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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Calzaturificio Casadei S.p.A. v. Bai Deli

Case No. D2017-0893

1. The Parties

The Complainant is Calzaturificio Casadei S.p.A. of San Mauro Pascoli, Italy, represented by Studio Crea Avvocati Associati, Italy.

The Respondent is Bai Deli of Putian, China.

2. The Domain Name and Registrar

The disputed domain name <taccocasadei.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 3, 2017. On May 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 5, 2017, 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 May 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 2, 2017.

The Center appointed Marilena Comanescu as the sole panelist in this matter on June 21, 2017. 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 a well-known Italian company engaged in the field of the design, production and marketing of luxury footwear goods. The Complainant's business started in 1958 with a small boutique and in 1979 "Casadei" became the Complainant's corporate name. The Complainant substantially invested in its CASADEI mark and promoted it through specific methods and channels, currently the Complainant being present in many countries worldwide and holding 21 flagship stores across a number of countries and continents including in China and Italy.

The Complaint holds several trademark registrations in many jurisdictions for CASADEI, such as the following:

- the International Trademark Registration No. 541448 of July 17, 1989, covering goods in classes 3, 18, 25 and being extended, inter alia, in China;

- the Chinese Trademark Registration No. 12757631 filed on June 17, 2013 and registered on April 28, 2016 covering goods in class 25; and

- the European Union Community Trademark No. 05047361 filed on April 28, 2006 and registered on July 12, 2007, covering goods in classes 18, 25.

Also, the Complainant holds numerous domain names incorporating the mark CASADEI, such as <casadei.com> (registered on July 2, 1996) and <casadei.cn> (registered on November 15, 2007).

The disputed domain name <taccocasadei.com> was registered on November 16, 2016 and, at the time of filing the Complaint it was used for an online shop providing goods with similar design to those provided by the Complainant on its official website and marked as being genuine CASADEI branded products and offered for sale with discounts higher than 80 percent. The content on the website corresponding to the disputed domain name was in Italian and the CASADEI trademark was prominently displayed on such site several times, including on the home page.

The Italian word "tacco" is translated as "heel" in English.

The Complainant, using a fictitious name, made a purchase attempt and placed an order (and paid the corresponding price) on the website corresponding to the disputed domain name on February 24, 2017, sent two reminders to the relevant contact address but did not receive the goods by the date of filing this Complaint, on May 3, 2017.

Also, the Complainant sent a Cease-and-Desist letter to the Respondent in relation to the disputed domain name on January 23, 2017 and a follow-up letter. The Respondent did not react to any of such letters.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its well-known trademark CASADEI, the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

In view of the Respondent's default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The Panel will further analyze the potential concurrence of the above circumstances.

A. Identical or Confusingly Similar

The Complainant holds trademark registrations for CASADEI.

The dominant part of the disputed domain name <taccocasadei.com> incorporates the Complainant's trademark CASADEI in its entirety preceded by the generic Italian term "tacco", translated in English as "heel".

This Panel, in line with previous UDRP panels, agrees that adding a merely descriptive term to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under this first element of the UDRP if the trademark remains the dominant or principal component of the disputed domain name. See paragraph 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").

Further, it is well established in decisions under the UDRP that the Top-Level Domain (e.g., ".com", ".biz", ".net", ".org") are typically irrelevant to the consideration of confusing similarity between a trademark and a domain name. See paragraph 1.11 of the WIPO Overview 3.0.

Given the above, the Panel finds that the disputed domain name <taccocasadei.com> is confusingly similar to the Complainant's trademark CASADEI, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant asserts that it has given no license or other right to use or register its trademark to the Respondent, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.

Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See paragraph 2.1 of the WIPO Overview 3.0.

There is no evidence before the Panel to support the contrary, and therefore 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 Respondent has not replied to the Complainant's contentions, alleging any rights or legitimate interests in the disputed domain name.

To the contrary, the disputed domain name is used in connection with a website selling what appear to be counterfeits of the Complainant's goods. Such use does not fall within the good faith use or legitimate interests principles.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Complainant's CASADEI trademark is registered since at least 1989 and is well-known worldwide in relation to luxury footwear goods, including in China where the Respondent is apparently located.

The disputed domain name was registered in 2016 and incorporates the CASADEI mark, together with the descriptive word "tacco", the Italian word for "heel".

For the above, the Panel finds that the disputed domain name was registered in bad faith, knowing the Complainant and targeting its CASADEI trademark.

According to the evidence in this file, at the time of filing the Complaint the disputed domain name <taccocasadei.com> was used to divert Internet users to a website having Italian language content and offering for sale what appear to be counterfeits of the Complainant's goods and displaying without authorization the CASADEI mark. Furthermore, according to the case file evidence, at the Complainant's attempt to purchase goods from the website corresponding to the disputed domain name, it appears that the goods were not delivered at all since the goods ordered and paid for were not delivered in approximately nine weeks and there was no response from the Respondent to justify such delay/non-delivery. Registering and using a domain name that incorporates without authorization the Complainant's mark, diverting Internet users searching for the Complainant to the Respondent's website, using such domain name for a webpage which promotes counterfeits of the Complainant's goods, all such facts tarnish and dilute the value of the mark CASADEI, negatively impacts the Complainant's business, generate unfair revenues for the Respondent and ultimately constitute bad faith under paragraph 4(b)(iv) of the Policy.

Also, the Respondent did not respond to the Complaint nor to the Complainant's letters sent prior to commencing the present proceeding. Furthermore, it appears that the postal contact details provided to the Registrar are false since the hard copy notification documents for this case were undeliverable to the Respondent due to an apparently fake address. Given the other circumstances of the case, such behavior may be considered as further evidence of bad faith.

For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name <taccocasadei.com> in bad faith, pursuant to the Policy, paragraph 4(a)(iii).

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 <taccocasadei.com> be transferred to the Complainant.

Marilena Comanescu
Sole Panelist
Date: July 4, 2017

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