WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Coccinelle S.p.A. v. Seth Wong
Case No. D2017-1768
1. The Parties
The Complainant is Coccinelle S.p.A. of Sala Baganza, Italy, represented by Fieldfisher LLP, Italy.
The Respondent is Seth Wong of Saint Petersburg, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <coccinellehandbags.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2017. On September 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 14, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2017.
The Center appointed Karen Fong as the sole panelist in this matter on October 17, 2017. 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 fashion company established in Parma since 1978. It produces women’s handbags and accessories under the brand COCCINELLE. The COCCINELLE products are sold in standalone shops as well as renowned international department stores. The products are also sold online through their website “www.coccinelle.com”.
The Complainant has trade mark registrations for COCCINELLE in more than 70 countries globally including the USA where the Respondent is based (the “Trade Mark”). The earliest registration in Italy dates back to 1982. The Complainant also owns a portfolio of domain names which consists of or includes the Trade Mark as the second level domain.
The Complainant invests a considerable amount annually on advertising and promotional activity globally in connection with its brand. As a result of this and its extensive sales, it has become a well-known brand globally.
The Domain Name was registered on May 15, 2017. The website that was connected to the Domain Name (the “Website”) offered for sale and purported to sell COCCINELLE handbags and purses at heavily discounted (65%) prices. There were no contact details on the Website. The social media icons on the Website did not work. In the course of writing the decision, the Website was disabled and became inactive.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainant requests the transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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 was registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has registered and unregistered rights to the Trade Mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to establish if the domain name is identical or confusingly similar to Complainant’s trademark. The trade mark would generally have to be recognizable within the domain name. In this case the Domain Name integrates the Complainant’s distinctive trademark COCCINELLE in its entirety plus the descriptive term “handbags”. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”). In any event, the addition of a descriptive term “handbags” does not negate the confusing similarity encouraged by the Respondent’s complete integration of the Trade Mark in the Domain Name. E.g. N.V. Organon Corp. V. Vitalline Trading Ltd., Dragic Veselin / PrivacyProtect.org, WIPO Case No. D2011-0260; Oakley, Inc. V. wu bingjie aka bingjie wu/ Whois Privacy Protection Service, WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic, WIPO Case No. D2010-0207.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
C. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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 it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trademark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant alleges that the Respondent is not commonly known by the Domain Name. The Complainant has no commercial link with the Respondent. It has not granted the Respondent any authorization, licence or any right whatsoever to use the Trade Mark as part of the Domain Name. Nor is it an authorised dealer, licensee or distributor of the Complainant. It appears to be a reseller of products bearing the Trade Mark at a heavily discounted price.
“Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test”, the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.
The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.”
In this case, there was nothing on the Website explaining the relationship between the Complainant and the Respondent. Indeed there was no information on the Website about the Respondent. Owing to the fact that the Website was offering for sale what looks like the Complainant’s handbags and has images that look like they could be from the Complainant’s website, it does appear to the Panel that the content of the Website was intended to mislead Internet users into thinking that there is a connection between the Complainant and the Respondent. The Panel finds the Oki Data principles are not satisfied in this case.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the Domain Name has been both registered and is being used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant’s trade mark when it registered the Domain Name. It is implausible that it was unaware of the Complainant when it registered the Domain Name. The primary significance of the meaning of the Trade Mark is its reference to the Complainant’s trade mark and company name. In the WIPO Overview 3.0, section 3.2.2 states as follows:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
Given that the Respondent is selling products bearing the Trade Mark, it is clearly inconceivable that the Domain Name was selected by the Respondent without the Complainant in mind. As outlined under the second element above, there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the Domain Name, which is also a significant factor to consider (as stated in section 3.1.1 of WIPO Overview 3.0). The Domain Name falls into the category stated above and the Panel finds that registration is in bad faith
The Panel also concludes that the actual use of the Domain Names was also in bad faith. The use of the Complainant’s trade mark as the dominant part of the Domain Name is intended to capture Internet traffic from Internet users who are looking for the Complainant’s product. The Domain Name and the content of the Website are calculated to confuse Internet users into believing that the Respondent is somehow connected to the Complainant when this is not the case. It is also likely that the goods sold on the Website are counterfeit given that they are heavily discounted. The social media icons not working on the Website is another indicator of a typical cybersquatter website. There are no contact details on the Website which could suggest that personal data and credit card details entered by customers could potentially be collected and used for nefarious purposes. The lack of response by the Respondent is another indicator of typical cybersquatter behaviour. There is a clear intention on the part of the Respondent to attract Internet users for commercial gain by confusing and misleading them into believing that the Website and the products sold on them were authorised or endorsed by the Complainant.
The above is clearly bad faith under paragraph 4(b)(iv) of the Policy. The Panel notes that the fact that, at the time of the decision, the Domain Name does not resolve to an active website, does not prevent a finding of the Respondent’s bad faith in the present circumstances.
The Panel concludes that the Respondent’s registration and use of the Domain Name are 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 Domain Name, <coccinellehandbags.com> be transferred to the Complainant.
Date: October 20, 2017