WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fiorucci Holdings Limited v. Fiorucci Indian

Case No. D2021-2301

1. The Parties

Complainant is Fiorucci Holdings Limited, United Kingdom, represented by Bird & Bird LLP, United Kingdom.

Respondent is Fiorucci Indian, India.

2. The Domain Name and Registrar

The disputed domain name <fiorucciindian.com> is registered with Domainshype.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2021. On July 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 19, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain name.

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 Respondent of the Complaint, and the proceedings commenced on August 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 1, 2021.

The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on September 8, 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

Complainant is Fiorucci Holdings Limited, an Italian fashion brand established in 1967 and headquartered in London, United Kingdom. Complainant sells a variety of products under the trademark FIORUCCI, including clothing, footwear and accessories. The brand has passed through a revival process in 2017, when Complainant’s products received widespread coverage both online and in well-known fashion magazines.

Complainant’s goods are sold worldwide, including through various retailer stores in the United Kingdom, United States of America (“United States”), China, Hong Kong, China, Taiwan Province of China, and Australia. Thus, aiming to protect its trademark rights over the world, Complainant owns a wide international portfolio containing trademark registrations in more than 80 jurisdictions.

Below are some examples of Complainant’s trademarks:

Moreover, Complainant is also the owner of several domain names containing the trademark FIORUCCI, including the domain name <fiorucci.com>, registered on May 13, 2002, through which Complainant operates a successful online store that sells and offers its authentic FIORUCCI branded products. Meanwhile, the disputed domain name <fiorucciindian.com> was registered on May 6, 2021 – many years after the registration of Complainant’s trade name, domain name <fiorucci.com> and cited trademarks.

At last, it is important to note that the disputed domain name resolves to a website selling clothing, footwear and accessories, with non-conventional paying methods required to complete the purchase.

5. Parties’ Contentions

A. Complainant

Complainant submits that FIORUCCI is a distinctive trademark which identifies clothing, footwear and accessories manufactured and sold by Complainant’s group. In order to protect its trademark rights, Complainant registered the mentioned sign worldwide, as well as trade names and domain names composed by the term “fiorucci”.

Complainant pleads that the disputed domain name <fiorucciindia.com> is confusingly similar to its trademarks, since it incorporates the FIORUCCI name in its entirety, and it is identical to Complainant’s domain name <fiorucci.com>, with the sole addition of the term “indian”. In this regard, according to Complainant, the addition of the term “indian” to the trademark FIORUCCI in the disputed domain name does not avoid a finding of confusing similarity under this element, especially because Complainant also markets its products in India.

Therefore, the disputed domain name would be clearly intended to imitate Complainant’s business and take advantage of its well-known reputation, fulfilling paragraph 4(a)(i) of the Policy and paragraph 3(b)(ix)(1) of the Rules.

Furthermore, Complainant affirms that Respondent does not have any rights or legitimate interests in respect of the disputed domain name or the Complainant’s trademark FIORUCCI, nor is widely known by the disputed domain name, authorized or licensed to use such trademark as a domain name.

Complainant also notes that there are sufficient evidence demonstrating that Respondent is illegally trying to take advantages of the considerable reputation of Complainant’s trademark FIORUCCI and misleadingly divert consumers to a webpage offering identical services to that of Complainant.

Complainant affirms that the website hosted by the disputed domain name purports to sell clothing, footwear and accessories, with unmatching pictures and prices linked to the products. Complainant’s representative has attempted to purchase a sample from the referred website and for payment he was redirected to a page with an option to send an amount of money to a personal PayPal account in the name of VIBHAKAR MISHRA (@VMISHRA553). In Complainant’s opinion, this fact shows that the buying process provided by the website is not a legitimate purchase.

Complainant alleges that Respondent’s use of the disputed domain name is an attempt to illegally make financial gain through the disputed domain name <fiorucciindia.com> by attracting Complainant’s consumers – who are led to think that the page hosted by the disputed domain name is somehow related to Complainant. Therefore, Respondent would not be making a non-commercial or fair use of the disputed domain name, also fulfilling paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules.

At last, Complainant states that the disputed domain name <fiorucciindian.com> was registered and is being used in bad faith.

Complainant affirms that the content of the page hosted by the disputed domain name falsely insinuates affiliation with Complainant’s business. This is because the referred webpage aims to sell clothing, footwear and accessories under the trademark FIORUCCI, that is, the same products marketed by Complainant, under the identical trademark.

Furthermore, Complainant claims that the well-known character and reputation of the trademark FIORUCCI in the fashion industry makes very unlikely that Respondent had no knowledge of the company when it registered the disputed domain name to sell clothes and related articles.

This way, Complainant claims that Respondent registered the disputed domain name <fiorucciindia.com> for the purpose of creating confusion with Complainant’s trademark, seeking to divert or mislead Internet users for its own commercial benefit.

At last, Complainant affirms that Respondent will never be capable of using the disputed domain name for a legitimate purpose, as consumers will always associate the name FIORUCCI to Complainant’s products in the fashion industry.

Therefore, Complainant sustains that paragraph 4(a)(iii) and 4(b) of the Policy and paragraph 3(b)(ix)(3) of the Rules have been fulfilled.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

To succeed in a UDRP complaint, Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.

The burden of proving these elements is upon Complainant.

Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the Complaint, the Panel’s decision shall be based upon the Complaint.

A. Identical or Confusingly Similar

Complainant has duly proven that it owns prior trademark rights over the sign FIORUCCI, which is registered in many jurisdictions and that the disputed domain name <fiorucciindian.com> incorporates such trademark in its entirety, with the sole addition of the term “indian”.

As also affirmed by Complainant, the addition of the term “indian” does not prevent the finding of a confusing similarity.

Thus, the Panel finds that the disputed domain name <fiorucciindian.com> is confusingly similar to Complainant’s trademark and business, so the requirement of the first element of paragraph 4(a) of the Policy is satisfied.

B. Rights or Legitimate Interests

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) as follows: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

In this case, noting the facts and contentions listed above, the Panel finds that Complainant has made a prima facie showing that Respondent’s lack of rights or legitimate interests, so the burden of production shifts to Respondent. As Respondent has not replied to Complainant’s contentions, the Panel has considered Complainant’s unrebutted prima facie case to be sufficient to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name <fiorucciindian.com>.

Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed evidence of the registration and use of a domain name in bad faith.

Firstly, the Panel finds that Complainant succeeds in demonstrating that Respondent was aware of Complainant’s rights to the trademark FIORUCCI at the time of registration of the disputed domain name <fiorucciindian.com>, especially when considering the following facts: (i) FIORUCCI is a well-known brand worldwide; (ii) the disputed domain name was registered by Respondent on May 6, 2021 – many years after the registration of Complainant’s trade name and trademarks listed in section 4 of this decision; and (iii) the disputed domain name resolves to a website where it sells the same kind of products offered by Complainant in its official website, under the identical trademark FIORUCCI.

In addition, the Panel also notes that the disputed domain name seems to have been used by Respondent as a fraudulent mean to collect money to a PayPal personal account. Evidence shows that Respondent is taking unfair advantage of consumers’ goodwill in purchasing its products – believing it is FIORUCCI original products marketed by Complainant – to divert the money of the purchase to a personal account while the purchased products might not even exist.

Accordingly, the Panel believes that Respondent intentionally uses the commercial value and goodwill of Complainant’s brand to confuse Internet users for its own commercial gain, which means that Complainant’s consumers could face financial losses due to Respondent’s registration and use of the disputed domain name.

Lastly, the Panel notes that the fact that Respondent did not present a response to the Complaint reinforces the conclusion that Respondent acted in bad faith.

Given all the above mentioned, the Panel concludes that the disputed domain name was registered and is being used in bad faith under the Policy. As such, the Panel finds that Complainant has satisfied paragraph 4(a)(iii) 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 name <fiorucciindian.com> be transferred to Complainant.

Gabriel F. Leonardos
Sole Panelist
Date: September 22, 2021