WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Valentino S.p.A. v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / Golden Goose, Thegoldengoose

Case No. D2021-2742

1. The Parties

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

The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Golden Goose, Thegoldengoose, United States of America.

2. The Domain Name and Registrar

The disputed domain name <valentinoshoeser.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2021. On August 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 23, 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 August 24, 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 amendment to the Complaint on August 25, 2021.

The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on August 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 23, 2021.

The Center appointed Cherise Valles as the sole panelist in this matter on October 7, 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

The Valentino fashion house was founded in 1960 by the legendary fashion designer Valentino Garavani and his business partner Giancarlo Giammetti. The Complainant is a major player on the fashion scene and offers a wide range of luxury products from haute couture and prèt-à-porter.

Valentino is one of the most recognized brands in the world. It is available in over 90 countries due to a retail network of 160 Valentino directly-operated stores located in shopping streets globally as well as in over 1,300 points of sale.

Valentino has been popular with famous, well-dressed women for more than four decades, including Jackie Onassis, Elizabeth Taylor, Halle Berry, Jennifer Lopez, Cate Blanchett, and Gwyneth Paltrow.

The Complainant is the owner of a broad array of trademark registrations for VALENTINO. The trademark has been regularly used by the Complainant for more than 50 years in connection with products in the high-fashion and leather industry, including ready-to-wear clothes, handbags, small leather goods, luggage, shoes, jewelry, gifts, eyewear, and fragrances.

The Complainant is the owner of numerous trademark registrations for VALENTINO, including the following:

- International Trademark Registration No. 570593 for VALENTINO (word mark), registered on April 24, 1991 and duly renewed, in classes 3, 14, 18 and 25 (Annex 4.1);

- European Union Trade Mark Registration No. 001990407 for VALENTINO (word mark), filed on December 7, 2000, registered on September 18, 2008 and duly renewed, in classes 3, 9, 14, 16, 18, 19, 20, 21, 24, 25, 27, 34, and 35 (Annex 4.2);

- United States Trademark Registration No. 0910955 for VALENTINO (word mark), filed on February 10, 1970, registered on April 6, 1971 and duly renewed, in International class 25 (Annex 4.3).

The Complainant is also the owner of the following trademark registrations:

- International Trademark Registration No. 1130628 for ROCKSTUD (word mark), registered on July 31, 2012, in class 25 (Annex 4.4);

- International Trademark Registration No. 969844 for VALENTINO GARAVANI (word mark), registered on July 2, 2008 and duly renewed, in classes 8, 11, 19, 20, 21, 27, 36, 42, and 43 (Annex 4.5);

- European Union Trade Mark Registration No. 006943633 for VALENTINO GARAVANI (word mark), filed on May 28, 2008, registered on January 28, 2009 and duly renewed, in classes 3, 8, 9, 11, 14, 16, 18, 19, 20, 21, 23, 24, 25, 27, 35, 36, and 43 (Annex 4.6);

The Complainant is the owner of over 900 domain names identical to, or comprising the trademark, VALENTINO (Annex 7).

The website “www.valentino.com” has been owned and operated by the Complainant since 1998

(Annex 8). It provides information about the Complainant’s activity and products and an online store where the Complainant’s branded goods are advertised and offered for sale.

The disputed domain name <valentinoshoeser.com> was registered on December 8, 2020.

The disputed domain name was used to offer competing services in the field of fashion. At the time the Complainant became aware of the Respondent’s unauthorized registration and use of the disputed domain name in December 2020, the disputed domain name reverted to a website in English language featuring the Complainant’s trademarks VALENTINO, V logo, ROCKSTUD, and VALENTINO GARAVANI, and promoting the sale of purported VALENTINO GARAVANI and ROCKSTUD shoes (Annex 10). In March 2021, the disputed domain name redirected Internet users to a website offering goods in competition with the Complainant (Annex 10).

The Complainant sent several Cease and Desist letters to the Respondent, which were not answered.

At the time of the decision, the disputed domain name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:

The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

- The disputed domain name is confusingly similar to the Complainant’s registered VALENTINO trademark, in light of the fact that it wholly incorporates the Complainant’s mark.

The Respondent lacks rights or legitimate interests in the disputed domain name.

- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.

The disputed domain name has been registered and is being used in bad faith.

- The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use. Furthermore, the Respondent’s impersonating and/or competing uses of the disputed domain name is clear evidence of bad faith.

The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:

(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name was registered and is being used in bad faith.

The Complainant has the burden of proof in establishing each of these elements.

The Respondent has failed to file a Response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant.

A. Identical or Confusingly Similar

To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.

The Complainant submits that the disputed domain name is confusingly similar to the trademark in which it has rights. The disputed domain name incorporates the VALENTINO trademark in its entirety with the addition of the term “shoeser”. Given the Complainant’s trademark registration as detailed above, the Complainant has established its trademark rights in the term VALENTINO for the purposes of paragraph 4(a)(i) of the Policy (Annex 4).

The disputed domain name incorporates the whole of the Complainant’s word trademark VALENTINO. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) “[w]here 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 inclusion of the term “shoeser” in the disputed domain name does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark VALENTINO. See, Valentino S.p.A. v. Jack Wuzheng, Hongyun Trade Inc, Jacket Chan, Tech Trade Inc., WIPO Case No. D2019-0647. This case involved the domain names <shoesvalentino.com> and <shoevalentino.com>, among others. The panel stated that “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 […] “shoes”, “shoe” […] The Panel concluded that each of the disputed domain names contain the entirety of the Complainant’s trademark, which remains clearly recognizable as such. Accordingly, the Panel decided that the disputed domain names are confusingly similar to the Complainant’s trademarks, and the first element required by the Policy is fulfilled”.

It is standard practice when comparing a disputed domain name to a complainant’s trademark not to take the Top-Level Domain (“TLD”) into account. See section 1.11.1 of the WIPO Overview 3.0, which states that the “applicable TLD in a domain name (e.g., “com”, “.club”, “.nyc”) is viewed as a standard registration requirement and, as such, is disregarded under the first element of the confusing similarity test”.

In the light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent):

“[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

Previous UDRP panels have held that the complainant must establish a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent. See, The American Automobile Association, Inc. v. PrivacyProtect.org/ Domain Tech Enterprises and The American Automobile Association, Inc. v. PrivacyProtect.org/Tarun Kumar and The American Automobile Association, Inc. v. Publishier LLC, WIPO Case No. D2011-2202, where the panel notes that a complainant need only show a prima facie case that respondent lacks rights or legitimate interests in a disputed domain name in order to shift the burden of production to the respondent. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

On the evidence before the Panel, it appears that there has never been any relationship between the Complainant and the Respondent. The Respondent does not seem to be licensed, or otherwise authorized, be it directly or indirectly, to register or use the Complainant’s VALENTINO trademark in any manner, including in, or as part of, the disputed domain name.

The Complainant submits that the Respondent is not a licensee, authorized agent of the Complainant, or in any other way authorized to use the Complainant’s trademark. Specifically, the Respondent is not an authorized reseller of the Complainant and has not been authorized to register and use the disputed domain name.

The Complainant further submits that the Respondent (whose actual identity has been shielded in the WhoIs records since the registration of the disputed domain name) is not commonly known by the disputed domain name as individual, business, or other organization and its family name does not correspond to “Valentino” or to the disputed domain name.

The Complainant asserts that the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy in order to demonstrate rights or legitimate interests in the disputed domain name. In particular, the Respondent cannot assert that, prior to any notice of this dispute, he was using, or had made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy.

First, the Respondent has not provided the Complainant with any evidence of the use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute.

Second, the disputed domain name initially resolved to a website displaying the Complainant’s trademarks and offering for sale prima facie counterfeit VALENTINO products, without providing any disclaimer as to the Respondent’s lack of relationship with the Complainant (Annexes 10 and 11). The Complainant submits that, irrespective of the nature of the products which were offered for sale on the Respondent’s website, no fair use could be possibly invoked by the Respondent, as it failed to accurately and prominently disclose its (lack of) relationship with the trademark holder, thus generating a clear likelihood of confusion amongst Internet users. As mentioned in Section 2.8.1 of the WIPO Overview 3.0, “Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. However, as outlined in the “Oki Data test”, the following cumulative requirements will be applied in the specific conditions of a UDRP case:

(i) the respondent must actually be offering the goods or services at issue;

(ii) the respondent must use the site to sell only the trademarked goods or services;

(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and

(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.”

In this case, the Respondent failed to provide an accurate and prominent disclaimer as to the lack of affiliation with the Complainant on the website to which the disputed domain name used to resolve.

Third, by offering for sale prima facie counterfeit VALENTINO products on the website corresponding to the disputed domain name, the Respondent has engaged in illegitimate activity that is commercial, and not bona fide, in nature. Indications of the counterfeit nature of the products sold under the Complainant’s trademarks are reflected in the very low prices at which the Respondent’s purported VALENTINO products were offered for sale, compared to original goods (Annex 11).

With respect to the offer for sale of counterfeit products, several prior UDRP panels have held that “there can be no legitimate interest in the sale of counterfeits”. See Section 2.13.1 of the WIPO Overview 3.0: “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”. See also L’Oréal SA v. PrivacyProtect.org/ WangShanShan, WIPO Case No. D2014-0295, in which the panel stated “there could be no legitimate interest in the sale of counterfeits”.

Furthermore, the Respondent’s use of the disputed domain name cannot be considered a legitimate noncommercial or fair use without intent for commercial gain, because the Respondent has attempted to gain from the sales of purported VALENTINO products featured on its website. It appears that the Respondent’s intention was to illegitimately trade on the Complainant’s fame for commercial gain.

As mentioned above, following the sending of the Complainant’s Cease and Desist letters to the Respondent and the hosting provider of the corresponding website, the redirection of the disputed domain name was first deactivated. Shortly thereafter, however, the disputed domain name was redirected to the website “www.allgoldengooser.com”, advertising and offering for sale products of the Complainant’s competitor, namely purported GOLDEN GOOSE shoes. The Panel notes that despite such redirection and the fact that the underlying registrant details use a name highly similar to a competitor of the Complainant, Golden Goose S.p.A., there is nothing in the evidence to suggest that the Respondent is commonly known by “GOLDEN GOOSE, THEGOLDENGOOSE” or that Golden Goose S.p.A. was involved in the registration of the disputed domain name. Rather it appears the Respondent (using a physical address associated with the United States and an email address associated with an email service provider in China) has registered the disputed domain name using false registrant details and is attempting to pass itself off as a third party.

The Respondent’s use of the disputed domain name to redirect users looking for the Complainant’s products to another website promoting the sale of goods of the Complainant’s competitor does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.

The current redirection of the disputed domain name to an inactive website is further evidence of the Respondent’s lack of rights or legitimate interests.

Furthermore, as highlighted in section 2.5.1 of the WIPO Overview 3.0, the disputed domain name carries a risk of implied affiliation: “Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner”.

As a final element showing a lack of bona fides, the Respondent did not reply to the Cease and Desist letter sent by the Complainant’s representative. As the panel found in The Great Eastern Life Assurance Company Limited v. Unasi Inc., WIPO Case No. D2005-1218, “[b]y operation of a common sense evidentiary principle, the Respondent’s failure to counter the allegations of the cease and desist letter amounts to adoptive admission of the allegations”.

In light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and concludes that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of 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 its website or location.

The term “bad faith” is “broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”. See section 3.1 of the WIPO Overview 3.0.

The Complainant asserts that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four factors which, in particular but without limitation, may be evidence of registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii) of the Policy.

Previous UDRP panels have found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0 and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113.

In the light of the widespread use of the trademark VALENTINO since the 1960s and the extensive advertising and sales of the Complainant’s products worldwide, the Respondent could not have possibly been unaware of the existence of the Complainant’ trademark VALENTINO when it registered the disputed domain name, with which it is very similar.

In The Nasdaq Stock Market, Inc., v. Hamid Reza Mohammad Pouran, WIPO Case No. D2002-0770, the panel held: “The Respondent knew or should have known of the existence of the Complainant, [as] the Complainant’s trademark [was] widely publicized globally and constantly featured throughout the Internet, and thus the Panel decides that the disputed domain names were registered in bad faith”.

Therefore, it is highly unlikely that the Respondent was not well aware of the Complainant’s trademark rights at the time of the registration of the disputed domain name.

Indeed, the fact that purported VALENTINO products were offered for sale and the Complainant’s trademarks were published on the website to which the disputed domain name initially resolved, indicates that the Respondent was fully aware of the Complainant and its trademarks. See Valentino S.p.A. v. Wu Dong, supra, and Valentino S.p.A. v. Chris Love and Chris Cookie, WIPO Case No. D2016-1086: “[…] the Panel infers that the Respondent has used the disputed domain names with the intention of benefitting from the Complainant’s substantial goodwill in its widely-known VALENTINO trademark. In particular, the Respondent has used the disputed domain names for the purposes of websites which reproduce Complainant's trademarks and product images and are likely to mislead Internet users into believing that they are operated or approved by Complainant”.

The Respondent initially redirected the disputed domain name to a website displaying the Complainant’s trademarks and offering for sale allegedly counterfeit VALENTINO products. Previous URDP panels have held that “[t]he use by a respondent of a domain name which includes a well-known trade mark to resolve to a website which offers and sells counterfeit products under that trade mark is evidence of bad faith registration and use”. See Guccio Gucci S.p.A v. Andrea Hubner et al, WIPO Case No. D2012-2212.

At the time of the filing of the Complaint, the disputed domain name no longer resolves to an active website i.e. it is passively held. Prior UDRP panels have found that the passive holding does not prevent a finding of bad faith under certain circumstances. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

As stated in Section 3.3 of the WIPO Overview 3.0: “[f]rom 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. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”.

In the case at hand, in view of the confusing similarity between the disputed domain name and the Complainant’s prior registered and well-known trademark VALENTINO and the prior use of the disputed domain name as described above, the Respondent’s current passive holding of the site does not prevent a finding of bad faith use.

In addition, the Respondent failed to reply to the Cease and Desist letter addressed to its attention. Prior UDRP panels held that a failure to respond to a Cease and Desist letter can be evidence of bad faith.

It also appears that the Respondent, which failed to provide any contact details on the website to which the disputed domain name resolved (Annex 10), has availed itself of a privacy service to shield its identity and contact details in the Registrar’s WhoIs records. As stated in section 3.6 of the WIPO Overview 3.0, “There are recognized legitimate uses of privacy and proxy registration services; the circumstances in which such services are used, including whether the respondent is operating a commercial and trademark-abusive website, can however impact a panel’s assessment of bad faith.

In terms of underlying respondent identity, panels treat privacy and proxy services as practical equivalents for purposes of the UDRP, and the fact that such services may be employed to prevent the complainant and panel from knowing the identity of the actual underlying registrant of a domain name does not prevent panel assessment of the UDRP elements. Where it appears that a respondent employs a privacy or proxy service merely to avoid being notified of a UDRP proceeding filed against it, panels tend to find that this supports an inference of bad faith”. Furthermore, as discussed above, it appears from the evidence that Respondent registered the disputed domain name using false registrant details in an attempt to imply an association with a third party that does not appear likely to exist, such conduct further supports a finding of bad faith.

Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) 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 <valentinoshoeser.com> be transferred to the Complainant.

Cherise Valles
Sole Panelist
Date: October 21, 2021