WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fiorucci Holdings Limited v. Whois Agent, Domain Protection Services, Inc./ zhiwn nshiz

Case No. D2021-2302

1. The Parties

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

Respondent is Whois Agent, Domain Protection Services, Inc., United States of America (“United States”) / zhiwn nshiz, China.

2. The Domain Name and Registrar

The disputed domain name <fioroutlet.com> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2021. On July 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 15, 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 Complainant on August 12, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 16, 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 Respondent of the Complaint, and the proceedings commenced on August 31, 2021. In accordance with the Rules,

paragraph 5, the due date for Response was September 20, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 6, 2021.

The Center appointed Phillip V. Marano as the sole panelist in this matter on November 5, 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.

4. Factual Background

Established in 1967, Complainant is an Italian fashion brand that manufactures and sells clothing, footwear, headwear, and accessories under the FIORUCCI trademark. Complainant owns valid and subsisting registrations for the FIORUCCI trademark in numerous countries, including the trademark for FIORUCCI (European Union Trademark Reg. No. 367,250) and (United States Reg. No. 1,264,655), respectively registered on February 2, 2001 and January 24, 1981, with earliest priority dating back to June 12, 1972.

Respondent registered the disputed domain name on March 10, 2021. At the time this Complaint was filed, the disputed domain name resolved to a website ostensibly offering discounted FIORUCCI products for sale. The website featured Complainant’s FIORUCCI trademark, Complainant’s registered “Angels” design trademark, copyrighted images taken from Complainant’s online store operated through Complainant’s <fiorucci.com> domain name, an identical font and stylization used on Complainant’s same online store, and Complainant’s “Heart” logo favicon.

5. Parties’ Contentions

A. Complainant

Complainant asserts ownership of the FIORUCCI trademark and has adduced evidence of trademark registrations in numerous jurisdictions around the world including the European Union and the United States, with first use dating back to June 12, 1972. The disputed domain name is confusingly similar to Complainant’s FIORUCCI trademark, according to Complainant, because it the FIOR element is recognizable and is combined with the descriptive term “outlet”, and the disputed domain name resolves to a website directly targeting Complainant and its FIORUCCI products.

Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: the lack of any evidence that Respondent is known by the disputed domain name; the lack of any authorization or license from Complainant for Respondent to use the FIORUCCI trademark; test purchases conducted by Complainant’s representatives resulting in receipt of erroneous and counterfeit RAY-BAN sunglasses; and evidence linking Respondent’s helpdesk email address with a prior determination of cybersquatting through the <fiorucciuk.com> domain name. ¹

Complainant argues that Respondent has registered and used the disputed domain name in bad faith for numerous reasons, including: Complainant’s strong reputation in the FIORUCCI trademark; actual consumer confusion, as evidenced by Complainant customer inquiries regarding the authenticity of Respondent’s website; Respondent’s use of a proxy registration service to obfuscate its identity; and Respondent’s unauthorized use of Complainant’s FIORUCCI trademark, Complainant’s registered “Angels” design trademark, copyrighted images taken from Complainant’s online store operated through Complainant’s <fiorucci.com> domain name, an identical font and stylization used on Complainant’s same online store, and Complainant’s “Heart” logo favicon.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

To succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy:

(i) The disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.

Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 (“A respondent’s default would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true […] UDRP panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case, e.g. where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”); see also The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a)”).

In addition to the evidence submitted by Complainant, because the WhoIs information revealed by the Registrar suggests that China is Respondent’s country of residence, the Panel has confirmed that Complainant registered its FIORUCCI trademark in China (CN Reg. No. 136,498) on April 5, 2010. A panel may undertake limited factual research into matters of public record where it considers such information useful to assessing the case merits and researching a decision. This includes visiting the website linked to the disputed domain name in order to obtain more information about Respondent or its use of the disputed domain name, consulting historical resources like the Internet Archive, reviewing dictionaries, encyclopedias, or accessing trademark registration or other governmental databases. WIPO Overview 3.0, Section 4.8.

A. Identical or Confusingly Similar

Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview 3.0, section 1.2.1. Complainant submitted evidence that the FIORUCCI trademark has been registered in multiple jurisdictions including the European Union and United States with priority dating back to June 12, 1972, nearly fifty years before the disputed domain name was registered by Respondent. Thus, the Panel finds that Complainant’s rights in the FIORUCCI trademark have been established pursuant to the first element of the Policy.

The only remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s FIORUCCI trademark. In this Complaint, the disputed domain name is confusingly similar to Complainant’s FIORUCCI trademark because, disregarding the “.com” generic Top-Level Domain (“gTLD”), the FIOR element of the FIORUCCI trademark is contained and recognizable within the disputed domain name. WIPO Overview 3.0, section 1.7. (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name … [I]n 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...”). In regards to gTLDs, such as “.com” in the disputed domain name, they are generally viewed as a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0, section 1.11.

Furthermore, broader case context such as website content trading off Complainant’s reputation, or a pattern of multiple respondent domain names targeting Complainant’s marks, can also support a finding of confusing similarity. WIPO Overview 3.0, section 1.7; see also VF Corporation v. Vogt Debra ( WIPO Case No. D2016-2650) (Finding confusing similarity where “[w]hile Complainant’s EASTPAK mark is not as easily recognized in the disputed domain name <bagpakonline.com> the PAK element of Complainant’s mark is recognizable and is combined with the descriptive terms ‘bag’ and ‘online’ [and] resolved to an identical website displaying Complainant’s EASTPAK logo and products bearing the EASTPAK mark.”). In this Complaint, the FIOR element of the FIORUCCI trademark is clearly recognizable within the disputed domain name, and both Respondent’s website content and the addition of the term “outlet” are clear intended to target Complainant and its FIORUCCI trademark.

The combination with the term “outlet” does not prevent a finding of confusing similarity between Complainant’s FIORUCCI and the disputed domain name. WIPO Overview, section 1.8 (additional terms “whether descriptive, geographic, pejorative, meaningless, or otherwise” do not prevent a finding of confusing similarity under the first element”); see also AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553 (“Each of the domain names in dispute comprises a portion identical to [the ATT trademark] in which Complainant has rights, together with a portion comprising a geographic qualifier, which is insufficient to prevent the composite domain name from being confusingly similar to Complainant’s [ATT trademark]”) OSRAM GmbH v. Cong Ty Co Phan Dau Tu Xay Dung Va Cong Nghe Viet Nam, WIPO Case No. D2017-1583 (“[T]he addition of the letters ‘hbg’ to the trademark OSRAM does not prevent a finding of confusing similarity between the disputed domain name and the said trademark.”).

In view of Complainant’s registrations for the FIORUCCI trademark, Respondent’s incorporation of the recognizable FIOR element into the disputed domain name, and Respondent’s clear cut targeting of Complainant and its FIORUCCI trademark, the Panel concludes that Complainant has established the first element of the Policy.

B. Rights or Legitimate Interests

Complainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview, section 2.1. It is evident that Respondent, identified by WhoIs data for the disputed domain name as “zhiwn nshiz”, is not commonly known by the disputed domain name or Complainant’s FIORUCCI trademark.

UDRP panels have categorically held that use of a domain name for illegal activity - including the impersonation of complainant, the sale of counterfeit products, and other types of fraud - can never confer rights or legitimate interests on a respondent. Circumstantial evidence can support a credible claim made by Complainant asserting Respondent is engaged in such illegal activity, including that Respondent has masked its identity to avoid being contactable, or that Respondent’s website has been suspended by its hosting provider. WIPO Overview 3.0, section 2.13. See e.g. Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge, WIPO Case No. D2009-1017 (“Respondent has used the domain name to pretend that it is Complainant and in particular to create false emails pretending that they are genuine emails coming from Complainant and one of its senior executives”) see also The Commissioners for HM Revenue and Customs v. Name Redacted, WIPO Case No. D2017-0501 (“In addition, the disputed domain names … have had their web hosting suspended as a result of fraudulent activities. This is evidence of bad faith registration and use of the disputed domain names.”) As detailed below, Complainant has proffered ample evidence to support its arguments that Respondent engages in trademark infringement, copyright infringement, and counterfeiting through Respondent’s website. To this end, the second and third elements of the Policy may be assessed together where clear indicia of bad faith suggests that there cannot be any Respondent rights or legitimate interests. WIPO Overview 3.0, section 2.15.

In view of the absence of any evidence supporting any rights or legitimate interests in the disputed domain name, and Respondent’s well-supported arguments that Respondent uses the disputed domain name to sell counterfeit products, the Panel concludes that Complainant has established the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name:

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

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

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

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

UDRP panels have categorically held that registration and use of a domain name for illegal activity - including impersonation, sale of counterfeit goods, and other types of fraud - is manifestly considered evidence of bad faith within paragraph 4(b)(iv) of the Policy. WIPO Overview 3.0, section 3.1.3. Use of the disputed domain name by Respondent to pretend that it is Complainant or that it is associated with Complainant “brings the case within the provisions of paragraph 4(b)(iii) of the Policy, for it shows Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, namely Complainant.” Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge, WIPO Case No. D2009-1017; see also GEA Group Aktiengesellschaft v. J. D., WIPO Case No. D2014-0357 (concluding that Respondent’s use of the disputed domain name to disrupt Complainant’s business by using it to impersonate Complainant for commercial gain was evidence of respondent’s bad faith registration and use of the disputed domain). Circumstantial evidence can support a complainant’s otherwise credible claim of illegal respondent activity, including evidence that: (i) goods are offered disproportionately below market value; (ii) goods are ordinarily only sold with Complainant’s authorization; (iii) images of the goods used by a respondent suggest they are not genuine; (iv) Respondent has misappropriated copyrighted images from Complainant; (v) the goods at issue are extremely rare; (vii) the goods at issue have prompted consumer complaints; (viii) Respondent has masked its identity to avoid being contactable; and (ix) so-called “trap purchases” demonstrate illegal respondent activity. WIPO Overview 3.0, section 2.13.2.

Complainant has submitted ample evidence to establish for the purposes of the third element of the Policy, that Respondent is using the disputed domain name in furtherance of illegal activity. Specifically, Complainant has provided evidence of: test purchases conducted by Complainant’s representatives resulting in receipt of erroneous and counterfeit RAY-BAN sunglasses; Respondent’s website offering deeply discounted FIORUCCI products for sale; Respondents unauthorized website use of Complainant’s FIORUCCI trademark, Complainant’s registered “Angels” design trademark, copyrighted images taken from Complainant’s online store operated through Complainant’s <fiorucci.com> domain name, an identical font and stylization used on Complainant’s same online store, and Complainant’s “Heart” logo favicon; and evidence linking Respondent’s helpdesk email address with a prior determination of cybersquatting through the <fiorucciuk.com> domain name. See(Observing that “when Complainant and its representatives attempted to carry out test purchases from Respondent’s website […] all attempts resulted in payment failure notifications, which supports a finding that Respondent’s website is not a legitimate commercial retail website, but rather may be used for the phishing of sensitive payment details [….]”).

In view of Respondent’s illegal activity clearly targeting Complainant and its FIORUCCI trademark, the Panel concludes that Complainant has established the third element of 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 name <fioroutlet.com> be transferred to Complainant.

Phillip V. Marano
Sole Panelist
Date: December 1, 2021

¹ Please see Fiorucci Holdings Limited v. Zedong Yang, WIPO Case No. D2020-3075.