The Complainant is Salvatore Ferragamo S.p.A of Florence, Italy, represented by Studio Legale SIB, Italy.
The Respondent is zhou wen of Zhejiang, China.
The disputed domain name <ferragamooutletonline.com> (the “Disputed Domain Name”) is registered with Hangzhou AiMing Network Co., LTD (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2012 regarding the domain names <ferragamooutletonline.com> and <salvatoreferragamooutletonline.com>. On November 13, 2012, the Center transmitted by email to the Registrar and to PDR Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with these domain names. On November 14, 2012, the Registrar and PDR Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center their verification response confirming that the Respondent and liu li ya of Liaoning, China are listed as the registrants of record and providing the contact details. On November 15, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. In its Complaint, the Complainant requested English to be the language of the proceeding. The Respondent and liu li ya did not provide any comment in this regard.
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(a) and 4(a), the Center formally notified the Respondent and liu li ya of the Complaint, and the proceedings commenced on November 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 11, 2012. The Respondent and liu li ya did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2012.
The Center appointed Kar Liang Soh as the sole panelist in this matter on January 4, 2013. 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 an Italian company in the business of fine shoes, handbags, wallets, luggage, belts, apparel, fragrances, gift items and costume jewelry. The Complainant’s founder, Salvatore Ferragamo, began his career in 1914 in California and made a name creating shoes for famous film stars. The Complainant has been using the trademark FERRAGAMO since 1927. The Complainant’s products are sold in many countries including the United States, China, Hong Kong and Singapore. The Complainant has received substantial publicity over the years, including exhibitions in museums in Los Angeles, New York and Shanghai. The Complainant has spent an average of EUR 40 millions per year on advertising and promoting products under the trademarks FERRAGAMO and SALVATORE FERRAGAMO.
The Complainant owns over 400 trademark applications and registrations for FERRAGAMO and SALVATORE FERRAGAMO worldwide. Some of these registrations are:
Jurisdiction | Trademark No | Trademark | Registration Date |
|
CTM |
103259 |
FERRAGAMO |
April 20, 1998 |
|
WIPO |
397649 |
FERRAGAMO |
March 23, 1973 |
|
Italy |
1232276 |
FERRAGAMO |
September 25, 1937 |
The Complainant has also registered the domain names <ferragamo.asia>, <ferragamo.com>, <salvatoreferragamo.com> and <salvatoreferragamo.cn>. The Complainant operates a website under the domain name <ferragamo.com> which features the words “Salvatore Ferragamo” prominently and an online store.
The Respondent, acquired the Disputed Domain Name <ferragamooutletonline.com> on September 6, 2012. Liu li ya, registered the domain name <salvatoreferragamooutletonline.com> on June 25, 2012. As of November 21, 2012, the domain name <salvatoreferragamooutletonline.com> resolved to a website which offered for sale shoes and belts online at discounted prices. The website displayed the prominent banners “Salvatore Ferragamo Online Store” and a greeting in large typeface “Welcome to Our Ferragamo Factory Store”. The footer of the webpages contained the claim “Designed by Salvatore Ferragamo”. The Disputed Domain Name <ferragamooutletonline.com> redirected visitors to the website resolved from <salvatoreferragamooutletonline.com>.
The Complainant contends that:
1) The domain names <ferragamooutletonline.com> and <salvatoreferragamooutletonline.com> are confusingly similar to the Complainant’s trademarks FERRAGAMO and SALVATORE FERRAGAMO. The only difference between the domain names and the Complainant’s trademarks is the suffix “outletonline”. The suffix is insufficient to distinguish the domain names from the Complainant’s trademarks;
2) The Respondent and liu li ya have no rights or legitimate interests in respect of the domain names <ferragamooutletonline.com> and <salvatoreferragamooutletonline.com>. The Respondent and liu li ya do not own any trademark applications or registrations for the domain names. The Complainant has not licensed or otherwise authorized the Respondent nor liu li ya to use the trademarks FERRAGAMO and SALVATORE FERRAGAMO. The Respondent and liu li ya are not commonly known by the domain names; and
3) The domain names <ferragamooutletonline.com> and <salvatoreferragamooutletonline.com> were registered and are being used in bad faith. The goods sold on the website resolved from <salvatoreferragamoonlineoutlet.com> were counterfeit goods. The Respondent and liu li ya registered the domain names to take unfair advantage of the reputation of the Complainant’s trademarks. The Respondent owns several domain names which correspond to well-known third party trademarks associated with the field of fashion.
The Respondent did not reply to the Complainant’s contentions.
The Complainant requested that English be adopted as the language of the proceeding. Although the default language of the proceeding is Chinese by virtue of the language of the respective registration agreements, the Panel is empowered to determine otherwise by reference to the circumstances under paragraph 10 of the Rules. Having reviewed the circumstances, the Panel decides that English shall be the language of the proceeding. In making this determination, the Panel has taken the following factors into consideration:
1) The Complaint has been submitted in English;
2) The website resolved from the Disputed Domain Name is fully in English. The Respondent evidently have the resources to understand and communicate in English;
3) The Respondent and liu li ya have neither responded to the Complaint nor raised any objection to the request for English to be the language of proceeding; and
4) No apparent procedural advantage will be gained by requiring the Complaint to be translated in Chinese. The Complainant is likely to suffer hardship and the proceeding is likely to suffer delay should such requirement be imposed.
The Panel is mindful of paragraphs 10(e) and 3(c) of the Rules which provide:
“10(e) A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.”
“3(c) The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.”
These provisions empower the Panel to consolidate multiple domain names in a single complaint subject to the requirement that the domain names are registered by the same domain-name holder. Past panels have clarified that where it is clear that the same person is registering domain names using different fictitious names, it is appropriate to proceed in a single complaint against multiple domain names. For example, Yahoo!, Inc v Somsak Sooksripanich and Others, WIPO Case No. D2000-1461 consolidated various domain names registered to “Somsak Sooksripanich” and other similar names because the finding that these names were associated with the same street address clearly indicated that it was the same person. Similarly, differently named registrants in General Electric Company v Marketing Total S.A, WIPO Case No. D2007-1834 shared the same address and was regarded by the panel in that case as the same domain name holder for purposes of consolidation. It was also established on the evidence in Amazon.com, Inc. v. Lorna Kang a/k/a Yong Li a/k/a Mahmoud Nadim a/k/a The Data in Bulkregister.com’s WHOIS Database is p a/k/a Amjad Kausar, WIPO Case No. D2005-0635 that the differently named respondents in that case were the same person operating under different aliases. Consolidation was also allowed in the case of Sharman License Holdings, Limited v Dustin Dorrance/Dave Shullick and Euclid Investments, WIPO Case No. D2004-0659 where the domain names were registered to a single registrant but which upon registrar verification led to the disclosure of the actual identities of different persons presumably behind an identity cloaking service provided by the single registrant.
The present case is different. The Respondent and liu li ya have different names and contact particulars. There is no suggestion by the Complainant or from the evidence submitted that they are one and the same person. Neither is there any suggestion that the Respondent or liu li ya have employed fictitious names. The available evidence does not support a finding that the domain names <ferragamooutletonline.com> and <salvatoreferragamooutletonline.com> are registered by the same domain name holder in accordance with paragraph 3(c) of the Rules.
The Complainant proposed that consolidation should be allowed because of common control of the domain names evidenced by <ferragamooutletonline.com> redirecting Internet traffic to the website hosted on <salvatoreferragamooutletonline.com>. Even if the Panel were to accept such a basis for consolidation, the fact that a domain name redirects visitors to another website does not necessarily amount to common control. Traffic may be redirected to a website without there being any control whatsoever of the domain name under which that website is hosted.
In the circumstances, the Panel regrets that the Complainant’s request for consolidation cannot be acceded to on the available evidence and will proceed to consider the Complaint only in respect of <ferragamooutletonline.com>. The Panel highlights that this determination is made without prejudice to the Complainant’s freedom to submit a separate complaint in respect of <salvatoreferragamooutletonline.com>.
The Complainant clearly owns trademark rights in the trademark FERRAGAMO and SALVATORE FERRAGAMO. Without doubt, the Disputed Domain Name <ferragamooutletonline.com> incorporates the trademark FERRAGAMO in its entirety. The only difference, as rightly pointed out by the Complainant, is the suffix “outletonline” which is an obvious descriptive reference to an online outlet. The Panel agrees that the suffix is insufficient to distinguish the Disputed Domain Name <ferragamooutletonline.com> from the trademark FERRAGAMO and holds that <ferragamooutletonline.com> is confusingly similar to the trademark FERRAGAMO. The first limb of paragraph 4(a) of the Policy is established.
The Panel accepts on the evidence that the Respondent does not own any trademark applications or registrations for <ferragamooutletonline.com> and is not commonly known by the same. The Complainant has also confirmed that it has not licensed or otherwise authorized the Respondent to use the trademarks FERRAGAMO and SALVATORE FERRAGAMO. The website redirected from <ferragamooutletonline.com> appears to the Panel to be commercially motivated and does not qualify as a legitimate non commercial use. In the circumstances, the Panel is satisfied that the facts present a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name <ferragamooutletonline.com>.
Paragraph 4(b)(iv) of the Policy provides an example of bad faith use and registration whereby
“by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location”.
The Panel notes that the website redirected from the Disputed Domain Name <ferragamooutletonline.com> purportedly features online shopping cart facilities. Such facilities are clearly indicative of an objective of commercial gain. The appearance of the website leaves a strong impression on the Panel that it is designed to be associated with the trademarks FERRAGAMO and SALVATORE FERRAGAMO. The Panel accepts on the evidence that the trademarks FERRAGAMO and SALVATORE FERRAGAMO are well-known. It is not conceivable that the Respondent is unaware of these trademarks. The stylized representation of the words SALVATORE FERRAGAMO on the Complainant’s website also feature prominently on the website redirected from <ferragamooutletonline.com>. The words “Designed by Salvatore Ferragamo” also appear in the website footer. Based on the evidence, the Panel believes that the website is likely to create confusion with the Complainant’s trademarks FERRAGAMO and SALVATORE FERRAGAMO as to its source, sponsorship, affiliation, or endorsement. Accordingly, it is held that the Disputed Domain Name <ferragamooutletonline.com> is registered and used in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
The Panel has also noted the other arguments canvassed by the Complainant to show bad faith registration and use of <ferragamooutletonline.com> by the Respondent. As bad faith use and registration has already been established above, it is not necessary for the Panel to make a determination on these other arguments.
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, <ferragamooutletonline.com>, be transferred to the Complainant without prejudice to the Complainant’s freedom to submit a separate complaint in respect of <salvatoreferragamooutletonline.com>.
Kar Liang, SOH
Sole Panelist
Date: January 25, 2013