Roberto Cavalli S.p.A., IGA Finance B.V. v. Jekaterina Kaidanovits-Rogers
Case No. D2009-0740
1. The Parties
The Complainants are Roberto Cavalli S.p.A. of Milan, Italy and IGA Finance B.V. of Amsterdam, the Netherlands, represented by Studio Legale Jacobacci, Sterpi, Francetti, Regoli, de Haas & Associati, Italy.
The Respondent is Jekaterina Kaidanovits-Rogers of Sunny Isles Beach, Florida, United States of America.
2. The Domain Names and Registrar
The disputed domain name <robertocavalliusa.com> is registered with GoDaddy.com Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2009. On June 5, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On June 5, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient the Complainant filed an amendment to the Complaint on June 11, 2009. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 18, 2009. In accordance with the Rules, Paragraph 5(a), the due date for Response was July 8, 2009. The Respondent did not submit any response. Accordingly the Center notified the Respondent's default on July 13, 2009.
The Center appointed Clive Duncan Thorne as the Sole Panelist in this matter on July 22, 2009. 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
According to the facts as set out in the Complaint, the Complainant Roberto Cavalli S.p.A. is the main company of the Cavalli Group, a transnational group which manufactures and sells throughout the world the creations of the world famous Italian designer Mr. Roberto Cavalli. Examples of these creations and their public recognition are set out in the publicity material exhibited as Document 1 to the Complaint.
The second Complainant IGA Finance B.V. is, since 1997, a majority shareholder of Roberto Cavalli S.p.A. and is the owner of the trademarks ROBERTO CAVALLI throughout the world. These companies are collectively referred to as the Complainant.
The Respondent is Ms. Jekaterina Kaidanovits-Rogers of Florida, United States. Beyond the evidence of the Respondent's registration of the disputed domain name and the extract from her web-site (Document 7 to the Complainant), nothing appears to be known about the Respondent.
The first Complainant Roberto Cavalli S.p.A. was established in 1978. Its original main activity was the manufacturing and marketing of luxury clothing and accessories for men and women. The trademarks, comprising the word “Cavalli” derive from the name of the world famous Italian fashion designer Mr. Roberto Cavalli who started his career in the late 1950s. His name started becoming internationally recognised when Mr. Cavalli exhibited his first collection in the Palazzo Pitti fashion show in Florence, Italy in 1972. The fame of the Complainant's trademarks has nowadays grown to such an extent that scholarly books have been published on the designer as the creator of a new style of fashion. The public recognition of the name and trademark ROBERTO CAVALLI is evidenced by coverage in the international media, examples of which are set out in Document 1 exhibited to the Complaint.
The Complainant owns a large number of trademarks throughout the world for ROBERTO CAVALLI and CAVALLI. A schedule of these is exhibited as Document 3 to the Complaint.
For the purposes of this Complaint, the Complainant relies upon three registrations, evidence of which are exhibited at Documents 4 to 6 to the Complaint. These are as follows:
European Community Trademark Registration ROBERTO CAVALLI No. 752196 (Document 4 to the Complaint)
United States Trademark Registration No. 2305384 for ROBERTO CAVALLI (Document 5 to the Complaint)
United States Trademark Registration No. 2937821 for ROBERTO CAVALLI (Document 6 to the Complaint)
The registrations are in Class 25 which includes clothing. The marks are prima facie valid and subsisting.
The Complainant submits that it cannot seriously be disputed that the Complainant is and has been the owner of the trademarks ROBERTO CAVALLI and CAVALLI for many years. It submits that it is a famous trademark as is shown by a Google search under “Roberto Cavalli”.
In the absence of a Response the Panel accepts the above facts as true.
5. Parties' Contentions
A. Complainant
The Complainant contends that:-
(a) The disputed domain name includes “the identical” trademark ROBERTO CAVALLI owned by the Complainant
(b) The disputed domain name is confusingly similar to the mark ROBERTO CAVALLI
(c) The Respondent has no rights or legitimate interests in the disputed domain name:-
(i) The Respondent has not been authorised by the Complainant to register nor to use the domain name.
(ii) The Respondent is not associated in any way with the Complainant nor its distribution network.
(iii) The Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name ROBERTO CAVALLI.
(d) The Respondent uses the disputed domain name in bad faith. This is supported by the fact that the domain name reproduces material taken from one of the Complainant's websites.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or confusingly similar
The Panel finds, based upon the above evidence of registered trademarks, that the Complainant has valid trademark registrations for the mark ROBERTO CAVALLI.
The disputed domain name is identical to the mark ROBERTO CAVALLI save for the suffix “usa”. The Complainant submits that the addition of “usa” does not detract from the domain name being confusingly similar to the mark. The Complainant points out that the use of the suffix “usa” leads internet users to believe that the website belongs to an American branch of the Roberto Cavalli Group.
The Panel accepts these submissions. It finds that the use of the suffix “usa” does not detract from the domain name <roberto cavalliusa.com> being confusingly similar to the mark ROBERTO CAVALLI.
B. Rights of Legitimate Interests
The Complainant submits that the Respondent had no rights or legitimate interests in the disputed domain name. In particular:
(i) The Respondent has not been authorised by the Complainant to register nor to use the Complainant's marks.
(ii) The Respondent is not associated in any way with the Complainant or its distribution network.
(iii) The Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name ROBERTO CAVALLI.
(iv) There is no evidence of a bona fide noncommercial or other legitimate fair use by the Respondent.
The Panel notes that there is, in the absence of a Response, no evidence to the contrary submitted by the Respondent justifying why it may have rights or legitimate interests in the disputed domain name. In the circumstances, therefore, the Panel finds that the Complainant has adduced sufficient evidence to justify a finding that the Respondent has no rights or legitimate interest in the disputed domain name.
It therefore finds for the Complainant in respect of this element.
C. The domain name was registered and is being used in bad faith
The Complainants submits that the Respondent must have been aware of the trade names and trademarks ROBERTO CAVALLI and that as a result the Respondent is using the disputed domain name in bad faith.
The Complainant's evidence is an extract from the Respondent's website (Document 7 to the Complaint) to demonstrate that the domain name was being used, inter alia, for promoting sales of the Complainant's products which appear to be parallel imported and may even be counterfeited. It refers particularly to the links “Roberto Cavalli 50% off” and “Just Cavalli Women Tops”.
The Complainant also relies upon previous authorities which it refers to in the Complaint including Banca Sellas.p.a v. Mr. Paolo Parente,
WIPO Case No. D2000-1157 and Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,
WIPO Case No. D2000-0163 in which previous panels have found that the domain names then in dispute were so “obviously connected” with a well-known product that their use by someone with no connection with the product suggests opportunistic bad faith.
Taking these submissions together, and in the absence of any submissions or evidence to the contrary from the Respondent, the Panel accepts these submissions and finds that the Respondent knew of the Complainant's trademark rights at the time it registered the domain name. The use of “Roberto Cavalli” on the website to which the disputed domain name refers is, in the Panel's view, sufficient evidence of this.
It therefore follows that the Complainant has succeeded in showing that the domain name was registered and used in bad faith.
Having found for the Complainant in respect of each of the above elements, the Panel finds that the Complainant has succeeded in proving its Complaint.
7. Decision
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <robertocavalliusa.com> be transferred to the Complainant.
Clive Duncan Thorne Sole Panelist
Dated: August 5, 2009
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