WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

VIEFFE S.R.L. v. Contact Privacy Inc. Customer 0161579289 / TAIO ECOM, Valentin Feirragni, and Contact privacy inc. Customer 0161569583 / TAIO ECOM, Taioecom3

Case No. D2021-1510

1. The Parties

The Complainant is VIEFFE S.R.L., Italy, represented by Gianni & Origoni, Italy.

The Respondents are Contact Privacy Inc. Customer 0161579289 / TAIO ECOM, Valentin Feirragni, and Contact privacy inc. Customer 0161569583 / TAIO ECOM, Taioecom3, France.

2. The Domain Name and Registrar

The disputed domain names <valentinaferragnii.com> and <valentinfeirragni.com> (hereafter jointly referred to as the “Disputed Domain Names”) are registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2021. On May 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On May 14, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names, which differed from the named Respondents, and contact information in the Complaint. The Center sent an email communication to the Complainant on May 20, 2021, 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 May 21, 2021.

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 May 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 14, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on June 16, 2021.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on June 22, 2021. 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, VIEFFE S.R.L., is an Italian fashion company established by Mrs. Valentina Ferragni.

The Complainant owns two trademarks for the sign VALENTINA FERRAGNI:

- VALENTINA FERRAGNI, Italian word mark registered with the Italian Patent and Trademark Office (“Ufficio Italiano Brevetti e Marchi” or “UIBM”) on January 12, 2021, under number 302020000057037 in classes 3, 9, 14, 18, 25, 26 and 35; and,

- VALENTINA FERRAGNI, international word mark registered with WIPO on July 22, 2020, under number 1558310 in classes 3, 9, 14, 18, 25, 26 and 35.

The Complainant manages an online store through its website linked to the domain name <valentinaferragnistudio.com>.

The Disputed Domain Names were registered on the following dates:

- <valentinaferragnii.com>: May 3, 2021; and
- <valentinfeirragni.com>: May 4, 2021.

According to the Complainant, the disputed domain name <valentinaferragnii.com> redirected to the disputed domain name <valentinfeirragni.com>. The Complainant provides screen prints of the website linked to the disputed domain name <valentinfeirragni.com>. This website resembled the Complainant’s official website and purported to sell products similar to the Complainant’s products at a discounted price.

On May 5, 2021, the Complainant sent a cease and desist letter to the Respondents’ email and physical addresses. The Complainant submits it received no response.

5. Parties’ Contentions

A. Complainant

The Complainant believes that it is appropriate for the Panel to consolidate the Complaint against multiple Respondents.

On the merits, the Complainant considers the Disputed Domain Names to be confusingly similar to trademarks in which it claims to have rights. The Complainant further claims that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names. According to the Complainant, the Respondents have not used the Disputed Domain Names in connection with a legitimate use. Finally, the Complainant claims that the Disputed Domain Names were registered and are being used in bad faith. The Complainant contends that the Respondents registered and used the Disputed Domain Names for an illegal activity, namely selling (or at least offering to sell) counterfeit goods by impersonating the Complainant.

B. Respondents

The Respondents did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Preliminary Procedural Issue: Consolidation of Multiple Domain Names and Respondents

Paragraph 10(e) of the Rules generally empowers panels to consolidate multiple domain name disputes in accordance with the Policy and the Rules. Paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name only when the domain names are registered by the same domain name holder. Where 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.

Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of

(i) the registrants’ identity(ies) including pseudonyms;
(ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities;
(iii) relevant IP addresses, name servers, or webhost(s);
(iv) the content or layout of websites corresponding to the disputed domain names;
(v) the nature of the marks at issue (e.g., where a registrant targets a specific sector);
(vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>);
(vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue;
(viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s);
(ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior or
(xi) other arguments made by the complainant and/or disclosures by the respondent(s) (see section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

In the present case, the Panel observes the following:

- both Disputed Domain Names were registered under the same name (“TAIO ECOM”), the same physical address and the same telephone number;
- both Disputed Domain Names were registered around the same period; and
- both Disputed Domain Names are misspellings of the name/trademark “Valentina Ferragni” (see below under section 6.2.A).

In view of the above, the Panel finds that, more likely than not, the Disputed Domain Names are subject to the common ownership or control of the same entity or person. The Panel also considers the consolidation of both Disputed Domain Names to be fair and procedurally efficient.

Accordingly, the Panel concludes that the consolidation of both Disputed Domain Names asserted by the Complainant against the Respondents is consistent with the Policy and Rules. The Panel will proceed to a decision on the merits regarding both Disputed Domain Names.

6.2. Substantive elements of the Policy

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Names. As the proceedings are administrative, the standard of proof is the balance of probabilities.

Thus, for the Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:

i. the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
ii. the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names; and
iii. the Disputed Domain Names have been registered and are being used in bad faith.

The Panel will deal with each of these requirements in turn.

A. Identical or Confusingly Similar

To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there are trademarks in which it has rights. The Complainant’s VALENTINA FERRAGNI trademarks have been registered and used in connection to the Complainant’s fashion business.

The Panel finds that both Disputed Domain Names are obvious misspellings of the Complainant’s VALENTINA FERRAGNI trademarks:

- the disputed domain name <valentinaferragnii.com> incorporates the Complainant’s trademark in its entirety and simply adds the letter “i” at the end ; and

- the disputed domain name <valentinfeirragni.com> omits the letter “a” at the end of “VALENTINA” and adds the letter “i” between the letters “e” and “r” of the name “FERRAGNI”.

Where the relevant trademark is recognizable within the Disputed Domain Name, the addition of other terms would not prevent a finding of confusing similarity under the first element (see section 1.8 of the WIPO Overview 3.0).

The Panel finds that these additions and omissions of a few letters can be considered as “typosquatting”, as the Disputed Domain Names contain sufficiently recognizable aspects of the Complainant’s mark (see section 1.9 of the WIPO Overview 3.0).

Additionally, it is well established that generic Top-Level Domains (“gTLDs”), here “.com”, may be disregarded when considering whether a disputed domain name is confusingly similar to a trademark in which a complainant has rights.

In light of the above, the Panel considers the Disputed Domain Names to be confusingly similar to the Complainant’s VALENTINA FERRAGNI trademark.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names.

As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondents have no rights or legitimate interests in the Disputed Domain Names in order to place the burden of production on the Respondents (see section 2.1 of the WIPO Overview 3.0).

The Panel observes that the Respondents do not appear to be commonly known by the Disputed Domain Names and that the Respondents do not seem to have acquired trademark or service mark rights (there being no Response or evidence of any such rights). According to the information provided by the Registrar, both Respondents are named TAIO ECOM, even though the names of both organizations are different. The organization linked to the registration of the disputed domain name <valentinaferragnii.com> is “taioecom3”, and the organization linked to the registration of the disputed domain name <valentinfeirragni.com> is “Valentin Feirragni”. There are no indications that a connection between the Complainant and the Respondents exists.

Moreover, the Panel is of the opinion that the Respondents are not making a legitimate noncommercial or fair use of the Disputed Domain Names. According to the Complainant, the disputed domain name <valentinaferragnii.com> redirected to the disputed domain name <valentinfeirragni.com>. The website linked to the disputed domain name <valentinfeirragni.com> appeared to be an almost exact copy of the Complainant’s official website and purported to sell discounted products of the Complainant. The Complainant also claims that it tried to buy a product from this website and never received anything although the payment was made.

In the Panel’s view, the above elements are indications of illegal activity using the Disputed Domain Names. UDRP panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent (see section 2.13 of the WIPO Overview 3.0).

The Respondents had the opportunity to demonstrate their rights or legitimate interests but did not do so. In the absence of a Response from the Respondents, the prima facie case established by the Complainant has not been rebutted.

Therefore, the Panel finds that the Complainant has established that the Respondents have no rights or legitimate interests in the Disputed Domain Names. In light of the above, the Complainant succeeds on the second element of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the Disputed Domain Names were registered in bad faith and that these are used in bad faith (see section 4.2 of the WIPO Overview 3.0 and, for example, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).

Paragraph 4(b) of the Policy provides a non-exhaustive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

In the present case, it is inconceivable that the Respondents were unaware of the Complainant and its rights in the VALENTINA FERRAGNI mark when they registered the Disputed Domain Names. As mentioned above under section 6.2.A, both Disputed Domain Names are obvious misspellings of the Complainant’s distinctive trademark. Moreover, the website linked to the disputed domain name <valentinfeirragni.com> appeared to be an almost exact copy of the Complainant’s official website and purported to sell discounted products of the Complainant. As a result, the Respondents must have had knowledge of the Complainant’s rights at the time of registering the Disputed Domain Names. The Panel finds that the Respondents’ awareness of the Complainant’s trademark rights at the time of registration suggests bad faith.

The Panel further holds that the additions and omissions of a few letters in both Disputed Domain Names are a form of typosquatting which is further evidence of bad faith (ESPN, Inc. v. XC2, WIPO Case No. D2005-0444; WestJet Airlines Ltd. v. Taranga Services Pty Ltd, WIPO Case No. D2010-1814; and Compagnie Générale des Etablissements Michelin v. Terramonte Corp, Domain Manager, WIPO Case No. D2011-1951).

By engaging in typosquatting and by redirecting Internet users to a website resembling the Complainant’s official website and offering for sale products similar to the Complainant’s products at a discounted price, the Respondents intentionally aimed to attract Internet users to visit this website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location and of the products advertised on the website (see Simyo GmbH v. Domain Privacy Service FBO Registrant / Ramazan Kayan, WIPO Case No. D2014-2227). In the Panel’s view, such illegal activity is manifestly considered evidence of bad faith (see section 3.1.4 of the WIPO Overview 3.0).

Additionally, by using a proxy registration service, the Respondents have taken active steps to conceal their identity (see Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696, where it was held that the use of a proxy registration service to avoid disclosing the identity of the real party in interest is also consistent with an inference of bad faith when combined with other evidence of evasive and irresponsible conduct).

Finally, by failing to respond to the Complaint, the Respondents did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate.

Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Names were registered and used in bad faith. In light of the above, the Complainant also succeeds on the third and last element of the Policy.

7. Decision

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 Names <valentinaferragnii.com> and <valentinfeirragni.com> be transferred to the Complainant.

Flip Jan Claude Petillion
Sole Panelist
Date: July 6, 2021