WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fila Luxembourg Sárl. v. Domain Admin, Whoisprotection.cc
Case No. D2021-4375
1. The Parties
The Complainant is Fila Luxembourg Sárl., Luxembourg, represented by Red Points Solutions, S.L., Spain.
The Respondent is Domain Admin, Whoisprotection.cc, Malaysia.
2. The Domain Name and Registrar
The disputed domain name <fila-uk.com> is registered with Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 24, 2021. On December 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 29, 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 December 29, 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 December 30, 2021. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 30, 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 Respondent of the Complaint, and the proceedings commenced on January 4, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 25, 2022.
The Center appointed Leon Trakman as the sole panelist in this matter on January 31, 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’s trademark, FILA, is well known internationally. The Complainant, that owns various FILA trademarks, was founded in Italy in 1911. The Complainant has developed different products, including clothing generally, and specifically underwear designs and sportswear. The Complainant has expanded its business operations extensively in its more than 100 years of operation to various international markets.
The Complainant has provided evidence that it has registered multiple trademarks. It has provided a non-exhaustive list of active FILA trademark registrations:
1) United Kingdom national trademark no.UK00001059475 FILA registered on February 27, 1976 for goods in Class 28.
2) International trademark no.448755 FILA registered on October 11, 1979 for goods in Class 03, 05, 14, 18, 24, 25, 28, and 34.
3) United Kingdom national trademark no. UK00001119098 FILA registered on June 21, 1979 for goods in Class 34.
4) United Kingdom national trademark no. UK00001120094 FILA registered on September 4, 1979 for goods in Class 16.
5) International trademark no.450804 FILA registered on March 13, 1980 for goods in Class 03, 05, 14, 16, 18, 24, 25, 28, and 34.
6) International trademark no.450806 FILA registered on March 13, 1980 for goods in Class 03, 05, 14, 16, 18, 24, 25, 28, and 34.
7) Canada national trademark no. TMA259480 FILA registered on June 5 1981 for goods in Class 24, 25, and 28.
8) Israel national trademark no. 46595 FILA registered on August 7, 1981 for goods in Class 28.
9) United Kingdom national trademark no. UK00001186237 FILA registered on November 30, 1982 for goods in Class 9.
10) New Zealand national trademark no. 125120 FILA registered on August 4, 1983 for goods in Class 25, and 28.
11) International trademark no.483202 FILA registered on December 1, 1983 for goods in Class 09, and 12.
12) International trademark no.627957 F FILA registered on October 14, 1994 for goods in Class 03, 16, 21, 22, 24, and 26.
13) United Kingdom national trademark no. UK00002003486 F FILA registered on October 27, 1995 for goods in Class 3.
14) United States of America national trademark no. 2065693 FILA registered on May 27, 1997 for goods in Class 25.
15) United States of America national trademark no. 3284736 FILAregistered on August 28, 2007 for goods in Class 35.
16) United Kingdom national trademark no. UK00003543646 FILA registered on February 19, 2021 for goods in Class 9.
The disputed domain name was registered on March 23, 2021. At the time of filing the Complaint, the disputed domain name resolves to a website selling unauthorized clothes and shoes with the Complainant’s FILA mark.
5. Parties’ Contentions
The Complainant contends firstly, that the disputed domain name is confusingly similar to the Complainant’s trademark; secondly, that the Respondent has no legitimate rights or interests in the disputed domain name; and thirdly, that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name was registered well after the registration of the Complainant’s trademark and is confusingly similar to that mark. It includes the Complainant’s trademark in its entirety. The only change is the addition of “-uk”. Such addition does not prevent a finding of confusing similarity between the disputed domain and the Complainant’s trademark. SeeMou Limited v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org; Elizabeth Davis; Samantha Rampin; and P de Ree, WIPO Case No. D2017-0177.
It is well established that “when a domain name wholly incorporates a complainant’s registered mark, that may be sufficient to establish confusing similarity for purposes of the Policy.” Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768. That is evident in the current case.
As a result, the Panel holds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the disputed domain name <fila-uk.com>.
No evidence is adduced that the Respondent is known by, or otherwise associated with the disputed domain name.
Nor is there evidence that the Complainant authorized the Respondent to register and use the disputed domain name for or on behalf of the Complainant. The Complainant did not authorize the Respondent to act directly, nor through a representative. There is also no basis to hold that the Respondent acted impliedly, or ostensibly as the agent of the Complainant, or that the Complainant ratified the Respondent’s actions at any time following the Respondent’s registration and use of that name.
Accordingly, the Respondent has no rights or legitimate interests in use of the disputed domain name that is confusingly similar to the Complainant’s trademark.
C. Registered and Used in Bad Faith
It is highly improbable that the Respondent was unaware that, on registering the disputed domain name, it was registering a name that was confusingly similar to the Complainant’s long-standing, internationally known and widely registered trademark. It is entirely reasonable to infer that the Respondent “knew or should have known” about the existence of the Complainant’s trademark and the opportunity to attracting users to its website based on that knowledge. See The Net-A-Porter Group Limited v. net-a-porter-uk.com, WIPO Case No. D2015-1176.
As evidence of the Respondent’s knowledge in registering the disputed domain name is the fact that the Complainant’s domain name, <fila.com>, was registered on April 12, 1996. The disputed domain name was registered only on March 23, 2021.
The disputed domain name resolves to a website selling unauthorized clothes and shoes with the Complainant’s FILA mark. The Respondent is using the disputed domain name in bad faith. The Respondent has incorporated the Complainant’s figurative trademark prominently on the Respondent’s website and at the bottom of the Respondent’s webpage. The Respondent has also included the Complainant’s trademark in the picture on that website and in the layout design. On comparable bad faith use of a disputed domain name, see Walgreen Co. v. Muhammad Azeem / Wang Zheng, Nicenic International Group Co., Limited, WIPO Case No. D2016-1607.
The Respondent is using the disputed domain name in bad faith to attract Internet users to its website, by confusing users into believing that it is the Complainant, or otherwise acting on the Complainant’s behalf. The Respondent’s bad faith is evident, too, because the disputed domain name advertise for sale the Complainant’s products. It is reasonable to conclude that the Respondent’s website was designed to create the impression in the minds of users that the Respondent’s website is somehow related to the Complainant’s business. In doing so, the Respondent is engaging in bad faith use of that name. See Salvatore Ferragamo S.p.A. v. Dexter Reading, WIPO Case No. D2014-1494.
The Panel therefore determines that the Respondent acquired the disputed domain name and is using it for the purpose of securing commercial gain by both attracting and misleading users into believe that “www.fila-uk.com”is an official and authorized website for the distribution of the Complainant’s products. That constitutes continuing evidence of both bad faith registration and bad faith use of the disputed name.
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, <fila-uk.com>, be transferred to the Complainant.
Date: February 2, 2022