WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Calzedonia S.p.A. v. Leonardo Peschiera

Case No. D2020-0881

1. The Parties

Complainant is Calzedonia S.p.A., Italy, represented by Novagraaf Nederland B.V., Netherlands.

Respondent is Leonardo Peschiera, Italy.

2. The Domain Name and Registrar

The disputed domain name <calzedoniapl.online> is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2020. On April 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 2020, 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 Complainant on April 16, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on April 17, 2020.

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 Respondent of the Complaint, and the proceedings commenced on April 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 12, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 13, 2020.

The Center appointed Roberto Bianchi as the sole panelist in this matter on May 19, 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

Complainant is a manufacturer and marketer of underwear and beachwear. Complainant’s network of franchises includes more than 2,000 shops in over 50 countries. In Italy, there are 583 Calzedonia stores.

Complainant owns numerous registrations for the CALZEDONIA trademark worldwide, covering inter alia underwear, legwear, and beachwear. In particular, Complainant owns the following registrations:

- European Union Trademark CALZEDONIA, registration number 001874452, registration date April 3, 2002, date of publication of the registration May 20, 2002, covering clothing, underwear, swimwear, beachwear, footwear, stockings, socks, et cetera, in class 25; advertising, business negotiation during the sale of clothing, underwear, swimwear, beachwear, footwear, stockings, socks, et cetera, in class 35; and

- International Trademark CALZEDONIA, registration number 1180100, registration date August 5, 2013, covering soaps, perfumery, et cetera, in class 3; clothing, underwear, swimwear, beachwear, footwear, stockings, socks, et cetera, in class 25; retail services for clothing, et cetera, in class 35.

Complainant also owns numerous domain names, including the <calzedonia.com> domain name, registered on July 27, 1998.

The disputed domain name was registered on October 19, 2019. The disputed domain name does not resolve to any active website.

5. Parties’ Contentions

A. Complainant

Complainant contends as follows:

The disputed domain name is identical or confusingly similar to the CALZEDONIA trademark in which Complainant has rights. The disputed domain name fully incorporates Complainant’s trademark CALZEDONIA. The disputed domain name is phonetically, visually and conceptually identical to Complainant’s registered and well‑known trademark CALZEDONIA and to Complainant’s domain name <calzedonia.com>. The addition of the term “pl” in the domain name does not sufficiently distinguish the disputed domain name from the trademark CALZEDONIA.

Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent does not own any rights to the trademark CALZEDONIA, nor does Respondent has any other rights to the denomination “calzedonia” or “calzedoniapl”. Complainant has not licensed or otherwise permitted Respondent to use Complainant’s trademarks or a variation thereof. There is no commercial link between Complainant and Respondent. To the knowledge of Complainant, there is no evidence of any bona fide offering of goods or services, nor are there any other indications that Respondent has any legitimate claim to or any interest in the disputed domain name.

The disputed domain name was registered and is being used in bad faith. Respondent should have been aware of Complainant’s well-known trademark CALZEDONIA when he registered the disputed domain name in October 2019. Complainant was involved in fashion retail for the last 30 years and is active in multiple countries worldwide through online shops and physical stores. It cannot be a coincidence that Respondent filed for three different variations from the same trademark on the same day. The CALZEDONIA trademark is widely known and a highly specific trademark, which implies that “the respondent knew or should have known that its registration would be identical to Complainant’s trademark” (Tadım Gıda Maddeleri Sanayi ve A.Ş. v. Reserved for Customers, MustNeed.com, WIPO Case No. D2017-0936.)

Since the registration date on October 19, 2019, the disputed domain name did not resolve to any active website. The disputed domain name is kept passively, which can in itself amount to use in bad faith (See TelstraCorporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

By submitting printouts taken from the official trademark databases, Complainant has shown to the satisfaction of the Panel that it owns registrations for the CALZEDONIA trademark in various jurisdictions, and thus, that it has rights in this mark for purposes of Policy paragraph 4(a)(i). See section 4 above.

The Panel notes that in the disputed domain name Complainant’s mark CALZEDONIA is incorporated in its entirety as a relevant element, to which the letters “pl” are added as a suffix. It is well established that such kind of addition would not prevent a finding of confusing similarity between a domain name and the mark it incorporates, whether those letters are the acronym for “Poland”¹ or have another meaning. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. Therefore, the Panel finds that the disputed domain name is confusingly similar to the CALZEDONIA trademark, in which Complainant has rights.

B. Rights or Legitimate Interests

Complainant says that Respondent does not own any rights to the trademark CALZEDONIA or the “calzedoniapl” name nor any other rights. Complainant has not licensed or permitted Respondent to use Complainant’s trademarks, and there is no relationship between Complainant and Respondent. Lastly, Respondent is not making any bona fide offering of goods or services, nor has Respondent any legitimate claim to or any interest in the disputed domain name.

The Panel notes that according to the relevant WhoIs data, the registrant of the disputed domain name, i.e., Respondent, is Leonardo Peschiera, which discards the application of Policy paragraph 4(c)(ii). In addition, there is no evidence on the case file of any active use whatsoever of the disputed domain name or of any demonstrable preparation for using it following its registration on October 19, 2019. Therefore, there cannot be any use in connection with a bona fide offering of goods or services under Policy paragraph 4(c)(i) or a fair or legitimate noncommercial use under Policy paragraph 4(c)(iii). Thus, Complainant succeeds in raising a prima facie case that Respondent lacks any rights or legitimate interests in the disputed domain name.

For its part, Respondent failed to provide any explanation or reasons for having registered the disputed domain name or for its total lack of use. Therefore, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel also notes that Complainant’s registrations for its mark CALZEDONIA predate the registration of the disputed domain name by at least eighteen years. See section 4 above. In addition, in Italy, the country of residence of Respondent according to the relevant WhoIs data, Complainant has 583 Calzedonia stores. Annex 10 to the Complaint. Further, the Panel accepts that the mark CALZEDONIA is well known. See Calzedonia S.p.A. v. Max M. Lind, WIPO Case No. D2013-2218 (concluding that the trademark CALZEDONIA has a high level of recognition around the world); see also Calzedonia S.p.A. v. Virginia Peretti, Il Tuo Futuro SRL, WIPO Case No. D2020-0631 (“the reputation of Complainant’s trademarks CALZEDONIA and INTIMISSIMI in the field of underwear, legwear and beachwear […] is clearly established”). The Panel concludes that Respondent clearly had in mind and targeted Complainant at the time of registering the disputed domain name.

There is no evidence on the casefile that the disputed domain name has ever been used in a website or in any other active manner. This however does not mean that the disputed domain name is not being used in bad faith. Complainant’s products and mark CALZEDONIA are well known, particularly in Italy, the country of residence of Respondent. In addition, there appears to exist no relationship between Respondent and Complainant. Further, Respondent failed to provide any explanation for his purposes at registering the disputed domain name. Therefore the Panel, in application of the Telstra doctrine of passive holding, considers that Respondent is passively holding the disputed domain name in bad faith.

For these reasons, the Panel finds 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 <calzedoniapl.online> be transferred to the Complainant.

Roberto Bianchi
Sole Panelist
Date: June 2, 2020

¹ According to the ISO 3166-2 standard.