The Complainant is Fendi S.r.l., Italy, represented by Dreyfus & associés, France.
The Respondent is Domain Protection Services, Inc., United States of America (“United States” or “U.S.”) / Bryan Pellegrini, United States.
The disputed domain name <fendioutletmalls.com> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2021. On April 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 21, 2021, 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 April 23, 2021 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 April 27, 2021.
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 April 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2021. On June 1, 2021, due to an apparent issue with the notification of Complaint, the Center granted the Respondent a five day period (through June 6, 2021) in which to indicate whether it wished to participate in this proceeding. The Center did not receive any communication from the Respondent.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on June 10, 2021. 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, Fendi S.r.l., is an Italian fashion house. The LVMH Group has been its majority shareholder since 2001. The Complainant is the owner of trademark registrations including U.S. registration No. 1244466 for FENDI, filed on October 29, 1976 and registered on July 5, 1983, covering goods in International Classes 18 and 25; and International trademark No. 1130243 for FENDI, registered on June 6, 2012 designating inter alia Australia, China, Mexico, Turkey, Morocco, Russian Federation, United States, and covering goods and services in International Classes 3, 9, 14, 18, 20, 24, 25, 35, and 43.
The Complainant also operates the domain name <fendi.com>, registered on December 26, 1995.
The disputed domain name was registered on April 18, 2020 and resolves to a website offering a variety of products under the mark FENDI for sale.
The Complainant is a major Italian fashion house with a long tradition. Its trademark FENDI is ranked in the top 10 Hottest Fashion Brands in the world by the Lyst Index in 2020.
The Complainant became aware that the disputed domain name resolves to a website that reproduces its visuals and sells products branded with its FENDI mark. It sent a blocking request to the relevant registrar but has yet to receive a satisfactory response. The disputed domain name was not put on hold or deactivated.
The Complainant says that the disputed domain name is confusingly similar to its FENDI trademark. It reproduces that mark in its entirety with the addition of descriptive English terms. The Complainant points out that Panels have consistently decided that reproduction of a mark in its entirety is sufficient to establish confusing similarity. The terms “outlet” and “malls” are added to give the impression that the disputed domain name is connected to the Complainant. The disputed domain name targets the Complainant’s field of activity directly and implies its products can be bought on the website to which the disputed domain name resolves, at lower prices. It leads consumers into believing the relevant website is endorsed by the Complainant or will lead them to the Complainant’s official site. The Complainant asserts that it has used the trademark FENDI in connection with specific high-end fashion products around the world. The public has learnt to perceive the goods and services offered under this trademark as being those of the Complainant and would reasonably assume that the disputed domain name would be owned by the Complainant or at least assume that it is endorsed by, or in some other way related to the Complainant.
The Respondent is not affiliated with the Complainant, nor has he been authorized to use the FENDI mark in any way. The Complainant says the Respondent is not known by the disputed domain name or the term “fendi”. No legitimate or fair use of the disputed domain name can be envisaged as it (falsely) suggests sponsorship or endorsement by the trademark owner. The Complainant points out that the website to which the disputed domain name resolves reproduces the Complainant’s visuals and is used to promote and sell a wide variety of fashion articles under the mark FENDI without authorization. All the products are offered for sale at significantly lower prices compared not only with the usual price applied by the Complainant, but also with normal discount prices during sales periods or with special prices that apply to private sales occasionally offered by the Complainant. The Complainant never authorized the Respondent to develop such a website in order to sell its alleged products, and its pricing policy is very strict, which renders the way the disputed domain name is being used illegitimate, the Complainant says. Additionally, the website does not disclose any relationship with the trademark holder (or lack thereof), nor any notice that would make it clear that the Complainant is the exclusive owner of all intellectual property rights, including trademarks. The public may therefore believe that a commercial relationship exists between the Complainant and the Respondent or that the Respondent has been authorized to register the disputed domain name and to sell products bearing the Complainant’s mark FENDI, which the Complainant says is a well-known trademark. Hence, it cannot be inferred that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. The fact that the Respondent used a privacy shield also indicates that the Respondent has no rights or legitimate interests in the disputed domain name, according to the Complainant.
The Complainant says that it is inconceivable that the Respondent was unaware of its FENDI trademark rights. The Complainant asserts that its FENDI mark is well known throughout the world, that the Respondent sells products under the mark FENDI via the impugned website, and that the composition of the disputed domain name makes it clear that the Respondent was fully aware of the Complainant, and the reputation of its trademark. The Complainant says that where a domain name is so obviously connected with a well-known trademark, its very use by someone with no connection to the trademark owner suggests opportunistic bad faith. The Complainant maintains that the Respondent when registering the disputed domain name was under an obligation to ascertain whether its registration would infringe IP rights of any third party. A quick internet search would have revealed the existence of the Complainant and its marks. It is according to the Complainant impossible in this Internet age that the Respondent was unaware of the Complainant and its rights at the time of registration. The registration of the disputed domain name was therefore in bad faith.
Since there is little doubt that the Respondent was aware of the Complainant’s rights in the FENDI mark, it is most likely that the Respondent registered the disputed domain name based on the attractiveness of the Complainant’s trademark. The fact that the website to which the disputed domain name resolves reproduces the Complainant’s visuals and offers a variety of goods under the Complainant’s trademark supports a finding of bad faith use. The website prominently displays the FENDI trademark on its home page along with images of models of Fendi’s products. The Complainant says that the prices offered for the products are unrealistically low. The Complainant contends that this situation seems to exclude the possibility that the products are purchased directly from the Complainant or from an official affiliated producer of the Complainant. The use of a well-known trademark to attract consumers to a website for commercial gains constitutes a use in bad faith pursuant to the Policy, the Complainant asserts.
The Respondent did not reply to the Complainant’s contentions.
The disputed domain name reproduces the Complainant’s distinctive trademark FENDI in its entirety as the first and most prominent part of the disputed domain name. The Complainant’s trademark is therefore immediately recognizable in the disputed domain name. The additional terms in the disputed domain name do nothing to affect the conclusion that the disputed domain name is confusingly similar to the Complainant’s FENDI trademark. 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 nature of such additional term(s) may however bear on assessment of the second and third elements. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
Therefore, the Panel holds that the disputed domain name is confusingly similar to the FENDI trademarks of the Complainant.
There is nothing before the Panel that indicates that the Respondent has any rights or legitimate interests in the disputed domain name. His use of the Complainant’s mark has not been authorized or approved by the Complainant. Nothing indicates that he is known by the mark or the disputed domain name, or has any rights in the distinctive FENDI mark. The use of the trademark in relation to an unauthorized website incorporating the mark in the disputed domain name does not give rise to any rights or legitimate interests. The Respondent appears to have mimicked the Complainant’s visuals on the corresponding website and offers goods that are purported to be those of the Complainant, but have probably not emanated from the latter. All the characteristics of the website to which the disputed domain name resolves give the false impression of an authorized or sponsored website offering genuinely branded goods. The website does not disclose the Respondent’s (lack of) relationship with the Complainant. An attempt to mislead consumers in this manner does not give rise to rights or legitimate interests in the disputed domain name. The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent has not rebutted.
Therefore, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
There can be no doubt that the Respondent was well aware of the Complainant and its rights in the FENDI trademark. That mark is distinctive, has been extensively used around the world for a considerable time, and has a strong reputation in relation to fashion goods. The composition of the disputed domain name further indicates that the Respondent was perfectly aware of the Complainant’s rights in the FENDI mark, and in fact set out deliberately to take advantage of the reputation of that mark. The fact that he established a website with reference to the Complainant’s trademark, that purports to sell FENDI-branded products further indicates that the Respondent was acting deliberately to generate a false suggestion of some official connection with the Complainant, a suggestion further reinforced by the visuals of the connected website and the fact that it sells only purported Fendi products and no other brands. Such use falls within the meaning of paragraph 4(b)(iv) of the Policy and constitutes evidence of registration and use in bad faith.
Therefore, the Panel holds that the disputed domain name was registered and used in bad faith.
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 <fendioutletmalls.com> be transferred to the Complainant.
William A. Van Caenegem
Sole Panelist
Date: June 24, 2021