The Complainant is Fiorucci Holdings Limited, United Kingdom, represented by Bird & Bird LLP, United Kingdom.
The Respondent is jun liu, liu jun, China.
The disputed domain name <fiorucci-teen.com> (the “Disputed Domain Name”) is registered with DropCatch.com LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2020. On December 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 21, 2020, 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 December 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2021.
The Center appointed Kar Liang Soh as the sole panelist in this matter on January 26, 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.
The Complainant is a fashion business founded in 1967. The Complainant sells clothing, footwear and accessories under trademarks incorporating the word Fiorucci (“FIORUCCI Mark”). Besides its flagship store in London, the Complainant’s clothing, footwear and accessories are sold under the trademark FIORUCCI in the United Kingdom, United States of America (“United States”), China, Hong Kong, China, Taiwan Province of China and Australia through various retailers, including online retailers like Asos.com, Zalando.com and Yoox.com. The Complainant has developed a social media presence and engages with the broader teenage market via its Facebook and Instagram pages. It also enjoys online and fashion publication coverage by Vogue, Wonderland, Tatler and Harper’s Bazaar.
The Complainant has registered the FIORUCCI Mark in over 80 jurisdictions around the world, including the following:
|
Jurisdiction |
Trademark No. |
Registration Date |
|
European Union |
014755573 |
March 31, 2020 |
|
European Union |
000367250 |
February 20, 2001 |
|
United Kingdom |
1119863 |
August 30, 1979 |
|
United States |
1264655 |
January 24, 1984 |
|
United States |
4539590 |
May 27, 2014 |
The Complainant is also the registrant of numerous domain names including <fiorucci.com> under which the Complainant operates a website promoting its products under the FIORUCCI Mark.
The Disputed Domain Name was registered on October 31, 2020. On or about December 14, 2020, the Disputed Domain Name resolved to a website which promoted online gambling websites, escort services while displaying significant hard-core pornographic content. At the time of this decision, the Disputed Domain Name does not resolve to an active website.
Information about the Respondent is limited to that provided in the WhoIs information and Registrar verification provided in this proceeding. The Respondent appears to be a resident of China. The Center’s notification of the Complaint was successfully delivered to the Respondent by email, however, the Written Notice sent by courier to the physical address of the Respondent in the WhoIs Information was unsuccessful.
The Complainant contends that:
(1) The Disputed Domain Name is identical or confusingly similar to the FIORUCCI Mark in which the Complainant has rights. The Disputed Domain Name is identical to the FIORUCCI Mark and the Complainant’s domain name <fiorucci.com> save for the addition of the descriptive indication “teen” and the non-distinctive “-”;
(2) 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 or holds any trademark rights thereto. The Respondent’s association with the Complainant is false. The Disputed Domain Name is being used to host pornographic content which does not constitute a bona fide offering of goods or services. The Respondent has no intention to make use of the Disputed Domain Name for a legitimate noncommercial or fair purpose; and
(3) The Disputed Domain Name was registered and is being used in bad faith. The Respondent must have been aware of the FIORUCCI Mark. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the FIORUCCI Mark. The use of the FIORUCCI Mark in the Disputed Domain Name to attract Internet users to the Respondent’s website which contains pornographic and gambling content is seriously detrimental to the Complainant’s reputation.
The Respondent did not reply to the Complainant’s contentions.
To succeed in the proceeding, paragraph 4(a) of the Policy requires the Complainant to establish the following:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in and faith.
The Panel is satisfied from the many trademark registrations adduced in the evidence that the FIORUCCI Mark is a trademark in which the Complainant has rights. The earliest trademark registration predates the registration of the Disputed Domain Name by several decades. There is no question that the Disputed Domain Name incorporates the FIORUCCI Mark in its entirety and the additional descriptive suffix, “-teen”, does not prevent the FIORUCCI Mark from being easily recognisable.
In view of the above, the Panel holds that the Disputed Domain Name is confusingly similar to the trademark FIORUCCI and the first limb of paragraph 4(a) of the Policy is established.
No evidence exists before the Panel to suggest that the Respondent is commonly known by the Disputed Domain Name or that any relationship, business or otherwise, existed between the parties. The Panel is satisfied on the evidence that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Although the Disputed Domain Name resolved to a website, it can hardly be said that the website amounts to a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy, or any legitimate noncommercial or fair use within the meaning of paragraph 4(c)(iii) of the Policy. The copious promotion of gambling sites and services on the website resolved from the Disputed Domain Name contradicts any possibility of legitimate noncommercial or fair use.
In the absence of a Response, the Panel cannot find any basis for rebutting the Complainant’s prima facie case. Therefore, the second limb of paragraph 4(a) of the Policy is established.
Paragraph 4(b)(iv) of the Policy exemplifies a common situation of bad faith registration and use in complaints under the Policy. It states:
“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 has already observed that the website resolved from the Disputed Domain Name contained significant promotional content for gambling sites and services. It is highly implausible to expect such sites and services to be unintended for commercial gain, or that the links to these sites and services provided on the website to be similarly unconnected to an objective of commercial gain. The Panel accepts that the FIORUCCI Mark is a distinctive trademark and the Disputed Domain Name incorporates it in its entirety. It is notable that the website resolved from the Disputed Domain Name, despite running into pages of content, failed to reference any connection between the Disputed Domain Name and the services or content of the website. It is inconceivable that the Respondent could have any other reason for selecting the Disputed Domain Name other than by virtue of actual knowledge of the FIORUCCI Mark. The registration and use of the Disputed Domain Name incorporating the FIORUCCI Mark must clearly have been deliberate and with awareness of the FIORUCCI Mark.
Hence, it does not require any leap of logic to realise that the registration and use of the Disputed Domain Name was for the purpose of attracting Internet users to the Respondent’s website by creating a likelihood of confusion with the FIORUCCI Mark as to source, sponsorship, affiliation, or endorsement of the website within the meaning of paragraph 4(b)(iv).
Paragraph 4(b) does not provide an exhaustive list of instances of bad faith registration and use. The Panel finds guidance in the section 3.12 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) which summarizes the consensus view of past UDRP panels that the use of a domain name to tarnish a complainant’s mark is also a basis for finding bad faith registration and use. This consensus view stems at least in part from an earlier line of cases concerned more directly with a situation akin to the present case. In that line of cases, past UDRP panels have held that the fact that a domain name incorporating a complainant’s trademark which diverts Internet users to a pornographic website is itself sufficient to support a finding of bad faith (e.g., CHRISTIAN DIOR COUTURE v. Paul Farley, WIPO Case No. D2008-0008; The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743; V&V Supremo Foods, Inc. v. pxlchk1@gmail.com, WIPO Case No. D2006-1373). The Panel is of the view that unauthorized association of a pornographic website resolved from a domain name to a trademark (especially one unassociated with pornography) puts the trademark at serious risk of being tarnished. The Panel adopts the consensus view in section 3.12 of the WIPO Overview 3.0 and holds that the use of the Disputed Domain Name to divert Internet users to the Respondent’s pornographic website to tarnish the FIORUCCI Mark corroborates a finding of bad faith registration and use.
Although it is observed that the Disputed Domain Name no longer resolves to an active website at the time of this decision, the fact remains that until after the Complaint was filed, the Disputed Domain Name had for all intents and purposes resolved to a website which promoted online gambling websites, escort services while displaying significant hard-core pornographic content. The post-Complaint changes to the Disputed Domain Name’s association with such content does not avoid the findings above.
As such, the Panel holds that the Disputed Domain Name was registered and is being used in bad faith and the third limb of paragraph 4(a) of the Policy is hereby established.
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 <fiorucci-teen.com> be transferred to the Complainant.
Kar Liang Soh
Sole Panelist
Date: February 8, 2021