WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Trussardi S.p.A. v. Domain Administrator, See PrivacyGuardian.org / Gretchen Aquino

Case No. D2019-1293

1. The Parties

The Complainant is Trussardi S.p.A., Italy, represented by Studio Barbero, Italy.

The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America / Gretchen Aquino, Canada.

2. The Domain Names and Registrar

The disputed domain names, <trussardi.online> and <trussardit.com>, are registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2019. On June 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 6, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 18, 2019 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 19, 2019.

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 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 13, 2019.

The Center appointed David Stone as the sole panelist in this matter on July 23, 2019. 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 fashion house that designs, manufactures, distributes and sells haute couture, ready-to-wear, leather goods, shoes, watches, accessories, eyewear and perfumes. It was founded in Italy in 1911, and by the 1990s had 120 stores around the world.

The Complainant owns numerous trade mark registrations for TRUSSARDI, including the following:

- TRUSSARDI: Italian registration number 0001168192, registered on January 29, 2009 in Nice classes 3, 9, 11, 14, 16, 18, 20, 21, 24, 25, 35, 41 and 43;

- TRUSSARDI: Canadian registration number TMA844161, registered on February 21, 2013 in Nice classes 18 and 25;

- TRUSSARDI: European Union registration number 007451156, registered on June 10, 2009 in Nice classes 3, 9, 11, 14, 16, 18, 20, 21, 24, 25, 35, 41 and 43;

- TRUSSARDI: International registration number 1002480 designating (among others) Italy and the United States, registered on January 29, 2009 in Nice classes 3, 9, 11, 14, 16, 18, 20, 21, 24, 25, 35, 41 and 43.

The Complainant offers various product lines under the names TRUSSARDI, TRUSSARDI JEANS and TRUSSARDI JUNIOR, and also uses the trade mark TRUSSARDI in connection with furniture, yacht outfitting and restaurant services. In 2018, the Complainant’s global revenue from its fashion products exceeded EUR 133 million. It provides information on its activities and products on the website “www.trussardi.com”, and has a social media presence on Facebook, Twitter and Instagram.

The disputed domain names were registered on March 6, 2019.

On April 26, 2019, before becoming aware of the identity of the Second Respondent, the Complainant sent a cease-and-desist letter to the First Respondent, requiring that it stop using the disputed domain names and transfer them to the Complainant, and undertake not to register or use TRUSSARDI as a sign. The First Respondent did not reply.

In what follows, the Panel uses “Respondent” to mean the First Respondent, the Second Respondent or both, depending on which is most appropriate in context.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are identical or confusingly similar to trade marks in which the Complainant has rights. Both <trussardi.online> and <trussardit.com> contain the trade mark TRUSSARDI in its entirety, with the relevant part of the latter differing only by a single letter. This suffices to make them both at least confusingly similar to the trade mark. The generic Top-Level Domains “.com” and “.online” are instrumental to the functioning of the Internet, and do not serve as distinguishing features.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not commonly known by either of the disputed domain names, and the Complainant has not authorized it to use TRUSSARDI in any way. In particular, the Respondent is not an authorized reseller of the Complainant’s goods. Despite this, the Respondent is using the websites to which the disputed domain names resolve to offer for sale products that appear to be counterfeit versions of the Complainant’s products. The Respondent’s websites use the TRUSSARDI trade mark and official images from the Complainant’s website, but contain no disclaimer as to the absence of any relationship between the two parties.

This behaviour, whereby Internet users are induced to believe that the Respondent’s websites are connected to the Complainant, is not a bona fide offering of goods and services and so cannot demonstrate that the Respondent has rights or interests in the disputed domain names. To make a bona fide offering of the Complainant’s goods using its trade mark, the Respondent must, among other things, disclose its relationship with the Complainant, which it has not done. If the advertised products are in fact counterfeit, which the Complainant believes to be true owing to their low cost relative to genuine articles, then the illegitimacy of the Respondent’s behaviour is all the greater.

The Complainant contends that the disputed domain names were registered and are being used in bad faith. The trade mark TRUSSARDI is widely known and advertised, and the Respondent has used it, along with images of the Complainant’s products, on its websites. The Respondent must therefore have been fully aware of the trade mark’s reputation and its association with the Complainant, and in registering the disputed domain names the Respondent must have intended to capitalize on the reputation of TRUSSARDI by diverting Internet users seeking the Complainant’s products to its own websites for financial gain. This is evidence of bad faith. Further evidence is the lack of a response to the Complainant’s cease-and-desist letter and, in circumstances such as these, the use by the Second Respondent of the First Respondent to conceal its identity.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets out the three requirements that the Complainant must prove in order to succeed:

(i) that the disputed domain names are identical or confusingly similar to a trade mark 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 names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

On the evidence adduced by the Complainant, the Panel is satisfied that the Complainant has rights in the trade mark TRUSSARDI. As the Complainant contends, generic Top-Level Domains are ignored in the consideration of the similarity between a trade mark and a domain name. The disputed domain name <trussardi.online> is therefore identical to the Complainant’s mark, and <trussardit.com>, in which the relevant part differs from the mark only by the addition of the letter “t”, is confusingly similar. The Panel therefore finds that the disputed domain names are identical or confusingly similar to a trade mark in which the Complainant has rights and that the condition in paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the criteria that determine whether a domain name registrant has rights or legitimate interests in a domain name:

(i) before any notice to the Respondent 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) as an individual, business or other organisation, the Respondent has been commonly known by the disputed domain name even if the Respondent has acquired no trade mark or service mark rights; or

(iii) the Respondent has been making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trade mark or service mark at issue.

The Complainant makes out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not commonly known by either of the disputed domain names, is not an authorized reseller of the Complainant’s products, and does not disclose its actual relationship with the Complainant (if any) on the associated websites. The fact that the Respondent is offering its products at prices substantially lower than those charged by the Complainant for genuine articles, and is using the TRUSSARDI mark and images from the Complainant’s website to do so, is thus sufficient evidence that the Respondent’s goods are counterfeit. See Valentino S.p.A. v. hong chen, chen hong, WIPO Case No. D2014-2129; Prada S.A. v. Chen Mingjie, WIPO Case No. D2015-1466. This is clearly not bona fide commercial use or legitimate noncommercial or fair use of the disputed domain names.

The Respondent has provided no evidence to contradict the Complainant’s prima facie case, and so the Panel concludes that condition in paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out the non-exhaustive criteria for bad faith. Generally, for the purposes of the Policy, bad faith constitutes registration and use of a domain name in order to:

(i) sell, rent or transfer the domain name to the trade mark owner (or a competitor thereof) for a profit;

(ii) prevent the trade mark owner from registering its trade mark in a domain name, provided that the respondent is engaged in a pattern of such conduct;

(iii) disrupt the business of a competitor; or

(iv) divert Internet traffic for commercial gain.

The Respondent’s use of the TRUSSARDI mark both in the disputed domain names and for the purposes of advertisement and branding on the websites to which they resolve demonstrates that the Respondent was well aware of the mark’s existence and the Complainant’s business, and that the disputed domain names were registered for the purpose of diverting Internet traffic for commercial gain. This is an example of a “bad faith attempt to ride on the coattails of the trademark owner”. See Swarovski Aktiengesellschaft v. Jun Qiao, WIPO Case No. D2013-1617. This relies on misuse of the Complainant’s mark and demonstrates awareness irrespective of whether the Respondent’s products are counterfeit. See Guccio Gucci S.p.A v. Andrea Hubner, Beijing Harmony Software Co.Ltd., jiang wang, brian miller, Pornsawang Chotima, Domain Whois Protection Service, Whois Agent, Jie Zhou, Jayzhou, Hi to every day in Zhengzhou Medical Devices Co., Ltd., tian jin hua jin you xian gong si, lihong jay, hu, lizhu hu, da tou, Tamia Liu, Wang Jie, Yijiwangluo, WIPO Case No. D2012-2212.

As discussed above, the Panel is satisfied that the Respondent is in fact using the Complainant’s mark to advertise counterfeit products, which, on the evidence, makes the case for bad-faith use incontrovertible. The Panel therefore holds that the condition in paragraph 4(a)(iii) of the Policy is satisfied.

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 names, <trussardi.online> and <trussardit.com>, be transferred to the Complainant.

David Stone
Sole Panelist
Date: August 1, 2019