WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fabiana Filippi S.p.A. v. Raymond Castro

Case No. D2017-1044

1. The Parties

The Complainant is Fabiana Filippi S.p.A. of Zona Ind.le Giano dell’Umbria, Italy, represented by Barzanò & Zanardo Roma SpA, Italy.

The Respondent is Raymond Castro of Chino, California, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <fabianafilippishoes.com> is registered with 1API GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2017. On May 29, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 30, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 31, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2017.

The Center appointed Desmond J. Ryan as the sole panelist in this matter on July 5, 2017. 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 disputed domain name was registered on February 18, 2017.

The Complainant is an Italian designer and manufacturer of high fashion clothing including footwear which it promotes and sells under the trade mark FABIANAFILIPPI (the “Trade Mark”).

The Complainant’s goods are distributed under the Trade Mark in 30 countries throughout the world including the United States. It advertises and promotes the Trade Mark worldwide through press advertisements including leading fashion magazines such as Vogue and Harpers Bazaar. It promotes its products online through its website at “www.fabianafilippi.com” and through a range of social media networks such as Facebook, Instagram, Twitter, Pinterest and YouTube. The Complainant owns registrations of the Trade Mark in classes 13, 18 and 25 including international registrations covering 17 countries and regions including the United States (see, e.g., international registration number 1048526, registered on May 19, 2010).

The website at the disputed domain name prominently shows the Trade Mark and offers for sale items of clothing purporting to be at a 70 percent discount. Prior to filing the Complaint, the Complainant attempted to place an order at the Respondent’s website but the transaction was denied.

No information is available about the Respondent other than that which is shown in the WhoIs for the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complaint’s contentions may be summarized as follows:

(a) The Complainant has long-established and well-known rights in the Trade Mark and the disputed domain name wholly incorporates that Trade Mark.

(b) The Respondent does not own the Trade Mark and the Complainant has not authorized the Respondent to use the Trade Mark in any way or to incorporate it into the disputed domain name.

(c) The disputed domain name is substantially identical to the Trade Mark save for the addition of the descriptive word “shoes”, a commodity in respect of which the Complainant uses the Trade Mark.

(d) The Complainant is not commonly known by the Trade Mark. The Respondent’s use of the disputed domain name is fraudulent and does not constitute use in the offering of bona fide goods or services; it is not a noncommercial or fair use of the disputed domain name and there is no other basis upon which the Respondent can claim any right or legitimate interest in the disputed domain name.

(f) The Respondent’s website at the disputed domain name prominently features the Trade Mark rendered in a font resembling that used by the Complainant and featuring photographs which are original photographs of the Complainant’s goods in respect of which the Complainant owns the copyright.

(g) The goods displayed at the Respondent’s website include items which are part of the Complainant’s current collection and which it asserts cannot be offered at a discount as high as 70 percent. The Complainant therefore suspects that either the goods are counterfeit, or are not in fact available and the Respondent uses the website at the disputed domain name in the carrying out of a “phishing” exercise.

(h) At the time of registering the disputed domain name, the Respondent was clearly well aware of the Complainant’s Trade Mark and registered it without authorization for the purpose of taking undue profit from it.

(i) On the same date that the Respondent registered the disputed domain name, he registered two other domain names comprising well-known trade marks coupled with the word “shoes”.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant was established in 1985 and has trade mark registrations dating from 1997 and international trade mark registrations in several countries including the United States dating from November 20, 2008. It has also provided evidence to indicate a substantial presence and publicity in a number of countries including the United States, which indicate that it would have developed a substantial reputation in the Trade Mark in those countries. The disputed domain name wholly includes the Trade Mark with the addition of the word “shoes”, a commodity in respect of which the Complainant uses the Trade Mark. The addition of the word “shoes” does not serve to distinguish the disputed domain name from the Trade Mark but rather tends to enforce the confusing similarity by further associating the disputed domain name with a product in respect of which the Trade Mark is used by the Complainant. (See, e.g., Ansell Healthcare Products, Inc. v. Australian Therapeutic Supplies Pty. Ltd., WIPO Case No. D2001-0110.)

The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trade mark in respect of which the Complainant has rights and the requirements of paragraph 4(a)(i) of the Policy are therefore satisfied.

B. Rights or Legitimate Interests

On the evidence produced by the Complainant, it appears more likely than not that the Respondent is using the disputed domain name either to offer for sale counterfeit goods or to offer, fraudulently, non-existent goods. Such use cannot constitute use of the disputed domain name in the offering of bona fide goods or services. The Complainant asserts that it has not authorized the Respondent to use the Trade Mark in any way and there is no evidence of any other basis upon which the Respondent might claim a right or legitimate interest in the disputed domain name.

The Complainant has established a strong prima facie case and the Respondent has failed to rebut it. The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

According to the WhoIs for the disputed domain name the Respondent is located in the United States. As discussed in paragraphs A and B above, the Complainant has shown that prior to the registration of the disputed domain name in February, 2017, the Complainant had established a substantial reputation in the Trade Mark through extensive advertising and online promotion. The Trade Mark is not a common word or a common name and, combined with the word “shoes”, leads to the conclusion that, when registering the Trade Mark, the Respondent had the Trade Mark in mind and registered the disputed domain name with intent to profit from it. Further evidence tending to support that conclusion is the fact that on the same day that it registered the disputed domain name, it registered two other domain names comprising fashion-related trade marks coupled with the word “shoes”. Unlike the mark, the subject of the decision in Investone Retirement Specialists Inc. v. Motohisa Ohno, WIPO Case No. D2005-0643, the trade marks in question were not a mere combination of attractive generic words.

At the time of filing the Complaint, the disputed domain name resolved to a page prominently headed with the Trade Mark rendered in a font similar to that used by the Complainant. The page describes and illustrates items of fashion using photographs which the Complainant says are photographs in which it holds copyright. The goods are purported to be offered for sale at heavily discounted prices which, according to the Complainant, are not credible if the goods are genuine goods and/or are goods which are actually for sale. The Complainant attempted to purchase the goods by following the instructions at the website but the attempt was unsuccessful. The Complainant suggests that the site may be being used to extract personal information from Internet users, a process known as “phishing”. Whether or not that is the case, it appears clear on the evidence provided by the Complainant that the disputed domain name is being used for commercial gain to attract Internet users to the Respondent’s website by creating confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of that website or a product or service on that website. The Respondent has had an opportunity to rebut the Complainant’s allegations but has failed to do so.

The Panel therefore finds that the disputed domain name was registered and is being used in bad faith and the requirement of paragraph 4(a)(iii) of the Policy has been satisfied.

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 <fabianafilippishoes.com> be transferred to the Complainant.

Des Ryan AM
Sole Panelist
Date: July 12, 2017