Salvatore Ferragamo S.p.A. v. Luiz Miranda / TopThink
Claim Number: FA2110001967586
Complainant is Salvatore Ferragamo S.p.A. (“Complainant”), represented by Cecilia Borgenstam of SILKA AB, Sweden. Respondent is Luiz Miranda / TopThink (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <1ferragamo.us>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 5, 2021; the Forum received payment on October 5, 2021.
On October 6, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <1ferragamo.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 7, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@1ferragamo.us. Also on October 7, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 1, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, Salvatore Ferragamo S.p.A., is the parent company of the Ferragamo Group, an Italian luxury goods company founded in 1927. Complainant has rights in the FERRAGAMO mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,031,093, registered Jan. 20, 1976). See Compl. Annex 4. Respondent’s <1ferragamo.us> domain name is confusingly similar to Complainant’s FERRAGAMO mark as it incorporates the entire mark and simply adds the number “1” and the “.us” county code top-level domain (“ccTLD”).
Respondent lacks rights or legitimate interests in the <1ferragamo.us> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the FERRAGAMO mark. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the domain to pass off as Complainant and offer Complainant’s products for sale.
Respondent registered or uses the <1ferragamo.us> domain name in bad faith. Respondent uses the disputed domain name to pass off as Complainant and offer for sale Complainant’s goods without authorization. Additionally, Respondent may use the disputed domain name to send phishing emails. Finally, Respondent had actual knowledge of Complainant’s rights in the FERRAGAMO mark based on the fame of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent Italian company that provides luxury goods, including clothing and accessories, a business in which it has been engaged since 1927.
2. Complainant has established its trademark rights in the FERRAGAMO mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,031,093, registered Jan. 20, 1976).
3. Respondent registered the disputed domain name on April 12, 2017.
4. Respondent has used the domain name to pass itself off as Complainant by displaying the FERRAGAMO mark and to offer Complainant’s products for sale.
Paragraph 15(a) of the Rules instructs this Panel to "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."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it had rights in the FERRAGAMO mark based on registration of the mark with the USPTO (e.g., Reg. No. 1,031,093, registered Jan. 20, 1976). See Compl. Annex 4. Registration of a mark with the USPTO is a valid showing of rights in a mark. See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”). Since Complainant provides evidence of registration of the FERRAGAMO mark with the USPTO, the Panel finds that Complainant has established its rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s FERRAGAMO mark. Complainant argues Respondent’s <1ferragamo.us> domain name is confusingly similar to Complainant’s FERRAGAMO mark as it incorporates the entire mark and simply adds the number “1” and the “.us” ccTLD. The addition of a number and a ccTLD to a mark is insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Pandora Media, Inc. v. MASATAMI KITA, FA 1622614 (Forum July 20, 2015) (holding the <pandora1.com> domain name confusingly similar to the PANDORA trademark because the only difference between the two was the addition of the numeral “1”); see also Am. Express Co. v. McWIlliam, FA 268423 (Forum July 6, 2004) (holding that the ccTLD “.us” does not negate confusing similarity under Policy ¶ 4(a)(i)). Thus, the Panel finds that the disputed domain name is confusingly similar to the FERRAGAMO mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
(a) Respondent has chosen to take Complainant’s FERRAGAMO trademark and to use it in its domain name, adding the number “1” which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the disputed domain name on April 12, 2017;
(c) Respondent has used the domain name to pass itself off as Complainant and to offer Complainant’s products for sale;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent lacks rights or legitimate interests in the <1ferragamo.us> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the FERRAGAMO mark. Under Policy ¶ 4(c)(iii), where a response is lacking, relevant WHOIS information and a lack of authorization may demonstrate that a respondent is not commonly known by a disputed domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Here, the WHOIS information identifies “Luiz Miranda / TopThink” as the registrant and no information suggests Complainant authorized Respondent to use the FERRAGAMO mark in any way. See Registrar Verification Email. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii);
(f) Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the domain to pass itself off as Complainant and to offer Complainant’s products for sale. Using a disputed domain name to pass off as a complainant and offer a complainant’s goods for sale without authorization is not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) and (iv). See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”); see also Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (finding that Respondent’s use of the disputed domain to sell products related to Complainant without authorization “does not amount to a bona fide offering of goods or services under policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Here, Complainant provides screenshots showing the disputed domain name resolves to a website that features the FERRAGAMO mark and purports to offer Complainant’s products for sale at a significant discount. See Compl. Annex 9. Therefore, the Panel finds Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) and (iv).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith or has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered or used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered or uses the <1ferragamo.us> domain name in bad faith because Respondent uses the disputed domain name to pass itself off as Complainant and offer for sale Complainant’s goods without authorization. Using a disputed domain name to pass off as a complainant and offer a complainant’s goods for sale without authorization may be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also American Cheerleader Media, LLC. v. ilir shoshi / cheer, FA 1592319 (Forum Jan. 20, 2015) (“The Panel here finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) as … Respondent utilizes a logo and stylized font identical to Complainant’s own, as well as Complainant’s copyrighted images and text in an attempt to pass itself off as Complainant.”); see additionally Hunter Fan Co. v. MSS, FA 98067 (Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant). The Panel notes that Complainant provides screenshots showing Respondent uses Complainant’s FERRAGAMO mark and offers Complainant’s products for sale on the resolving website for the disputed domain name. See Compl. Annex 9. Therefore, the Panel finds bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant argues that Respondent may use the disputed domain name to send phishing emails. Under Policy ¶ 4(a)(iii), use of a disputed domain name to send phishing emails indicates bad faith. See CoorsTek, Inc. v. Gwendolyn K Bohn / CoorsTek Inc, FA 1764186 (Forum Feb. 2, 2018) (“Respondent sent email to users seeking employment at Complainant’s business and asked for personal information such as a photo ID. Therefore, the Panel finds Respondent’s emails constitute a phishing scheme and this indicates bad faith registration and use per Policy ¶ 4(a)(iii).”). Complainant provides evidence that MX servers are configured for the disputed domain name which suggests Respondent could send phishing emails. See Compl. Annex 13. Therefore, as the Panel agrees with Complainant, it finds bad faith.
Thirdly, Complainant contends that Respondent had actual knowledge of Complainant’s rights in the FERRAGAMO mark based on the fame of the mark. Per Policy ¶ 4(a)(iii), actual knowledge of a Complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the fame of the mark. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Therefore, as the Panel finds that Respondent had actual knowledge of Complainant’s rights in the FERRAGAMO mark, the Panel also finds bad faith.
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the FERRAGAMO mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered or used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <1ferragamo.us> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 2, 2021
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