WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OVS S.p.A. v. Domain Administrator, See PrivacyGuardian.org / Emily Gehring
Case No. D2021-3876
1. The Parties
The Complainant is OVS S.p.A., Italy, represented by Rapisardi Intellectual Property, Italy.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Emily Gehring, United States.
2. The Domain Name and Registrar
The disputed domain name <ovsshop.online> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2021. On November 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 22, 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 amendment to the Complaint on November 22, 2021.
The Center verified that the Complaint together with the amendment to 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 December 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2021.
The Center appointed Petra Pecar as the sole panelist in this matter on January 10, 2022. 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 a fashion retail company based in Italy, with over 1,600 stores worldwide. The Complainant has been featured in articles for internationally renowned fashion magazines such as Vogue, Women’s Wear Daily, Vanity Fair, and Marie Claire. The Complainant’s net sales in 2017 reached EUR 1.415 million.
The Complainant provided evidence of various trademark registrations for the sign OVS, including the following:
- United Kingdom Trademark Registration No. UK00905229174, registered on June 11, 2007, for the figurative mark ;
- European Union Trade Mark Registration No. 010761609, registered on September 3, 2012, for OVS; and
- International Trademark Registration No. 1158670, registered on September 4, 2012, for OVS.
The Complainant holds various domain names containing the sign OVS, including <ovs.it>, linking to active websites promoting the Complainant’s brands and offering fashion items for online sale.
The disputed domain name was registered on September 13, 2021, and the Complainant submits that at the date of the Complaint, it resolved to an active website which was imitating the contents of the Complainant’s website, using the same promotional images as the Complainant and offering the same products as the Complainant, at discounted prices. Currently, the disputed domain name resolves to an active website offering online sale of fashion items in the Italian language, which includes the Complainant’s name and trademarks.
5. Parties’ Contentions
The Complainant submits that the disputed domain name wholly incorporates its OVS trademark, with the additional common word in the English language “shop”.
The Complainant states that its OVS trademark is a meaningless word in Italian, English, and other languages spoken throughout the world, and asserts that it has not authorized the Respondent to use its trademark and that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant further states that the disputed domain name, as a combination of the trademark OVS and the word “shop”, exactly reproduces the pattern many times adopted by the Complainant when filing a new trademark or registering a new domain name.
In addition, the Complainant submits that the Respondent’s registration and use of the OVS trademark was only aimed at taking advantage of the Complainant’s global reputation, by creating confusion among consumers, and that since the Complainant is globally renowned as an Italian-based leader in the fashion industry, the consumers may be easily led to believe that the items available through the disputed domain name are attributable to the Complainant and that an association between the Complainant and the Respondent may exist.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Even if the Respondent did not file a Response to the Complainant’s contentions, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, paragraph 15(a) of the Rules.
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the disputed domain dame is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain dame; and
(iii) the disputed domain name has been registered and is being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A trademark registration provides a clear indication that the rights in the trademark belong to the Complainant (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.2.1).
The Panel finds that the Complainant has established rights in its OVS trademark, based on its previous registrations and use of the trademark in several countries around the world.
The disputed domain name incorporates the trademark OVS in its entirety, while adding the descriptive term “shop”, which refers to a place where goods or services are sold. This additional term does not prevent a finding of confusing similarity with the trademark OVS, particularly considering that OVS trademark is recognizable within the disputed domain name. According to section 1.8 of the WIPO Overview 3.0, “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”.
Furthermore, the applicable generic Top‑Level Domain (“gTLD”) in a domain name, such as “.online” in this case, is viewed as a standard registration requirement and as such is typically disregarded under the first element confusing similarity test (see section 1.11 of the WIPO Overview 3.0).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s OVS trademark in which the Complainant has valid trademark rights. Therefore, the Complainant has satisfied paragraph 4(a)(i) of the Policy.
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 3.0, which states: “[…] 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”.
The Panel finds that the Complainant has made prima facie case by showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that it never authorized the Respondent to use its trademark as part of the disputed domain name.
The Respondent has not provided any response to the Complainant’s contentions or circumstances of the types specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to any rights or legitimate interests in the disputed domain name.
Moreover, the Policy provides guidance to respondents on how to demonstrate rights or legitimate interests in a domain name. In particular, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name, including: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the mark or service mark at issue”.
Considering that the evidence provided by the Complainant shows that at the date of the Complaint the disputed domain name resolved to an active website imitating the contents of the Complainant’s website, this Panel finds that such website can be used for various illegal or fraudulent activities (such as sale of counterfeit goods or phishing scheme through the payment interface on the website). Although the Complainant has not provided any evidence that the products offered on the website to which disputed domain name resolves are indeed counterfeits or that the website is used for a phishing scheme, such findings cannot be ruled out, having in mind the particulars of the case, and regardless the evidence clearly shows the Respondent has attempted to pass itself off as the Complainant and take unfair advantage of the Complainant’s trademarks. Accordingly, the Panel deems that such use of the disputed domain name by Respondent cannot be considered as use in connection with a bona fide offering of goods and services (see, in particular, section 2.13 of the WIPO Overview 3.0). Furthermore, the Panel finds that the Respondent has not used the disputed domain name for legitimate noncommercial or fair use.
On the basis of the Complainant’s arguments and lack of the Respondent’s response, the Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name for the purposes of this element of the Policy. Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith registration and use. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
Based on the evidence, there is no doubt that Respondent was aware of the Complainant and its OVS trademark, and targeted that trademark when registering the disputed domain name. This conclusion is based on the fact that the Respondent has used the disputed domain name to direct to an active website imitating the Complainant’s website, attracting Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s name and marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the products on discounted prices
Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the disputed domain name, the Respondent was or should have been aware of the Complainant’s trademarks, since the Respondent’s registration of the disputed domain name occurred more than 14 years after the Complainant’s registration of the earliest of its trademarks, and since a trademark register search, or even a simple online search prior to the registration of the disputed domain name would have informed the Respondent of the existence of the oldest trademarks and the Complainant’s extensive use of the OVS trademark as a source identifier. Moreover, the construction of the disputed domain name itself, namely the combination of the Complainant’s trademark with the descriptive term “shop”, is such to imply that the Respondent was aware of the Complainant and its goods and services. Finally, it is indeed difficult to imagine that Respondent, who actively uses the disputed domain name to imitate the Complainant and its business activities, has registered the disputed domain name without any actual knowledge of Complainant and its OVS trademark.
In accordance with section 3.1.4 of the WIPO Overview 3.0, the use of a domain name for illegal activities such as the sale of counterfeit goods is manifestly considered as evidence of bad faith. As emphasized in the previous section, while it has not been conclusively established, it cannot be ruled out that the goods that are offered through the website are counterfeits or that the payment service is used for fraudulent activities. Nonetheless, the Respondent’s impersonation or passing off as the Complainant is clear in this case and accordingly supports a finding of use of the disputed domain name in bad faith.
Since the disputed domain name is confusingly similar to the Complainant’s OVS trademark and resolves to a website which makes unauthorized use of the Complainant’s OVS trademark and images from the Complainant’s website, it is inevitable that confusion will be caused to Internet users. It is also clear that the Respondent intends to create that confusion for the purpose of commercial gain. For this reason, the Panel finds that the disputed domain name is evidently being used in bad faith.
For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the disputed domain name in bad faith 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 Panel orders that the disputed domain name <ovsshop.online> be transferred to the Complainant.
Date: January 24, 2022