WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Calzaturificio Casadei S.p.A. v. Yvonne Bader / Ma Yun
Case No. D2018-1440
1. The Parties
The Complainant is Calzaturificio Casadei S.p.A. of San Mauro Pascoli, Italy, represented by Crea Avvocati Associati, Italy.
The Respondent is Yvonne Bader of Lollar, Germany / Ma Yun of Xiamen, Fujian, China (jointly referred to as the “Respondents”).
2. The Domain Names and Registrars
The Disputed Domain Name <casadeoutlet2018.com> is registered with NameSilo, LLC.
The Disputed Domain Name <casdeioutlet2017.com> is registered with 1API GmbH jointly referred as the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2018. On June 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On June 28, 2018 the Registrar NameSilo, LLC transmitted by email its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On June 29, 2018, the Registrar 1API GmbH transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name <casdeioutlet2017.com> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 3, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 9, 2018.
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 Respondents of the Complaint, and the proceedings commenced on July 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2018. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on August 1, 2018.
The Center appointed Carolina Pina-Sánchez as the sole Panelist in this matter on August 9, 2018. The Panelist finds that it was properly constituted. The Panelist 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.
Due to an administrative oversight, on August 29, 2018 the Panel issued Administrative Panel Procedural Order No. 1, ordering that the Center re-notify the Complaint to the Respondent, allowing an additional 10 days for the Respondent to indicate whether it wished to participate in these proceedings. Having received no communications from the Respondent, the Panel proceeded to render its decision.
4. Factual Background
The Complainant is an Italian company engaged in the design, production and marketing of footwear products. The Complainant holds many trademark registrations around the word with the element CASADEI: e.g., International trademark No. 541448 registered on July 17, 1989; European Union trademark No. 005047361 filed on April 28, 2006 and registered on July 12, 2007, and Chinese trademark No.12757630 filed on June 17, 2013 (the “CASADEI Trademarks”). It also owns several domain names that include the denomination “casadei” (i.e., <casadei.com>) which are used not only as a shop window for the Complainant’s collections, but also as an online shop.
The Disputed Domain Name <casadeoutlet2018.com> was registered on April 10, 2018, and the Disputed Domain Name <casdeioutlet2017.com> was registered on March 27, 2017. The Disputed Domain Names used to resolve to a fashion online shop that offers products under the trademarks of the Complainant. The Disputed Domain Name <casdeioutlet2017.com> is currently inactive.
5. Parties’ Contentions
The Complainant submits that it owns registered trademark rights in the CASADEI Trademarks as set out above and that the Disputed Domain Names are confusingly similar to its trademarks.
The Complainant alleges that the Respondents are not, and never have been, a representative or licensee of the Complainant, nor are the Respondents otherwise authorized to use the trademark CASADEI.
The Complainant also argues that the Disputed Domain Names are being used in bad faith, namely because they are being used for the sale of counterfeited products bearing the Complainant’s CASADEI Trademarks.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Procedural Matter: Consolidation of Respondents
The Complaint has been filed against two nominally distinct Respondents. As noted in section 4.11.2 of the (“WIPO Overview 3.0”), “[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.”WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition.
In considering the Complainant’s request for consolidation, the Panel has taken the following into account:
(i) The Respondents’ contact email addresses follow the same pattern, i.e., they consist of a string of random letters, followed by a string of random numbers, with the “@163.com” extension.
(ii) The Disputed Domain Names appear to have the same name servers.
(iii) The content of the websites corresponding to the Disputed Domain Names (prior to the deactivation of the website at “www.casdeioutlet2017.com”) is the same.
(iv) The Disputed Domain Names follow the same naming pattern, i.e., the Complainant’s Trademark written with a typo, followed by the term “outlet” and a year.
The Respondents have not come forward to oppose the Complaint proceeding on a consolidated basis. In the circumstances, the Panel considers it more likely than not that the Disputed Domain Names are subject to common control, and that consolidation would not cause any prejudice to the Respondents. Moreover, to require the Complainant to file two separate complaints would only result in additional delay and expense to the Complainant. For the above reasons, the Panel has determined to accept the Complainant’s request for consolidation.
6.2. Substantive Matters
A. Identical or Confusingly Similar
The Disputed Domain Names comprise: (i) the word “casadei” written with a typo, (ii) the word “outlet”, (iii) a year written in numbers and, (iv) the generic Top-Level Domain (“gTLD”) “.com”, which may be ignored for the purposes of assessing identity and confusing similarity under this head of the Policy.
This Panelist will separate the examination of each element in order to provide a clearer analysis:
1. The word “casadei” written with a typo:
The Disputed Domain Names are not identical to any trademark in which the Complainant claims rights, so the issue is whether they are confusingly similar to any trademark in which the Complainant has rights. Both Disputed Domain Names include the word “casadei” with a typo: In the disputed domain name <casadeoutlet2018> the word “casadei” does not include the letter “i”; and in the disputed domain name <casdeioutlet2017>, the word “casadei” does not include the letter “a”.
There is a consensus view among UDRP panels that a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered to be confusingly similar to the relevant mark for purposes of the first element. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark.
In Sanofi, Genzyme Corporation v. Domain Privacy, WIPO Case No. D2016-1193, the panel considered that the word “genyzme” was an obvious misspelling of the GENZYME trademark. Moreover, in Schneider Electric S.A. v. Domain Whois Protect Service / Cyber Domain Services Pvt. Ltd, WIPO Case No. D2015-2333, the panel considered that the domain name <schnieder-electric.com> was confusingly similar to the trademark SCHNEIDER ELECTRIC. Finally, in LinkedIn Corporation v. Daphne Reynolds, WIPO Case No. D2015-1679, the panel considered that the substitution of the letter “l” for the letter “i” was a single minor typographical variation and stated that the domain name <linkedlnjobs.com> was confusingly similar to the trademark LINKEDIN.
2. The word “outlet”:
It is well-established that adding a descriptive term to a registered trademark does not prevent the domain name from being confusingly similar to that trademark (see, e.g., Microsoft Corporation v. J. Holiday Co, WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 and Lilly ICOS LLC v. John Hopking/Neo net Ltd., WIPO Case No. D2005-0694). See also section 1.8 of the WIPO Overview 3.0.
As a result, this Panelist considers that the presence of the descriptive word “outlet” in the Disputed Domain Names increases the likelihood of confusion to consumers.
3. The inclusion of a year in the domain name:
The inclusion of numbers in a domain name has been considered irrelevant by the previous UDRP panels for the purposes of assessment under the first element. As an example, in Newcote International Limited v. Raod, WIPO Case No. D2017-0513, the panel considered that the inclusion of the year “1946” in the domain name <betvictor1946.com> did not avoid a finding of confusing similarity between the disputed domain name and the complainant’s registered trademark BETVICTOR.
With regard to disputed domain name <casadeoutlet2018.com>, it could be alleged that it is descriptive. Nevertheless, following section 1.9 of the WIPO Overview 3.0, the Panel considers that the disputed domain name contains several aspects of the CASADEI Trademarks. Moreover, considering the second and third UDPR elements, as they are explained below, it could be sustained that employing a misspelling in the disputed domain name implies a confusing intention from the Respondent.
Accordingly, the Panel finds that the Disputed Domain Names are confusingly similar to the Complainant’s abovementioned trademarks. Thus, the Panel finds that the Complainant has established the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Respondents are not commonly known by the name “Casadei”, and were clearly never authorized or licensed by the Complainant to use the registered CASADEI Trademark. The Complainant has evidenced that the Respondents use the Disputed Domain Names to host webpages in which users can buy shoes under the CASADEI Trademarks.
In certain circumstances it may be permissible for a reseller to adopt a domain name featuring the brand name of the product being re-sold. It will clearly be permissible, for example, where the trademark owner has given permission.
According to section 2.8 of the WIPO Overview 3.0 a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to “corner the market” in domain names that reflect the trademark. Many UDRP panels subscribing this view have also found that not only authorized but also unauthorized resellers may fall within such “Oki Data” principles (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).
In this case, and cross-referencing the facts with the Oki Data principles, the Panel finds as follows:
1. Are the Respondents selling the Complainant’s goods? The Panel can appreciate in Annex 1 of the Complaint that the Respondents purports to sell products under the CASADEI Trademarks, however, the provenance of those products is called into question by the Complainant.
2. Are the Respondents’ websites being used exclusively for the purpose of selling the Complainant’s goods? Annex 1 of the Complaint contains screenshots of the content of the webpages. Those screenshots only show products marketed under the CASADEI Trademarks.
3. Do the Respondents’ sites accurately state the Respondents’ relationship with the Complainant? No, they give the impression, contrary to fact, that the Respondents are linked to the Complainant’s websites.
In order to fulfill this requirement the site must accurately disclose the registrant’s relationship with the trademark owner. It may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents (e.g., Doro AB v. Electronic Commerce Organization, S.L, WIPO Case No. D2014-0523; Birkenstock Orthopädie GmbH & Co. KG v. JL Innoways Co. Ltd., Jihao Jiang, WIPO Case No. D2012-1202; Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Chunhai Zhang, WIPO Case No. D2012-0136).
4. Are the Respondents seeking to “corner the market” in domain names that reflect the Complainant’s trademark? The Panel cannot answer this question with the information provided by the Complainant.
Thus, the Respondents fail to meet at least one of the Oki Data principles and have not sought to persuade the Panel that they have any relevant rights or legitimate interests; nor can the Panel conceive of any basis upon which the Respondents might be said to have relevant rights or legitimate interests in respect of the Disputed Domain Name.
The Panelist finds that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names.
C. Registered and Used in Bad Faith
The Panel agrees with the contention by the Complainant that the Respondents had knowledge of the Complainant’s CASADEI Trademarks when they registered and started using the Disputed Domain Names. The factors that were taken into account to arrive to this conclusion include the date of registration of the Disputed Domain Names which was only as recent as 2017 when compared to the date when the Complainant started using the CASADEI Trademarks and the domain names with the denomination CASADEI (i.e. <casadei.com> registered ion July 2, 1996), the widespread use of the CASADEI Trademarks by the Complainant at a global level and the fact that the Respondents were purporting to sell products under the CASADEI Trademarks through their website.
In Balenciaga v. liu zhixian, zhixian liu, WIPO Case No. D2010-1831, the panel held that “the Respondent must have had the Complainant’s notorious trademark in mind when he registered the Domain Name, as evidenced in particular by the use to which the Domain Name has been put [(sale of counterfeit bags)]. In view of the Panel’s finding that the Respondent has no rights or legitimate interests in the domain name, it follows that the domain name was registered in bad faith.”
Similarly, in Hermes International v. Liu Gang, WIPO Case No. D2010-2291, the panel was satisfied that the Respondent had knowledge of the reputation and goodwill of the HERMES and BIRKIN trademarks when he sought to register the disputed domain name and he intended to use and indeed used the disputed domain name to sell counterfeit or unauthorized imitations of the Complainant’s Hermes products.
The Panel notes that the look and feel of the Respondents’ websites have been engineered to suggest a direct connection to the Complainant without its permission. Taken together, these elements support the conclusion that the Disputed Domain Names have been adopted with the purpose of improperly trading on the Complainant’s goodwill in association with the Complainant’s trademarks.
Therefore, the Panel finds that the Complainant has satisfied the requirements under 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 Panelist orders the Disputed Domain Names <casadeoutlet2018.com> and <casdeioutlet2017.com> to be transferred to the Complainant.
Date: September 7, 2018