WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Salvatore Ferragamo S.p.A. v. Liu Dongjie
Case No. D2016-1600
1. The Parties
The Complainant is Salvatore Ferragamo S.p.A. of Florence, Italy, represented by Studio Legale SIB, Italy.
The Respondent is Liu Dongjie of Cang Zhou, He Bei, China.
2. The Domain Name and Registrar
The disputed domain name <ferragamo.xin> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2016. On August 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 2016, 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 August 11, 2016, the Center informed the Parties both in English and Chinese that the Registration Agreement is in Chinese and requested them to comment on the language of the proceeding. The Complainant submitted a request for English to be the language of the proceeding on August 12, 2016. The Complainant submitted an amended Complaint by email on August 17, 2016 to correct an administrative formality.
The Center verified that the Complaint together with 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 August 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 7, 2016. The Respondent did not submit any substantive response, but sent an informal email to the Center in Chinese on September 13, 2016. The Respondent sent a further informal email communication to the Center on September 16, 2016.
The Center appointed Sok Ling MOI as the sole panelist in this matter on September 14, 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, a company incorporated in Italy, is in the business of manufacturing, marketing and selling luxury shoes, handbags and other fashion accessories. The Complainant’s corporate name was derived from its founder, Salvatore Ferragamo, who began his career in 1914 in California creating handmade shoes for the film industry.
The Complainant has been using the trade mark FERRAGAMO since at least 1927 with respect to shoes and 1968 with respect to handbags. Its products are sold in retail stores located in Italy and numerous countries worldwide including the United States of America, the United Kingdom of Great Britain and Northern Ireland, Japan, Singapore, and China. In China, the Complainant’s FERRAGAMO products are sold through its Salvatore Ferragamo stores, duty-free shops in various cities including Beijing, Guangzhou, Shanghai, Shenzhen and Nanjing. For the past couple of years, the Complainant spent an average of EUR 40 million annually on advertising and promotional efforts worldwide.
The Complainant has registered its FERRAGAMO trade mark in many countries and jurisdictions, including in China (where the Respondent is based), including international registration no. 397649 designating China which was registered on March 23, 1973.
The Complainant owns registrations for several domain names comprising the mark FERRAGAMO, including <ferragamo.com>, <ferragamo.net>, <ferragamo.cn> and <ferragamo.asia>, through which it operates websites to promote its products.
The disputed domain name was registered by the Respondent on November 12, 2015, long after the Complainant used and registered its FERRAGAMO trade mark. As at the date of this decision, the disputed domain name does not resolve to any active websites and appears never to have been so directed.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain name is confusingly similar or identical to its trade mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith.
B. Respondent
Apart from two emails sent to the Center on September 13, 2016 and September 16, 2016 disputing the Complainant’s right to file the Complaint, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated fairly and given a fair opportunity to present their respective case.
The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.
On the record, the Respondent appears to be a Chinese individual and is thus presumably not a native English speaker. The Panel also notes that the Respondent has sent two emails (dated September 13, 2016 and September 16, 2016) to the Center with contents entirely in Chinese. This notwithstanding, the Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:
(a) the disputed domain name is registered in Latin characters, rather than Chinese script; and
(b) based on a reverse WhoIs search on the Respondent’s email independently conducted by the Panel,1 the Respondent owns other domain name registrations consisting entirely of Latin characters, such as <alcatel-sbell.xin> and <giorgioarmanibeauty.xin> which also incorporate third-party trade marks.
Additionally, the Panel notes that:
(a) the Center has notified the Respondent of the proceeding in both Chinese and English;
(b) the Center informed the Respondent that it would accept a Response in either English or Chinese; and
(c) the Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but has chosen not to do so.
Considering the above circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case. To require the Complaint to be translated into Chinese would in the circumstances of this case cause an unnecessary cost burden to the Complainant and unfairly disadvantage the Complainant. The proceeding would be unnecessarily delayed.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that (i) it shall accept the Complaint and all supporting materials as filed in English; and (ii) English shall be the language of the proceeding and the decision will be rendered in English.
6.2. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain name to be transferred:
(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(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.
On the basis of the evidence introduced by the Complainant, the Panel concludes as follows:
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the FERRAGAMO mark acquired through use and registration.
The disputed domain name incorporates the Complainant’s FERRAGAMO trade mark in its entirety. The addition of the generic Top-Level-Domain (“gTLD”) “.xin” does not impact on the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark.
Consequently, the Panel finds that the disputed domain name is identical to the Complainant’s trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain name. However, once the Complainant makes a prima facie showing under paragraph 4(a)(ii), the burden of production shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it of the dispute, the Respondent’s use of, or 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 has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is 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 trade mark or service mark at issue.
See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao internet foshan co, ltd,
WIPO Case No. D2013-0974.
The Complainant has clearly established that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the FERRAGAMO trade mark or register the disputed domain name containing the Complainant’s trade mark. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the name “Ferragamo”.
The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name.
As at the date of the decision, the disputed domain name does not resolve to any active website and appears never to have been so directed. The Respondent did not file a Response to the Complaint and has thus failed to provide any evidence to establish its rights or legitimate interests in the disputed domain name. As such, the prima facie case has not been rebutted.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trade mark 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 the Respondent’s 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Panel notes that, as of the date of this decision, the disputed domain name does not resolve to any active website and appears never to have been so directed. Nevertheless, the consensus view of previous UDRP panels is that passive holding in itself does not preclude a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.2).
The Complainant and its FERRAGAMO trade mark enjoy a worldwide reputation. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcends national borders. A cursory Internet search would have disclosed the FERRAGAMO trade mark and its extensive use by the Complainant. Given the long-established use and reputation of the FERRAGAMO trade mark as well as the substantial Internet presence the Complainant enjoys, a presumption arises that the Respondent was aware of the Complainant’s FERRAGAMO trade mark when it registered the disputed domain name. Registration of a domain name that incorporates a complainant’s long-established and well‑known trade mark suggests opportunistic bad faith.
The Respondent has failed to provide any evidence of actual or contemplated bona fide use of the disputed domain name. In view of the above finding that the Respondent does not have rights or legitimate interests in the disputed domain name, the Panel accepts the Complainant’s contention and is satisfied that the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting its trade mark in a corresponding domain name. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(ii) of the Policy are applicable to the present case (noting that the Respondent also appears to own two other domain names, namely <alcatel-sbell.xin> and <giorgioarmanibeauty.xin>, each of which incorporates a third-party trade mark, hence constituting a pattern of conduct for the purpose of paragraph 4(b)(ii)). As such, the Panel finds that the Respondent’s passive holding of the disputed domain name is also indicative of bad faith.
The Panel also notes that efforts to contact the Respondent at the physical address provided to the Registrar failed which suggests that the Respondent had provided false contact details when registering the disputed domain name.
Taking into account all the circumstances, the Panel concludes that the Respondent has registered and used the disputed domain name in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under 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 name <ferragamo.xin> be transferred to the Complainant.
Sok Ling MOI
Sole Panelist
Date: September 28, 2016
1 A panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. See WIPO Overview 2.0, paragraph 4.5.
