The Complainant is Calzaturificio Casadei S.p.A, Italy, represented by Studio Legale Tributario - EY, Italy.
The Respondent is Nancy Salvaggio, United States of America.
The disputed domain name <casadeoutlet2019.online> is registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2019. On September 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 26, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 30, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 7, 2019.
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, and the proceedings commenced on October 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2019.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on November 20, 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.
The Complainant, Calzaturificio Casadei S.p.A, is an Italian company based in San Mauro Pascoli (FC) and is well known as a world leader in the field of the design, production and marketing of luxury footwear products. Evidence of this is set out at Annex 8 to the Complaint.
Since 1979, the Complainant has conducted its business under the trading name Casadei. The Complainant began trading as a small boutique in 1958 and in the next 10 years was transformed into a small, highly specialized footwear business exporting to Germany and the USA. It has continued to grow steadily (20 percent per year) so that it has become a brand symbol of high quality luxury Italian fashion and craftsmanship.
By 2000, renowned celebrities were photographed wearing Casadei footwear (see Annex 9 to the Complaint) with celebrities endorsing the products. It now maintains 21 flagship stores worldwide with large worldwide advertising campaigns each year. As can be seen from Annexes 10, 11,12 and 13 the Complainant is one of the top-level international luxury fashion brands.
The Complainant is the owner of several trademarks worldwide incorporating CASADEI. Those relied upon include:
Italian mark CASADEI No. 0001296782 in classes 3, 9, 14, 16, 18, 24, 25 and 28 filed on February 19, 2009.
International mark CASADEI No. 541448 in classes 3, 18, and 25 filed on April 21, 1989.
European Union mark CASADEI No. 05047361 in classes 18 and 25 filed on April 28, 2006.
The Complainant also cites a number of Chinese registrations for CASADEI filed in 2013 and 2014 and refers to other trademarks for CASADEI worldwide. A full list is set out in Annex 14 to the Complaint.
The Complainant trades online using a number of domain names incorporating CASADEI including <casadei.com> which is associated with its official web site .
The Respondent is unknown. The disputed domain name <casadeoutlet2019.online> was registered on October 3, 2018. Prior to Complaint filing, the disputed domain name resolved to an ecommerce site offering counterfeit CASADEI shoes for sale. The Panel notes that at the time the proceeding formally commenced, the disputed domain name resolved to a website featuring pay-per-click links related to the Complainant’s competitors.
In the absence of a Response the Panel accepts the above evidence adduced by the Complainant as true and proceeds to determine this Complaint accordingly.
The Complainant submits:
i. On the evidence it is the owner of trademark rights in the mark CASADEI and that the disputed domain name is confusingly similar to the mark CASADEI.
ii. On the evidence the Respondent has no rights or legitimate interests in the disputed domain name. It relies on evidence that the Respondent has used the disputed domain name for the sale of counterfeit goods.
iii. On the evidence the disputed domain name was registered and is being used in bad faith. The Complainant also relies upon the evidence that the Respondent is using the disputed domain name for the sale of counterfeit goods and contrary to the fact is encouraging the consumer to think that it is purchasing genuine goods marked CASADEI manufactured by the Complainant.
The Respondent did not reply to the Complainant’s contentions.
As set out in section 4 above the Complainant has established that it has trade mark rights in the mark CASADEI which predate the registration of the disputed domain name.
The Panel has to consider whether the disputed domain name is confusingly similar to the mark CASADEI. The Complainant submits that the disputed domain name incorporates the core part of the mark and of the corporate name save for the omission of the last letter “i” and that this is sufficient to establish confusing similarity. The Panel agrees.
The next issue is whether the addition of the descriptive phrase “outlet2019” to “Casade” has any effect on establishing confusing similarity. The Panel finds that these additions do not prevent a finding of confusing similarity.
The use of the generic Top-Level Domain (“gTLD”) “.online” it is submitted does not impact the assessment of the first element.
The Panel finds that the disputed domain name is confusingly similar to the trademark CASADEI in which the Complainant has registered trademark rights within paragraph 4(a)(i) of the Policy.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name since none of the circumstances listed in paragraph 4(c) of the Policy are present.
In particular, the Complainant’s trademarks are exclusively and extensively used by it and its authorized licensees and that this is evidence that the Respondent has no rights in respect of the disputed domain name.
The Complainant points out that the Respondent is not and has never been a representative or licensee of the Complainant nor is it otherwise authorized to use the mark CASADEI. There is no evidence that the Respondent is commonly known by the disputed domain name.
The Complainant adduces evidence that the Respondent does not use the domain name for a bona fide offering of goods or services and is therefore not making a legitimate or fair use of it. In particular, the Complainant relies upon the evidence that the Respondent has sold counterfeit products copied from the Complainant whilst using the disputed domain name.
Having considered this evidence and in the absence of a Response the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name within paragraph 4(a)(ii) of the Policy.
The Complainant submits that the trademark CASADEI is a well-known trademark throughout the world so that the Respondent would have acquired constructive knowledge of the Complainant’s trademark rights at the date of registration of the disputed domain name. This is due to the fact that at that date in 2018 the brand CASADEI was well known throughout the world in relation to the Complainant’s luxury products.
The Complainant points out that the word “outlet” together with the year “2019” are connected to the trading activity of sales within the fashion industry i.e. the trading activity of the Complainant. It is apparently common practice that the use of the word “outlet” with the season’s year is used to inform customers that on the website products are sold with a good price in respect of the mentioned year’s season.
Taking these factors into account the Panel, in the absence of any contrary submissions, accepts the Complainant’s submission that anyone who sees the disputed domain name will be “persuaded to think that they are related to the business of the Complainant”. This is generated by the confusing similarity between the disputed domain name and the trademarks CASADEI.
The evidence of the Respondent’s use of the disputed domain name, set out in Annex 6 to the Complaint, as a tool for the online selling of counterfeit versions of the Complainant’s products, is in the Panel’s view sufficient evidence of bad faith to reach a finding in respect of this element of the Policy. The Respondent’s web pages utilize the mark CASADEI and counterfeit shoes like those of the Complainant are offered for sale. In the Panel’s view, this is clear evidence that the Respondent registered and was intentionally using the disputed domain name to attract for commercial gain Internet users to its website.
In addition, the Complainant initially tried to contact the Respondent and served a formal demand letter on November 18, 2018, and again on August 23, 2019. There was no response on either occasion. It is long established that a failure to respond to such communications is also evidence of bad faith use of the disputed domain name.
In the absence of contrary submissions or a Response, the Panel finds that the disputed domain name was registered and is being used in bad faith within 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, <casadeoutlet2019.online>, be transferred to the Complainant.
Clive Duncan Thorne
Sole Panelist
Date: November 30, 2019