Westmore · UDRP DecisionFurlaoutletsale.com
The Panel ordered transfer of <furlaoutletsale.com>. It found the domain confusingly similar to the Complainant’s FURLA trademark because it incorporated the mark with the generic words “outlet” and “sale.” The Respondent lacked rights or legitimate interests, and the domain was registered and used in bad faith through an unauthorized commercial website that copied the Complainant’s official website and offered significantly cheaper goods under the FURLA mark without a disclaimer. Although the Complainant did not prove that the goods were counterfeit, the Panel considered them likely imitations and held that bad faith was established even if they were not counterfeit.
The timeline behind furlaoutletsale.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
The case illustrates that definitive proof of counterfeiting is not always necessary where the sourced record independently establishes unauthorized trademark-based commercial use, the absence of a relationship disclaimer, and copying of the trademark owner’s official website. It also shows that generic retail terms such as “outlet” and “sale” do not avoid confusing similarity when appended to an incorporated trademark.
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 Furla S.p.A. v. yanghua li/liyanghua Case No. D2014-1470 1. The Parties The Complainant is Furla S.p.A. of San Lazzaro di Savena (BO), Italy, represented by Bonelli Erede Pappalardo Studio Legale, Italy. The Respondent is yanghua li/liyanghua of Putian, Fujian Province, China. 2. The Domain Name and Registrar The disputed domain name <furlaoutletsale.com> is registered with Bizcn.com, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2014. On August 27, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 3, 2014, 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. On September 4, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date. 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 in both Chinese and English, and the proceeding commenced on September 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 30, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 1, 2014. The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on October 7, 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 A. Complainant The Complainant is a company incorporated in Italy and is the owner of several registrations worldwide for the trademark FURLA (the “Trade Mark”). The Complainantwas founded in 1927 and is well known for its high quality bags and leather products. B. Respondent The Respondent is apparently an individual based in China. C. The Disputed Domain Name The disputed domain name was registered on January 24, 2013. D. The Website at the Disputed Domain Name The website at the disputed domain name (the “Website”) promotes and offers for sale “reduced price” and “on sale” handbags under the Trade Mark. 5. Parties’ Contentions A. Complainant The Complainant made the following submissions in the Complaint. The Complainantwas founded in 1927 and is well known for its high quality bags and leather products. The Trade Mark was established in 1970. The Complainant operates over 300 stores worldwide, including in 15 cities in China. The disputed domain name is confusingly similar to the Trade Mark. It incorporates the Trade Mark in its entirety, together with the non-distinctive words “outlet” and “sale”. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name and is not making a bona fide commercial use of the disputed domain name. The disputed domain name has been registered and used in bad faith. The Respondent has used the disputed domain name in respect of the Website, which is a copy of the Complainant’s official website “www.furla.com”, and which offers for sale counterfeit handbags under the Trade Mark at reduced prices. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding. The Complainant has requested that English be the language of the proceeding. The Complainant submits that, as the Website is entirely an English language website, this demonstrates that the Respondent is familiar with English. The Respondent did not file a Response and did not file any submissions with respect to the language of the proceeding. In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs. The Panel finds, in all the circumstances, that sufficient evidence has been adduced to suggest that the Respondent is conversant in the English language. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. 6.2. Decision The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name by over 40 years. Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name”. The Panel finds the addition of the generic words “outlet” and “sale” does not serve to distinguish the disputed domain name from the Trade Mark in any significant way. The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark and holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that the respondent has rights or legitimate interests in a domain name: (i) before any notice to the respondent 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; (ii) the respondent (as an individual, business, or other organisation) has been commonly known by the domain name even if the respondent has acquired no trade mark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by over 40 years. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption. The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the evidence suggests the disputed domain name has been used to facilitate the sale of significantly cheaper copies of the Complainant’s products, via the Website, which is a flagrant copy of the Complainant’s official website. There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith The Complainant asserts that the Respondent has registered and used the disputed domain name in respect of the Website which is a blatant copy of the Complainant’s official website, and which offers for sale counterfeit Furla handbags at prices significantly cheaper than the Complainant’s official products. The Complainant has not filed any evidence to support the assertion that the goods offered for sale on the Website are in fact counterfeits. However, in all the circumstances, the Panel determines it is reasonable to conclude that the goods offered for sale on the Websites are likely imitations. Even if they are not counterfeit goods, in all the circumstances, the Panel concludes the unauthorised offer for sale on the Website of goods under the Trade Mark, absent any disclaimer as to the Respondent’s relationship with the Complainant, amounts to clear evidence of bad faith. The Panel’s conclusion in this regard is fortified by the fact the Respondent has in its Website flagrantly copied the content of the Complainant’s official website. The Panel therefore finds, in all the circumstances, the requisite element of bad faith registration and use has been satisfied, under paragraph 4(b)(iv) of the Policy. For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled. 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 <furlaoutletsale.com> be transferred to the Complainant. Sebastian M.W. Hughes Sole Panelist Dated: October 21, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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