WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fendi Adele, S.r.l. v. Aya Nader / Aya World Designs
Case No. D2014-2121
1. The Parties
The Complainant is Fendi Adele, S.r.l. of Rome, Italy, represented by Barack Ferrazzano Kirschbaum & Nagelberg, LLP, United States of America.
The Respondent is Aya Nader / Aya World Designs of Kwetat, United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <fendigroup.com> (the "Disputed Domain Name") 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 December 4, 2014. On December 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 5, 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 December 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2014. On December 10, 2014, the Center received an email communication from the Respondent. On December 31, 2014, the Center informed the parties that it would proceed with the panel appointment. On December 31, 2014, the Center received another two email communications from the Respondent.
The Center appointed Nick J. Gardner as the sole panelist in this matter on January 7, 2015. 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 relevant facts are straightforward and can be summarized very briefly as follows:
The Complainant is an Italian company founded in 1925 to produce luxury goods such as handbags, clothing and related accessories. Since its creation it has developed and expanded and now operates in many countries throughout the world. It carries on business by retail sales via 190 retail stores throughout the world, 30 of which are in the United States of America. It also promotes its products via the Internet including at the website "www.fendi.com". The brand name Fendi is independently recognised as famous brand name for luxury goods.
The Complainant has registered the word FENDI as a trade mark in many countries. By way of example United States trade mark No. 1,244,466 was registered on July 5, 1983 for the word FENDI in classes 18 and 25 for inter alia luggage, trunks, purses and clothing.
The Disputed Domain Name was registered on May 31, 2014. Subsequent to its registration it was being used to host a website which contained a single landing page. That page contained photographs of clothes and shoes. Following communication to the Respondent from the Complainant in the form of a cease and desist letter dated July 30, 2014 the content of that website was changed to a page containing a "Domain for Sale" notice with contact details for the Respondent.
5. Parties' Contentions
The Complainant's contentions are set out in considerable detail and cite numerous previous UDRP cases. The Complainant's case can however be summarized as follows:
The Disputed Domain Name is similar to its trade mark FENDI in which it clearly has rights. The only difference is the addition of the generic term "group" which does not distinguish the Disputed Domain Name from the Complainant's trade mark.
The Respondent has no rights or legitimate interests in the term "Fendi". There is no other meaning associated with that term other than in relation to the Complainant. The Complainant has not authorized the Respondent to use the term "Fendi" or "Fendigroup".
The Disputed Domain Name was registered and is being used in bad faith. The Respondent has no legitimate business associated with the name, the name has no meaning other than in relation to the Complainant so no good faith use is possible and the Respondent's offer to sell the domain name to the Complainant is evidence of bad faith.
It is convenient to set out the Respondent's email communication of December 10, 2014 verbatim. It is in English, but is in places difficult to understand, although the gist of the points made is clear. It reads as follows:
I am Aya Nader
1. I told Mrs. Sharon more than one time that I bought this domain by legal way from Godaddy,
Godaddy is legal company.
2. Your company name is Fendi Not Fendi group and I mention that the name is the name of
my group in university.
3. I bought this domain not for any marketing issue note that I didn't but any contact
information or any prices so logically what I will get if I didn't but my contact.
4. I removed every thing after Mrs. Sharon contact me and I offer to her that Fendi can buy it
and I don't want to make a problems to anyone but I can't give it for free..
5. If they want to solve the problem as me …. They can Just buy it by legal.
6. It is unfair to be a violation of my own involuntarily I will never accept it.
Kindly find the attached"
The attachment referred to is a print out confirming the Respondent's original purchase of the Disputed Domain Name. The text of the above email communication was repeated in a further email communication sent by the Respondent on December 31, 2014.
6. Discussion and Findings
The Panel in its discretion will treat the Respondent's email communication of December 10, 2014 as its Response.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) The Disputed Domain Name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trade mark FENDI. Although no details have been provided as to turnover or sales figures, the filed evidence establishes the Complainant has carried on business internationally under the name Fendi for many years and its products have clearly been marketed under that name on an international basis on a substantial scale and are well known. Further, the Complainant has a wide range of registered trade mark rights in the word FENDI.
The Disputed Domain Name is confusingly similar to the FENDI trade mark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy, "when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name" (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). The only difference in the present case is the addition of the generic term "group" which is not sufficient to distinguish the Disputed Domain Name.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's trade mark and, therefore, the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
"Fendi" is in substance the Complainant's name and is a term which has no other meaning save in relation to the Complainant or its products.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in the domain name:
(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the FENDI trade mark. The Complainant has prior rights in the FENDI trade mark which precede the Respondent's registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondents to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondent appears to suggest that because it purchased the Disputed Domain Name lawfully from the Registrar it has obtained rights or legitimate interests. That is not correct. As a general rule any available string of characters that is not already registered and which meets the technical requirements for a domain name can be purchased – that does not automatically confer independent rights in that string. Further in registering a domain name a registrant is required to represent that to its knowledge the registration will not violate the rights of any third party. A registration obtained in breach of that representation does not in itself obtain legitimacy sufficient to defeat prior third party rights.
The only further assertion made by the Respondent seeking to justify its rights or legitimate interests in the Disputed Domain Name is the statement that "Your company name is Fendi Not [sic] Fendi group and I mention that the name is the name of my group in university". The difference between "Fendi" and "Fendi group" is not in the Panel's view material (see above) and without further evidence corroborating the assertion that "Fendi group" was a name associated with the Respondent's time at university the Panel does not accept it. No evidence at all explaining how and why the word "fendi" was used or chosen in relation to this alleged group has been produced, and given the word has no independent meaning the assertion appears to the Panel to be inherently implausible. It is also not corroborated with any evidence at all other than the bare assertion by the Respondent. Further in this context the Panel notes that the use made of the Disputed Domain Name by the Respondent was initially in relation to images of goods typically associated with the Complainant (shoes and clothing) and not in any way relating to the alleged university group. The Panel accordingly discounts this assertion by the Respondent and finds that the Respondent has failed to produce any credible evidence to establish any rights or legitimate interests in the Disputed Domain Name.
Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the FENDI trade mark, and the evidence as to the extent of the reputation the Complainant enjoys in the FENDI trade mark, and the confusingly similar nature of the Disputed Domain Name to the FENDI trade mark, and the lack of any credible explanation from the Respondent as to why it registered the Disputed Domain Name lead the Panel to conclude the registration and use was in bad faith.
In the present case, the Panel concludes that it is extremely unlikely that the Respondent selected the Disputed Domain Name independently and without knowledge of the Complainant or its products. The fact the Respondent used the Disputed Domain Name in relation to products similar to those associated with the Complainant is highly suggestive of the Respondent having registered the Disputed Domain Name because of its association with the Complainant. The Panel finds it difficult to conceive of any use which the Respondent could make of the Disputed Domain Name which would be legitimate. Further the Panel notes the Respondent's case as set out in its email communication does not advance any case the Panel considers credible as to a good faith use of the Disputed Domain Name. The Panel infers that none exists.
Further the Respondent has clearly offered to sell the Disputed Domain Name to the Complainant. The Panel infers from the Respondent's email communication of December 10, 2014 that this offer was most likely for an amount greater than the Respondent's out of pocket costs incurred in registering the Disputed Domain Name. As such under paragraph 4(b)(i) of the Policy there are "circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name" and this amounts to evidence of registration and use in bad faith".
In the present circumstances, the confusingly similar nature of the Disputed Domain Name to the Complainant's mark FENDI, the highly distinctive nature of the mark in question, the Respondent's soliciting of offers to purchase the Disputed Domain Name and the lack of any credible explanation from the Respondent as to why it registered the Disputed Domain Name leads the Panel to conclude the registration and use was in bad faith.
Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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, <fendigroup.com>, be transferred to the Complainant.
Nick J. Gardner
Date: January 15, 2015