WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Calzedonia S.p.A. v. Domain Admin, Whois protection / Liu Shao Jing, Zhi Lei Ke Ji You Xiang Gong Shi
Case No. D2018-0781
1. The Parties
The Complainant is Calzedonia S.p.A. of Malcesine, Italy, represented by Novagraaf Nederland B.V., Netherlands.
The Respondent is Domain Admin, Whois protection of Prague, Czech Republic / Liu Shao Jing, Zhi Lei Ke Ji You Xiang Gong Shi of Xiamen, China.
2. The Domain Name and Registrar
The disputed domain name <itcalzedonia.com> is registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2018. On April 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 13, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Complainant filed an amended Complaint.
The Center verified that the Complaint together with the amended 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 April 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 7, 2018.
The Center appointed Evan D. Brown as the sole panelist in this matter on May 18, 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 markets its underwear and nightwear in several countries worldwide under the CALZEDONIA trademark, for which it has obtained a number of registrations, including United States of America Trademark Reg. No. 4615602, registered on October 7, 2014. The Complainant markets its goods around the world, with more than 1,200 shops in 31 countries. It markets and promotes its goods through various websites, principally the one found at “www.it.calzedonia.com”. Accordingly, the CALZEDONIA trademark is well known around the world.
The Respondent registered the disputed domain name on January 9, 2018. It has used the disputed domain name to develop a website selling what appear to be counterfeit goods bearing the Complainant’s marks.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
All three of these elements have been met in this case.
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the mark CALZEDONIA. The mark is subject to many trademark registrations around the world that predate registration of the disputed domain name, and the mark has been subject to long and widespread use. The disputed domain name is confusingly similar to this mark. It contains the word comprising the mark in its entirety, prefixed by the letters “it”. This additional material (along with the generic Top-Level Domain “.com”) does not meaningfully distinguish the disputed domain name from the Complainant’s mark for purposes of the Policy. Accordingly, the Panel finds in favor of the Complainant on this first element of the Policy.
B. Rights or Legitimate Interests
The Complainant will be successful under this element of the Policy if it makes a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name, and if that prima facie showing remains unrebutted by the Respondent. The Complainant asserts, among other things, that (1) there is no commercial link between the Complainant and the Respondent, (2) the Complainant did not give its consent for the Respondent to use the CALZEDONA mark in the disputed domain name, and (3) the Respondent is using the disputed domain name to run a website selling counterfeit goods. These assertions establish the Complainant’s prima facie case. The Respondent has not answered the Complainant’s assertions, and, seeing no basis in the record to overcome the Complainant’s prima facie showing, the Panel finds that the Complainant has satisfied this second Policy element.
C. Registered and Used in Bad Faith
The Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith use and registration. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name [to] intentionally [attempt] to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or a product or service on [the respondent’s] web site or location.”
The Respondent registered and is using the disputed domain name in bad faith. The Panel accepts the Complainant’s assertion that the disputed domain name creates a likelihood of confusion with the Complainant’s domain name, as the Complainant’s website utilizes the subdomain <it>, i.e., <it.calzedonia.com>. Establishing a website to sell what appear to be counterfeit products bearing the marks of the Complainant, using a disputed domain name that incorporates the Complainant’s mark, is a clear example of bad faith registration and use under the Policy.
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 <itcalzedonia.com> be transferred to the Complainant.
Evan D. Brown
Date: June 7, 2018