WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Calzaturificio Lori S.r.l. v. Eva Zhang
Case No. D2013-1592
1. The Parties
Complainant is Calzaturificio Lori S.r.l. of Porto Sant’Elpidio, Italy, represented by Michael T. Richmond, United States of America.
Respondent is Eva Zhang, of Hu Bei, China.
2. The Domain Names and Registrar
The disputed domain names <loribluscarpe.com>, <loribluscarpe.net> and <loribluscarpe.org> (the “Disputed Domain Names”) are registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2013. On September 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 10, 2013, 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 September 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2013. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2013.
The Center appointed Nicholas Weston as the sole panelist in this matter on October 16, 2013. 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.
The language of this administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
Complainant operates a luxury shoe business which operates in more than five countries with gross global sales in 2012 in excess of EUR 45 million. The Complainant holds registrations for the trademark LORIBLU in numerous countries including the following examples:
Italy, Austria, Benelux,
Switzerland, Germany, Spain, France, Liechtenstein, Morocco, Poland, Belarus,Croatia, Portugal, Russia, and
Nov 6, 1989
Italy, Azerbaijan, Egypt,
Bahrain, Iran, China,
Moldova, Croatia, Kyrgystan,
Russia, European Union,
Ukraine, United States,
Armenia, Bosnia and
Republic of Korea, San
Marino, Norway, Mongolia,
Montenegro, Morocco, and
Aug 2, 2010
3, 18, 25 and 35
Italy, Russia, China,
Singapore, and the United States.
Sep 8, 2011
20, 21 AND 33
Complainant uses the trademark to designate shoes, bags and other luxury goods which it sells through proprietary and licensed retail channels and from its website. Its Italian registration No. 545705 has been in effect since 1989 but the mark has been used there since 1981.
Complainant owns the domain name <loriblu.com> and a number of other domain names which incorporate the trademark LORIBLU.
Respondent registered the Disputed Domain Names <loribluscarpe.com>, <loribluscarpe.net> and <loribluscarpe.org> on February 11, 2013.
In this case, when the Disputed Domain Names are typed in, each redirects traffic to <loribluscarpe.net> which page contains information offering for sale shoes.
5. Parties’ Contentions
Complainant cites its trademark registrations of the trademark LORIBLU in various countries as prima facie evidence of ownership.
Complainant submits that the trademark LORIBLU is well-known and that its rights in that trademark predate Respondent’s registration of the Disputed Domain Names. It submits that the Disputed Domain Names are confusingly similar to its trademark, because each Disputed Domain Name incorporates in its entirety the LORIBLU trademark (citing eBay, Inc. v. Progressive Life Awareness Network., WIPO Case No. D2001 0068), and that the similarity is not removed by the addition of the descriptive term “scarpe” which is Italian for “shoes”.
Complainant contends that Respondent sells counterfeit goods on its websites but that Respondent is not an authorized re-seller, has no license from Complainant and does not sell Complainant’s trademarked goods under the infringing websites. As a consequence, Complainant contends, Respondent fails to demonstrate that it has rights or legitimate interests in the Disputed Domain Names.
Finally, Complainant alleges that the registration and use of the Disputed Domain Names was, and currently is, in bad faith, contrary to the Policy, paragraphs 4(a)(iii) and 4(b) and the Rules, paragraph 3(b)(ix)(3), as “Respondent’s scheme to sell counterfeit products through the Disputed Domain Names
indicates bad faith registration and use of the LORIBLU Marks.”
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(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.
A. Identical or Confusingly Similar
The propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358). The Panel finds that Complainant has rights in the mark LORIBLU in Italy pursuant to Italian Registration No. 545705 registered on November 6, 1989.
Turning to whether the Disputed Domain Names are identical or confusingly similar to the LORIBLU trademark, the Panel observes that each Disputed Domain Name comprises (a) an exact reproduction of the Complainant’s trademark LORIBLU followed by (b) the word “scarpe” and (c) the top level domain suffix “.com” or alternatively “.net” or alternatively “.org” all in one continuous domain name respectively.
It is well-established that the top-level designation used as part of a domain name may be disregarded (see Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345). The relevant comparison to be made is with the second-level portion of the Disputed Domain Names: “LORIBLUscarpe”.
It is also well-established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of a word such as, in this case, “scarpe” (Italian for “shoes”) (see Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033).
In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”. The Disputed Domain Names are therefore confusingly similar to the LORIBLU trademark.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or a legitimate interest in the disputed domain name:
(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Policy places the burden on the complainant to establish the absence of respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1).
Complainant contends that Respondent has no rights or legitimate interests in respect of each Disputed Domain Name because each is misleadingly directing Internet users to a page containing fake shoes in connection with the Complainant’s trademarks and thereby attempting illegitimately to trade “because it falsely suggests that it is the official website of Complainant and that it is authorized to sell LORIBLU branded goods (citing: Dr. Ing. h. c. F. Porsche AG v. Del Fabbro Laurent, WIPO D2004-0481.)” The Complainant also has not licensed, permitted or authorized Respondent to use Complainant’s trademark. Use that intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services (see Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com”, WIPO Case No. D2000-0847). Complainant provided evidence that typing in the Disputed Domain Names divert traffic to a website for counterfeit shoes and ancillary goods.
This Panel finds that Respondent is making a non legitimate commercial use of the Disputed Domain Names. By misleadingly diverting consumers, it can be inferred that Respondent is opportunistically using Complainant’s marks in order to attract Internet users to its website and has been using the infringing domain names to sell putatively counterfeit shoes and related goods.
The Panel finds for Complainant on the second element of the Policy.
C. Registered and Used in Bad Faith
The third element of the Policy that the complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
“b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, (relevantly):
ii. you have 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 you have engaged in a pattern of such conduct; or
iii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
The evidence that the Respondent registered and has used the Disputed Domain Names in bad faith is overwhelming.
This Panel finds that the trademark LORIBLU is well-known for shoes. Complainant has provided an abundance of evidence to demonstrate widespread advertising in international publications, and recognition. Indeed, given the content of Respondent’s website makes explicit reference to “the market of replica brand clothing” it would be inconceivable that Respondent might have registered the mark without knowing of it (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another (see Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230).
Further, the fact that Respondent registered the TLD ".net", ".com" and “.org” domain names is also evidence of its desire to divert as many potential Internet users as possible (see Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869).
In addition, a gap of ten years between registration of Complainant’s trademark and Respondent’s registration of the Disputed Domain Names (containing the trademark) can in certain circumstances be an indicator of bad faith (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, Complainant held direct Italian registration for the trademark LORIBLU Registration No. 1545705 from 1989 predating its rights from Respondent’s registration by over 22 years.
Exploitation of the reputation of a trademark to obtain clients from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; and Hoffmann-La Roche Inc. v Samuel Teodorek, WIPO Case No. D2007-1814).
This Panel finds that Respondent must have been aware of the relevant trademark. This Panel finds that Respondent has taken the well-known trademark LORIBLU and incorporated it into each of the Disputed Domain Names without Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users for commercial gain, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <loribluscarpe.com>, <loribluscarpe.net> and <loribluscarpe.org> be transferred to Complainant.
Date: October 30, 2013