WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Giada Group S.R.L. v. VVV, MMM, XXXX

Case No. D2017-0447

1. The Parties

The Complainant is Giada Group S.R.L. of Milano, Italy, represented by Studio Crea Avvocati Associati, Italy.

The Respondent is VVV MMM, XXXX of Iraq.

2. The Domain Name and Registrar

The disputed domain name <verri.com> is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 3, 2017. On March 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 7, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 4, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 5, 2017.

The Center appointed Steven A. Maier as the sole panelist in this matter on April 13, 2017. 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 company registered in Italy. It operates a fashion house under the brand name and trademark VERRI.

The Complainant is the owner of registrations for trademarks, including International Trademark Registration number 542883 for a figurative mark VERRI registered on September 26, 1989, in Classes 3, 18 and 25.

While the Complainant has provided details of other registrations for the trademark VERRI, including Italian national registrations dating from 1988 and 1989, the Panel has not been provided with sufficient information to verify the continuing validity of those registrations.

The disputed domain name was registered on April 4, 2000.

According to evidence submitted by the Complainant, the disputed domain name has resolved at various times to web pages which include the name VERRI and a stylized "V" symbol in which the Complainant claims ownership.

5. Parties' Contentions

A. Complainant

The Complainant states that it is a renowned fashion company, represented by the nephew of Gianni Versace, that has conducted business under the name and mark VERRI since the early 1970s. It states that it has traded internationally since 1978 and has operated showrooms since 1990 in major centres including New York, Dubai, Hong Kong, Tokyo and others. The Complainant states that it has invested in major advertising campaigns throughout the world in newspapers, magazines including "Vogue", on billboards, on television and in stadiums. The Complainant also refers to the use of its VERRI brand by Paramount Pictures in the third of the "Godfather" films and to press coverage about the brand. The Complainant exhibits evidence of the advertising and media coverage referred to. The Complainant states that, as a result of these matters, the mark VERRI is recognized throughout the world as exclusively identifying the Complainant's high quality fashion brand.

The Complainant submits that the disputed domain name is identical to a trademark in which it has rights. The Complainant submits that the disputed domain name is exactly the same as its trademark VERRI and must therefore mislead consumers into believing that it is operated or authorized by the Complainant.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that it has no commercial affiliation with the Respondent and has never licensed or authorized it to use the VERRI trademark. The Complainant also submits that none of the circumstances set out under paragraph 4(c) of the Policy (by which a respondent may demonstrate rights or legitimate interests in the domain name) is present in this case.

The Complainant further submits that the Respondent's identity and contact details are false. The Respondent's name is registered as "VVV MMM" of organization "XXX" and its address as "VIA, mi, Medio Campidano, 00, IQ" and the Complainant submits that both this postal address and the Respondent's email address are non-existent. The Complainant exhibits a rejected email that it attempted to send to the Respondent. The Complainant further contends that upon the Registrar, GoDaddy, seeking to confirm the Respondent's registration details, the Respondent did not provide further details and instead allowed the disputed domain name to be suspended.

The Complainant also points to the Respondent's use of the disputed domain name prior to its suspension. The Complainant produces two screen shots of a website at "www.verri.com", taken from the "www.archive.com" website, one apparently dated March 2010 (although the Complainant states it is from 2014/2015) and one apparently dated July 2016 (although the Complainant states it is from 2015). The Complainant produces images from its own website at "www.verriuomo.com" which include a black and grey background featuring the Complainant's stylized "V" symbol referred to above and submits that the Respondent's two web pages include a similar background and device, in addition to the name and mark VERRI.

The Complainant submits that, between registration and 2005, the disputed domain name was used for the purpose of a website offering domain names for sale and that it was unused between 2005 and the adoption of the webpages referred to above.

The Complainant submits that the disputed domain name has been registered and is being used in bad faith. The Complainant repeats its allegation that the Respondent has provided a false identity and false contact details. The Complainant also contends that it had traded under the name and mark VERRI since 1972, which had become widely known worldwide by 1990, whereas the disputed domain name was registered in 2000. The Complainant points to the Respondent's use of the disputed domain name to display web pages including the Complainant's "V" logo and contends that this is in itself sufficient to establish bad faith. The Complainant adds that the Respondent has never replied to communications from the Complainant or the relevant registrar. Finally, the Complainant submits that the Respondent's "passive" holding of the disputed domain name since the date of its suspension by the registrar is not a bar to a finding of bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

The Complainant requests a transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

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

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

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

Although the Respondent has failed to respond in this case, it remains for the Complainant to establish that each of the above elements is present.

A. Identical or Confusingly Similar

The Complainant has demonstrated that it is the owner of a figurative trademark for the mark VERRI. The Panel also accepts, on the basis of the Complainant's evidence, that its brand name VERRI has become widely known worldwide in the fashion industry as a result of the Complainant's trading and promotional activities since the 1970s, such that the Complainant has obtained unregistered rights in the name and mark VERRI. The disputed domain name is effectively identical to the Complainant's trademark VERRI and the Panel therefore finds that that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

In the view of the Panel, the Complainant's submissions referred to above give rise to a prima facie case for the Respondent to answer that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not participated in this administrative proceeding and has not provided any explanation for the registration or use of the disputed domain name, whether in accordance with any of the criteria set out in paragraph 4(c) of the Policy or otherwise. Furthermore, the Complainant has submitted evidence, which the Respondent has not contradicted, that the Respondent has used the disputed domain name for the purposes of a website which reproduced elements of the Complainant's website design and "V" logo. Such use would not give rise to any rights or legitimate interests in the disputed domain name and, having no other evidence of any rights or legitimate interests on the Respondent's part, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The disputed domain name is identical to the Complainant's trademark VERRI in an unadorned form. In these circumstances, in the view of the Panel, the disputed domain name is liable to confuse Internet users into believing that it is operated or authorized by the Complainant. The Respondent has offered no explanation for its registration or use of the disputed domain name and the Panel has found that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Panel accepts the Complainant's evidence that the Respondent has, without authorization, used the Complainant's trademark and "V" logo in connection with web pages linked to the disputed domain name, which is liable further to mislead Internet users as contemplated by paragraph 4(b)(iv) of the Policy. Finally the Panel accepts the Complainant's assertions that the Respondent's identity and contact details are apparently false and notes that the Respondent has not replied to these allegations. In the circumstances, the Panel concludes that the disputed domain name has been registered and is 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 name, <verri.com>, be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: April 24, 2017