The Complainant is Salvatore Ferragamo S.p.A. of Firenze, Italy, represented by Studio Legale SIB, Italy.
The Respondent is Zhan Jie of Hai Kou, Hai Nan, China.
The disputed domain name <ferragamo.wiki> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2016. On August 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 2016, 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. On August 12, 2016, the Center informed the Parties that the Registration Agreement is in Chinese and requested them to comment on the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on August 17, 2016. On the same day, the Complainant filed an amended Complaint in response to a request by the Center regarding the registrant information. The Respondent did not comment on the language of the proceeding by the specific due date.
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 in both English and Chinese, and the proceedings commenced on August 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 11, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2016.
The Center appointed Francine Tan as the sole panelist in this matter on September 16, 2016. 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 well-known Italian company that is active in the business of manufacturing, marketing and selling high quality shoes, handbags and other articles such as wallets, luggage, belts, apparel, fragrances, gift items and costume jewellery. The Complainant has been using the FERRAGAMO trade mark since at least 1927 with respect to shoes, and since 1968 with respect to handbags. The founder, Salvatore Ferragamo, began his career in 1914 in Santa Barbara, California in the United States of America (“USA”) and over time, achieved a worldwide reputation as the innovative “shoemaker to the stars”, creating shoes for, amongst others, Joan Crawford, Greta Garbo, Sophia Loren, Marilyn Monroe and Audrey Hepburn.
The Complainant’s products are retailed in the USA, many countries across the European Union, China, Japan, Indonesia, Malaysia, Republic of Korea, Thailand, Singapore, Australia and Saudi Arabia.
The Complainant states it has specifically marketed and sold in China (where the Respondent is located) products through Salvatore Ferragamo stores, duty-free shops and in-store shops in many cities in China.
The Complainant owns registrations for several domain names comprising the trade mark FERRAGAMO e.g. <ferragamo.com>, <ferragamo.net>, <ferragamo.cn> and <ferragamo.asia>. These domain names are used by the Complainant to promote its products bearing the FERRAGAMO and SALVATORE FERRAGAMO trade marks.
The Complainant has advertised worldwide its shoes, handbags and other products bearing the FERRAGAMO trade mark through the most famous fashion magazines. In the last several years, the Complainant spent worldwide an average of Euro 40 million per year on advertising and promoting its FERRAGAMO-branded products.
The Complainant asserts that as a result of the advertising and promotional efforts of the Complainant, publicity it has received, as well as the high quality of its products, the FERRAGAMO trade mark has become extremely well known in the fashion industry and to the public.
The Complainant’s FERRAGAMO trade mark has been registered in many countries worldwide including in China. The Complainant owns more than 400 applications and registrations for FERRAGAMO and SALVATORE FERRAGAMO worldwide. It owns, amongst others, International Registration No. 397649 dating back to March 23, 1973 in which China is a designated country.
The disputed domain name was registered on January 31, 2016. It does not resolve to any active website.
1. The disputed domain name is identical to the Complainant’s FERRAGAMO trade mark. The generic Top-Level Domain (“gTLD”) “.wiki” which represents the worldwide indicator of a source of information exacerbates the confusing similarity with the Complainant’s said trade mark because it misleads Internet users looking for the Complainant’s official information source.
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with the Complainant and is not licensed or authorised by the Complainant to use the FERRAGAMO trade mark or to register a domain name incorporating the said mark. To the best of the Complainant’s knowledge, the Respondent does not own any trade mark applications or registrations for FERRAGAMO or any other mark comprising this sign in connection with any goods or services. The Respondent is not commonly known by the disputed domain name and does not make any bona fide use or trade under the name “ferragamo.wiki”.
3. The disputed domain name was registered and is being used in bad faith. The disputed domain name was only recently registered. The Respondent registered the disputed domain name with a view to take unfair advantage of the reputation of the Complainant’s FERRAGAMO trade mark. The domain name registration creates confusion to potential customers as to the Respondent’s affiliation with the Complainant. Although there is passive holding of the disputed domain name by the Respondent, earlier UDRP panel decisions (e.g. Farouk Systems, Inc. v. QYM, WIPO Case No. D2009-1572; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and Action S.A. v. Robert Gozdowski, WIPO Case No. D2008-0028) have held that such nature of holding of a domain name can be considered as amounting to use in bad faith.
The Respondent did not reply to the Complainant’s contentions.
The language of the Registration Agreement is Chinese. The Complainant requested that English be the language of the proceeding because the Complainant would be unfairly disadvantaged if it were compelled to translate the Complaint and supporting annexes into Chinese “in such a blatant case of cybersquatting”.
The Respondent did not respond on the issue of the language of the proceeding.
Paragraph 11(a) of the Rules stipulates that “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
Paragraph 10(c) of the Rules stipulates that “The Panel shall ensure that the administrative proceeding takes place with due expedition. …”.
The Panel determines that it would be appropriate for English to be the language of the proceeding. The disputed domain name comprises (i) a well-known European fashion brand which is also an Italian surname, and (ii) the gTLD, “.wiki”, a reference to the widely-known Wikipedia, a source of information mainly for English-speaking Internet users. While not conclusive, the choice of the gTLD “.wiki” suggests a familiarity on the part of the Respondent with the English language. The Respondent had the opportunity to dispute the Complainant’s request for English to be the language of the proceeding but did not do so, despite having been contacted by the Center on this issue in both Chinese and English. Neither did the Respondent respond to the administrative proceeding.
In the light of these circumstances, to compel the Complainant to have the Complaint and evidence translated into Chinese would present a rather heavy burden and would unduly delay the proceeding, and the cost and time involved are not commensurate with what the Policy is intended to achieve, namely, a cost-effective and expedient way of resolving domain name disputes. The Respondent has failed to provide any basis for the Panel to decide otherwise on this preliminary issue.
The Policy requires the Complainant to prove all three elements, namely that:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
The Complainant has shown it has rights in the trade mark FERRAGAMO. The entire mark has been incorporated in the disputed domain name. The only difference between the disputed domain name and the Complainant’s said mark lies in the gTLD “.wiki”.
The Panel agrees that the disputed domain name is confusingly similar to the Complainant’s FERRAGAMO trade mark. It is a well-established principle that the gTLD extension may be disregarded when considering the issue of whether the domain name in issue is identical or confusingly similar to a complainant’s trade mark for the simple reason that the gTLD is an inherent technical requirement.
The Panel therefore finds that paragraph 4(a)(i) of the Policy has been satisfied.
The Complainant is required under paragraph 4(a)(ii) of the Policy to establish a prima facie case showing the Respondent’s lack of rights or legitimate interests. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).)
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The FERRAGAMO trade mark is, in the Panel’s view, a well-known mark. The Respondent did not file any Response and thereby failed to show that it has rights or legitimate interests in the disputed domain name. In the absence of any rebuttal evidence by the Respondent to contradict the Complainant’s case, the Panel accordingly finds in favour of the Complainant on this issue.
Paragraph 4(a)(ii) of the Policy has been satisfied.
The disputed domain name has not been used in connection with an active website. The Panel agrees, nonetheless, that the passive use of the disputed domain name does not prevent a finding of there being registration and use in bad faith. This principle is well-recognized and the oft-cited case is that of Telstra Corporation Limited v. Nuclear Marshmallows case (supra).
The disputed domain name contains the well-known trade mark of the Complainant. The reasonable presumption that can be made is that the Respondent was aware of the Complainant and its FERRAGAMO trade mark when it registered the disputed domain name. This presumption is of course rebuttable by the Respondent with the submission of the appropriate evidence. However, in failing to file any response, the Respondent provided no basis for the Panel to conclude otherwise.
The Panel accordingly finds in the totality of the circumstances that the disputed domain name has been registered and used in bad faith. The requirement of paragraph 4(a)(iii) of the Policy has been satisfied.
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 <ferragamo.wiki> be transferred to the Complainant.
Francine Tan
Sole Panelist
Date: September 19, 2016