WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Diesel S.p.A. v. WhoIsGuard, Inc. / Myra Kern
Case No. D2018-2402
1. The Parties
The Complainant is Diesel S.p.A. of Breganze, Italy, represented by Studio Barbero, Italy.
The Respondent is WhoIsGuard, Inc. of Panama City, Panama / Myra Kern of Barrow-in-Furness, Armenia.
2. The Domain Name and Registrar
The disputed domain name <dieselnegozio.online> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2018. On October 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 23, 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 October 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2018.
The Center appointed Theda König Horowicz as the sole panelist in this matter on November 23, 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 an international fashion company founded in Italy by Mr. Renzo Rosso about 40 years ago. The Complainant is known for commercializing clothes collections, including jeans, premium casual wear and accessories.
Over the years, the Complainant developed the DIESEL brand and its founder, Mr. Rosso, also created a fashion holding company which owns other famous brands such as Just Cavalli, Marni and Viktor&Rolf, all brands reflecting a certain lifestyle.
The Complainant is commercially present worldwide through a large number of stores, including mono-brand shops.
The commercialization of the DIESEL fashion goods is supported by intensive advertising campaigns which are known for their disruptive and provocative style and which have been receiving awards and prizes. The Complainant also widely promotes the DIESEL fashion goods through the Internet and the social media.
The Complainant is the owner of many trademark registrations including the famous DIESEL name, notably:
- Italian Trademark Registration No 604 192 (word mark) of October 4, 1993 in classes 3, 9, 14, 16, 18, 24 and 25.
- International Trademark Registration No 608499 (word mark) of October 4, 1993 in classes 3, 9, 14, 16, 18, 24, and 25.
- US Trademark Registration No 1989390 (word mark) of July 30, 1996 in classes 3, 9, 14, 18, 24, and 25.
The Complainant also registered numerous domain names consisting of or comprising the word “DIESEL”, including “diesel.com” which hosts the Complainant’s principal website dedicated to the “DIESEL” brand and which generates a significant number of visits by Internet users.
The Respondent registered the disputed domain name on August 30, 2018, and pointed it to a website displaying, without any disclaimer of non-affiliation, the “DIESEL” trademark and some images taken from the Complainant’s official ad campaigns. Furthermore, the Respondent is offering for sale unauthorized DIESEL products at discounted prices.
The Complainant’s legal representative sent a cease and desist letter on September 7, 2018, to the Respondent at the shielded email address indicated in the WHOIS database requesting to immediately deactivate the website and to transfer the disputed domain name to the Complainant.
At the same time, the Complainant’s legal representative filed with the privacy service company a request for disclosure of the contact details of the underlying registrant of the disputed domain name. When receiving the information, the Complainant sent on September 17, 2018, a cease and desist letter to the Respondent at the email address given by the privacy service company which appeared to be false respectively inaccurate.
Following a test purchase on the website operated by the Respondent where payment was accepted while the product was never delivered, the Complainant’s legal representative sent a formal communication to the Hosting Provider to request immediate suspension/deactivation of the disputed domain name and to the Registrar of the disputed domain name, request which was accepted.
On October 5, 2018, the Complainant’s legal representative sent a reminder to the Respondent and also the Registrar and to the privacy shield company since the disputed domain name was reactivated.
5. Parties’ Contentions
The Complainant makes the following allegations:
- The disputed domain name is confusingly similar to the “DIESEL” trademarks in which the Complainant has rights as it incorporates the whole of the Complainant’s trademark with the mere addition of the generic term “negozio” which means “shop” in Italian. The said term reinforces the likelihood of confusion that the disputed domain name is associated with or sponsored by the Complainant. Furthermore, the addition of the generic Top-Level Domain (gTLD) “.online” does not affect the assessment of confusing similarity.
- The Respondent is not a licensee, an authorized agent of the Complainant. The unauthorized use of the “DIESEL” trademarks and the selling of DIESEL goods which are most likely counterfeit cannot be considered as a legitimate noncommercial or fair use without intent for commercial gain. The likelihood of confusion created by the Respondent in publishing the “DIESEL” trademark without any disclaimer of non-affiliation is a further evidence of illegitimate interest. Finally, the Respondent did not reply to the cease and desist letters.
- The “DIESEL” trademark has been registered and intensively used since almost forty years. It has become famous and the Respondent could not have ignored it when registering the disputed domain name. The Respondent thus had the clear intention to target the Complainant and trade-off its distinctive and wellknown trademark. Furthermore, the disputed domain name is used in connection with a website publishing the Complainant’s “DIESEL” trademark and official images and offering for sale most likely counterfeited products at a discounted price bearing the “DIESEL” trademarks. In addition, the Complainant made a test purchase of a sample product offered for sale on the website connected to the disputed domain name, but despite processing payment, the Respondent failed to deliver the product ordered. Finally, the Respondent did not respond to the cease and desist letters. Under these circumstances, the Complainant concludes 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
Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:
(i) that the 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 the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has shown to have trademark rights over the name “DIESEL”.
The trademark “DIESEL” is reproduced in its entirety in the disputed domain name. Furthermore, it is associated with the dictionary term “negozio”, which means “shop” in Italian and does not detract from the obvious confusingly similarity.
The Panel therefore concludes that the disputed domain name is confusingly similar to the Complainant’s marks.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(1) the use of the domain name in connection with a bona fide offering of goods and services;
(2) being commonly known by the domain name; or
(3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
The Panel finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name, notably by evidencing (i) that the disputed domain name is used in order to sell “DIESEL” goods for a discounted price which are most likely counterfeit and (ii) that there is an unauthorized use of the “DIESEL” trademarks on the website linked to the disputed domain name without any indication of non-affiliation on the said website.
Consequently, the burden of production shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights or legitimate interests in the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
The Respondent submitted no reply to the case against it. No evidence is contained in the case file which would evidence that the Respondent has rights or legitimate interests in the disputed domain name, in particular that he would be known by the disputed domain name.
The Panel thus finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The third element requires that the respondent registered and is using the disputed domain name in bad faith. See the Policy, paragraph 4(a)(iii). Paragraph 4(b) of the Policy enumerates non-exhaustive circumstances in which evidence of bad faith registration and use can be found; shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that he has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 his web site or location or of a product or service on his web site or location.
The Complainant evidenced that its trademarks “DIESEL” have been registered since several years and have been continuously used in an extensive manner worldwide, including in the United States where the Respondent is based, through the commercialization of DIESEL clothing and accessories, advertising campaigns in newspapers and on the Internet. The “DIESEL” trademarks are also widely used in social media.
The “DIESEL” trademarks can thus be considered as being famous and there is no doubt that the Respondent must have known these when registering the disputed domain name.
The case file also shows that the disputed domain name has been linked to a website selling goods bearing the “DIESEL” trademark for a discounted price this being an indication that these goods might be counterfeited. Furthermore, the Complainant made a test purchase on the said website, the payment was processed but the good was never received.
Such scheme has obviously to be considered as a bad faith use of the disputed domain name (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, point 2.13.2., and decisions Fabergé Ltd. v. Management Services, WIPO Case No. D2009-0425, <faberge-elegance.com>, Guccio Gucci S.p.A. v. Zhiyuan Zou, Zouzhi Zhou , Fujian Anfu, WIPO Case No. D2012-0888, <cheapguccionsale.com> et al.).
The silence of the Respondent within these proceedings is also suggestive of bad faith.
Considering the above-mentioned circumstances, the Panel finds that the Complainant has also satisfied the requirements of 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 <dieselnegozio.online> be transferred to the Complainant.
Theda König Horowicz
Date: December 11, 2018