WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Salvatore Ferragamo S.p.A. v. Zhang Jinyong
Case No. D2014-1493
1. The Parties
The Complainant is Salvatore Ferragamo S.p.A. of Florence, Italy, represented by Studio Legale SIB, Italy.
The Respondent is Zhang Jinyong of Putian, Fujian, China.
2. The Domain Name and Registrar
The disputed domain names <ferragamojps.com> and <ferragamoofficialjp.com> (the "Disputed Domain Names") are registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 1, 2014. On September 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On September 2 and 17, 2014, 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. On September 17, 2014, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On September 18, 2014, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in both Chinese and English, and the proceedings commenced on September 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 14, 2014.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on October 23, 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 an Italian company that manufactures, markets, and sells shoes, handbags, wallets, luggage, belts, apparel, fragrances, gift items, costume jewelry, and other articles under the FERRAGAMO and SALVATORE FERRAGAMO trademarks (the "FERRAGAMO marks"). The Complainant is the owner of more than 400 trademark registrations and applications worldwide, including in Japan, a listing of which was provided by the Complainant in Annex 8 to the Complaint. The Complainant asserts that it began using the FERRAGAMO marks at least as early as 1927. The Complainant also operates several websites utilizing the FERRAGAMO marks, such as <ferragamo.com>, <ferragamo.jp>, <ferragamo.cn>, and <ferragamo.asia>, wherein the Complainant offers its products bearing the FERRAGAMO marks. The Complainant offered evidence of its ownership of these domain names in Annex 5 to the Complaint.
The Respondent is Zhang Jinyong of Putian, Fujian, China. The Disputed Domain Names <ferragamojps.com> and <ferragamoofficialjp.com> were registered on June 15, 2014 and July 7, 2014 respectively.
5. Parties' Contentions
The Disputed Domain Names are identical and confusingly similar to the Complainant's FERRAGAMO marks. The Respondent has no rights to or legitimate interests in the Disputed Domain Names. The Respondent registered and is using the Disputed Domain Names in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Where a party fails to present evidence in its control, the panel may draw adverse inferences regarding those facts. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques., WIPO Case No. D2000-0004. Insofar as the Respondent has not responded, it is appropriate to accept the facts asserted by the Complainant and to draw adverse inferences of fact against the Respondent. Nonetheless, paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
ii. the respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
A. Preliminary Matters: Language of Proceedings
The Complainant has requested that English be recognized as the language of the proceedings. The Respondent has not commented regarding the language of the proceedings. The Complainant submits that it has not been possible to identify the registration agreement for the Disputed Domain Names and thus is unable to assess the language of the proceedings on that basis. The Complainant further asserts that this is a blatant case of cybersquatting and thus, it would be unfairly disadvantaged by having to provide translations of the Complaint and associated annexes. Taking the foregoing into account, along with the Respondent's default and lack of any communication in the proceedings, the Panel concludes that English should be the language of the proceedings. Translation of the Complaint and other materials would cause unnecessary expense and delay.
B. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the Disputed Domain Names must be identical or confusingly similar to the Complainant's trademark.
The Panel finds that the Complainant has rights in the FERRAGAMO marks and that the FERRAGAMO marks are distinctive and well-known by the public for the manufacturing, marketing, and selling of shoes, handbags, and other articles. See Salvatore Ferragamo S.p.A v. Qing Chun aka Wu Wei, WIPO Case No. D2012-2148 ("the Panel finds that the term FERRAGAMO is immediately recognizable as a trademark"); see also Salvatore Ferragamo S.p.A v. zhou wen, liu li ya, WIPO Case No. D2012-2236. As stated above, the Complainant is the registered owner of numerous FERRAGAMO marks in a number of jurisdictions. The record shows that the Complainant owned rights in the FERRAGAMO marks long before the Disputed Domain Names registrations. The Complainant asserts that it has used the FERRAGAMO marks with respect to shoes since at least 1927 and since 1968 with respect to handbags. The Complainant also asserts that its products can be found in retail stores worldwide, including in Italy, the United States, the United Kingdom of Great Britain and Northern Ireland, France, Germany, Canada, China, Hong Kong, China, Japan, the Republic of Korea, Taiwan Province of China, Indonesia, Malaysia, Singapore, Thailand, Australia, Spain, Switzerland, Saudi Arabia, Indonesia, Belgium, and the Philippines. The Complainant's annex 6 contains numerous advertisements for its products from fashion magazines and the Complainant submits that it spends an average of EUR 40 million per year in advertising and promotion of its products.
The Disputed Domain Names incorporate the FERRAGAMO mark in its entirety. It is well established that a domain name is confusingly similar to a mark "when the domain name includes the trademark, or a confusingly similar approximation." Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249; Research in Motion Limited v. One Star Global LLC., WIPO Case No. D2009-0227 ("In most cases where a domain name incorporates the entirety of a trademark, then the domain name will for the purposes of the Policy be confusingly similar to that mark"); Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. The only difference between the Complainant's FERRAGAMO marks and the Disputed Domain Names is the addition of the terms "official" and "jps." The Complainant submits that "jps" is a geographic expression that refers to Japan. The Panel agrees. "The mere addition of a geographical indicator to a domain name is insufficient to avoid a finding of confusing similarity between the domain name and the respective trademark." American Honda Motor Co., Inc. v. Milan Kovac / Bloomfieldhonda.com c/o Privacy Protect, WIPO Case No. D2012-1680; see also Salvatore Ferragamo S.p.A. v. Wei Huan, WIPO Case No. D2014-1290 ("the disputed domain name consists of the Complainant's trademark FERRAGAMO and the geographical term 'jp' (initials for Japan) in combination with the generic term 'shop': both terms are of a descriptive nature only and the distinctive element of the disputed domain name is obviously the term 'ferragamo'".) Further, the use of the generic term "official" in the Disputed Domain Name <ferragamoofficialjp.com> does not serve to distinguish it from the Complainant's FERRAGAMO marks. Vibram S.p.A. v. Huang Xiaoming, WIPO Case No. D2010-1310 ("[t]he disputed domain name, which attaches the descriptive term 'official' to the Complainant's trademark VIBRAM, is likely to confuse with the authentic official website of VIBRAM."). It is well established the addition of a generic term does not avoid confusion. Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-0446 ("[g]enerally, a user of a mark 'may not avoid likely confusion by appropriating another's entire mark and adding descriptive or nondistinctive matter to it.'" (citing J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23: 50 (4th ed. 1998)). Thus, it is likely that consumers would be confused by the use of the FERRAGAMO marks in the Disputed Domain Names.
In light of the foregoing, the Panel finds that the Disputed Domain Names are confusingly similar to the Complainant's registered mark and that paragraph 4(a)(i) of the Policy is satisfied.
C. Rights or Legitimate Interests
The Panel finds there is no evidence in the record to indicate that the Respondent is associated or affiliated with the Complainant or that the Respondent has any other rights or legitimate interests in the term "Ferragamo". A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110. The Panel finds that the Complainant has successfully presented a prima facie case which the Respondent has not rebutted. The Respondent filed no response. Without a response, there is nothing in the case file that indicates that the Respondent has a right or legitimate interest in the Disputed Domain Names. Further, as discussed below, the Panel also finds that the Respondent is not engaged in a bona fide offering of goods or services in connection with the Disputed Domain Names. There is also no evidence in the record that the Respondent's use of the Disputed Domain Names is a legitimate noncommercial or fair use, or that the Respondent is commonly known by the Disputed Domain Names.
The Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states nonexclusive circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(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; or
(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 the respondent's website or other on-line location, by creating a likelihood of confusion with the respondent's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location.
As discussed above, it is clear that the Complainant's FERRAGAMO marks are distinctive and famous. The record shows that the Complainant owns trademark rights in the FERRAGAMO marks that predate creation of the Disputed Domain Names. The Disputed Domain Names contain the Complainant's mark in its entirety. Given that the Complainant's FERRAGAMO mark is distinctive and famous and has been used for over 80 years, the Panel finds that the Respondent was likely aware of or should have known of the Complainant's rights in the FERRAGAMO marks when registering the Disputed Domain Names. Where a respondent chooses to incorporate a well known mark into a domain name without authorization, "the combination of an identical trademark in a domain name and the ensuing likelihood of initial interest confusion alone ought to be sufficient to demonstrate that the respondent has no legitimate interest in this case." General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi, WIPO Case No. D2007-0645. Further, where the mark is well-known and famous, a trader would not legitimately choose it, "unless seeking to create an impression of an association" with the mark's owner. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Respondent has not offered any argument to show that this inclusion is not non-distinctive or generic, and, in the absence of a credible explanation, the most likely explanation is that is was chosen with the Complainant's mark in mind. Associazione Radio Maria v. Mary Martinez / Domains by Proxy, Inc., WIPO Case No. D2010-2181.
The Complainant submits that the Respondent is using the Disputed Domain Names to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's FERRAGAMO marks as to the source, sponsorship, affiliation or endorsement of its website, in accordance with paragraph 4(b)(iv) of the Policy. The Complainant submits that the Respondent is offering for sale counterfeit items that bear the Complainant's FERRAGAMO marks. Further, the Complainant submitted printouts of the Respondent's webpages that contain the Complainant's advertising images, the use of which was unauthorized by the Complainant. The Panel notes and accepts the Complainant's unrebutted contention that the Respondent offers for sale on its websites at the Disputed Domain Names unauthorized items bearing the Complainant's FERRAGAMO trademark. Thus, the Respondent is taking unfair advantage of the reputation of the Complainant's mark to create confusion regarding the Complainant's affiliation, sponsorship or endorsement of the Respondent's website and the products offered on that website. Previous UDRP panels have made similar findings. See Salvatore Ferragamo S.p.A. v. Wei Huan, WIPO Case No. D2014-1290; see also Salvatore Ferragamo S.p.A. v. Haonan Hong, WIPO Case No. D2013-2040. Based on the foregoing, it is clear that the Respondent is attempting to attract Internet users to its website by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its website.
In light of the foregoing, the Panel finds that the Respondent registered and is using the Disputed Domain Names in bad faith. Thus, the Panel finds that paragraph 4(a)(iii) of the Policy has been 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 Names, <ferragamojps.com> and <ferragamoofficialjp.com> be transferred to the Complainant.
Kimberley Chen Nobles
Date: November 4, 2014