WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Furla S.p.A. v. Artem Mochalov / Identity Protection Service, Identity Protect Limited

Case No. D2015-2237

1. The Parties

The Complainant is Furla S.p.A. of Lazzaro di Savena (BO), Italy, represented by Studio Turini, Italy.

The Respondent is Artem Mochalov of Limassol, Cyprus / Identity Protection Service, Identity Protect Limited of Surrey, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <furla.club> is registered with Mesh Digital Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2015. On December 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 10, 2015, 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 November 11, 2015 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 amended Complaint on December 14, 2015.

The Center verified that the amended 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 December 14, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2016. Apart from several brief email communications from the Respondent, no official response was received. Directly after the transmission of Respondent Default an email was received by the Center from the Respondent in which he stated: “I sent my answer 24.12.2015.

I'm sure the letter was received by me.

A copy of the letter is attached.”

The attached letter in question had been sent to the Complainant however, the Center had not been copied on it. The communication stated: “I received your letter requesting the transfer of the domain http://furla.club

I agree to transfer the domain to your property, but I want to compensate for the cost of its acquisition and maintenance.

This amount is about 2,500 euros. Do you or your customer agree to compensate for these costs?

Best Regards,

Artem.”

Further brief email communications were received from the Respondent on the subject of possible settlement. However, on January 8, 2016 the Complainant informed the Center that it was not interested in the Respondent’s proposal and wished to proceed with the case. Two further emails were received from the Respondent objecting to the continuance of the proceeding to a decision.

The Center appointed Ladislav Jakl as the sole panelist in this matter on January 15, 2016. 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 a well-known Italian company which has been creating-strictly in Italy and distributing high-quality bags, shoes and accessories of essential elegance through out the world since 1927.

The Complainant is the holder of many trademarks, among which Community trademark No. 002850873 FURLA, filed on September 17, 2002, registered on January 7, 2004 for classes 9,16 and 35 (Annex 1 to the Complaint), the Community trademark No. 002417491 FURLA, filed on October 19, 2001 for 14, 18 and 25 classes (Annex 2 to the Complaint), the International trademark No. 777710 FURLA, registered on February 13, 2002 for classes 14, 18 and 25 (Annex 3 to the Complaint) and others consisting in or containing the sign FURLA, registered before other offices, including Russian Federation (Annexes 4 and 5 to the Complaint). The Complainant is also operating through the Internet with its main website at “www.furla.com”. The Complainant is holder of several domain names created before the disputed domain name (Annex 6 to the Complaint).

The disputed domain name <furla.club> was registered on April 5, 2015 and the website associated with it is in the Russian language and appears to offer Complainant’s products for sale.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the dominant part of the disputed domain name <furla.club> comprises the term “furla”, which is identical to the registered trademarks FURLA, and others trademarks consisting in or containing the sign FURLA, registered before other offices, including Russian Federation (Annexes 4 and 5 to the Complaint). The Complainant concludes that disputed domain name is confusingly similar to the Complainant’s trademarks.

Furthermore, the Complainant contends that the Respondent is using the disputed domain name to connect to a website where the trademark FURLA is reproduced, without any authorization by the Complainant (Annex 15 to the Complaint). In such a way the Respondent is using the Complainant’s trademarks in order to attract the public to the website. In any case, the Respondent is not an official Furla’s outsourcing factory and retailer and the Complainant has not licensed or otherwise permitted the Respondent to use its trademarks or to apply for or use any domain name incorporating its trademarks and for this reason the Respondent has no rights or legitimate interests in the disputed domain name (Inter-IKEA Systems B.V. v. Evezon Co. Ltd.,WIPO Case No. D2000-0437; Aktiebolaged Elektrolux v. Domain Admin, whoisprotection.biz/Emrecan ARSLAN, WIPO Case No. D2015-0298; Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Chunhai Zhang, WIPO Case No. D2012-0136). The composition of the domain name <furla.club>, suitable to attract Internet users and to mislead and divert consumers, cannot be considered noncommercial or fair use (Volvo Trademark Holding AB v. e/motordealer Ltd.,WIPO Case No. D2002-0036).

Furthermore, the Complainant argues that the Respondent is not commonly known by name “Furla” and that he was not authorized, licensed or otherwise allowed by the Complainant to use the name “Furla”, nor to apply for any domain name incorporating its trademarks FURLA under any circumstances. The Complainant refers to the previous WIPO UDRP decisions in which the respondents were never authorized by the complainant to use the complainant’s trademark in any way, which gives rise to a presumption that the Respondent cannot establish that he has rights or any legitimate interests in the disputed domain name (Media West-GRS, Inc., Media West-MNC Inc., Gannert Pacific Corporation, Gannert Co., Inc., Gannert River States Publishing Corp., Guam Publications and Incorporated v. Moniker Privacy Services/ Forum LLC. / Registrant(187640) [email protected], WIPO Case No. D2006-0478). The Respondent has not acquired any rights or legitimate interests in the disputed domain name or any name corresponding to the disputed domain name. The Respondent registered the disputed domain name on April 5, 2015 and the mere registration of the domain name does not give the owner a right or a legitimate interest in the domain name itself. The Respondent is using the disputed domain name to connect to a website where the trademark FURLA is reproduced, without any authorization by the Complainant (Annex 15 to the Complaint). In such a way the Respondent is using the Complainant’s trademarks in order to attract the public to its website. Furthermore, it seems that the Respondent is selling on its website the Complainant’s products allegedly counterfeited (Lilly JCOSLLC v. Dan Ecoles, WIPO Case No. D2004-0750; Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Chunhai Zhang, supra). In any case, the Respondent is not an official Furla’s outsourcing factory and retailer and the Complainant has not licensed or otherwise permitted the Respondent to use its trademarks or to apply for or use any domain name incorporating its trademarks FURLA and for this reason the Respondent has no rights or legitimate interests in the disputed domain name (Inter-IKEA Systems B.V. v. Evezon Co. Ltd.,supra; Aktiebolaged Elektrolux v. Domain Admin, whoisprotection.biz/Emrecan ARSLAN, supra; Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Chunhai Zhang, supra.

As to the question whether the disputed domain name was registered and is being used in bad faith, the Complainant contends that previous UDRP decisions have stated that the disputed domain name was registered and is being used in bad faith in cases where the respondent knew or should have known of the registration and use of the trademark prior to registering the domain name. The registration of the disputed domain name prevents the Complainant from reflecting its trademarks in a corresponding domain name, considering that the disputed domain name is the generic Top-Level Domain “.club”, one of the most new and useful on the Internet. The infringing website “www.furla.club” reproduces the FURLA trademarks (Annex 15 to the Complaint) and that such activity constitutes evidence of bad faith registration and use of the disputed domain name (L’Oréal, Biotherm Lancome Parfums et Beauté & Cle v. Unasi, Inc., WIPO Case No. D2005-0623; McDonalds Corporation v. ZusCoin, WIPO Case No. D2007-1353).

In accordance with Paragraph 4(i) of the Policy, for the described reasons, the Complainant requests, that the disputed domain name be transferred to the Complainant.

B. Respondent

A part from the email communications mentioned in the procedural history section, the Respondent did not submit an official response to the Complainant’s contentions.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

There is no doubt to this Panel, that the disputed domain name <furla.club> incorporates the Complainant’s trademark FURLA in its entirety and that the addition of the generic term “club” does not sufficiently distinguish the disputed domain name from the trademark of the Complainant (Lilly ICOS LLC v. John Hopking/Neo net Ltd., WIPO Case No. D2005-0694). The Complainant is holder of many trademarks, among which the Community trademark No. 002850873 FURLA, filed on September 17, 2002, registered on January 7, 2004 for classes 9,16 and 35 (Annex 1 to the Complaint), the Community trademark No. 002417491 FURLA, filed on October 19, 2001 for 14, 18 and 25 (Annex 2 to the Complaint), the International trademark No. 777710 FURLA, registered on February 13, 2002 for classes 14, 18 and 25 (Annex 3 to the Complaint) and others consisting in or containing the sign “FURLA”, registered before other offices, including Russian Federation (Annexes 4 and 5 to the Complaint). The Complainant is holder of several domain names created before the disputed domain name (Annex 6 to the Complaint).

For all the above cited reasons, the Panel concludes that disputed domain name <furla.club> is confusingly similar to the Complainant’s trademark FURLA in which the Complainant has rights, and therefore, the condition of paragraph 4(a)(i) of the Policy is fulfilled.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. Any of the following circumstances, as indicated in paragraph 4(c) of the Policy, in particular but without limitation shall demonstrate rights or legitimate interests:

(i) before the Respondent obtained any notice of the dispute, has not used or has not made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name, in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as individual, business, or other organization) has not been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or

(iii) the Respondent was not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel accepts the arguments of the Complainant, unchallenged by the Respondent, that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the FURLA trademark in a domain name or in any other manner. The Respondent is not commonly known by name “Furla”. As the Respondent have never been authorized by the Complainant to use the Complainant’s marks in any way, shape or form which gives rise to a presumption that the Respondent cannot establish that he has rights or any legitimate interest in the domain name (Swarovski (Marriott International, Inc. v. Thomas, Burstein & Miller, WIPO Case No. D2000-0610; Media West-GRS, Inc., Media West-MNC Inc., Gannert Pacific Corporation, Gannert Co., Inc., Gannert River States Publishing Corp., Guam Publications and Incorporated v. Moniker Privacy Services/ Forum LLC, supra. The Respondent has not acquired any legitimate rights whatsoever in the domain name or any name corresponding to the disputed domain name. The Respondent registered the domain name in April 6, 2015 and the mere registration of the domain name does not give the owner a right or a legitimate interest in the domain name itself. The Respondent is using the disputed domain name to connect to a website where the trademark FURLA is reproduced, without any authorization by the Complainant (Annex 15 to the Complaint). In such a way the Respondent is using the Complainant´s trademarks in order to attract the public to its web site. In any case, the Respondent is not an official Furla’s outsourcing factory and retailer and the Complainant has not licensed or otherwise permitted the Respondent to use its trademarks or to apply for or use any domain name incorporating its trademarks FURLA and for this reason the Respondent has no rights or legitimate interests in the domain name in issue (Inter-IKEA Systems B.V. v. Evezon Co. Ltd., supra; Aktiebolaged Elektrolux v. Domain Admin, whoisprotection.biz/Emrecan ARSLAN, sSupra; Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Chunhai Zhang, supra).

Furthermore, the composition of the domain name <furla.club>, suitable to attract Internet users and to mislead and divert consumers, cannot be considered non-commercial or fair use (Volvo Trademark Holding AB v. e/motordealer Ltd.,supra. The Respondent’s use of the FURLA trademark is clearly for the purpose of misleading Internet consumers into believing that the Respondent is associated with or approved by the Complainant. The Respondent is clearly seeking to trade on the Complainant’s goodwill and reputation. For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular, but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):

(ii) the Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 his website or of a product or service on that website or location.

The Complainant has submitted the evidence, unchallenged by the Respondent, that the Respondent has registered the disputed domain name in bad faith because it was registered with the knowledge of the Complainant’s rights in the Complainant’s trademark and that the Respondent’s bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant’s trademark at the time of the registration of the disputed domain name. The registration of the disputed domain name prevents the Complainant from reflecting its trademarks in a corresponding domain name. The infringing website “www.furla.club” reproduces the FURLA trademarks (Annex 15 to the Complaint) and that such activity constitutes evidence of bad faith registration and use of the disputed domain name (L’Oréal, Biotherm Lancome Parfums et Beauté & Cle v. Unasi, Inc., Supra; McDonald´s Corporation v. ZusCoin, Supra). The Complainant’s trademarks are well known worldwide and the disputed domain name is confusingly similar to the registered trademarks of the Complainant (Swarovski Aktiengesellschaft v. Yang Liu, WIPO Case No. D2013-0819; Swarovski Aktiengesellschaft v. Christine Jil,WIPO Case No. D2011-2241). The registration of a famous mark, like the FURLA trademarks, as a domain name by an entity that has no legitimate relationship with the trademark is itself sufficient to demonstrate bad faith (Swarovski Aktiengesellschaft v. Liu Ji, supra; Swarovski Aktiengesellschaft v. Whois Privacy Protection Service, Inc. / ning ning,WIPO Case No. D2012-0979). The Respondent’s registration and use of the disputed domain name attracts Internet users to its website because of its purported affiliation with the Complainant. This is further evidence of the Respondent’s bad faith registration and use of the disputed domain name (Swarovski Aktiengesellschaft v. Hopper Dirt, WIPO Case No. D2011-1525). The Panel finds that the disputed domain name is also being used in bad faith, as it intentionally attempts, for commercial purpose, to attract Internet users to the Respondent’s website 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 of the products or services posted on the Respondent’s website (Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784; F. Hoffmann-La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049).

For the above cited reasons the Panel finds that the disputed domain name was registered and is being used in bad faith. Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case

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 <furla.club> be transferred to the Complainant.

Ladislav Jakl
Sole Panelist
Date: January 27, 2016