WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Salvatore Ferragamo S.p.A. v. Teromo Lulu
Case No. D2014-1495
1. The Parties
The Complainant is Salvatore Ferragamo S.p.A., Firenze, Italy, represented by Studio Legale SIB, Italy.
The Respondent is Teromo Lulu, Tokyo, China.1
2. The Domain Name and Registrar
The disputed domain name <ferragamotamjp.com> is registered with GoDaddy.com, LLC. (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 name. On September 2, 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.
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 5, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 25, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 26, 2014.
The Center appointed Keiji Kondo as the sole panelist in this matter on October 9, 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.
According to paragraph 11(a) of the Rules the language of the proceedings shall be the language of the registration agreement. In this case, the language of the registration agreement of the disputed domain name is English (Annex 2 of the Complaint). The Complainant submitted the complaint in English.
Therefore, the Panel concludes that, according to the paragraph 11(a) of the Rules, the language of the proceedings is English.
4. Factual Background
The disputed domain name <ferragamotamjp.com> was registered on July 9, 2014.
The Complainant has been using the trademark FERRAGAMO since at least 1927 with respect to shoes and since 1968 with respect to handbags.
The Complainant's products can be found at retail stores located in Italy, United States of America, United Kingdom of Great Britain and Northern Ireland, France, Germany, Canada, China, Japan, Republic of Korea, Taiwan (Province of China), Indonesia, Malaysia, Singapore, Thailand, Australia, Spain, Switzerland, Saudi Arabia, Indonesia, Belgium, the Philippines and other countries.
The Complainant has specifically marketed and sold in China and Japan shoes, handbags, fragrances, apparel and other fine leather goods, through Salvatore Ferragamo Stores, Duty Free shops and In-Store shops in Japan and in China (Annex 5 of the Complaint).
The Complainant owns more than 400 applications and registrations for FERRAGAMO and SALVATORE FERRAGAMO worldwide (Annex10 of the Complaint).
5. Parties' Contentions
(1) Identical or confusingly similar
The Complainant has more than 400 registrations for FERRAGAMO and similar marks in more than 100 countries since the 1950.
In addition, since 1996, the Complainant owns registrations for several domain names comprising the mark FERRAGAMO among which <ferragamo.com>, <ferragamo.jp>, <ferragamo.cn> and <ferragamo.asia> wherein the Complainant promotes its products bearing the trademark FERRAGAMO.
The disputed domain name is obviously similar to the Complainant's FERRAGAMO trademark.
The disputed domain name <ferragamotamjp.com> differentiates from the Complainant's mark for the use of the letters "tamjp", which make a clear reference to Japan.
The suffix mentioned above refers to a location – Japan – where the Complainant has established a number of stores.
Therefore, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
(2) No rights or legitimate interests
The Respondent is not affiliated in any way with the Complainant and, to the best of the Complainant's knowledge, does not own any trademark applications or registrations for FERRAGAMO or any other mark comprising this sign in connection with any goods or services.
In addition, the Complainant has not licensed or otherwise authorized the Respondent to use its FERRAGAMO trademark, or to apply for any domain name incorporating such mark.
The Respondent is not commonly known by the disputed domain name and does not make any bona fide use or trade under the name of the disputed domain name.
Moreover, to the best of the Complainant's knowledge, the goods offered for sale on the Respondent's website hosted on the disputed domain name are counterfeit.
Therefore, the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.
(3) Bad faith registration and used of the disputed domain name
To the best of the Complainant's knowledge, the Respondent offers for sale, in its "www.ferragamotamjpshop.info" website, counterfeit products of clothing bearing the Complainant's marks, with a clear intent for commercial gain.
The Respondent's bad faith is moreover confirmed by the unauthorized use of the Complainant's official advertising images with the aim to pass itself off as the trademark owner, confusing potential customers about the origin of the purchased items.
The Respondent registered the disputed domain name a few months prior to the Complaint with a view to take unfair advantage of the reputation of the Complainant's mark. In fact, the Respondent's registration of <ferragamotamjp.com> obviously confuses potential customers as to the Respondent's affiliation with the Complainant since the Complainant distributes also in the Japan.
Furthermore, the Respondent's disputed domain name disrupts Internet users from locating the Complainant's true website, thereby diluting the value of the Complainant's FERRAGAMO trademark.
The Complainant has satisfied the requirement of paragraph 4(a)(iii), 4(b) of the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has registered FERRAGAMO trademark in many countries before the Respondent's registration of the disputed domain name.
The disputed domain name comprises the Complainant's trademark in its entirety.
The suffix "tamjp" consists of "tam" and "jp", in which "jp" is the official country code for Japan, where the Complainant has established a number of stores. "tam" could be an abbreviation of something like "telephone answering machine" and would not in any event have an impact on avoidance of confusion.
Considering as a whole, the suffix "tamjp" does not reduce the confusingly similarity.
Therefore, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademark.
B. Rights or Legitimate Interests
No license or authorization of any kind has been given by the Complainant to the Respondent, to use the trademark FERRAGAMO.
The Panel has found that products of clothing bearing the Complainant's mark are sold in the website "www.ferragamotamjp.com", that is, the disputed domain name.
The Panel notes the contention of the Complainant that to the best of the Complainant's knowledge, the goods offered for sale on the Respondent's website are counterfeit. The Panel on balance has not reached a solid conclusion that the Complainant's contention is supported by evidence. However, regardless of whether the Respondent's products are counterfeit or not, the Panel has found that the Respondent's use of the disputed domain name cannot be considered as a bona fide offering of goods or services because the Respondent's website does not disclose the relationship between the Complainant and the Respondent.
Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant's trademark was already well-known before the registration of the disputed domain name.
It is unlikely that the Respondent was not aware of the Complainant's FERRAGAMO trademark at the time of the registration of the disputed domain name.
It appears that the Respondent uses the disputed domain name to sell products showing the Complainant's trademark.
The above mentioned circumstances and the Respondent's failure to reply suggests that the Respondent registered and is using the disputed domain name to gain unfair commercial profit as described under paragraph 4(b)(iv). The Panel concludes that the disputed domain name was registered and is being used in bad faith.
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 <ferragamotamjp.com> be transferred to the Complainant.
Date: October 22, 2014
1 Since "Tokyo, China" does not make sense, the Panel notes that the Respondent's address of the record is false.