WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Salvatore Ferragamo S.p.A. v. Dexter Reading

Case No. D2014-1494

1. The Parties

The Complainant is Salvatore Ferragamo S.p.A. of Florence, Italy, represented by Studio Legale SIB, Italy.

The Respondent is Dexter Reading of Lincoln, New Hampshire, China.¹

2. The Domain Name and Registrar

The disputed domain names <ferragamoshoesuk.com> and <ferragamo-uk.com> are registered with GoDaddy.com, LLC

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 1, 2014. On September 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 2, 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.

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 September 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 30, 2014.

The Center appointed Keiji Kondo as the sole panelist in this matter on October 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.

According to paragraph 11(a) of the Rules the language of the proceedings shall be the language of the registration agreement. In this case, the Registrar confirmed that the language of the registration agreement for the disputed domain name is English. The Complainant submitted the Complaint in English.

Therefore, the Panel concludes that, according to the paragraph 11(a) of the Rules, the language of the proceedings is English.

4. Factual Background

The disputed domain names <ferragamoshoesuk.com> and <ferragamo-uk.com> were registered on June 22, 2014.

The Complainant has been using the trademark FERRAGAMO since at least 1927 with respect to shoes and since 1968 with respect to handbags.

The Complainant's products can be found at retail stores located in Italy, United States of America, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), France, Germany, Canada, China, Japan, Republic of Korea, Taiwan (Province of China), Indonesia, Malaysia, Singapore, Thailand, Australia, Spain, Switzerland, Saudi Arabia, Indonesia, Belgium, the Philippines and other countries.

The Complainant has specifically marketed and sold in China and Japan shoes, handbags, fragrances, apparel and other fine leather goods, through Salvatore Ferragamo Stores, Duty Free shops and In-Store shops in Japan and in China (Annex 5 of the Complaint).

The Complainant owns more than 400 applications and registrations for FERRAGAMO and SALVATORE FERRAGAMO worldwide (Annex10 of the Complaint).

5. Parties' Contentions

A. Complainant

(1) Identical or confusingly similar

The Complainant has more than 400 registrations for FERRAGAMO and similar marks in more than 100 countries since the 1950's.

In addition, since 1996, the Complainant owns registrations for several domain names comprising the mark FERRAGAMO among which <ferragamo.com>, <salvatoreferragamo.co.uk>, <salvatoreferragamo.net>, <ferragamo.cn>, whereon the Complainant promotes its products bearing the trademark FERRAGAMO and SALVATORE FERRAGAMO.

The disputed domain names are obviously confusingly similar to the Complainant's FERRAGAMO trademark.

The disputed domain names <ferragamo-uk.com> and <ferragamoshoesuk.com>, differentiate from the Complainant's mark for the use of the geographic suffix "UK" (which is a clear reference to United Kingdom), as well as for the generic word "shoes", forming the suffixes "UK" and "shoesuk".

The suffixes describe a product that the Complainant offers and a location where the Complainant has established a number of stores.

Therefore, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

(2) No rights or legitimate interests

The Respondent is not affiliated in any way with the Complainant and, to the best of the Complainant's knowledge, does not own any trademark applications or registrations for "ferragamo" or any other mark comprising this sign in connection with any goods or services.

In addition, the Complainant has not licensed or otherwise authorized the Respondent to use its FERRAGAMO trademark, or to apply for any domain name incorporating such mark.

Lastly, the Respondent is not commonly known by the disputed domain names and does not make any bona fide use or trade under the name of the disputed domain names.

Moreover, to the best of the Complainant's knowledge, the goods offered for sale on the Respondent's websites hosted on the disputed domain names are counterfeit.

Therefore, the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.

(3) Bad faith registration and used of the disputed domain name

To the best of the Complainant's knowledge, the Respondent offers for sale, on its "www.ferragamo-uk.com" and "www.ferragamoshoesuk.com" websites, counterfeit products of shoes bearing the Complainant's marks, with a clear intent for commercial gain.

The Respondent registered the disputed domain names only a few months ago with a view to take unfair advantage of the reputation of the Complainant's mark. In fact, the Respondent's registration of <ferragamo-uk.com> and <ferragamoshoesuk.com> obviously confuses potential customers as to the Respondent's affiliation with the Complainant since the Complainant distributes also in the United Kingdom.

Furthermore, the Respondent's domain names impede Internet users from locating the Complainant's true website, thereby diluting the value of the Complainant's FERRAGAMO trademark.

Finally, the Respondent's bad faith is proven by the fact that the Respondent owns several domain names which include well-known third parties' trademarks in the field of fashion such as <getchanel.com>, <guccidiscountsummer.net> and <gucciwallet.us>. These domain names are clearly registered with the goal to sell counterfeit items or to be sold back to the legitimate trademark owner.

The Complainant has satisfied the requirement of paragraph 4(a)(iii), 4(b) of the Policy.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has registered the FERRAGAMO trademark in many countries before the Respondent's registration of the disputed domain names.

The disputed domain names comprise the Complainant's trademark in its entirety. The suffix "UK" means the official country code for United Kingdom where the Complainant has established a number of stores.

The suffix word "shoes" is a product that the Complainant sells.

These suffixes do not reduce but enhance the confusing similarity.

Therefore, the Panel concludes that the disputed domain names are confusingly similar to the Complainant's trademark.

B. Rights or Legitimate Interests

No license or authorization of any kind has been given by the Complainant to the Respondent, to use the trademark FERRAGAMO.

The Respondent is using the disputed domain names to sell the products showing the Complainant's trademark.

The Panel notes the contention of the Complainant that to the best of the Complainant's knowledge, the goods offered for sale on the Respondent's websites hosted on the disputed domain names are counterfeit, however, the Panel notes that the Complainant's contention is not supported by evidence. Regardless of whether the Respondent's products are counterfeit or not, the Panel has found that the Respondent's use of the disputed domain names cannot be considered as a bona fide offering of goods or services or a legitimate noncommercial or fair use because the Respondent's websites are in no way authorized by the Complainant, but appear to be designed to give the impression that they are the Complainant's official websites in the UK.

Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

The Complainant's trademark was already well-known before the registration of the disputed domain names.

Furthermore, the suffixes "UK" and "shoes" do not weaken, but rather strengthen, the inference that the Respondent and its websites are somehow related to the Complainant.

Also considering the use to which the disputed domain names have been put, it is highly unlikely that the Respondent was not aware of the Complainant's FERRAGAMO trademark at the time of the registration of the disputed domain names.

The Respondent uses the disputed domain names to sell products showing the Complainant's trademark on websites which appear to be designed to give the impression that they are the Complainant's official websites in the UK, which they are not.

Moreover, the Respondent owns several domain names which include wellknown third parties' trademarks in the field of fashion such as <getchanel.com>, <guccidiscountsummer.net> and <gucciwallet.us>.

The above mentioned circumstances and the Respondent's failure to respond to Complainant's contentions suggest that the Respondent registered and used the disputed domain names to gain unfair commercial profit. Therefore, the Panel concludes that the disputed domain names were registered and are being used in bad faith.

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, <ferragamoshoesuk.com> and <ferragamo-uk.com> be transferred to the Complainant.

Keiji Kondo
Sole Panelist
Date: October 22, 2014

¹ Since "New Hampshire, China" does not make sense, the Panel notes that the Respondent's address of the record is false.