WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ente per le Arti Applicate alla Moda ed al Costume v. WhoisGuard, Inc./ Josephine Gifford

Case No. DPW2019-0005

1. The Parties

The Complainant is Ente per le Arti Applicate alla Moda ed al Costume, Italy, represented by Società Italiana Brevetti S.p.A., Italy.

The Respondent is WhoisGuard, Inc., Panama / Josephine Gifford, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <polimoda.pw> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 2019, 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 October 8, 2019, 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 October 11, 2019.

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 October 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 13, 2019.

The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on November 20, 2019. 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 states that it is a globally renowned fashion school based in Florence, Italy. The Complainant notes that in recent years it has become one of the top ranked fashion schools globally and that its reputation attracts prestigious staff and a diverse range of students.

The Complainant states that it is the owner of numerous trademark registrations in several jurisdictions that consist of or contain the trademark POLIMODA (“the Complainant’s POLIMODA mark”). The Complainant has used the POLIMODA mark in Italy and other countries for educational and research services in the field of fashion. Examples of the Complainant’s POLIMODA mark include the following:

Mark

Trademark number

Country

Date of registration

Class

POLIMODA

10234C/87

Italy

June 12, 1989

41, 42

POLIMODA

964731

International Registration designating: China, Russian Federation, European Union

March 26, 2008

41, 42

logo

1444482

International Registration designating: Canada, China, Colombia, Republic of Korea, Japan, India, Mexico, Russian Federation, United States, European Union

July 27, 2018

25, 35, 41, 42

The Complainant is the owner of various domain names incorporating the POLIMODA mark – in particular <polimoda.com>. The Complainant has listed all of these domain names in Annex 9 to its amended Complaint.

The disputed domain name was registered on January 5, 2019. At the time of the Complaint, the disputed domain name resolved to a website which the Complainant asserts was identical in layout and content to the Complainant’s website “www.polimoda.com”.

5. Parties’ Contentions

A. Complainant

The Complainant asserts its rights in the trademark POLIMODA. The Complainant contends that the disputed domain name is identical to its trademark. The Complainant argues that the disputed domain name’s Top-Level Domain (“TLD”) “.pw” should be disregarded when evaluating the similarity of the Complainant’s trademark to the disputed domain name. In addition, the Complainant notes the disputed domain resolves to an active website which is substantially identical in its layout and content to the Complainant’s website “www.polimoda.com”.

The Complainant also states that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not known by the disputed domain name and is not related to the Complainant’s business; nor has the Complainant authorised or consented to the Respondent’s registration and/or use of the disputed domain name. The Complainant asserts that use of the disputed domain name for a copycat website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.

Further, the Complainant contends that the disputed domain name was registered and is being used by the Respondent in bad faith. At the time of registration, the Complainant’s business that is associated with the POLIMODA trademark was well established and the Respondent knew or should have known of the trademark’s existence. The Complainant adds that the Respondent is unfairly and intentionally taking advantage of the Complainant’s trademark to attract Internet users for commercial gain to the disputed domain name, or to drive them to other websites, creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the disputed domain name or of the services to which links on the website redirect.

B. Respondent

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

6. Discussion and Findings

Pursuant to 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name is identical to the Complainant’s POLIMODA trademark. The only distinguishing feature is the disputed domain name’s “.pw” TLD extension. However, a TLD is viewed as a standard registration requirement and as such is disregarded in determining whether a domain name is identical or confusingly similar. In this respect, the Panel refers to section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”).

Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied in favour of the Complainant.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name by, inter alia, proving any one of the following elements:

(i) that before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

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

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

The Complainant has the burden of proving the Respondent lacks rights or legitimate interests in the disputed domain name. Given the difficulty that in “proving a negative” in respect of information that is within the Respondent’s control, the burden of proof will shift to the Respondent if the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. In this respect, the Panel refers to section 2.1, WIPO Overview 3.0.

The Complainant has asserted, and the Panel accepts, that it has not authorised or consented to the Respondent’s registration and use of the disputed domain name, which incorporates the Complainant’s POLIMODA trademark. Therefore, the Panel finds the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no right or legitimate interest in the disputed domain name. The burden of production shifts to the Respondent who has not filed a reply.

In addition, the Panel notes the UDRP panels have found tha domain names identical to a complainant’s trademark carry a high risk of implied affliation. In this respect, the Panel referes to section 2.5.2, WIPO Overview3.0.

Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favour of the Complainant.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(ii) of the Policy, the following non-exhaustive circumstances are taken as evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputeddomain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iiii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputeddomain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s site or location.

The Panel is satisfied the disputed domain name has been registered in bad faith for the following reasons:

(i) At the time of registering the disputed domain name, the Respondent must have been aware of the Complainant, its POLIMODA mark and the Complainant’s exclusive rights in that mark. POLIMODA is not a dictionary word and a cursory Google search would have revealed its unique usage by the Complainant. Further, in order to copy the Complainant’s website content and layout for inclusion on its website corresponding to the disputed domain name the Respondent must have been aware of the nature of the Complainant’s business, its website and its trademark.

(ii) Further, paragraph 2 of the UDRP places a burden on registrants when it states “by applying to register a domain name […] you hereby represent and warrant to us that […] to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party”. It further clarifies that it is the registrant’s responsibility “to determine whether [the] domain name registration infringes or violates someone else’s rights”. The Panel finds the Respondent has clearly failed to discharge this burden. As above, a simple Google search would have revealed the Complainant’s rights in the POLIMODA mark. The Respondent’s copycat website, incorporating the content of the Complainant’s legitimate website (including its POLIMODA mark), supports a finding that the Respondent knew of the Complainant and the Complainant’s POLIMODA mark at the Relevant Date.

The Panel is also satisfied that the disputed domain name has been used in bad faith as it leads to an identical copycat website of the Complainant’s legitimate site. The Complainant has submitted historical screenshots that show the layout of the Respondent’s website. The Panel has verified these screenshots are substantially identical in layout and content to the Complainant’s website “www.polimoda.com”. The Panel agrees with previous UDRP decisions that unauthorised registration of a domain name to display a copycat website of a Complainant’s legitimate website is bad faith usage of a disputed domain name (Curo Intermediate Holdings Corp. v. Dhruvin Shah, WIPO Case No. D2016-1282; Arkema France v. Aaron Blaine, WIPO Case No. D2015-0502). Further, the Respondent’s use of a privacy service to mask its contact details is consistent with its opportunistic and unauthorised plagiarism of the Complainant’s website and POLIMODA trademark.

For completeness, the Panel notes it has considered the Complainant’s argument that the Respondent is attracting users to its website for commercial gain as evidence of bad faith use. The Panel notes that apart from the Complainant’s assertion of the existence of pay-per-view or other similar links on the Respondent’s website, no evidence is proffered which shows: (a) the existence of these links; and (b) to which sites or services the links redirect. The Panel confirms that the existence of such links can be evidence of bad faith use. However, given the lack of evidence proffered by the Complainant, and the Panel’s inability to independently verify its assertion of the Respondent’s commercial gain, the Panel is not persuaded by this element of the Complainant’s argument.

Overall, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favour of the Complainant.

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, <polimoda.pw> be transferred to the Complainant.

Andrew Brown QC
Sole Panelist
Date: December 4, 2019