WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Depeche S.r.l. v. john john
Case No. D2020-2857
1. The Parties
The Complainant is Depeche S.r.l., Italy, represented by Spheriens Avvocati, Italy.
The Respondent is john john, United States of America.
2. The Domain Name and Registrar
The disputed domain name <depeche-it.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2020. On October 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 2020, 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 November 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 10, 2020.
The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on December 29, 2020. 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 Italian company named Depeche S.r.l.in the apparel business since 1999, has become renowned throughout the years. Their products are endorsed by several influencers, as stated in Annex 5 of the Complaint.
The Complainant is widely known as the company that operates the trademark ANIYE BY, and the Complainant’s name (“Depeche”), has been deployed, sometimes in a stylized form, in connection with this trademark. The Panel further notes that the Complainant operates its email address at the domain name <depeche.it>, which also redirects to <aniyeby.com>.
The disputed domain name has been used in at least one attempt of fraud, revealed by one of the clients of the Complainant.
The Respondent registered the disputed domain name on August 26, 2020.
The disputed domain name, as at the date of this decision, does not resolve to an active website.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is a reproduction to the Complainant’s company name and non-registered trademark, DEPECHE. The Complainant contends that the company name DEPECHE is inevitably linked to their business, having acquired the status of a non-registered trademark. Evidence to sustain this allegation were presented as annexes 6, 7 and 8 of the Complaint.
The Complainant states that according to the Italian law, the company name is to be considered as a non-registered distinctive sign – or, an unregistered mark. The same law prohibits the non-authorized use of any of these signs by a third party. The fact that the Respondent tried to take advantage of the sign Depeche to perform a fraud is evidence that the Complainant’s sign DEPECHE is a valid unregistered trademark under the UDRP.
In fact, the only distinctive term included in the disputed domain name is “depeche”, which is identical to the Complainant’s name and mark. The expression chosen by the Respondent to compose the disputed domain name together with “depeche” is the country code “it”, representing Italy, which is the country where the Complainant is seated. This proceeding may reveal an attempt to create confusion and mislead the consumers.
The similitude with the name and mark, as well as the insertion of the term “it” may lead to confusion, given the presence of the Complainant’s mark and the difference of just one letter.
The Complainant claims not to have any relationship with the Respondent or has never given the Respondent permission to use its name and mark or to apply it to any kind of domain name incorporating this name and mark.
The Complainant claims that the Respondent was aware of the Complainant’s activity and has registered the disputed domain name with a view to take unfair advantage of the reputation of the Complainant’s sign DEPECHE.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In this Panel’s view, the Complainant has satisfied the requirements specified under paragraph 4(a) of the Policy:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in respect of which the Complainant has rights; and
(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 used in bad faith.
A. Identical or Confusingly Similar
The Complainant does not rely on any registered trademark rights. Rather the Complainant relies on the unregistered trademark DEPECHE, as well as a reputation and rights in the name Depeche S.r.l.
Based on the evidence filed, the Panel accepts that the Complainant has established rights in the unregistered trademark DEPECHE, in connection with their core business in the apparel industry, for the purpose of the Policy. In addition, the Panel notes that the Respondent has used the disputed domain name to impersonate one of the Complainant’s employees regarding the selling to third parties of the Complainant’s products, a targeting which further supports the Complainant’s assertion that it has unregistered trademark rights for the purposes of the Policy.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark DEPECHE. Furthermore, the addition of the element “-it” to the Complainant’s trademark does not prevent a finding of confusing similarity between the Complainant’s trademark and the disputed domain name. In fact, in the Panel’s assessment, the addition of the particle “it”, which could correspond to the country code for Italy where the Complainant is located, can be considered as a further attempt to link the disputed domain name to the Complainant.
The Panel hence finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant.
B. Rights or Legitimate Interests
The Panel notes from the evidence that DEPECHE is associated with the Complainant’s name and products, and that the Complainant has not licensed or authorized its use to the Respondent.
Hence, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In the absence of a Response, the Respondent has not rebutted such prima facie case.
It has also been shown that the Respondent is making a fraudulent use of the disputed domain name. Evidence of at least one serious attempt of fraud was provided by the Complainant.
The evidence shows that the Respondent is in fact using the disputed domain name to deceive purchasers of the Complainant’s products via a fraudulent email scheme. The Respondent used the disputed domain name to impersonate a Complainant’s employee in connection with an email directed at one of the Complainant’s clients. The client noted this fraudulent attempt in time, but there is a strong possibility that other attempts may be tried.
Thus, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Given the circumstances of this case, the Panel finds that the Complainant has submitted evidence of the Respondent’s bad faith in the registration and use of the disputed domain name.
The Complainant submitted evidence of a fraudulent email scheme executed by the Respondent, using an email account related to the disputed domain name to obtain information in an attempt to commit fraud against third parties. The disputed domain name was registered to clearly mislead the consumers.
The Respondent intended to give an overall impression that the disputed domain name is associated with the Complainant’s business, and the Panel accepts that the disputed domain name was used for bad faith purposes.
All the points above lead to the conclusion by this Panel that the Respondent was fully aware of the Complainant’s reputation in DEPECHE, and that the Respondent registered and is using the disputed domain name in bad faith.
The Panel finds that the Complainant has also proved the third element 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 <depeche-it.com> be transferred to the Complainant.
Alvaro Loureiro Oliveira
Date: January 12, 2021