WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Salvatore Ferragamo S.p.A. v. Gueijuan Xu

Case No. D2018-0572

1. The Parties

The Complainant is Salvatore Ferragamo S.p.A. of Florence, Italy, represented by Studio Legale SIB, Italy.

The Respondent is Gueijuan Xu of Shaoguanshi, Guangdong, China.

2. The Domain Names and Registrar

The disputed domain names <ferragamoclearancessales.com>, <jpferragamosales.com> and <storesferragamooutlet.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2018. On March 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 19, 2018, 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 March 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 9, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 10, 2018.

The Center appointed Adam Taylor as the sole panelist in this matter on April 12, 2018. 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 well-known fashion company which has traded under the name “Ferragamo” since the 1920s. The Complainant’s products, including shoes, handbags and other fashion accessories, are sold worldwide.

The Complainant owns many trade marks for FERRAGAMO including International Registration no. 397649, registered March 23, 1973, in classes 3, 14, 18 and 25, designating China amongst other countries.

The Complainant’s main website is at “www.ferragamo.com”.

The disputed domain names were registered on the following dates:

<ferragamoclearancessales.com>: July 4, 2017;

<jpferragamosales.com>: July 18, 2017;

<storesferragamooutlet.com>: October 11, 2017.

The disputed domain names have all been used for websites which are branded with the Complainant’s logo and which include images of the Complainant’s products copied from the Complainant’s own website.

The Respondent has been found to have registered and used domain names in bad faith in at least four previous UDRP cases.

5. Parties’ Contentions

A. Complainant

The Complainant has received substantial publicity over the years due to the quality and uniqueness of its products. The Complainant has advertised its products worldwide including in famous fashion magazines.

The Complainant’s trade mark is unique.

The disputed domain names are confusingly similar to the Complainant’s trade mark as they comprise the Complainant’s trade mark together with additional generic terms as prefixes / suffixes, which exacerbate confusion as they describe retail activities. The prefix “jp” is a generic reference to Japan.

The Respondent lacks rights or legitimate interests in the disputed domain names.

The Respondent is not affiliated with the Complainant and the Complainant has not authorised it to use the Complainant’s marks.

The Respondent is not commonly known by the any of the disputed domain names and is not making bona fide use of them. The Respondent is intentionally violating the Complainant’s rights.

The disputed domain names were registered and are being used in bad faith.

The images on the Respondent’s site have been copied from the Complainant’s website and the goods being sold are likely to be counterfeit.

The Respondent’s bad faith is confirmed by the unauthorised use of the Complainant’s official logo.

The disputed domain names confuse potential customers of the Complainant as to the Respondent’s affiliation with the Complainant and discourages from searching for the Complainant’s real website.

The Respondent has been subject to at least four previous adverse UDRP rulings.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has rights in the mark FERRAGAMO by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive use of that name.

Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive, geographical or otherwise, would not prevent a finding of confusing similarity under the first element.

Here, the Complainant’s distinctive trade mark is readily recognisable within the disputed domain names and, accordingly, the addition of a variety of retail-related descriptive terms is insufficient to avert a finding of confusing similarity. The Panel agrees with the Complainant that the term “jp” is a common abbreviation for the geographical term “Japan” and that it should be similarly disregarded for the purposes of this comparison exercise.

For the above reasons, the Panel concludes that the disputed domain names are confusingly similar to the Complainant’s trade mark.

The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

As explained in section 2.1 of WIPO Overview 3.0, the consensus view of UDRP panels is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.

Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.

As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain names to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s products and services. Such use of the disputed domain names could not be said to be bona fide.

In the oft-quoted case of Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847, the UDRP panel stated that:

“… use which intentionally trades on the fame of another can not constitute a “bona fide” offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.”

Furthermore, there is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.

The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Not only do the disputed domain names include the Complainant’s distinctive trade mark and thereby imply a connection with the Complainant, they have been used for websites which set out to impersonate the Complainant, including use of the Complainant’s logo and official product photographs, in order to sell what are represented as the Complainant’s products.

Accordingly, the Panel readily concludes that the Respondent has registered and used the disputed domain names in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its websites for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.

The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.

7. Decision

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, <ferragamoclearancessales.com>, <jpferragamosales.com> and <storesferragamooutlet.com> be transferred to the Complainant.

Adam Taylor
Sole Panelist
Date: April 25, 2018