, Mr. Ricci advised counsel that the material would never be sent.
In April 2000, the Respondent erected a "teaser" web page at the web sites corresponding to the "salvatoreferragamo.org" and "salvatoreferragamo.net" domain names. As of the date of the complaint in this proceeding, the "teaser" web page no longer appeared at these sites.
On April 17, 2000, the Complainant again wrote to the Respondent asserting the Complainantís rights and demanding transfer of the subject domain names. No response was received.
Except for the temporary erection of the "teaser" web page, the Respondent has not established an operating web site. The Respondent has continued to own the subject domain name registrations.
7. Partiesí Contentions
The Complainant asserts that it has the legal right to the SALVATORE FERRAGAMO Mark and Name which is violated by the subject domain names because they essentially are identical to the Complainantís mark and name.
It contends that the Respondent has exhibited no legitimate right or interest in the subject domain names because its explanation for registration is not plausible and because no effort has been made to make a proper use of them.
The Complainant says that the Respondent registered the subject domain names in bad faith for several reasons: the subject domain name confuse potential customers as to the Respondent's affiliation with the Complainant; the subject domain names discourage Internet users from locating the Complainant's true web sites, thereby diluting the value of the Complainant's SALVATORE FERRAGAMO mark and name; the Respondent's registration of "salvatoreferragamo.org" and "salvatoreferragamo.net" blocks the Complainant's use of them as domain names; the timing of the Respondent's creation of the "teaser" web page only after notice of the Complainant's rights and a possible legal action evidences bad faith.
As outlined in the factual background the Respondent has stated that the names were registered only to support the singing career of a young boy in Armenia.
8. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
a) the domain name is identical or confusingly similar to a service mark to which the Complainant has rights;
b) the Respondent has no legitimate interest in respect of the domain name;
c) the domain name has been registered or is being used in bad faith.
The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.
A. Identical or Confusing
It is clear on the evidence that the Complainant has legal rights to the name and mark SALVATORE FERRAGAMO. The subject domain names, "salvatoreferragamo.org" and "salvatoreferragamo.net", are virtually indistinguishable.
The Administrative Panel is satisfied that the Complainant has rights, which are violated by the Respondentís registration of the subject domain names.
B. Respondentís Legitimate Interest
The Respondent did not participate in this proceeding, but the Complainant properly made available to the Administrative Panel material that articulated the Respondentís apparent position.
In communications with the Claimant, the Respondent stated that his registration of the subject domain names was for the purpose of promoting the singing career of a young boy named Salvatore Ferragamo. Initially, he said that he would supply material to support this contention, but failed to and subsequently refused to do so. He also established a "teaser" web page at around the same time, but little if any use appears to have been made of it.
Merely asserting an interest does not establish its existence, but an Administrative Panel is obliged to consider the positions of the parties based on the full record before it. Tested in that context, the Respondentís assertion must be viewed as suspect. He was given an opportunity to show the legitimacy of his interest and failed to do so. No serious commercial use has been made of the subject domain names. As noted, they essentially are identical to the Complainantís well-known mark and name.
The Administrative Panel is satisfied that the Complainant has shown that the Respondent does not have a legitimate interest in the subject domain names.
C. Bad Faith
Mere registration without a legitimate interest does not necessarily establish bad faith. An Administrative Panel must examine the overall conduct of the parties.
In this case, the Respondent made no overt attempt to extract anything from the Complainant, but the evidence shows that the registration of the subject domain names, being essentially identical to the Complainantís name and mark, inevitably will affect adversely the Complainant. Absent a credible explanation for the incursion into the Complainantís rights, it is appropriate for the Administrative Panel to draw the inference that the registration was made in bad faith. It is not necessary for the Complainant to wait until the Respondent reveals its true intention for the registration or takes some overt act that causes harm to the Complainant.
The timing of the Respondentís development of the "teaser" web page also supports a bad faith finding. It shows that the Respondent knew full well that it was trespassing on the Complainantís rights and that a way to justify that incursion was to ostensibly embark on a commercial use of the subject domain names for purposes disassociated with the Complainantís interests. It took the step, but made no serious use of it and continues to use the subject domain names.
The Administrative Panel is satisfied that the Respondent registered and is using the subject domain names in bad faith.
Based on the evidence and the findings stated herein, the Administrative Panel decides that the Complainant has established its claim.
The Complainant asks that the domain names "salvatoreferragamo.org" and "salvatoreferragamo.net" be transferred to it.
The Administrative Panel so orders.
Edward C. Chiasson, Q.C.
James Wilson Dabney, Esq. Thomas H. Webster, Esq
Dated: October 25, 2000.