WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Furla S.P.A. Corporation Italy v. Domain Administrator, See PrivacyGuardian.org / Time Wanner Co., Ltd, Roberto Carmona

Case No. D2018-1205

1. The Parties

The Complainant is Furla S.P.A. of San Lazzaro di Savena, Italy, represented by SILKA Law AB, Sweden.

The Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America (“United States”) / Time Wanner Co., Ltd, Roberto Carmona of Van Buren, Arkansas, United States.

2. The Domain Name and Registrar

The disputed domain name <furlavips.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2018. On May 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 30, 2018, 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 June 3, 2018, 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 amendment to the Complaint on June 4, 2018.

The Center verified that the Complaint together with the amendment to 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 June 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 27, 2018.

The Center appointed Rodrigo Azevedo as the sole panelist in this matter on July 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

The Complainant is an Italian luxury company headquartered in Bologna.

The Complainant features Italian-designed products that range from handbags and shoes to accessories, provided through hundreds of physical stores and points of sale, as well as through its online store at the domain name <furla.com>, registered in 2010.

The Complainant owns numerous trademark registrations for FURLA in the United States, registered as early in 1984. For instance, United States Registration Number No. 1263380, registered on January 10, 1984.

The Respondent registered the disputed domain name on April 17, 2018.

The Panel accessed the disputed domain name on July 15, 2018, when it was linked to a website that imitates the Complainant’s official webstore, reproducing the Complainant’s trademark FURLA and images of FURLA handbags and other luxury products.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The disputed domain name was registered on April 17, 2018 and directly incorporates the Complainant’s registered trademark. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not add any distinctiveness to the disputed domain name. The disputed domain name also contains the generic word “vip” in pluralis. Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy when the domain name includes the trademark, regardless of the other terms in the domain name. The disputed domain name should therefore be considered as confusingly similar to the trademark FURLA.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name. First of all, there is no bona fide offering of goods or services where the disputed domain name incorporates a trademark which is not owned by Respondent, nor is the Respondent known by the name “furla”. The disputed domain name induces consumers into visiting the related website under the misapprehension that the website is endorsed by the Complainant. Additionally, the Respondent is using the Complainant’s copyright protected images without authorization. The potential customer can also create an account on the website where sensitive information is obtained such as user name and password. Such request for sensitive information on a site which the Complainant does not control is a security threat. The Respondent has failed to show that it has acquired any trademark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the evidence suggests the disputed domain name has been used to facilitate the sale of significantly cheaper copies of the Complainant’s products, through a website that is a flagrant copy of the Complainant’s official website.

(iii) The disputed domain name was registered and is being used in bad faith. It must be highlighted that the Complainant’s trademarks in the United States (where the Respondent is domiciled) predates the registration of the disputed domain name. Further, the Complainant had started to use FURLA brand as early as 1970, and is now distributed in 100 countries. The active business presence of the Complainant also shows that it is unlikely that the Respondent was not aware of the unlawful registration of the disputed domain name. Searches conducted in trademark databases do not disclose that the Respondent has applied for or is the owner of a corresponding mark. Moreover, when performing a search for “furla” all the results retrieved are related to the Complainant. Circumstances found to be indicative of bad faith use of the disputed domain name also include the fact that the Complainant owns a well-known trademark that predates the registration of the disputed domain name and that the Respondent is not using the disputed domain name for any legitimate use. It is clear that the Respondent was aware of the Complainant’s rights in the trademark and of the value of the said trademark. The Respondent could have easily performed a search before registering the disputed domain name and would have quickly learned that the trademark FURLA is owned by the Complainant and that the Complainant has been using its trademark for numerous years.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:

(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

The Panel has no doubt that “furla” is a term directly connected with the Complainant’s activities in the fashion luxurybusiness worldwide.

Annex 3 to the Complaint shows registrations of FURLA trademarks obtained by the Complainant in the United States since 1984.

The trademark FURLA is wholly encompassed within the disputed domain name.

The disputed domain name differs from the Complainant’s trademark basically by the addition of the term “vips” after the word “furla”, as well as the gTLD “.com”.

Previous UDRP decisions have demonstrated that descriptive additions (such as the expression “vips” for luxury fashion items) do not alter the underlying meaning of a domain name, so as to avoid confusing similarity. This has been held in many UDRP cases (see e.g.,Inter-IKEA Systems B. V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc. , WIPO Case No. D2000-0927).

It is also already well established that the addition of a gTLD extension such as “.com” is irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.

As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:

(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.

Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.

The present record provides no evidence to demonstrate the Respondent’s intent to use or to make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the website at the disputed domain name reproduces the Complainant’s trademark and imitates the Complainant’s official website, offering for sale products under FURLA trademark without authorization from the Complainant.

Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or acquired the 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

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

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

When the disputed domain name was registered by the Respondent (in 2018), the trademark FURLA was already well known worldwide and directly connected to the Complainant’s activities in the luxury fashion business.

The disputed domain name encompasses the trademark FURLA, together with the descriptive term “vips”, and is currently used to host a website that imitates the Complainant’s official webstore, reproducing FURLA trademark and products, without authorization from the Complainant.

Therefore, the Panel concludes that it would not be possible to consider that the Respondent – at the time of the registration of the disputed domain name – could not have been aware of the Complainant’s trademark, as well as that the adoption of the expression “furlavips” could be a mere coincidence.

Actually, in doing so, the Respondent:

(i) creates a likelihood of confusion with the Complainant’s trademark; and

(ii) potentially obtains revenue from this practice; and

(iii) deprives the Complainant from selling their products to prospective clients who are clearly looking for the Complainant.

Furthermore, the passive and non-collaborative posture of the Respondent, not at least providing justifications for the use of a third party well-known trademark together with a descriptive term, certainly cannot be used in benefit of the Respondent in this Panel’s opinion.

Such circumstances, associated with the lack of any plausible interpretation for the adoption of the expression “furlavips” by the Respondent, are enough in this Panel’s view to characterize bad faith registration and use in the present case.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element 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 <furlavips.com> be transferred to the Complainant.

Rodrigo Azevedo
Sole Panelist
Date: July 18, 2018