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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mario Valentino S.p.A. v. Mario Tzekov

Case No. DME2021-0008

1. The Parties

The Complainant is Mario Valentino S.p.A., Italy, represented by Società Italiana Brevetti S.p.A., Italy.

The Respondent is Mario Tzekov, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <mariovalentino.me> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2021. On April 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 30, 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 May 10, 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 May 13, 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 May 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 10, 2021.

The Center appointed Nick J. Gardner as the sole panelist in this matter on June 18, 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

The Complainant is incorporated in Italy. It was founded in Naples, Italy, in 1952 by a Mr. Mario Valentino. The filed evidence establishes that it is a famous and successful luxury goods manufacturer.

The Complainant owns a range of registered trademarks for the words Mario Valentino including for example Italian trademark 362016000032416, registered on April 4, 2017, for MARIO VALENTINO, and the International Trademark 408736, registered on June 27, 1974, for MARIO VALENTINO. These trademarks are collectively referred to as the “MARIO VALENTINO trademark” in this decision. The Complainant is the owner of more than 42 domain names containing the trademark MARIO VALENTINO. Its principal website is linked to the domain name <mariovalentino.it> and has been in operation since 1997.

The filed evidence establishes the Complainant as being the only significant business that uses the name “Mario Valentino” and that name is, in the world of fashion and luxury goods, extremely famous and well known.

The Disputed Domain Name was registered on March 3, 2013. It resolves to a website which contains “pay-per-click” (“PPC”) links which appear likely to be automatically generated. Many of these appear likely to lead to third party sites concerning luxury goods or fashion items.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows:

The Disputed Domain Name is identical or confusingly similar to the Complainant’s famous trademark MARIO VALENTINO.

The Respondent has no rights or legitimate interests in the terms “Mario Valentino”.

The Disputed Domain Name was registered and is being used in bad faith. It is being used for a PPC website which attracts traffic because the Disputed Domain Name has adopted the Complainant’s well-known and famous trademark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Preliminary Matters

The Panel notes that no communication has been received from the Respondent. However, given that the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).

Substantive Matters

To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:

(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has rights in the MARIO VALENTINO trademark. The Panel finds the Disputed Domain Name is confusingly similar to this trademark. It is well established that the country code Top-Level Domain (“ccTLD”), in this case “.me”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Groupe Adeo v. Domains By Proxy, LLC / Danil Dzigur, WIPO Case No. DME2021-0004. The only other difference is the omission of a space between the words “Mario” and “Valentino”. The Panel considers this to be immaterial particularly as spaces cannot form part of a domain name for technical reasons

Accordingly, the Panel finds that the Disputed Domain Name is identical to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

The Panel finds the MARIO VALENTINO trademark is, on the evidence before the Panel, a term in which the Complainant has developed a significant reputation.

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:

(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use MARIO VALENTINO trademark. The Complainant has prior rights in the MARIO VALENTINO trademark which precede the registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

The Panel concludes that (iv) applies as the Disputed Domain Name is likely to attract traffic because of confusion with the Complainant’s mark, and the Respondent derives commercial gain as a result. The website linked to the Disputed Domain Name comprises a series of PPC links to other third-party websites. The Panel infers that some consumers, once at this website will follow the provided links and “click through” to other sites which offer products some of which may compete with those of the Complainant. The Respondent presumably earns “click-through” linking revenue as a result. The Panel infers the website is automatically generated. This does not however matter. It is well established that where a domain name is used to generate revenue in respect of “click-through” traffic, and that traffic has been attracted because of the name’s association with the Complainant, such use amounts to use in bad faith, see for example Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315; Owens Corning v. NA, WIPO Case No. D2007-1143; McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396.

See also WIPO Overview 3.0 section 3.5: “Can third-party generated material ‘automatically’ appearing on the website associated with a domain name form a basis for finding bad faith?

Particularly with respect to ‘automatically’ generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests).

Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.”

Accordingly, the Panel finds the Respondent has registered and used the Disputed Domain Name in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.

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 <mariovalentino.me> be transferred to the Complainant.

Nick J. Gardner
Sole Panelist
Date: July 2, 2021

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