WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fendi S.r.l. v. Federico Porcedda
Case No. D2018-1265
1. The Parties
The Complainant is Fendi S.r.l. of Rome, Italy, represented by Studio Barbero, Italy.
The Respondent is Federico Porcedda of Oristano, Italy.
2. The Domain Name and Registrar
The disputed domain name <fendi1925s.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 June 6, 2018. On June 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 8, 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 June 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 2, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 3, 2018.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on July 6, 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 in the present proceedings is an Italian fashion house that in 2001 became part of the multinational luxury goods conglomerate LVMH Moët Hennessy Louis Vuitton SE, better known as LVMH.
The Complainant's origins date back to over 90 years ago, when a family-run fur and leather shop was opened by Adele and Edoardo Fendi.
The FENDI trademark has been used by the Complainant or its predecessor in title for more than 90 years in connection with products in the high-fashion and leather industry, including ready-to-wear clothing, handbags, small leather goods, luggage, shoes, jewelry, eyewear, fragrances and home furnishings.
In 1968, Bloomingdale's was the first American store to start selling Fendi branded products in the United States of America. Other high-end department stores followed, and flagship stores and boutiques were opened by the Complainant around the world. Today, Fendi products are sold in many countries, with more than 200 stores in different locations.
In addition to the traditional advertising channels, FENDI has been and currently still is widely promoted on the Internet, in particular with a strong presence online through the most popular social media websites, i.e., Facebook, Twitter, Instagram, YouTube, Google+ and Pinterest.
The Complainant has proven to be the owner of the FENDI and Fan di FENDI trademarks, which enjoy protection through numerous registrations worldwide.
The Complainant is, inter alia, the owner of:
International Trademark FENDI Registration No. 426761 registered on December 1, 1976 in Classes 3, 18, 24 and 25;
International Trademark FENDI Registration No. 483395 registered on March 22, 1984 in Class 9;
International Trademark FENDI Registration No. 483514 registered on March 26, 1984 in Class 16;
International Trademark FENDI Registration No. 484881 registered on May 7, 1984 in Classes 20 and 34;
International Trademark Fan di FENDI (device) Registration No. 1031312 registered on January 18, 2010 in Class 3;
International Trademark Registration No. 1031510 (Fan de FENDI figurative) registered on January 18, 2010 in Class 3.
The Complainant's principal website dedicated to the FENDI brand is "www.fendi.com", to which most of its numerous domain names are redirected and which generates a significant number of visits from Internet users.
The disputed domain name <fendi1925s.com> was registered on January 10, 2016.
According to the evidence submitted with the Complaint, the disputed domain name resolves to a website that displays, without any disclaimer of non-affiliation, FENDI and Fan DI FENDI trademarks and some images prima facie taken from the Complainant's official advertising campaigns.
The Complainant's trademark registrations predate the registration of the disputed domain name.
5. Parties' Contentions
The Complainant claims that the disputed domain name is confusingly similar to the Complainant's registered trademarks; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order for the Complainant to obtain a transfer of the disputed domain name, paragraph 4(a) of the Policy requires that the Complainant must demonstrate to the Panel that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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 Complainant has established rights in the FENDI trademark.
The disputed domain name <fendi1925s.com> reproduces the Complainant's FENDI trademark in its entirety with the addition of "1925" (i.e., the foundation year of the FENDI business), and a final letter "s".
This Panel agrees with the Complainant's opinion and previous UDRP decisions, affirming that confusing similarity is generally established when the domain name incorporates the complainant's trademark in its entirety, and the addition of descriptive prefixes and suffixes does not avoid confusing similarity. In the present case, the disputed domain name entirely incorporates the Complainant's trademark with the addition of "1925", which incidentally corresponds to the foundation year of the Complainant.
The further addition of the letter "s" is also insufficient to avoid confusing similarity.
Therefore, the Panel finds the disputed domain name to be confusingly similar to the FENDI trademark in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant's trademarks. The Respondent does not appear to engage in any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. Rather, the Respondent uses the disputed domain name to offer goods purportedly originating from the Complainant at heavily discounted prices, which are likely to be counterfeit. Even if the goods are genuine, the website gives the misleading impression that it is affiliated with or operated by the Complainant. As such, the Respondent's use of the disputed domain name cannot be considered bona fide. In addition, the Respondent does not appear to be commonly known by the disputed domain name or by a similar name. Moreover, the Respondent has not replied to the Complainant's contentions, claiming any rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant's contentions that the disputed domain name was registered and has been used in bad faith.
The FENDI trademark has been registered and used for over 90 years in Italy and for decades all over the world. FENDI is undisputedly a well-known trademark worldwide, including in Italy, where the Respondent is prima facie based. The strength and renown of the Complainant's FENDI trademark has already been recognized by previous UDRP panels. It enjoys a widespread reputation and high degree of recognition as a result of its fame and renown and thus the FENDI mark is not one that traders could legitimately adopt other than for the purpose of creating the impression of an association with the Complainant.
Consequently, the Panel finds that the Respondent knew of the Complainant's marks and deliberately sought to create a perceived association with the Complainant and its business at the time of registration of the disputed domain name.
The Respondent's knowledge of the FENDI mark is particularly obvious, given that alleged Fendi products (most probably counterfeit products) are displayed and offered for sale at heavily discounted prices on the website at the disputed domain name.
This Panel finds that the above use of the disputed domain name constitutes a disruption of the Complainant's business and qualifies as bad faith registration and use under paragraph 4(b)(iv) of the Policy.
Further inference of bad faith registration and use of the disputed domain name is given by the fact that the Respondent has never replied to the contentions made in the Complainant's cease-and-desist letter. The Respondent has not denied the assertions of bad faith made by the Complainant in the pre-action communications and in this proceeding, so it is therefore reasonable to assume that if the Respondent had legitimate purposes for registering and using the disputed domain name, it would have responded to these assertions.
Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith.
Therefore, the Complainant has satisfied 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 <fendi1925s.com> be transferred to the Complainant.
Date: July 9, 2018