WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Trussardi S.p.A. v. Wang Lin
Case No. D2018-0849
1. The Parties
The Complainant is Trussardi S.p.A. of Milano, Italy, represented by Studio Legale Bird & Bird, Italy.
The Respondent is Wang Lin of New York, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <trussardisaldi.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 April 16, 2018. On April 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 18, 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 April 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 14, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 15, 2018.
The Center appointed Martin Michaus Romero as the sole panelist in this matter on May 28, 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 the owner of one of the most well-known trademark in the field of fashion with more than one hundred of history. It started out in Bérgamo in 1911 as a workshop producing and distributing luxury gloves.
It has presence in over 40 countries with its lines is clothing, bags, shoes and fashion accessories with the network of sales points in Italy, Europe, Asia, and the Middle-East. This includes over 177 single-brands stores over 1,500 multi-brands points of sale, corner and department stores and the new e-commerce site “www.trussardi.com”.
The trademark TRUSSARDI is protected in several jurisdictions, including the United States which is the alleged Respondent’s location through number of registrations (e.g., registration No. 1002480, registered on December 28, 2010) covering, inter alia, clothing, bags and other fashion accessories in class 18 and 25 of the Nice International classification of goods and services for the registrations of trademarks.
The disputed domain name was registered on February 6, 2018, and resolved to a website that promoted and offered for sale shoes, clothing and other garments bearing third party trademarks. At the same time, it appears that the disputed domain name resolves to a website in Italian which looks like the Complaint’s official website.
5. Parties’ Contentions
In its Complaint, the Complainant asserts that the disputed domain name is confusingly similar to TRUSSARDI trademark, the Respondent has no rights or legitimate interests in a disputed domain name, and the disputed domain name was registered and is used in bad faith.
The Complainant states in its complaint that the Respondent:
1) Register the disputed domain name <trussardisaldi.com> incorporating the well-known TRUSSARDI mark without the Complainant’s knowledge or authorization.
2) Uses that disputed domain name to promote and apparently offered for sale shoes, clothing, another garments bearing the trademarks NIKE and ADIDAS, which are competitors of the Complainant.
3) The disputed domain name has been registered and used to distract Internet users away from the official TRUSSARDI website as well as away for the Complainant business under the trademark and tradename “Trussardi”, so as to attain commercial gain from Internet users visiting the corresponding website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Considering that the Respondent did not reply to the Complainant’s contentions, in order to determine whether the Complainant has met its burden as stated in paragraph 4(a) of the Policy, the Panel bases its Decision on the statements and documents submitted and in accordance with the Policy and Rules.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has submitted evidence of its rights in the TRUSSARDI trademark. The disputed domain name is confusingly similar to the Complainant’s TRUSSARDI trademark. The disputed domain name <trussardisaldi.com> reproduces the Complainant’s trademark TRUSSARDI in its entirety, with the addition the term “saldi”, which does not dispel the confusing similarity, and the generic Top-Level Domain (“gTLD”) “.com”, which can be disregarded for the assessment of the first element of the Policy.
The term “Saldi”, an Italian word that stands for “Sale” or “Cheap Prices” in English language has a descriptive connotation and does not dispel the confusing similarity with the trademark.
The Panel finds that the Complainant satisfies paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent has not received permission or authorization to use the Complainant’s trademark or service mark. The Respondent did not reply to the Complainant’s contentions, and therefore has not provided any evidence or arguments to demonstrate anything to the contrary. In addition, the Complainant’s use of its trademark and service mark precedes the registration of the disputed domain name. It should be pointed out that the Respondent is not an individual, business or corporation known by the name “Trussardi” or by the disputed domain name. Furthermore, the Respondent is using the disputed domain name to promote and offer for sale sale shoes, clothing and other garments bearing the trademarks NIKE and ADIDAS, which are competitors of the Complainant.
The Panel finds that the Complainant satisfies paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
According to the statements and documents submitted, it is clear to the Panel that the registration and the use of the disputed domain name have been in bad faith, by including the well-known TRUSSARDI trademark, to intentionally attract for commercial gain Internet users; it creates a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, and/or endorsement of the Respondent’s website and the products advertised and offered for sale therein. See paragraph 4(b)(iv) of the Policy.
As noted above, the products offered at the website to which the disputed domain name resolves include, direct competing products of the Complainant, bearing third parties’ trademarks. Nowadays the website at the disputed domain name looks like an official TRUSSARDI website approved by or any rate connected with the Complainant deceive the consumer.
The Panel finds that the Complainant satisfies paragraph 4(a)(iii) of 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, <trussardisaldi.com> be transferred to the Complainant.
Martin Michaus Romero
Date: June 5, 2018