WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Salvatore Ferragamo S.p.A. v. Amirhossein Ghasemi
Case No. DIR2016-0023
1. The Parties
The Complainant is Salvatore Ferragamo S.p.A. of Florence, Italy, represented by Studio Legale SIB, Italy.
The Respondent is Amirhossein Ghasemi of Tehran, Islamic Republic of Iran.
2. The Domain Name and Registrar
The Disputed Domain Name <ferragamo.ir> is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2016. On August 10, 2016, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On August 14, 2016, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On August 12, 2016, the Complainant requested a 30-day suspension of the proceeding so the Parties could enter into settlement discussions. On August 12, 2016, the Center confirmed the proceeding was suspended until September 11, 2016. On September 9, 2016, the Complainant requested that the suspension be extended for 20 days, and the Center confirmed the proceeding was further suspended until October 1, 2016. On September 30, 2016, the Complainant requested that the proceeding be reinstituted, and the Center confirmed to the Parties and IRNIC the proceeding was reinstituted as of September 30, 2016. Hard copies of the Complaint were received by the Center on October 4, 2016.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir 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 October 6, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was October 26, 2016. The Respondent sent informal email communications to the Center on October 1, 2016, October 7, 2016, October 9, 2016, and October 18, 2016. The Respondent did not submit a formal Response. On October 27, 2016, the Center informed the Parties of the commencement of panel appointment.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on November 23, 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 an Italian company manufacturing, marketing and selling shoes and handbags. The Complainant has used the trademark FERRAGAMO for over 80 years with respect to shoes and for over 40 years with respect to handbags. The Complainant also manufactures, markets and sells a variety of other types of products, such as wallets, luggage, belts, apparel, fragrances, gift items and costume jewelry. The Complainant’s products can be found at retail stores located in many countries, including Iran since 2008.
The Complainant owns registrations for several domain names comprising “Ferragamo”, including <ferragamo.com> and <ferragamo.net>, as well as more than 400 trademark registrations for FERRAGAMO and similar marks in more than 100 countries, including Iranian trademark registration No. 90917 for FERRAGAMO, registered on August 13, 2000.
The Complainant has also over the years received substantial publicity in the fashion industry for its products.
The Respondent registered the Disputed Domain Name on January 31, 2013.
The Disputed Domain Name does not resolve to an active website.
5. Parties’ Contentions
The Complainant provides several trademark registrations dating back to 1937. The Complainant states that the Disputed Domain Name is identical or confusingly similar to the FERRAGAMO trademark in which the Complainant has rights.
The Complainant argues that the Respondent has not been commonly known by the Disputed Domain Name, and that the Respondent has no history of using the Disputed Domain Name in connection with a bona fide offering of goods and services. The Respondent is not affiliated in any way with the Complainant. To the best of the Complainant’s knowledge, the Respondent does not own any trademark applications or registrations for “ferragamo” or any other mark comprising “ferragamo”.
Finally, the Complainant underlines the fact that the Complainant is known worldwide, including in Iran, where the Respondent is based. The Respondent must have known about the Complainant and its trademark at the time of registration of the Disputed Domain Name. The Respondent registered the Disputed Domain Name only recently with a view to take unfair advantage of the reputation of the Complainant’s mark. The Respondent’s registration confuses potential customers as to the Respondent’s affiliation with the Complainant since the Complainant distributes in Iran. At the same time, the Respondent’s registration discourages Internet users from locating the Complainant’s website, thereby diluting the value of the Complainant’s trademark. In addition, the Complainant points out that the Disputed Domain Name does not resolve to an active website, which is another indication of bad faith use.
The Respondent has not submitted a formal response, but in its email communications, the Respondent seems to consent to the remedy requested by the Complainant, including in the following email received by the Center on October 18, 2016:
i have received several emails with lots of texts.
please tell irnic to unlock domain and finish transfer.”
6. Discussion and Findings
As noted above, the Respondent seems to agree to the transfer of the Disputed Domain Name to the Complainant. However, the Complainant informed the Center on September 30, 2016 that it was not possible to obtain the transfer, and the Complainant therefore requested the Center to reinstitute the proceedings.
Paragraph 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) considers whether a UDRP panel can decide a case based on a respondent’s consent to transfer. In relevant part, “[s]ome panels have declined to grant a remedy solely on the basis of the respondent’s consent, but rather elected to proceed to a substantive determination of the merits; for example, […] because the panel finds that the complainant has not agreed to a consent decision and the complainant is entitled to the decision for which it has paid in filing its complaint”.
As the case is not suspended and taking into account that the Complainant requested the Center to reinstitute the proceedings, the Panel moves on to decide the case on the merits and consideration of the three requisite elements under paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark FERRAGAMO.
The test for confusing similarity involves the comparison between the trademark and the Disputed Domain Name. In this case, the Disputed Domain Name consists of the Complainant’s trademark.
For the purposes of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the country code Top-Level Domain “.ir”.
The Panel finds that the Domain Name is identical to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent has no registered trademarks or trade names corresponding to the Disputed Domain Name. The Complainant has not granted any authorization to the Respondent to register a domain name containing its trademark or otherwise make use of its mark.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not rebutted the Complainant’s allegations.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered or Used in Bad Faith
The Panel finds that the Respondent must have been aware of the Complainant’s trademark and its business when he registered the Disputed Domain Name. The Complainant has used its trademarks long before the registration of the Domain Name.
Even if the Disputed Domain Name does not resolve to an active website, the Respondent’s registration confuses potential customers in Iran, and discourages Internet users from locating the Complainant’s website.
Furthermore, the Respondent has not objected to the Complainant’s allegations. On the contrary, the Respondent seems to consent to the transfer of the Disputed Domain Name.
For the reasons set out above, the Panel concludes, on the balance of probabilities, that the Disputed Domain Name was registered and is being used in bad faith, within the meaning of the 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 <ferragamo.ir> be transferred to the Complainant.
Date: November 30, 2016