Westmore · UDRP DecisionFerragamojapanhot.com + 3 more domains
The Panel ordered transfer of all four disputed domain names. It found them confusingly similar to the Complainant’s FERRAGAMO trademark, found no rights or legitimate interests on the record, and concluded that registration of four domain names incorporating the mark constituted a pattern of conduct under paragraph 4(b)(ii) of the Policy. The Panel also found that the famous mark was evidently known to the Respondent when the domain names were registered.
The timeline behind ferragamojapanhot.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind ferragamojapanhot.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
How each disputed name was decided in this proceeding.
The decision illustrates that multiple domain names targeting a single trademark owner can themselves establish the pattern required by Policy paragraph 4(b)(ii); multiple complainants are not necessarily required. It also shows that geographic and retail-oriented additions to a famous mark generally do not remove confusing similarity when the mark remains fully recognizable.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Salvatore Ferragamo S.p.A v. Ying Chou Case No. D2013-2034 1. The Parties The Complainant is Salvatore Ferragamo S.p.A of Florence, Italy, represented by Studio Legale SIB, Italy. The Respondent is Ying Chou of fu zhou shi, fu jian sheng, China. 2. The Domain Names and Registrar The disputed domain names <ferragamojapanhot.com>, <ferragamojapanstore.com>, <ferragamojptokyo.com>, <ferragamoshopjphot.com> are 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 27, 2013. On November 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 31, 2013. The Center appointed Pablo A. Palazzi as the sole panelist in this matter on January 13, 2014. 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 is an Italian company in the business of fine shoes, handbags, wallets, luggage, belts, apparel, fragrances, gift items and costume jewelry. The Complainant has been using the trademark FERRAGAMO since 1927. The Complainant’s products are sold in many countries including the United States and China. The Complainant has received substantial publicity over the years, including exhibitions in museums in Los Angeles, New York and Shanghai. The Complainant has spent an average of EUR 40 million per year on advertising and promoting products under the trademarks FERRAGAMO and SALVATORE FERRAGAMO. The Complainant owns over 400 trademark applications and registrations for FERRAGAMO and SALVATORE FERRAGAMO worldwide. The disputed domain names were registered on the following dates: <ferragamojapanstore.com> on November 19, 2012, <ferragamojapanhot.com> on March 27, 2013, <ferragamojptokyo.com> on May 7, 2013, and <ferragamoshopjphot.com> on July 31, 2013. 5. Parties’ Contentions A. Complainant The Complainant contends that: 1) The disputed domain names are confusingly similar to the Complainant’s trademark FERRAGAMO. The only difference between the disputed domain names and the Complainant’s trademark is the addition of several generic terms which are insufficient to distinguish the disputed domain names from the Complainant’s trademarks. 2) The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent does not own any trademark applications or registrations for the disputed domain names. The Complainant has not licensed or otherwise authorized the Respondent to use the trademark FERRAGAMO in the disputed domain names. The Respondent is not commonly known by the disputed domain names. 3) The disputed domain names <ferragamojapanhot.com>, <ferragamojapanstore.com>, <ferragamojptokyo.com>, <ferragamoshopjphot.com> were registered and are being used in bad faith. The Respondent’s registration of the disputed domain names confuses potential customers as to the Respondent’s affiliation with the Complainant. Out of the four disputed domain names, only one (<ferragamojapanhot.com>) hosts an active website written in Chinese that apparently deals with electronic components which are not related to the Complainant’s products. The other three domain names did not resolve to active websites at the time of filing the Complaint. In this regard, the Complainant contends that inaction in the form of passing holding can be considered as amounting to acting in bad faith. According to the Complaint, bad faith is also evidenced because the Respondent owns several domain names that incorporate third parties’ well-known trademarks in the field of fashion including <fendibagsjapansale.com>, <emporioarmanijapan.com>, or <diorsbagjpoutlet.com>. The Complainant requests the transfer of the disputed domain names. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 15(a) of the Rules: “A panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the disputed domain names registered by Respondent are identical or confusingly similar to a trademark or a service mark in which Complainant has rights; and (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) that the disputed domain names have been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant owns trademark rights in the trademark FERRAGAMO. The disputed domain names incorporate the trademark FERRAGAMO in its entirety. The only differences, as rightly pointed out by the Complainant, are the geographical terms “japan”, “Tokyo” or “jp” (initials for Japan), in combination with the generic terms “hot”, “store”, and “shop” which are descriptive references to fashion industry. The Panel agrees that these terms are insufficient to distinguish the disputed domain names from the trademark FERRAGAMO and finds that disputed domain names are confusingly similar to the trademark FERRAGAMO. Therefore, the first element of paragraph 4(a) of the Policy is established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the respondent has rights or legitimate interests in the domain name: (i) before any notice of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is 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 has not filed a Response. It has no consent or authorization of the Complainant to use the FERRAGAMO trademark, has not used the disputed domain names for a bona fide offering of goods and services, and is not commonly known by the disputed domain names. Nor is it making a legitimate noncommercial or fair use of the disputed domain names. In the circumstances of this case, and in view of the above, the Panel finds that the second element of the Policy has been established. C. Registered and Used in Bad Faith The Complainant must prove that the disputed domain names were registered are being used in bad faith. The Complainant’s allegations with regard to the Respondent’s registration and use of the disputed domain names in bad faith has been considered by the Panel. These allegations have not been contested by the Respondent because of its default. The Complainant’s trademarks are famous and have evidently been known to the Respondent when registering the disputed domain names. Said domain names are highly unlikely to have been registered if it were not for the Complainant’s trademarks. In the instant case, the Panel thus considers that the Respondent must have had knowledge of the Complainants’ rights in the FERRAGAMO trademark when it registered the disputed domain names. Furthermore, in the Panels view, there is sufficient evidence to make a determination based upon paragraph 4(b)(ii) of the Policy, which provides that bad faith registration and use will be found where 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.” A “pattern of conduct” as required in paragraph 4(b)(ii) of the Policy typically involves multiple domain names directed against multiple complainants, but may also involve multiple domain names directed against a single complainant (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.3 ). Here the latter applies. The fact of registering four domain names that incorporate the Complainant’s trademark represents, in the Panel’s assessment, a pattern of conduct directed against the Complainant, stopping it from reflecting its trademark in the disputed domain names. The Panel concludes that paragraph 4(b)(ii) of the Policy is made out. Therefore, the Panel finds that the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, the Complainant has satisfied all of the three requirements of paragraph 4(a) 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 names <ferragamojapanhot.com>, <ferragamojapanstore.com>, <ferragamojptokyo.com> and <ferragamoshopjphot.com> be transferred to the Complainant. Pablo A. Palazzi Sole Panelist Date: January 28, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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