WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Trussardi S.p.A. v. Pang Yuyeli
Case No. D2018-0620
1. The Parties
Complainant is Trussardi S.p.A. of Milan, Italy, represented by Studio Legale Bird & Bird, Italy.
Respondent is Pang Yuyeli of Beijing, China.
2. The Domain Name and Registrar
The Disputed Domain Name <trussardistore.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2018. On March 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 22, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 25, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 26, 2018.
The Center appointed Richard W. Page as the sole panelist in this matter on May 4, 2018. 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
“Trussardi” is the trademark (the “TRUSSARDI Mark”) and trade name of a brand in the field of fashion with more than 100 years of history. The Trussardi Group started out in Bergamo in 1911 as a workshop producing and distributing luxury gloves.
Today Trussardi is present in over 40 countries with its lines of clothing, bags, shoes and fashion accessories and with a network of sales points in Italy, Europe, Asia and the Middle East. This includes over 177 single-brand stores, over 1,500 multi-brand points of sale, corners and department stores and the new ecommerce site “www.trussardi.com”.
The TRUSSARDI Mark is protected in several jurisdictions, including China – which is Respondent’s WhoIs-listed country of origin – through numerous registrations covering, inter alia, clothing, bags and other fashion accessories, in classes 18 and 25 of the Nice International Classification of goods and services for registration of trademarks. These registrations include: European Union trade mark No. 7451156 (registered on June 10, 2009); and the Chinese portion of Madrid International Registration No. 1002480 (registered on January 1, 2009).
The Disputed Domain Name was registered on November 24, 2016. According to the evidence provided by Complainant, the Disputed Domain Name resolved to a website that looked like Complainant’s official website that offered for sale garments bearing the trademark PEUTEREY, which is a competitor of Complainant.
5. Parties’ Contentions
A. Complainant
Complainant contends that, pursuant to paragraph 4(a)(i) of the Policy, the Disputed Domain Name is identical or confusingly similar with the TRUSSARDI Mark in that it includes the entirety of the TRUSSARDI Mark. Complainant further contends that the component “store” that is added in the Disputed Domain Name is descriptive and non-distinctive. The confusing similarity is compounded by the fact that Complainant owns the domain name, among others, of <trussardistore.it> which redirects to Complainant’s official website at “www.trussardi.com”.
Complainant alleges that, pursuant to paragraph 4(a)(ii) of the Policy, Respondent has no rights or legitimate interests in the Disputed Domain Name. Complainant has not given Respondent, or anyone else, the right to register or use the Disputed Domain Name.
Complainant further alleges that the Disputed Domain Name reproduces the TRUSSARDI Mark combined with the descriptive term “store”, which is connected with Complainant’s business and market for its product. Complainant further alleges that Respondent registered then abandoned several other domain names incorporating “trussardi”. Complainant alleges that such intentional actions mean that Respondent has not conducted any bona fide offering of goods and services, nor has Respondent engaged in any legitimate noncommercial activity associated with the Disputed Domain Name.
Complainant avers that, pursuant to paragraph 4(iii) of the Policy, the TRUSSARDI Mark is highly distinctive and internationally renowned and that Complainant has established rights in and to the TRUSSARDI Mark well before the registration date of the Disputed Domain Name.
Moreover, when the Disputed Domain Name was detected by Complainant’s monitoring service, it resolved to a website that looked like Complainant’s official website and it has since been associated with a website that offers for sale garments bearing the tradename “Peuterey”, which is a competitor of Complainant.
Currently, the Disputed Domain Name redirects to “www.giaccheshop.com” and is still being used in association with a website where garments bearing the trademark PEUTEREY are offered for sale.
Complainant states that these circumstances demonstrate that Respondent was aware of Complainant’s rights in the TRUSSARDI Mark and consciously and deliberately incorporated the TRUSSARDI Mark into the Disputed Domain Name to attract consumers for commercial gain, taking unfair advantage of the reputation and distinctiveness of the TRUSSARDI Mark.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
Respondent is not obliged to participate in this domain name dispute proceeding, but when it fails to do so, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. See Reuters Limited v. Global Net 2000, Inc.,
WIPO Case No. D2000-0441.
Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,
ii) that 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.
A. Identical or Confusingly Similar
Complainant contends that it has numerous registrations of the TRUSSARDI Mark. Prior UDRP decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,
WIPO Case No. D2000-0047.
Respondent has not contested Complainant’s allegations of rights in the TRUSSARDI Mark and the Panel finds that the evidence supports Complainant’s rights in the TRUSSARDI Mark.
Therefore, for purposes of this proceeding, the Panel finds that Complainant has enforceable rights in the TRUSSARDI Mark.
Complainant further contends that the Disputed Domain Name is identical or confusingly similar to the TRUSSARDI Mark pursuant to the Policy paragraph 4(a)(i).
Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. Complainant further argues that when a disputed domain name incorporates an entire trademark with only the addition of a descriptive word, it is still confusingly similar to the trademark as the addition of a work like “store” does not eliminate the confusing similarity. See, Hoffmann-LaRoche AG v. P Martin,
WIPO Case No. D2009-0323; Dixons Group Plc. v. Mr. Abu Abdullaah,
WIPO Case No. D2001-0843; V&S Vin & Sprit AB v. Ooar Supplies,
WIPO Case No. D2004-0962; Research in Motion Limited v. One Star Global LLC,
WIPO Case No. D2009-0227; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign,
WIPO Case No. D2004-0206; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L.,
WIPO Case No. D2008-0792.
The Panel notes that the entirety of the TRUSSARDI Mark is in the Disputed Domain Name and finds that the addition of the word “store” is not distinctive. Rapidshare AG and Christian Schmid v. Majeed Randi,
WIPO Case No. D2010-1089.
Based upon the evidence presented, the Panel finds that the Disputed Domain Name is confusingly similar to the TRUSSARDI Mark, pursuant to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
Paragraph 4(a)(ii) of the Policy requires Complainant to prove that Respondent has no rights or legitimate interests in the Disputed Domain Name. Section 2.1 of the WIPO Overview 3.0 states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the disputed domain name. Where a respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Respondent has no relationship with or permission from Complainant for the use of the TRUSSARDI Mark.
Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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 TRUSSARDI Mark.
Complainant alleges that the Disputed Domain Name reproduces the TRUSSARDI Mark combined with the descriptive term “store”, which is connected with Complainant’s business and market for its product. Complainant further alleges that Respondent registered then abandoned several other domain names incorporating “trussardi”. Complainant alleges that such intentional actions mean that Respondent has not conducted any bona fide offering of goods and services, nor has Respondent engaged in any legitimate noncommercial activity associated with the Disputed Domain Name. Rather, the Disputed Domain Name has been used to either impersonate Complainant, or in connection with a website offering goods that directly compete with those of Complainant.
In addition, the Panel finds no evidence that Respondent has been commonly known by the Disputed Domain Name.
Complainant has come forward with a prima facie showing under paragraph 4(c) of the Policy. Respondent has not contested this showing.
The Panel finds that the file contains no evidence that the use of the Disputed Domain Name meets the elements for any of the nonexclusive methods provided for in paragraph 4(c) of the Policy.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:
(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the TRUSSARDI Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the TRUSSARDI Mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the TRUSSARDI Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.
Complainant alleges that these circumstances demonstrate that Respondent was aware of Complainant’s rights in the TRUSSARDI Mark and consciously and deliberately incorporated the TRUSSARDI Mark into the Disputed Domain Name to attract consumers for commercial gain, taking unfair advantage of the reputation and distinctiveness of the TRUSSARDI Mark.
Respondent has not contested these allegations and the Panel finds that Complainant’s allegations of bad faith registration and use are supported by this record.
Therefore, the Panel finds that Complainant has established the elements of paragraphs 4(b)(iv) and 4(a)(iii) 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 <trussardistore.com> be transferred to Complainant.
Richard W. Page
Sole Panelist
Date: May 17, 2018
