WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fendi S.r.l. v. Ndiaye Therese

Case No. D2018-0179

1. The Parties

The Complainant is Fendi S.r.l. of Rome, Italy, represented by Studio Barbero, Italy.

The Respondent is Ndiaye Therese of Metz, France.

2. The Domain Names and Registrar

The disputed domain names <fendideals.com>, <fendideals.shop>, <fendideals.store>, <fendijp.biz>, <fendi.promo>, <fendivip.shop>, and <fendivip.store> are registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 29, 2018. On January 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 1, 2018, 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 February 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 26, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 27, 2018.

The Center appointed Mihaela Maravela as the sole panelist in this matter on March 15, 2018. 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 fashion house that in 2001 became part of the multinational luxury goods conglomerate LVMH Moet Hennessy. The FENDI trademark was used by the Complainant or its predecessors in title for more than 90 years in connection with products of the high-fashion and leather industry ready-to-wear clothes, handbags, small leather goods, luggage, shoes, jewelry, eyewear, fragrances and home furniture. Bloomingdales was the first American store to start selling FENDI branded products in the United States back in 1968. Today, FENDI products are commercialized in many countries with more than 200 stores in different locations. The trademark FENDI was and presently is supported by intensive advertising campaigns worldwide, with collections appearing in important international and French magazines with broad circulation. The Complainant's principal website dedicated to FENDI brand, that was registered on December 26, 1995, is "www.fendi.com", to which most of its domain names are redirected and that generates a significant number of visits by Internet users.

The Complainant is the exclusive owner of a number of registered trademarks consisting of the word FENDI in various jurisdictions throughout the world, including the following:

- the International Trademark for the word FENDI with registration no. 426761 registered as of December 1, 1976, renewed;
- the International Trademark for the word FENDI with registration no. 483395 registered as of March 22, 1984, renewed;
- the International Trademark for the word FENDI with registration no. 483514 registered as of March 26, 1984, renewed;
- the International Trademark for the word FENDI with registration no. 484881 registered as of May 7, 1984, renewed;
- the International Trademark for the word FENDI with registration no. 492942 registered as of March 18, 1985, renewed;
- the European Union Trademark for the word FENDI with registration no. 008252496 registered as of November 14, 2009;
- the European Union Trademark for the word FENDI with registration no. 009875352 registered as of September 12, 2011.

The Respondent registered the disputed domain names as follows:

<fendideals.com>, registered on February 8, 2017;
<fendideals.shop>, registered on February 6, 2017;
<fendideals.store>, registered on February 6, 2017;
<fendijp.biz>, registered on February 7, 2017;
<fendi.promo>, registered on February 6, 2017;
<fendivip.shop>, registered on February 6, 2017;
<fendivip.store>, registered on February 6, 2017.

All the disputed domain names except for <fendideals.shop> resolve to an active website that is used for selling products under the FENDI trademark. The disputed domain name <fendideals.shop> resolves at the date of this decision to an inactive website.

A cease-and-desist letter has been sent in what concerns the registration of the disputed domain names but no response was received from the Respondent.

The Respondent was involved in three other UDRP proceedings, which were all decided in favor of the respective complainants: Moncler S.p.A. v. Ndiaye Therese and Ndiaye Therese, Newbeta, WIPO Case No. D2017-0346; Omega SA v. Ndiaye Therese, WIPO Case No. D2017-1296; Chapter 4 Corp. d/b/a Supreme v. Dominique Lacroix, Ndiaye Therese, Newbeta, Trani Johanna, geryi wang, WIPO Case No. D2017-1902.

5. Parties' Contentions

A. Complainant

The Complainant argues that the disputed domain name <fendi.promo> is identical to the trademark FENDI, as it reproduces the trademark in its entirety with the mere addition of the generic Top Level Domain ("gTLD") ".promo", which is typically disregarded when assessing identity or confusing similarity between a trademark and a domain name. The other disputed domain names are confusingly similar with FENDI since they incorporate the whole of the Complainant's trademark, with the mere addition of generic terms, a circumstance which does not affect the confusing similarity. The non-distinctive elements "deals", "vip" and the geographical indication "jp" included in the disputed domain names reinforce the likelihood of confusion with the Complainant's trademarks, as they refer to occasions on which the Complainant's could be purchased, or evoke, as in the case of "vip", particular treatment that a person could receive. Therefore, Internet users are led to believe that the disputed domain names are registered and used by the Complainant or, at least, by authorized third parties, in order to promote its products on the Internet.

Further, the Complainant argues that the Respondent is not a licensee, an authorized agent of the Complainant or, in any other way, authorized to use the Complainant's trademark FENDI. The Complainant shows that upon its information and belief, the Respondent is not commonly known by the disputed domain names. The disputed domain names are or were redirected to commercial websites publishing the Complainant's figurative trademarks and official images, imitating the Complainant's official website. Furthermore, on said websites FENDI branded products, which are very likely counterfeit also in light of the discounted process, are offered for sale. Such willful conduct clearly demonstrated according to the Complainant that the Respondent does not intend to use the disputed domain names in connection with any legitimate purpose and their use cannot be certainly a legitimate noncommercial or fair use without intent for commercial gain. No fair use according to the Oki Data principles could be invoked in the present case by the Respondent who failed to accurately and prominently disclose the absence of relationship with the trademark holder and to provide information about the entity operating the online stores published at the disputed domain names.

With regard to bad faith registration and use, the Complainant argues that in light of the use of the trademark FENDI since 1925, the amount of advertising and sale of the Complainant's products, the intensive use of the trademark worldwide, the Respondent could have not possibly ignored the existence of the Complainant's trademark at the time of the registration of the disputed domain names, with which it is identical or confusingly similar. Furthermore, the actual knowledge of the trademark FENDI by the Respondent at the time of registration is demonstrated by the fact that she secured 14 domain names incorporating the Complainant's trademark and has been redirecting them to websites where the Complainant's trademark features prominently and products bearing FENDI trademarks are sold. The conduct of the Respondent shows that the only purpose of the registration of the disputed domain names was to intentionally attempt to attract, for commercial gain, Internet users to the websites, creating a likelihood of confusion and to take advantage from the well-known character of the trademark for the Respondent's personal profit. Moreover, the Respondent registered the disputed domain names in order to prevent the Complainant from reflecting its trademark FENDI in corresponding domain names, and has clearly engaged in a pattern of conduct, since she registered 14 domain names incorporating the trademark FENDI. The Complainant also notes that the Respondent was named respondent in 3 prior UDRP cases which involved well-known trademarks and those were concluded with the transfer of the disputed domain names to the complainant.

B. Respondent

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

6. Discussion and Findings

Noting the fact that the Respondent has not filed a Response, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.

"A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable", paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:

(i) that the disputed domain names are 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 names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant must establish that it has a trademark or service mark and that the disputed domain names are identical or confusingly similar to that trademark or service mark for the Complainant to succeed.

The Complainant adduced evidence of trademark registrations for FENDI in the name of Fendi Adele S.r.l., a company that in 2017 was merged by incorporation into the Complainant and submitted evidence in this respect. According to unrebutted assertions of the Complainant, the Complainant is taking steps to record the change of ownership of its trademark portfolio and in any case the Complainant argues it is entitled to rely upon Fendi Adele S.r.l.'s trademark registrations and use of FENDI distinctive sign since, as a result of the incorporation, it took over all the active and passive assets of the merged company in all contractual relations, actions, rights and obligations of the latter, of any nature. A trademark owner's affiliate such a subsidiary of a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint. See section 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). A fortiori, in the Panel's view, a company that has taken over all rights and obligations of the trademark holder by incorporation, has rights in the trademarks of the latter for the purpose of the UDRP proceedings. Given the evidence put forward by the Complainant, the Panel is satisfied that it proved it has rights over the FENDI trademark.

As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain names to the trademarks in which the Complainant holds rights.

Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. (See Aldermore Bank Plc v. Hildegard Gruener, WIPO Case No. D2016-1617).

Here the disputed domain names incorporate the Complainant's trademark FENDI in addition to descriptive terms, such as "deals" and "vip".

The fact that a domain name wholly incorporates a complainant's trademark may be sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The addition of a descriptive term does not serve to distinguish the domain name from the trademark. See section 1.8 of the WIPO Overview 3.0.

In addition, the disputed domain name <fendijp.biz> comprise the geographically descriptive term "jp". As held by previous UDRP panels in similar cases, "[t]his geographical addition does little to differentiate the disputed domain name from the Complainant's mark. As the Complainant's argues, the geographical addition may serve only to emphasise the mark by indicating a geographical connection with the Complainant's business and location." See, e.g., Fendi Adele S.r.l. v. PrivacyProtect.org / Liao Yani, WIPO Case No. D2012-2346.

It is well accepted by UDRP panels that a gTLD, such as ".com", is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. Also the new gTLDs such as ".store", ".shop", ".promo" should be disregarded for the purpose of assessing the first element of the Policy. See section 1.11 of the WIPO Overview 3.0.

This Panel concludes that the disputed domain names are confusingly similar to the trademarks of the Complainant and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent's rights or legitimate interests in a disputed domain name:

(i) before any notice to it of the dispute, the respondent's use of, or 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) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) 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 consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: "[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."

In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has established that it holds rights over the trademark FENDI and claims that the Respondent is not sponsored by or affiliated with the Complainant in any way and that the Complainant has not given the Respondent permission to use the Complainant's trademarks in any manner, including in domain names. There is no evidence indicating that the Respondent is commonly known by the disputed domain names or the name "fendi". See for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957.

From the evidence put forward by the Complainant, most of the websites to which the disputed domain names resolve redirect Internet users to websites displaying, without any disclaimer of non-affiliation, FENDI trademarks and according to the Complainant, display some images prima facie taken from Complainant's official Ad campaigns. As held by previous panels in similar situations, this is not a bona fide offering of goods and services. See, Cube Limited v. Gueijuan Xu, WIPO Case No. D2017-2514. The Respondent has used the Complainant's logo and trademark on the websites to which the disputed domain names resolve to imitate the official website of the Complainant. This represents an act of passing off which cannot be bona fide use. See Philipp Plein v. Gueijuan Xu, WIPO Case No. D2017-2535.

Moreover, one of the disputed domain names does not resolve to an active website at the date of this decision; however, from the evidence put forward by the Complainant, the said domain name, <fendideals.shop> was used in a similar fashion as the other disputed domain names.

By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain names. See for a similar finding Cash Converters Pty Ltd v. Mirriam Musonda-salati, WIPO Case No. D2014-1839.

With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

To fulfill the third requirement of the Policy, the Complainant must prove that the disputed domain names were registered and are being used in bad faith.

According to the unrebutted assertions of the Complainant, its FENDI trademark is widely used in commerce since 1925, well before the registration of the disputed domain names in February 2017. The disputed domain names incorporate the Complainant's trademark and descriptive words and/or geographically descriptive terms in addition to the relevant gTLD. The websites to which the disputed domain names resolve or used to resolve include the Complainant's logo and imitate the Complainant's official website. Under these circumstances, it is likely that the Respondent was aware of the Complainant's trademark at the registration date of the disputed domain names. See for similar finding Philipp Plein v. Gueijuan Xu, supra.

As regards the use of the disputed domain names, paragraph 4(b)(iv) of the Policy has direct bearing to the present case:

"(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his website 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 said website location or of a product or service on that website location."

The conduct of the Respondent falls under the above provisions. The disputed domain names are confusingly similar to the FENDI trademark of the Complainant. The websites to which most of the disputed domain names resolve redirect users to websites similar to the official website of the Complainant. On the websites to which the disputed domain names resolve products under FENDI trademark are sold at discounted prices. The Internet users will likely be confused as to the source of the products sold on such websites. (See PRADA S.A. v. Artemis Davis / Mo Zeghloul / Xinqian Rhys / Xiayu Zhi / Gueijuan Xu, supra). Under these circumstances, the Panel agrees with findings of previous UDRP panels that "The Respondent's bad faith registration and use of the disputed domain name is reflected in the Respondent's intention to mislead Internet users into believing that the Respondent is the Complainant, or that the Respondent is acting for the Complainant. The Respondent's bad faith is particularly evident in creating a website with the same look and feel as the Complainant's website devoted to online banking, 'www.migrosbank.com'. In this regard, the Panel finds, at the very least, that the Respondent intends to mislead Internet users into accessing its website in the false belief that they were accessing Complainant's website, and that it did so by registering and using the disputed domain name, which is confusingly similar to Complainant's trademark, and including Complainant's trademark MIGROS in the website to which the disputed domain name resolved." See, Migros-Genossenschafts-Bund v. James Okogb, Micrio, WIPO Case No. D2017-0647; Migros-Genossenschafts-Bund v. Patrizio De Bortoli, MediaEtCetera GmbH, WIPO Case No. D2017-0980.

With respect to the disputed domain name <fendideals.shop>, it does not feature any active content at the moment. However, there is no evidence in the record to indicate that the Respondent has used this disputed domain name or intends to use this disputed domain name in connection with a bona fide offering of goods and services. On the contrary, from the unrebutted evidence submitted by the Complainant, it results that the domain name <fendideals.shop> was used in a similar way as the other disputed domain names. In any event, as established in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the passive holding of a domain name following its bad faith registration can satisfy the requirements of paragraph 4(a)(iii) of the Policy if the circumstances of the respondent's behavior are indicative of bad faith.

The following factors were considered by the Panel as indicative of bad faith registration and use of the above disputed domain name:

- the Respondent's lack of response to the Complaint. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210;

- the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name as per paragraph 4(b) of the Policy;

- any use of the disputed domain name would lead the public to the conclusion that it is, together with its connecting website, associated with the Complainant;

- the well-known character of FENDI trademarks – as held for example in Fendi Adele S.r.l. v. Carl Lim, WIPO Case No. D2006-1589;

- also, as noted above, the Panel has concluded that the Respondent had knowledge of the Complainant's trademark at the time of registration of the disputed domain name. The Respondent provided no explanations for which it registered the disputed domain name.

Therefore, the Panel finds that the Respondent also registered and is using the disputed domain name <fendideals.shop> in bad faith.

In addition, with regard to all disputed domain names, paragraph 4(b)(ii) of the Policy, stating that "the respondent has 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" is relevant in this case. As described in section 4 above, the Respondent was involved in at least three other UDRP proceedings where similar factual situation determined the panels to decide in favor of the complainants. Given the factual situation in this case, as described above, the Panel considers that the circumstance listed under paragraph 4(b)(ii) of the Policy is applicable in this proceeding. See, Philipp Plein v. Gueijuan Xu, supra.

From the unrebutted evidence from the Complainant, the Respondent registered the disputed domain names, which incorporate the Complainant's trademark and has been redirecting them to websites where the Complainant's trademark features prominently and products bearing FENDI trademarks are sold. As held by previous UDRP panels: "Fifteen domain names that involve the Complainant's mark and a series of services, products, geographical descriptors, or generic words obviously involves a pattern of conduct directed against the Complainant, stopping it from reflecting its mark in corresponding domain names. I conclude that paragraph 4.b.(ii) is made out.", See Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046.

Also, in case of some of the disputed domain names the gTLD is relevant for the area of activity of the Complainant: ".store", ".shop", ".promo". Having regard to the circumstances of the case and how the disputed domain names are used, the Panel considers the use of such gTLDs to signal an abusive intent to confuse Internet users. See section 1.11 of the WIPO Overview 3.0 and also, e.g., Virgin Enterprises Limited v. Cesar Alvarez, WIPO Case No. D2016-2140.

The Panel concludes that the disputed domain names were registered and are being used in bad faith.

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 names <fendideals.com>, <fendideals.shop>, <fendideals.store>, <fendijp.biz>, <fendi.promo>, <fendivip.shop> and <fendivip.store> be transferred to the Complainant.

Mihaela Maravela
Sole Panelist
Date: March 29, 2018