Complainant is Salvatore Ferragamo S.p.A. of Sesto Fiorentino, Firenze, Italy, represented by Studio Legale SIB, Italy.
Respondent is Sunqifeng of Shuyang, Jiangsu, China.
The disputed domain name <ferragamoparfums.com> is registered with Dynadot, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 11, 2014. On November 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 9, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 10, 2014.
The Center appointed Andrew Mansfield as the sole panelist in this matter on December 22, 2014. 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.
Complainant is an Italian joint stock company which manufactures, markets, and sells shoes, handbags and other articles worldwide. Complainant manufactures, markets and sells a wide variety of other types of products, including wallets, luggage, belts, apparel, fragrances, gift items and costume jewelry. In addition to trademark rights acquired by use, discussed below, Complainant owns more than 400 applications and registrations for the trademarks FERRAGAMO and SALVATORE FERRAGAMO worldwide.
Complainant is the owner, among the others, of the following registered trademarks:
- International Registration No. 397649 covering goods in classes 3, 14, 18 and 25 dating back to March 23, 1973 and designating, inter alia, China;
- Community trademark registration No.103259 covering goods in classes 3, 6, 9, 14, 16, 18, 24, 25, 26, 28, 33, 35 and 42 dating back to April 20, 1998; and,
- Italian Registration No.1232276 covering goods in class 25 dating back to September 25, 1937.
In addition, Complainant owns registrations for several domain names comprising the mark FERRAGAMO including <ferragamo.com>, <ferragamo.cn>, and <ferragamo.asia> upon which Complainant promotes its products bearing the trademarks FERRAGAMO and SALVATORE FERRAGAMO.
The disputed domain name was registered on March 9, 2014.
Complainant asserts that it is well-known for making and selling the highest quality shoes, handbags and other articles. Complainant states that it has been using the trademark FERRAGAMO since at least 1927 with respect to shoes and 1968 with respect to handbags. Complainant provides evidence that the founder of the company, Salvatore Ferragamo, began his career in 1914 in Santa Barbara, California, and made hand-made shoes for Mary Pickford, Douglas Fairbanks, Gloria Swanson, Lillian Gish, Joan Crawford, Clara Bow, Greta Garbo, Gina Lollobrigida, Sophia Loren, Susan Hayward, Marilyn Monroe and Audrey Hepburn.
Complainant has provided evidence to the Panel that it manufactures, markets and sells a wide variety of other types of products, including wallets, luggage, belts, apparel, fragrances, gift items, and costume jewelry. Complainant indicates that its products are sold in retail stores located in Italy, United States of America, United Kingdom of Great Britain and Northern Ireland, France, Germany, Canada, China, Hong Kong, China, Japan, Republic of Korea, Taiwan, Province of China, Indonesia, Malaysia, Singapore, Thailand, Australia, Spain, Switzerland, Saudi Arabia, Indonesia, Belgium, and the Phillipines. Complainant alleges that it has marketed and sold its products in China.
Complainant indicates that it has received substantial publicity related to the quality and uniqueness of its products. Salvatore Ferragamo's shoes have been the subject of museum exhibitions in Los Angeles and New York.
Complainant alleges and provides evidence that it has advertised its shoes, handbags, fragrances and other products bearing the trademark FERRAGAMO worldwide. Complainant states that it spent approximately Euro 40 million advertising and promoting its products.
Complainant first argues that the disputed domain name is identical or confusingly similar to its trademarks in which it has rights. The disputed domain name <ferragamoparfums.com> varies from Complainant's mark only for the use of the generic term "parfums".
Complainant alleges that it is well-established that common words in domain names should be eliminated for purposes of determining identity or confusing similarity. In addition, the word "parfum", appended to the trademark, Complainant argues, names a product that Complainant offers.
Complainant also seeks to establish that Respondent has no rights or legitimate interests in the disputed domain name. Respondent, according to Complainant, is not affiliated in any way with Complainant and, to the best of its knowledge, does not own any trademark applications or registrations for the term "ferragamo". Complainant indicates that it has not licensed or otherwise authorized Respondent to use its FERRAGAMO trademark, or to apply for any domain name incorporating such mark. Finally, Complainant states that Respondent is not commonly known by the disputed domain name and does not make any bona fide use of the mark "Ferragamo Parfums".
Complainant last argues that the disputed domain name was registered and is being used in bad faith. Complainant points to the recent date of the registration of the disputed domain name as evidence that the Respondent registered the disputed domain name to take unfair advantage of Complainant's reputation as conveyed through its trademark. Because Respondent coupled Complainant's trademark with a description of a class of goods Complainant makes and sells, Complainant indicates that Respondent's intent to confuse the public as to source, origin, and affiliation by using a website at the disputed domain name is apparent. Last, but not insignificant, Complainant alleges that Respondent's bad faith is demonstrated by the fact that it registered several domain names that contain the trademarks of well-known international brands. These include <loccitanegroup.com>, <brioni.mx>, <lacostegolf.com>, <mirojeans.com>, <pomellato.mx>, and <valentine.mx>. Respondent, on each such website, offers to sell its various domain names containing famous marks. Complainant argues the totality of this evidence demonstrates both registration and use in bad faith.
Respondent did not reply to Complainant's contentions.
Pursuant to paragraph 4(a) of the Policy, Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by Respondent is identical or confusingly similar to a trademark or a service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Each of these elements will be discussed in turn below.
According to the Policy, paragraph 4(a)(i), Complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
But for the addition of "parfums", the disputed domain name consists of Complainant's well-known, internationally registered trademark FERRAGAMO. The element "Ferragamo" is identical to Complainant's mark and the additional descriptive word "parfums" is not enough to avoid the confusing similarity.
It is a well-established principle that simple descriptive or generic additions to a trademark, and certainly those that are applied to the goods or services with which the trademark is used, do not avoid confusing similarity of domain names and trademarks. See eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307.
Seealso Time Warner Entertainment Company L.P. v. HarperStephens, WIPO Case No. D2000-1254.
In the present case, Complainant has demonstrated that its FERRAGAMO trademark is used to market a wide variety of merchandise, and specifically includes a line of perfumes. The Ferragamo brand is internationally famous for designer goods. Respondent's use of a domain name consisting of a descriptive element added to "Ferragamo" is likely to give rise to confusion. It is especially likely to lead to confusion in this case because it refers to goods sold by Complainant.
Accordingly, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.
According to the Policy, paragraph 4(a)(ii), Complainant must demonstrate that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant asserts Respondent is not a licensee or an authorized agent of Complainant or in any other way authorized to use Complainant's trademark FERRAGAMO. This assertion is enough to establish a prima facie case that Respondent lacks rights or legitimate interests.
While Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, Respondent did not provide any information to the Panel asserting any rights or legitimate interests it may have in the disputed domain name.
Paragraph 4(c) of the Policy lists a number of circumstances which can be taken into consideration to demonstrate a respondent's rights or legitimate interests in a domain name. However, there is no evidence before the Panel that any of the situations described in paragraph 4(c) of the Policy apply to the present case.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name and the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.
Paragraph 4(b) of the Policy provides the following non-exclusive examples of registration and use in bad faith. If found, any one of these elements, though non-exclusive, may be found to be evidence of the registration and use of the disputed domain name in bad faith:
(i) Circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of Respondent's documented out of pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on respondent's website or location.
As of today, the disputed domain name presents a website offering to sell the disputed domain name to an interested purchaser. A link allows an interested purchaser to make an offer to Respondent.
The evidence presented to the Panel indicates that Respondent has primarily passively held the disputed domain name, engaging in no commercial activity except as described below. Beginning with Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, various UDRP panels have held that inaction by a respondent with regard to a domain name can constitute bad faith use when the respondent has registered the domain name in bad faith and the totality of the circumstances leads to the conclusion that a "[r]espondent's passive holding amounts to bad faith".
In this case, Respondent is not merely passively holding the domain name. An analysis of the totality of circumstances indicates that Respondent engaged in activity that consists of "parking" the disputed domain name and accepting bids or offers for its purchase. Offering a domain name for sale to the general public, when the value of the disputed domain name is largely driven by the value of complainant's trademark, is evidence of bad faith in registration and use. See Educational Testing Service v. TOEFL, Case No. D2000-0044.
Finally, the Panel finds further evidence of bad faith in the fact that Respondent has registered multiple domain names that contain generic terms and famous, international trademarks. The practice of registering domain names containing the trademarks of other companies can indicate that the contested domain names were registered and are being used in bad faith. See J.P. Morgan v. Resource Marketing, WIPO Case No. D2000-0035. Ownership of numerous domain names that corresponds to the names or marks of well-known business entities suggests intent to profit from the activities of others. See Nikon, Inc and Nikon Corporation v. Technilab, Inc, WIPO Case No. D2000-1774.
For all these reasons, the Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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 <ferragamoparfums.com> be transferred to Complainant.
Andrew Mansfield
Sole Panelist
Date: January 5, 2015