WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fiorucci Holdings Limited v. Zedong Yang

Case No. D2020-3075

1. The Parties

The Complainant is Fiorucci Holdings Limited, United Kingdom (“United Kingdom” or “UK”), represented by Bird & Bird LLP, United Kingdom.

The Respondent is Zedong Yang, Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <fiorucciuk.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2020. On November 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 2020, 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 November 19, 2020, 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 November 20, 2020.

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 November 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 17, 2020.

The Center appointed Andrew J. Park as the sole panelist in this matter on December 29, 2020. 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, Fiorucci Holdings Limited is an Italian fashion company, established and founded by Elio Fiorucci in 1967. It is renowned for its graphic logos and statement denim and vinyl pieces. The Complainant’s product range includes clothing, footwear, and accessories sold under the FIORUCCI brand. Since the recent revival of the FIORUCCI brand in 2017, the Complainant’s products have received widespread coverage both online and in well-known fashion publications. The Complainant’s goods are sold through various retailers in the UK, United States of America (“US”), China, and Australia, and also sold through major online retailers.

The Complainant is the owner of an extensive international portfolio of trademark registrations for the FIORUCCI trademark, which are registered for a range of goods and services, including in relation to clothing, footwear, and headwear, and the retail sale of these goods. The Complainant’s trademarks have been registered in over 80 jurisdictions. The Complainant is also the registrant of a number of domain names, including <fiorucci.com>, which resolves to the Complainant’s main website. The Complainant operates a highly successful online store that sells and offers its authentic FIORUCCI branded products through its website.

The Complainant is the registrant of the following trademarks, among others:

The disputed domain name was first registered by the Respondent on July 10, 2020. The disputed domain name resolves to a website appearing to offer for sale the goods of the Complainant at significant discounts.

The Complainant sent a cease and desist letter to the Respondent on September 11, 2020, advising the Respondent of the Complainant’s rights in the FIORUCCI mark and requesting the Respondent to immediately transfer the disputed domain name to the Complainant. As of the filing of the Complaint, the Complainant did not receive a response to this letter.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name should be transferred to the Complainant because:

The disputed domain name is identical and confusingly similar to the Complainant’s FIORUCCI trademark in which the Complainant has rights. The Complainant contends that the disputed domain name is clearly intended to imitate and take advantage of the FIORUCCI trademark because the Complainant is the registered owner of the FIORUCCI trademark in numerous jurisdictions. In particular, the disputed domain name is identical to the Complainant’s FIORUCCI trademark in its entirety and is combined with the geographic term “uk”. The mere addition of the descriptive territorial indication “uk” is not sufficient to distinguish the disputed domain name from the Complainant’s trademark. The high degree of similarity between the disputed domain name and the Complainant’s trademark FIORUCCI makes it clear that the Respondent’s intention is to associate itself with the FIORUCCI brand and the Complainant’s goodwill and reputation in its trademark. The disputed domain name leads to the Respondent’s website which offers the sale of clothing, footwear, and accessories branded with the FIORUCCI mark, as well as a figurative mark (the “Angels Logo” mark) which is registered to the Complainant in over 40 jurisdictions.

The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the goodwill associated with the FIORUCCI trademark is proprietary to the Complainant and cannot pass to any third party without a formal assignment. No such assignment by the Complainant in favor of the Respondent has taken place. The Respondent is not known by the disputed domain name, nor does it hold any trademark or intellectual property rights in any of the marks.

The Complainant also mentioned that the Respondent is not currently making legitimate or fair use of the disputed domain name. The Respondent’s use of the disputed domain name is limited to show products branded with the Complainant’s FIORUCCI trademark. According to test purchases carried out by the Complainant and it representatives, all attempts to carry out test purchases resulted in payment failure notifications which show that the Respondent does not have any intention to make use of disputed domain name for a legitimate purpose and the Respondent’s website to which the disputed domain name resolves is not a legitimate commercial retail website.

The disputed domain name was registered and is being used in bad faith. The Complainant contends that the Respondent knew of the existence of the Complainant’s FIORUCCI trademark when registering the disputed domain name because it is evident that the Respondent chose the disputed domain name with the intention to invoke a misleading association with the Complainant. The Respondent’s website to which the disputed domain name resolves is heavily branded with the Complainant’s FIORUCCI trademark and the goods and services that are being sold on that website are identical to those of Complainant’s. The Respondent is reproducing images from the FIORUCCI website depicting the Complainant’s genuine FIORUCCI branded products. It is obvious that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent website by creating a likelihood of confusion with the FIORUCCI mark to benefit from the Complainant’s reputation and goodwill. Also, the Respondent’s registration of the disputed domain name has prevented the Complainant from registering a domain name which corresponds with the FIORUCCI mark.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

This element consists of two parts; first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.

The Panel finds that the Complainant has established registered rights in the FIORUCCI trademark, and that the disputed domain name is identical or confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety, and adding the geographic term “uk”, that potential consumers may very well associate with the Complainant’s activity, does nothing to avoid a finding of confusing similarity to the Complainant’s trademark. Further, the addition of the generic Top‑Level Domain (“gTLD”) “.com” may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (see Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182).

For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.

Here, the Panel finds that the Complainant has made out a prima facie case.

The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name.

The Respondent registered the disputed domain name, created a website using the disputed domain name to purportedly offer the sale of good and services which are exactly identical to the Complainant’s FIORUCCI products, used not only the Complainant’s FIORUCCI trademark and product images but also the copyrights related thereto, and did not prominently include accurate information about its relationship with the Complainant or the identity of the provider of on the website, all in an effort to confuse Internet users or consumers about the relationship between the Respondent and the Complainant, and all without the Complainant’s permission or authorization, which demonstrates that the Respondent never had an intention to use the disputed domain name in connection with a bona fide offering of goods or services.

The Panel’s view is that these facts may be taken as true in the circumstances of this case and in view of the use of the disputed domain name. Further, the Panel finds that the Respondent is improperly using the disputed domain name to create a false impression that the Respondent is affiliated with the Complainant.

The Panel is unable to find any reasonable basis upon which the Respondent could be said to have any rights or legitimate interests in respect of the disputed domain name, and the Respondent has not filed a formal Response.

Moreover, the nature of the disputed domain name carries a risk of implied affiliation with the Complainant (see WIPO Overview 3.0, section 2.5.1).

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

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

The Complainant claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent violated the Policy, paragraph 4(b)(ii) and (iv) by registering the disputed domain name in order to attempt to attract, for commercial gain, Internet users to the Respondent’s website which the disputed domain name resolves to by creating a likelihood of confusion with the Complainant’s trademark. Also, the Respondent’s registration of the disputed domain name has prevented the Complainant from registering a domain name which corresponds with FIORUCCI marks.

As already mentioned, the Respondent did not file any formal response to the Complaint, failing thereby to rebut the Complainant’s allegations of the Respondent’s bad faith registration and use of the disputed domain name.

Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000‑0944).

The Panel finds the Respondent intentionally registered the disputed domain name - which is identical or confusingly similar to the Complainant’s FIORUCCI trademark - in bad faith. First, the Complainant’s commencement of its business in 1969, its use of the domain name <fiorucci.com> for the Complainant’s official website, and most of all its registration of the FIORUCCI trademark all far pre-date the registration date of the disputed domain name by the Respondent. Second, the website which the disputed domain name resolves to contains goods and services all related to the Complainant’s business.

The Respondent registered a domain name that is identical or confusingly similar to Complainant’s trademark, FIORUCCI, with the knowledge of Complainant’s world famous brand and its business, and the Respondent likely knew of and had sought to take unfair advantage of the confusing similarity between the disputed domain name and the Complainant’s trademarks when it registered the disputed domain name, and is using the disputed domain name to attract Internet users to the Respondent’s website for commercial gain.

Furthermore, when the Complainant and its representatives attempted to carry out test purchases from the Respondent’s website to which the disputed domain name resolves, all attempts resulted in payment failure notifications which supports a finding that the Respondent’s website is not a legitimate commercial retail website, but rather may be used for the phishing of sensitive payment details or otherwise seeking undo commercial gain from association with the Complainant.

Accordingly, all of the foregoing facts show that the Respondent had knowledge of the Complainant’s trademark and business when it registered the disputed domain name and that it tried to show that there was a business relationship between the Respondent and the Complainant. Thus, it is clear that the Respondent registered the disputed domain name in bad faith with the knowledge of the Complainant’s trademarks and business.

As the conduct described above falls squarely within paragraph 4(b)(iv) of the Policy, the Panel concludes that the Respondent registered and is using the disputed domain name 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 <fiorucciuk.com> be transferred to the Complainant.

Andrew J. Park
Sole Panelist
Date: January 12, 2021