WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Biffi Boutique S.P.A. v. Contact Privacy Inc. Customer 0155312414 / Joan Guaman, BiffiBoutique

Case No. D2019-3082

1. The Parties

The Complainant is Biffi Boutique S.P.A., Italy, represented by Notarbartolo & Gervasi S.p.A., Italy.

The Respondent is Contact Privacy Inc. Customer 0155312414, Canada / Joan Guaman, BiffiBoutique, United States of America (the “United States”).

2. The Domain Name and Registrar

The disputed domain name <biffiboutique.com> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2019. On December 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 31, 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 amended Complaint on January 2, 2020.

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 January 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 3, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 4, 2020.

The Center appointed Nicholas Smith as the sole panelist in this matter on February 11, 2020. 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 company, established in the 1960s by siblings Rosy and Adele Biffi, that specialize in the design and retail of fashion and fashion accessories. The Complainant presently sells its products through five stores in Milan and Bergamo and through the Complainant’s website at “www.biffi.com”.

The Complainant has held a trademark registration for the mark consisting of the word “biffi” (the “BIFFI Mark”) in various jurisdictions since 2018 including an European Union trademark for the BIFFI Mark in classes 18, 25 and 35, filed on August 2, 2017 and registered on October 31, 2018 (registration no. 017067984). The Complainant has also registered an International Trade Mark for BIFFI that designates the United States on January 31, 2018.

The Domain Name was registered on July 27, 2019. The Domain Name is presently inactive but prior to the commencement of the proceeding resolved to a website (the “Respondent’s Website”) that purported to offer designer handbags under the name “Biffi Boutique”. The Respondent’s Website contained no disclaimer.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Name is identical or confusingly similar to the Complainant’s BIFFI Mark;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

The Complainant is the owner of the BIFFI Mark, having registered the BIFFI Mark in the European Union. The Domain Name is confusingly similar to the BIFFI Mark as it reproduces the word mark BIFFI in its entirety and adds the descriptive term “boutique”.

There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known by the Domain Name nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Rather the Respondent is using the Domain Name to resolve to a website that offers for sale designer accessories and visitors may have the impression to be surfing the website of the Complainant, without permission or consent from the Complainant, which does not amount to a bona fide offering of goods and services.

The Domain Name was registered and is being used in bad faith. By using the Domain Name to resolve to a website that offers competing goods, the Respondent is using the Domain Name to divert Internet users interested in the Complainant to the Respondent’s Website for commercial gain. Such conduct amounts to registration and use of the Domain Name in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the BIFFI Mark, having a registration for the BIFFI Mark as a trademark in the European Union.

The Domain Name incorporates the BIFFI Mark in its entirety with the addition of the dictionary term “boutique”. The addition of a dictionary term to a complainant’s mark is insufficient to dispel the impression of confusing similarity, see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056. The Panel finds that the Domain Name is confusingly similar to the Complainant’s BIFFI Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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 or service mark at issue.”

The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the BIFFI Mark or a mark similar to the BIFFI Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial or fair use.

The Respondent has used the Domain Name to operate a website that seeks to pass itself off as a website operated by the Complainant, including by offering similar goods under the Complainant’s BIFFI Mark. In the absence of any evidence from the Respondent that its business is legitimate in any way, or that it is commonly known as Biffi Boutique, the Panel finds that the Respondent’s use of the Domain Name does not amount to a bona fide offering of goods or services.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a Response, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

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

(ii) the respondent has registered the 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 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 the respondent’s website or location or of a product or service on the respondent’s website or location (Policy, paragraph 4(b)).

The Panel finds that the Respondent was aware of the Complainant and its reputation in the BIFFI Mark at the time the Domain Name was registered. The Respondent’s Website purported to offer goods in direct competition with the Complainant under the Complainant’s BIFFI Mark. The registration of the Domain Name in awareness of the BIFFI Mark and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith.

The Respondent has used the Domain Name, wholly incorporating the BIFFI Mark, to offer handbags in competition with the Complainant under the Complainant’s BIFFI Mark. Consequently the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and the Complainant’s BIFFI Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website (Policy, paragraph 4(b)(iv)).

Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 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 Domain Name <biffiboutique.com> be transferred to the Complainant.

Nicholas Smith
Sole Panelist
Date: February 14, 2020