WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Salvatore Ferragamo S.p.A. v. Haonan Hong
Case No. D2013-2040
1. The Parties
The Complainant is Salvatore Ferragamo S.p.A. of Florence, Italy, represented by Studio Legale SIB, Italy.
The Respondent is Haonan Hong of Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <ferragamo-yhjp.com> is registered with Domain.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2013. On November 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 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 December 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 25, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2013.
The Center appointed Douglas Clark as the sole panelist in this matter on January 7, 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
The Complainant is a joint stock company with principal place of business in Florence, Italy that is active in the business of manufacturing, marketing and selling shoes, handbags, and other articles.
The Complainant is the registered owner of at least the following trademarks:
-SALVATORE FERRAGAMO: Japanese national trademark registration No. 1542300 covering goods in class 6, 14, 18, 25 and 26, registered on September 30, 1982 and duly renewed;
-FERRAGAMO: Hong Kong trademark registration Nos. 199905135AA (classes 9 and 18), registered on April 2, 1998 and 19903123 (Class 25) registered on July 27, 1989;
-FERRAGAMO: Community trademark registration No. 000103259 covering goods in class 3, 6, 9, 14, 16, 18, 24, 25, 26, 28, 33, 35, 42 dating back to April 20, 1998; and
-FERRAGAMO (figurative): Italian national registration No. 1232276 covering goods in class 25 and dating back to September 25, 1937.
The Complainant is also the owner of a number of domain names including: <ferragamo.com>, <ferragamo.net> and <ferragamo.jp>.
The disputed domain name <ferragamo-yhjp.com> was registered on July 25, 2013. The website at the disputed domain name is in Japanese and purports to sell Ferragamo products at substantial discounts. The address for the registrant of the disputed domain name is given as being in Hong Kong, China.
The Complainant requests that the disputed domain name be transferred to the Complainant.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s FERRAGAMO trademark, because it differs to the Complainant’s trademark only by the suffix “yhjp”. The Complainant contends that the letters “jp” clearly indicates Japan.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, because (1) the Respondent is not affiliated in any way with the Complainant nor has the Complainant licensed or otherwise authorized the Respondent to use its FERRAGAMO trademark or to apply for any domain names incorporating such mark, (2) the goods offered for online sale on the Respondent’s website at “www.ferragamo-yhjp.com” are counterfeit products to the best of the Complainant’s knowledge and finally (3) by using the Complainant’s trademark SALVATORE FERRAGAMO on the Respondent’s website, the latter falsely suggests that it was the trademark owner and that its website was the official trademark owner’s website.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith since; (1) the Respondent offers for online sale on its website at “www.ferragamo-yhjp.com” counterfeit items of clothing bearing the Complainant’s FERRAGAMO trademark with a clear intent for commercial gain and trying to pass itself off as the trademark owner; (2) the Respondent’s making use of the disputed domain names discourages Internet users from locating the Complainant’s true website, thereby diluting the value of the Complainant’s FERRAGAMO trademark; and (3) the Respondent has registered a number of other domain names incorporating famous brands including <mizunosaleyhjp.com>, <moncler-online-shop.com>, <myburberrylondon.com> and <mychaneljapan.com>.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name <ferragamo-yhjp.com> is made up of the registered trademark FERRAGAMO plus the letters “yhjp”. In the circumstances of the case, where the website which the disputed domain name resolves to is in Japanese “jp” must be taken as a reference to Japan.
According to previous UDRP decisions, the “addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP” (see paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
The Panel therefore finds the disputed domain name <ferragamo-yhjp.com> as being confusingly similar to the registered trademark FERRAGAMO.
The Panel finds that the first part of paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not responded to the Complaint to assert any rights or legitimate interests it might have in the disputed domain name.
Further the Panel finds on the available record that none of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can demonstrate its rights or legitimate interests, are present in this case.
The Panel finds the second part of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
For the same reasons as those above, the Panel has no hesitation in finding that the disputed domain name <ferragamo-yhjp.com> was registered in bad faith and is being used in bad faith.
The Panel notes and accepts the Complainant’s unrebutted contention that the Respondent offers for sale on its website at “www.ferragamo-yhjp.com” unauthorised items bearing the Complainant’s FERRAGAMO trademark at substantially low prices, thereby taking unfair advantage of the reputation of the Complainant’s mark.
This case clearly falls within paragraph 4(b)(iv) of the Policy, which provides that a registrant has registered and is using a domain name in bad faith where:
“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 Panel finds that the third part of paragraph 4(a) of the Policy is therefore satisfied.
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 <ferragamo-yhjp.com> be transferred to the Complainant.
Date: January 22, 2014