WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Valentino S.p.A. v. Jack Wuzheng, Hongyun Trade Inc, Jacket Chan, Tech Trade Inc.

Case No. D2019-0647

1. The Parties

The Complainant is Valentino S.p.A. of Milan, Italy, represented by Studio Barbero, Italy.

The Respondents are Jack Wuzheng, Hongyun Trade Inc of Xiamen, Fujian, China; Jacket Chan, Tech Trade Inc. of Xiamen, Fujian, China.

2. The Domain Names and Registrar

The disputed domain names <buyingvalentino.com>, <hivalentino.net>, <official-valentino.com>, <real‑valentino.com>, <shoesvalentino.com>, <shoevalentino.com>, <shoppingvalentino.com>, <truevalentino.com>, <valentinoauthentic.com>, <valentinoauthenticity.com>, <valentinofake.com> and <valentinogenuine.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2019. On March 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 27, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants 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 Respondents of the Complaint, and the proceedings commenced on April 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2019. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on May 2, 2019.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on May 9, 2019. 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 was founded in Italy in 1960 and has grown into a large and renowned fashion company. The Complainant has 160 directly operated stores and 1300 other points of sale throughout the world, being present in over 90 countries, including China. According to an article in TIME Magazine produced by the Complainant, VALENTINO is a popular and well-known trademark in China, being the second most widely owned foreign luxury brand in China.

The Complainant owns a portfolio of trademark registrations for VALENTINO (word marks) in a number of jurisdictions, for example International Trademark Registration No. 570593, registered on April 24, 1991, designating, inter alia, China; and European Union Trademark Registration No. 1990407, registered on September 18, 2008. The Complainant also owns a portfolio of over 600 domain names containing the trademark VALENTINO. Incidentally, the relevant registered trademarks adduced by the Complainant were successfully registered prior to the registration date of the disputed domain names, which were all registered between February 26, 2018 and December 16, 2018. The Complainant submits evidence that on the date of the Complaint, the disputed domain names all directed to active websites, operated as elaborate platforms offering unauthorized Valentino-branded products, as well as fashion products from competing brands. However, on the date of this decision, the following disputed domain names direct to inactive webpages: <official-valentino.com>, <real‑valentino.com>, <truevalentino.com>, <valentinoauthentic.com>, <valentinoauthenticity.com>, and <valentinogenuine.com>.

5. Parties’ Contentions

A. Complainant

The Complainant essentially contends that the disputed domain names are confusingly similar to its trademarks for VALENTINO, that the Respondents have no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names were registered, and are being used in bad faith.

The Complainant claims that its trademarks are famous and well regarded in the fashion industry, and provides evidence of its marketing materials and prior UDRP decisions in which its trademarks were recognized as well-known trademarks. Moreover, the Complainant provides evidence that the disputed domain names were all linked to active websites, operating as elaborate platforms offering unauthorized Valentino-branded products (as well as competing products) and using the Complainant’s official images, protected by copyright. The Complainant essentially contends that such use does not confer any rights or legitimate interests in respect of the disputed domain names and constitutes use in bad faith.

The Complainant requests the transfer of the disputed domain names.

B. Respondents

The Respondents did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Preliminary Issue: Consolidation as regards the Respondents

The Complainant filed a motivated request for consolidation of these proceedings as regards the Respondents, under paragraphs 3(c) and 10(e) of the Rules. On this subject, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) states in section 4.11.2: “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”.

In the case at hand, the Panel has carefully considered all elements, giving particular weight to the following facts: the websites linked to the disputed domain names all have (or had, on the date of the Complaint) very similar or even identical contents and all target the same trademarks of the Complainant; the Complainant provides evidence that some of the disputed domain names were linked to websites hosted under domain names registered by the other Respondent (for instance, <real-valentino.com> which is registered in the name of Jacket Chan of Tech Trade Inc. redirected to a website published at the disputed domain name <truevalentino.com> registered in the name of Jack Wuzheng of Hongyun Trade Inc.); the disputed domain names are all registered with the same Registrar; and the disputed domain names were all registered within a ten month period between February 26, 2018 and December 16, 2018. On the basis of these elements, the Panel rules that the disputed domain names are subject to common control. Moreover, the Panel considers that the requested consolidation would, especially in absence of an objection from the Respondents, be equitable, fair and procedurally efficient in this case. The Panel therefore allows the consolidation as regards the Respondents.

6.2. Discussion and Findings on the merits

The Policy requires the Complainant to prove three elements:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.

Based on the evidence and arguments submitted, the Panel’s findings are as follows:

A. Identical or Confusingly Similar

The Panel finds that the Complainant has provided sufficient evidence that it has valid rights in the trademark VALENTINO, based on its registration and use of the same as a trademark in various jurisdictions (including China), incidentally commencing several years prior to the registration of the disputed domain names.

Moreover, as to confusing similarity of the disputed domain names with the Complainant’s trademarks, the disputed domain names consist of, each time, the combination of two elements, which are the Complainant’s VALENTINO trademark and the addition of a clearly descriptive element, namely “buying”, “hi”, “official”, “real”, “shoes”, “shoe”, “shopping”, “true”, “authentic”, “authenticity”, “fake” and “genuine”. The Panel refers to the WIPO Overview 3.0, section 1.7: “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”; and section 1.8: “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. The Panel concludes that each of the disputed domain names contain the entirety of the Complainant’s trademark, which remains clearly recognizable as such. Accordingly, the Panel rules that the disputed domain names are confusingly similar to the Complainant’s trademarks, and the first element required by the Policy is fulfilled.

B. Rights or Legitimate Interests

The Complainant has demonstrated that the Respondents have no rights or legitimate interests in the disputed domain names. The Panel notes that the Respondents are not authorized resellers, service providers, licensees or distributors, and are not making legitimate noncommercial use or fair use of the Complainant’s trademarks. Moreover, this finding is further reinforced by the fact that the Respondents admit in writing that they offer for sale counterfeit Valentino products, (see where the Respondents state: “Valentino shoes replica. Fake Valentino rockstud shoes”, on <valentinofake.com>). As accepted in previous UDRP cases, there can be no legitimate interests in the sale of counterfeits, see for instance L’Oréal SA v. PrivacyProtect.org/ WangShanShan, WIPO Case No. D2014-0295 and Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750. The Panel therefore considers that none of the circumstances of legitimate interests envisaged by paragraph 4(c) of the Policy apply.

The Panel also notes that no evidence or arguments have been submitted by the Respondents in reply. The Panel therefore rules that the Complainant has satisfied the requirements of the second element under the Policy.

C. Registered and Used in Bad Faith

Given the high degree of distinctiveness and fame of the Complainant’s trademarks, which were included in their entirety in the disputed domain names, as well as the particular descriptive elements in the disputed domain names (see for instance the disputed domain names <buyingvalentino.com> and <valentinogenuine.com>), the disputed domain names were clearly intended from the outset to mislead and divert consumers. Even a cursory Internet search at the time of registration of the disputed domain names would have made it clear to the Respondents that the Complainant owned, and owns, trademarks in VALENTINO and uses these marks extensively, including in the Respondents’ home jurisdiction China. In the Panel’s view, this clearly indicates the bad faith of the Respondents, and the Panel therefore rules that it has been demonstrated that the Respondents registered the disputed domain names in bad faith.

As to use of the disputed domain names in bad faith, the Complainant provides evidence that the initial version of the websites linked to the disputed domain names were all used as elaborate platforms, offering for sale unauthorized, and presumably counterfeit Valentino-branded fashion products, as well as fashion products from competing brands. On the date of this decision, some of the disputed domain names now link to inactive websites. However, even in this regard, the WIPO Overview 3.0 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.”

Having regard to all elements of the case at hand, and in particular to the fact that the only distinctive elements in the disputed domain names are the Complainant’s trademarks; the initial use of all websites linked to the disputed domain names as platforms offering unauthorized Valentino-branded fashion products; the fact that the Respondent used copyright-protected official images owned by the Complainant on websites linked to the disputed domain names and the fact that the Respondents themselves admitted in writing that the goods offered for sale on (at least some of) the disputed domain names were counterfeits (see where the Respondents state “Valentino shoes replica. Fake Valentino rockstud shoes” on <valentinofake.com>), the Panel rules that it has been demonstrated that the Respondents are using the disputed domain names in bad faith.

Finally, the Respondents have failed to provide any response or evidence to establish their good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirement of the third element under the Policy.

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 names, <buyingvalentino.com>, <hivalentino.net>, <official-valentino.com>, <real-valentino.com>, <shoesvalentino.com>, <shoevalentino.com>, <shoppingvalentino.com>, <truevalentino.com>, <valentinoauthentic.com>, <valentinoauthenticity.com>, <valentinofake.com> and <valentinogenuine.com> be transferred to the Complainant.

Deanna Wong Wai Man
Sole Panelist
Date: May 14, 2019