WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Salvatore Ferragamo S.p.A. v. Ergo Computers Pty Ltd
Case No. DAU2016-0031
1. The Parties
The Complainant is Salvatore Ferragamo S.p.A. of Firenze, Italy, represented by Studio Legale SIB, Italy.
The Respondent is Ergo Computers Pty Ltd of Perth, Western Australia, Australia.
2. The Domain Name and Registrar
The disputed domain name <ferragamo.com.au> (the “Domain Name”) is registered with Web Address Registration Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2016. That day, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the Domain Name. On August 8, 2016, Web Address Registration Pty Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details of the Respondent.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 15, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was September 4, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 5, 2016.
The Center appointed Alan L. Limbury as the sole panelist in this matter on September 13, 2016. 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 very well known Italian company manufacturing and selling shoes, handbags and other fashion articles. Its founder, Salvatore Ferragamo, became known as “shoemaker to the stars” for his work in creating hand made shoes for the film industry. The Complainant is the proprietor of numerous FERRAGAMO registered trademarks and domain names around the world. For the purposes of this decision it is sufficient to refer to Australian valid and subsisting registered trademark No. 758865, FERRAGAMO, registered on November 16, 1998 in Class 9 for eyeglasses of various kinds and in Class 25 for various articles of clothing for men, women and children. The Complainant operates retail outlets in Australia, including in Perth, where the Respondent is located.
The Domain Name was registered on March 11, 2011. It resolves to a parking page which displays the statement that the Domain Name “is registered and secured with CrazyDomains.co.uk”.
5. Parties’ Contentions
The Complainant says the Domain Name is identical to its FERRAGAMO trademark and that the Respondent has no rights or legitimate interests with respect to the Domain Name, which the Respondent both registered and has used in bad faith.
As to legitimacy, the Complainant says the Respondent, who is not known by and does not trade under the Domain Name and makes no legitimate commercial use of it, is neither affiliated with the Complainant nor authorised or licensed by the Complainant to use the FERRAGAMO mark in the Domain Name or at all. A worldwide Saegis search failed to find any evidence of ownership by the Respondent of any FERRAGAMO mark.
As to bad faith, the Complainant says the Respondent certainly knew of the Complainant’s FERRAGAMO mark when it registered and started using the Domain Name, given its similarity to the Complainant’s distinctive mark. Finally, the Respondent’s bad faith is definitely proven by an Internet search that reveals that the Respondent owns several domain names such as <lotusaustralia.com.au>, which corresponds to the well-known LOTUS trademark.
The Respondent did not submit any response.
6. Discussion and Findings
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable”. In the absence of a Response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based upon the complaint”. In the event of such a “default” the Panel is required under paragraph 14(a) of the Rules “to proceed to a decision on the complaint”, whilst under paragraph 14(b) of the Rules the Panel “shall draw such inferences therefrom as it considers appropriate”.
Paragraph 4(a) of the .auDRP requires the Complainant to prove:
(i) the Domain Name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered or subsequently used in bad faith.
A. Identical or Confusingly Similar
The Complainant has shown that it owns numerous registered trademarks for FERRAGAMO, including Australian trademark No. 758865. The Domain Name is identical to that mark, save for the inconsequential country code Top-Level Domain (“ccTLD”) extension “com.au”, which may be disregarded.
Accordingly, the Panel finds the Domain Name to be identical to the Complainant’s mark.
B. Rights or Legitimate Interests
The Panel finds that the FERRAGAMO mark is distinctive and widely known in Australia and worldwide. The Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Name on the part of the Respondent.
The evidentiary burden therefore shifts to the Respondent to show that it does have rights or legitimate interests in the Domain Name. See LEGO Juris A/S v. Brock Flanagan, BJF Web Design, WIPO Case No. DAU2016-0027 (August 19, 2016). The Respondent has made no attempt to do so. On the evidence before the Panel the Respondent is not commonly known by the Domain Name; the Respondent is not making any legitimate noncommercial or fair use of the Domain Name; and the only use which is being made of the Domain Name since registration in 2011 is the display of the Domain Name on a parking page established by CrazyDomains.co.uk. Such use cannot be categorized as legitimate noncommercial or fair use. See Dollar Rent A Car, Inc. v. Tom O'Donnell, Prudential Energy Pty Limited, WIPO Case No. DAU2016-0021 (June 29, 2016).
In the circumstances of this case, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered or Subsequently Used in Bad Faith
Unlike the UDRP, the .auDRP does not require a showing that the Domain Name has been both registered and subsequently used in bad faith. It is sufficient to establish one or other of those circumstances.
The Domain Name was registered many years after the Complainant first registered its FERRAGAMO trademark in Australia.
Apart from the inconsequential “.com.au” ccTLD extension, the Domain Name comprises solely the FERRAGAMO trademark in which the Complainant has well established and widely recognized rights. An Internet user seeing the Domain Name is likely to think that the Domain Name would lead to a website in the “.au” domain space of the Complainant or an Australian subsidiary or affiliate of the Complainant. In the Panel’s opinion, it is more likely than not that when registering the Domain Name the Respondent had the Complainant’s FERRAGAMO trademark in mind. As in “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. McDonald Cooper Properties Pty Ltd., Andrew Cooper, WIPO Case No. DAU2016-0008 (May 5, 2016), absent any contrary evidence or explanation from the Respondent, the Panel concludes that the Respondent registered the Domain Name with the intention of benefiting from that assumed association between the Domain Name and the Complainant and was aware that the Complainant had not in any way authorised such conduct.
In the Panel’s opinion therefore, the Domain Name was registered in bad faith. It is unnecessary to consider whether the Domain Name has been used in bad faith.
The Complainant has requested transfer of the Domain Name. The Complainant satisfies the eligibility criteria to become registrant of the Domain Name because the Complainant is the owner of the Australian registered FERRAGAMO trademark and the Domain Name is an exact match of that trademark.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <ferragamo.com.au> be transferred to the Complainant.
Alan L. Limbury
Date: September 22, 2016