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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Calzaturificio Casadei S.p.A. v. Wu Yanrui

Case No. D2017-1425

1. The Parties

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

Respondent is Wu Yanrui of Putian, Fujian, China.

2. The Domain Name and Registrar

The disputed domain name <casadeioutlet.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 July 25, 2017. On July 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 2017, 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 Complainant filed an amended Complaint on July 28, 2017.

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 Respondent of the Complaint, and the proceedings commenced on August 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 23, 2017.

The Center appointed Timothy D. Casey as the sole panelist in this matter on August 31, 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

Complainant has manufactured and retailed fashion footwear products under the CASADEI brand since 1958. Complainant has 21 retail stores around the world, including four boutiques in China where Respondent resides.

Complainant owns rights in trademark registrations for CASADEI in China, Hong Kong, Italy and Europe, including Chinese Trademark Registration Nos. 12757630, 12757631 and 14088999A, which were filed in 2013 and 2014 (the “CASADEI Trademarks”). Complainant’s website, under the <casadei.com> domain name, which was first registered in July 1996, provides information on Complainant’s products and brand and operates as an online store. Complainant also registered the <casadei.cn> domain name in November 2007.

The disputed domain name was registered on November 27, 2016. The disputed domain name currently resolves to a website that appears to sell counterfeit CASADEI products. Complainant’s contention below, that Respondent’s physical address provided to Registrar is fake, is confirmed by DHL’s attempt to deliver notice of the Complaint, which could not be delivered due to missing or incomplete address information.

5. Parties’ Contentions

A. Complainant

Complainant contends the disputed domain name is confusingly similar to the CASADEI Trademarks as it incorporates the entirety of the CASADEI Trademarks and company name. The mere addition of the generic word “outlet” does nothing to change the overall impression and is irrelevant to the analysis. Likewise, the addition of the generic Top-Level Domain (“gTLD”) suffix “.com” is not sufficient to differentiate or distinguish the disputed domain name from the CASADEI Trademarks. Respondent’s sale of shoes at the website corresponding to the disputed domain name adds to the likely confusion.

Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name because Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. In particular, Complainant contends that Respondent’s website offers counterfeit CASADEI products. Complainant is sure the products are counterfeit because Respondent is also associated with another website under the <taccocasadei.com> domain name, from which Complainant purchased a counterfeit CASADEI product. Complainant cites Guccio Gucci S.p.A. v. Zhiyuan Zou, Zouzhi Zhou, Fujian Anfu, WIPO Case No. D2012-0888 for the proposition that “the Respondent cannot claim any bona fide offering of goods or services, or any legitimate use of the mark GUCCI. Several of the websites corresponding to the disputed domain names offer prima facie counterfeit GUCCI products. This does not provide any legitimate interest in these domain names, but rather the opposite”.

Complaint states that it has not licensed or authorized Respondent to use the CASADEI Trademarks, Respondent has “no private right” granted to it by the International Community, and does not appear to be commonly known by the disputed domain name.

As for evidence of bad faith, Complainant alleges that the CASADEI domain name was registered 29 years before the disputed domain name and that Complainant’s rights in the CASADEI Trademarks and use of the CASADEI Trademarks in China since 1989 put Respondent on constructive and actual notice of Complainant’s right. Complainant further alleges that Respondent did not respond to its attempts to contact Respondent regarding infringement of the CASADEI Trademarks and that Respondent is using fake email addresses and a fake physical address in its registration of the disputed domain name. Complainant asserts that Respondent’s “aim is to misleadingly divert consumer” to its website by associating the CASADEI Trademarks with the generic word “outlet” in order to sell those customers counterfeit CASADEI products.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Complainant’s numerous trademark registrations are sufficient to establish that Complainant has trademark rights in the CASADEI Trademarks

Complainant contends that the disputed domain name incorporates the entirety of and is confusingly similar to the CASADEI Trademarks and that the addition of both the generic word “outlet” and the gTLD suffix are not sufficient to change the overall impression of the disputed domain name as being confusingly similar to Complainant’s Trademarks. The Panel finds that the disputed domain name is confusingly similar to the CASADEI Trademarks and that the incorporation of the gTLD suffix “.com” is typically disregarded as a technical requirement and does nothing to further distinguish the disputed domain name from the CASADEI Trademarks. The Panel believes the addition of the generic word “outlet’ actually adds to the potential confusion as many different retailers of branded products also have outlets stores, where real branded products are sold at a significant discount. Hence, use of the generic word “outlet” with CASADEI creates the mistaken impression that Complainant is somehow sponsoring or operating the website associated with the disputed domain name.

The Panel finds that the disputed domain name is confusingly similar to a trademark in which Complainant has rights.

B. Rights or Legitimate Interests

The Panel finds that Respondent has no right or legitimate interest in the dispute domain name. Respondent does not appear to be commonly known by the disputed domain name. Complainant has not licensed or authorized Respondent to use or register the disputed domain name. The Panel also agrees that the sale of counterfeit products under the CASADEI Trademarks through Respondent’s website does not constitute a bona fide offering of goods or services.

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Given the timing of Complainant’s registration of the CASADEI Trademarks and use in association with the noted goods, and the timing of Respondent’s subsequent registration of the disputed domain name, using terms that clearly associate the disputed domain name with Complainant’s goods, the Panel finds that registration of the disputed domain name was in bad faith.

The Panel notes that the disputed domain name is associated with a website selling counterfeit goods that complete with Complainant’s branded goods, which cannot be by coincidence. Hence, the Panel finds such usage to constitute use in bad faith consistent with paragraph 4(b)(iv) of the Policy.

The Panel concludes that the disputed domain name was registered and is being used in bad faith.

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 <casadeioutlet.com> be transferred to Complainant.

Timothy D. Casey
Sole Panelist
Date: September 11, 2017

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