WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Trussardi S.p.A. v. WhoisGuard Protected, WhoisGuard, Inc. / Antoine Ringard

Case No. D2018-0893

1. The Parties

The Complainant is Trussardi S.p.A. of Milan, Italy, represented by Studio Legale Bird & Bird, Italy.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Antoine Ringard of Marseille, France, self-represented.

2. The Domain Name and Registrar

The disputed domain name <trussardi-promo.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2018. On April 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 23, 2018, 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 April 24, 2018 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 April 27, 2018.

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 April 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 20, 2018.

The Respondent sent email communications to the Center on May 2 and May 5, 2018. The Center informed the parties of the commencement of the panel appointment process on May 22, 2018.

The Center appointed Mihaela Maravela as the sole panelist in this matter on May 25, 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 the owner of the TRUSSARDI trademark and holder of the Trussardi trade name in the field of fashion with more than 100 years of history. The Trussardi Group started out in Bergamo in 1911 as a workshop producing and distributing luxury gloves.

Today the Complainant is present in over 40 countries with its lines of clothing, bags, shoes and fashion accessories and with a network of sales points in Italy, Europe, Asia and the Middle East. This includes over 177 single-brand stores, over 1,500 multi-brand points of sale, corners and department stores and the new ecommerce website “www.trussardi.com”.

The TRUSSARDI trademark is protected in several jurisdictions, through numerous registrations covering, inter alia, clothing, bags and other fashion accessories, in classes 18 and 25 of the Nice International Classification of goods and services for registration of trademarks.

The Complainant is the owner of a number of registered trademarks consisting of TRUSSARDI, including the following:

- European Union Trademark for TRUSSARDI (word trademark) No. 7451156 registered on June 10, 2009;

- International Registration for TRUSSARDI (word trademark) No. 1002480 registered on January 29, 2009.

The disputed domain name was registered on February 20, 2018. According to the evidence provided by the Complainant, the disputed domain name resolves to a website which displays the trademark TRUSSARDI and the TRUSSARDI logo and looks like an official TRUSSARDI website, which announces that registrations are open for a promotional sale of TRUSSARDI garments at discounted prices and where visitors are invited to sign up to have access to this promotional initiative.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is identical or confusingly similar to the Complainant’s trademark TRUSSARDI since the disputed domain name consists solely of the Complainant’s trademark and trade name Trussardi followed by the generic term “-promo” and by the generic Top-Level domain (“gTLD”) “.com”. The term “promo”, common abbreviation for “promotion”, is evidently related to the retail activities of the Complainant and cannot but reinforce the confusing similarity with the Complainant’s trademark TRUSSARDI and corroborate the impression that the disputed domain name belongs to, or is affiliated with, the Complainant.

Further, the Complainant contends that it has neither authorized, nor somehow given its consent to, anyone to register and use the disputed domain name <trussardi-promo.com>. The Respondent is not known and cannot be known by the disputed domain name which clearly refers to the well-known trademark TRUSSARDI in and to which the Complainant only has rights. Under such circumstances, the Complainant concludes that the disputed domain name was registered by the Respondent with the Complainant’s TRUSSARDI trademark and business in mind and the Respondent has no rights or legitimate interests in respect of the disputed domain name.

In addition, the Complainant contends that the TRUSSARDI trademark is highly distinctive and internationally renowned and given the content of the website to which the disputed domain name directs the Respondent must have been aware of the Complainant’s rights in and to the TRUSSARDI trademark and has consciously and deliberately incorporated the Complainant’s trademark in the disputed domain name to attract consumers for commercial gain, taking unfair advantage of the reputation and distinctiveness of the Complainant’s TRUSSARDI trademark. The Complainant concludes that the disputed domain name was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions; however, in his email communication of May 2, 2018 the Respondent indicated that “I sell this domain”. Further to an exchange of emails with the Complainant, the Respondent claimed that “I bought this domain 100% legally. So, if you want this domain, I sell it”, and subsequently indicated that “I can sell this domain for only 5000$. 50% before, and 50% after I send you the transfer auth code”.

Further to the Respondent’s message, the Center sent a possible settlement email to the Parties. However, the Complainant was not willing to explore this option.

6. Discussion and Findings

Noting the fact that the Respondent has not filed a formal 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 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 Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.

The Complainant adduced evidence of trademark registrations for TRUSSARDI in the name of the Complainant.

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

Here the disputed domain name incorporates the Complainant’s trademark TRUSSARDI in its entirety, in addition to the descriptive term “promo” and a hyphen. The addition of the descriptive term “promo” to the TRUSSARDI trademark of the Complainant does not distinguish the disputed domain name from the Complainant’s trademarks.

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 avoid the confusing similarity between the disputed domain name and the trademark. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

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.

This Panel concludes that the disputed domain name is 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 name. The Complainant has established that it holds rights over the trademark TRUSSARDI and claims that the Respondent is not a licensee, distributor or authorized agent of the Complainant. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “trussardi”. See for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957.

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

In its informal communication of May 5, 2018, the Respondent alleged that he “bought this domain 100% legally”, but provided no explanation or evidence to demonstrate preparations for a bona fide offering of goods or services. Also, there is no evidence of fair use in respect of the disputed domain name. The website to which the disputed domain name redirects announces that registrations are open for a promotional sale of TRUSSARDI garments at discounted prices and where visitors are invited to sign up to have access to this promotional initiative. The website includes the Complainant’s trademark TRUSSARDI and registered logo. In this Panel’s view such use of the disputed domain name does not account to fair use since it falsely suggests an affiliation with the trademark owner. This conclusion is sustained by the nature of the disputed domain name, that includes the entirety of the Complainant’s trademark TRUSSARDI and an additional term related to the retail activities of the Complainant, and also by the content of the website, where it is not clear to Internet users visiting the Respondent’s website that it is not operated by the Complainant. (See section 2.5 of the WIPO Overview 3.0)

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

According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.

The fact that the disputed domain name is confusingly similar to the Complainant’s trademarks and that said trademarks are used for a long period of time indicates not only that the Respondent was aware of the Complainant’s business and trademark at the time of registration, but also that he registered the disputed domain name to mislead Internet users into thinking he is some way connected, sponsored, endorsed by or affiliated with the Complainant’s products or services. This finding is also supported by the fact that the website to which the disputed domain name redirects displays the trademark TRUSSARDI of the Complainant and its protected logo. Furthermore, as the Complainant argues, the term “promo”, a common abbreviation for “promotion”, is related to the retail activities of the Complainant and, in the Panel’s view, reinforces the likelihood of confusion with the Complainant’s trademark TRUSSARDI.

The Respondent provided no explanations for why he registered the disputed domain name.

The Respondent has failed to make to date any bona fide use of the disputed domain name. The absence of any bona fide use of the disputed domain name at the very least results in a failure to rebut the inference noted above. See for a similar finding Guinness World Records Limited v. Solution Studio, WIPO Case No. D2016-0186.

Additional factors retained by the Panel as indicative of bad faith registration and use of the disputed domain name include:

- the Respondent’s failure to provide any evidence of bona fide registration and use (see Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210);

- also, as noted above, the Panel has concluded that the Respondent had knowledge of the Complainant’s trademarks at the time of registration of the disputed domain name. The Respondent provided no explanations as to why he registered the disputed domain name;

- the Respondent extended an unsolicited offer for sale of the disputed domain name for an amount in excess of the registrations costs. This action in light of the case circumstances supports a finding of bad faith under paragraph 4(b)(i) of the Policy. See for a similar finding Audi AG v. Claus Linder, WIPO Case No. D2016-1579.

Furthermore, the Respondent availed of a privacy shield service to protect his identity. While the use of a privacy shield is not in any way objectionable in itself, in the present case it contributes to the accumulation of elements pointing to bad faith registration and use. (See Solvay SA v. Domain Privacy Service Fbo Registrant / Mary Koehler, WIPO Case No. D2016-1357).

In the Panel’s view these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondent failed to bring evidence as to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy is 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 <trussardi-promo.com> be transferred to the Complainant.

Mihaela Maravela
Sole Panelist
Date: June 8, 2018