Salvatore Ferragamo S.p.A. v. Ferruccio Ferragamo
Claim Number: FA1309001521958
Complainant is Salvatore Ferragamo S.p.A. (“Complainant”), represented by Carloalberto Giovannetti of Studio Legale SIB, Italy. Respondent is Ferruccio Ferragamo (“Respondent”), Norway.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ferragamooutlet.us>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 30, 2013; the National Arbitration Forum received a hard copy on October 3, 2013.
On September 30, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <ferragamooutlet.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 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 28, 2013 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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 is a well-known Italian company which recently became a joint stock company. The company is active in the business of manufacturing, marketing and selling exceptionally fine shoes, handbags and other articles. The Complainant used the trademark “Ferragamo” since at least as early as 1927 with respect to shoes and 1968 with respect to handbags. Complainant has a long and illustrious history. The founder of the Ferragamo enterprise, Salvatore Ferragamo, in fact, began his career in 1914 in Santa Barbara, California, and first achieved notoriety by creating hand-made shoes for the burgeoning film industry, including for such notables as Mary Pickford and Douglas Fairbanks. He eventually achieved a worldwide reputation as the innovative “shoemaker to the stars”, creating shoes for, among others, Gloria Swanson, Lillian Gish, Joan Crawford, Clara Bow, Greta Garbo, Sophia Loren, Susan Hayward, Marilyn Monroe and Audrey Hepburn.
Complainant manufactures, markets and sells a wide variety of other types of products, including wallets, luggage, belts, apparel, fragrances, gift items and costume jewelry.
Complainant’s products can be found at retail stores located in Italy, United States, England, France, Germany, Canada, China, Hong Kong, Japan, Korea, Taiwan, Indonesia, Malaysia, Singapore, Thailand, Australia, Spain, Switzerland, Saudi Arabia, Indonesia, Belgium, the Philippines and other countries. Complainant has specifically marketed and sold in the United States shoes, handbags, fragrances, apparel and other fine leather goods, through Salvatore Ferragamo Stores, Duty Free shops and In-Store shops in Atlanta, Atlantic City, Aventura, Bel Harbour, Bellevue, Beverly Hills, Boca Raton, Boston, Canoga Park, Chevy Chase, Chicago, Costa Mesa, Dallas, Denver, Garden City, Guam, Hackensack, Honululu, Houston, King of Prussia, Las Vegas, Los Angeles, Manhasset, Mc Lean, Miami, Naples, Natick, New York, Newport Beach, Newton, Orlando, Palm Beach, Palm Beach Gardens, Palo Alto, Saipan, San Francisco, San Diego, San Jose, Scottdale, Seattle, Sherman Oaks, Short Hills, Troy, Virginia, Washinghton, White Plains.
In addition, Complainant owns the domain name registrations for, among others, ferragamo.us, ferragamo.com, ferragamo.net, whereon Complainant promotes its products bearing the trademarks “Ferragamo” and “Salvatore Ferragamo”.
Complainant has, over the years, received substantial publicity by virtue of the quality and uniqueness of its products. For example, due to Salvatore Ferragamo’s historical renown in the fashion industry as an innovative artist in twentieth-century shoemaking, the Los Angeles County Museum of Art in 1992 presented a retrospective exhibition of the life and work of this “Shoemaker of Dreams”, entitled, “Salvatore Ferragamo: The Art of the Shoe”, which presented over two hundred examples of his work. Similarly, an exhibition at the Solomon R. Guggenheim Museum in New York City, “The Italian Metamorphosis, 1943-1968”, featured, among other things, shoes designed by Salvatore Ferragamo due to their unique shapes and unusual materials.
Complainant has advertised worldwide its shoes, handbags and other products bearing the trademark “Ferragamo”, as well as other Ferragamo’s marks, through the most famous fashion magazines.
During the last years, Complainant spent worldwide an average of Euro 60 millions per year for advertising and promoting its products, including products bearing the trademark “Ferragamo”.
As a result of Complainant’s extensive advertising and promotional efforts, as well as the high quality and enormous commercial success of its handbags, shoes and other products bearing the trademark “Ferragamo”, said trademarks have become extremely well-known within the fashion industry as well as to the public, and are now recognized and relied upon as a symbol of quality shoes, handbags and other products and marketed exclusively by Complainant.
The trademark “Ferragamo” is unique in that there are no other identical or similar marks or names which are registered or in use by third parties. Said trademarks – which enjoy an indisputable reputation – are, consequently, synonymous with and symbolizes the Complainant’s reputation and goodwill, which are among the most valuable and important of Complainant’s assets.
Complainant has sought to protect its rights in and to the trademark “Ferragamo” and to maintain its exclusivity therein by obtaining worldwide, including United States several trademark registrations composed by “Ferragamo”. Complainant owns overall more than 400 applications and registrations for “Ferragamo” and “Salvatore Ferragamo” worldwide.
[a.] [Specify in the space below the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.] usTLD Rule 3(c)(ix)(1); usTLD Policy ¶4(a)(i).
Complainant has sought to protect its rights in and to the trademark “Ferragamo” and to maintain its exclusivity therein by obtaining, worldwide, more than 400 registrations for “Ferragamo” and similar marks in more than 100 countries since the 1950.
Complainant is the owner, among the others, of the following registered trademarks directly pertinent to the present dispute:
- U.S.A. national registration No. 1016032 covering goods in class 18, filed on January 3, 1973 and duly renewed;
- U.S.A. national registration No. 1031093 covering goods in class 25, filed on January 3, 1973 and duly renewed:
- U.S.A. national registration No. 1338774 covering goods in class 18, filed on June 14, 1983 and duly renewed;
- U.S.A. national registration No. 2253092 covering goods in class 14, filed on January 29, 1998 and duly renewed;
- U.S.A. national registration No. 2401250 covering goods in class 9, filed on June 4, 1998 and duly renewed;
- U.S.A. national registration No. 2421020 covering goods in class 35, filed on September 27, 1999 and duly renewed.
In addition, since 1996, Ferragamo owns registrations for several domain names comprising the mark “Ferragamo” among which ferragamo.us, ferragamo.com, ferragamo.asia, ferragamo.cn, whereon Complainant promotes its products bearing the trademark “Ferragamo”.
Respondent’s domain name “ferragamooutlet.us” is, obviously, confusingly similar to Complainant’s “Ferragamo” trademark.
The disputed domain name “ferragamooutlet.us” differentiates from the Complainant’s mark for the use of the generic term “outlet”. As a matter of fact, it is well-established that in cases where the distinctive and prominent element of a disputed domain name is the complainant’s mark and the only variation is the addition of a generic word or sign, such variation does not negate the confusing similarity between the disputed domain name and the mark. See Oakley, Inc. v. Joel Wong/Blue Host.com- INC, WIPO Case No. D2010-0100; Diageo Ireland v. Guinessclaim, WIPO Case No. D2009-0679; and The Coca-Cola Company v. WhoIs Privacy Service, WIPO Case No. D2010-0088.
The suffix “Outlet”, which describes a service Complainant could easily offer, should be considered “completely insufficient to dispel user confusion from inevitably occurring. In fact, doing so very likely exacerbates than ameliorates the confusion”, as held in PepsiCo, Inc. v. QWO, WIPO Case No. D2004 0865 (see also, Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022; “finding that four domain names that added the descriptive words “fashion” or “cosmetics” after the trademark were confusingly similar to the trademark, See also Société des Produits Nestlé SA v. Myongjin Kim, WIPO Case No. D2005-0509; a domain name that incorporates the trademark “Nestlè” and the element “nutrition” is to be considered as confusingly similar to the various trademarks owned by Complainant”). With respects to the specific term “outlet”, there are several previous decision which stated that this term does not circumvent the "identical or confusingly similar" test found in the Policy: Victoria's Secret et al v Erno Lokhorst, NAF Claim No. FA0101000096556; Disney Enterprises, Inc. v. Troy C. Montalvo, NAF Claim No. FA0501000403140; Guru Denim, Inc. v. Hooman Partovi, NAF Claim No. FA0503000445327; Victoria's Secret Stores Brand Management, Inc. v. Sami SAS, NAF Claim No. FA1010001349827; lululemon athletica canada inc. v. Fundacion Private Whois / Domain Administrator, NAF Claim No. FA1209001461664; Guess? IP Holder L.P. and Guess?, Inc. v. dajiangjun / dajiangjun; NAF Claim No. FA1305001499299.
Therefore, Complainant has satisfied the requirement of paragraph ¶4(a)(i) usTLD Policy.
[b.] [Specify in the space below why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint.] usTLD Rule 3(c)(ix)(2); usTLD Policy ¶4(a)(ii).
First and foremost, Complainant deems that the identity of the Respondent is not real. Ferruccio Ferragamo is the heir of Salvatore Ferragamo and actual President of Salvatore Ferragamo S.p.A.; it would be a really awkward coincidence that another Ferruccio Ferragamo – living in Oslo, Norway – registered a domain name used to advertise counterfeit “Salvatore Ferragamo” products!
Moreover, respondent is not affiliated in any way with Complainant and, to the best of our knowledge, do not own any trademark applications or registrations for “Ferragamooutlet” or any similar marks in connection with any goods or services.
This circumstance is confirmed by the results of a Saegis search. The search was run using as key the alleged name of the owner: “Ferruccio Ferragamo”.
In addition, Complainant has not licensed or otherwise authorized Respondent to use its “Ferragamo” trademark, or to apply for any domain name incorporating such mark (Parfums Christian Dior v. 1 NetPower, Inc., WIPO Case No. D2000-0022: it was found that Respondent lacked rights or legitimate interests in the domain names christiandiorcosmetics.com, christiandiorfashions.com, diorcosmetics.com and diorfashions.com because Complainant had not authorized Respondent to use its marks or to apply for any domain names incorporating its marks).
Lastly, Respondent is not commonly known by the domain name and do not trade under the name “ferragamooutlet” and do not make any legitimate commercial use thereof either.
Complainant has been using its “Ferragamo” trademark in commerce since long and, as such, Complainant has established rights throughout the world, including U.S. in the “Ferragamo” trademark.
Respondent registered a domain name which consists of Complainant’s mark and of the descriptive term “outlet”, thereby intentionally violating Complainant’s rights (Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020: noting that Respondent could have chosen an independent website to voice opinions concerning Complainant, but instead chose saint-gobain.net, a domain name that consists solely of Complainant’s trademark and violates Complainant’s rights).
Moreover, to the best of Complainant’s knowledge, the goods offered for sale on Respondent’s website hosted on the challenged domain name are counterfeit. As ascertained by the WIPO case-law, “there can be no legitimate interest in the sale of counterfeits” (Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750) and “the Respondent lacks any rights or interests in the disputed Domain Name” (Prada S.A. v. Ping Zhou, WIPO Case No. D2011-2020).
In addition, Respondent falsely suggests that it is the trademark owner, and that the website is the official site using Complainant’s mark in its well-known graphic rendition as well as its company name and VAT number as shown in the printout enclosed as Annex 11 (Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946: “The Panel is satisfied the presentation of Respondent’s website is likely to mislead Internauts into believing the site is operated or endorsed by or affiliated with Complainant. In particular, the dominant position of the "red roof" logo and the presentation of the trademark and copyright information, without any statement as to the true ownership of the site or any disclaimer of association with Complainant, create a strong impression that the site is an official site of Complainant”).
Therefore, Complainant has satisfied the requirement of paragraph ¶4(a)(ii) usTLD Policy.
[c.] [Specify in the space below why the domain name(s) should be considered as having been registered or used in bad faith.] usTLD Rule 3(c)(ix)(3); usTLD Policy ¶4(a)(iii).
Respondent’s bad faith in registering and using “ferragamooutlet.us” is evident for several reasons.
First and foremost, as mentioned above, to the best of Complainant’s knowledge, Respondent offers for sale on the landing website www. ferragamooutlet.us, counterfeit items of clothing and accessories bearing Complainant’s marks, with a clear intent for commercial gain (see Prada S.A. v. Domains for Life, WIPO Case No. D2004-1019, and Farouk Systems, Inc. v. QYM QYM, WIPO Case D2009-1572) and are trying to pass themselves off as the trademark owner.
It is evident that the Respondent registered the domain name with a view to take unfair advantage of the reputation of the Complainant’s mark. In fact, Respondent registration of “ferragamooutlet.us” obviously confuses potential customers as to Respondent’s affiliation with Complainant.
Furthermore, Respondent’s domain names discouraged Internet users from locating Complainant’s true website, thereby diluting the value of Complainant’s “Ferragamo” trademark.
Finally, Respondent’s bad faith is definitely proven by the fact that from a preliminary search on the Internet it has come out that the e-mail address used by the Respondent in the whois abstract for the domain name “ferragamooutlet.us” has been used in relation with several domain names such as “iray-ban.com”, “jordanonsale.us”, “nikeu.net”, “eunikeoutlet.com” which correspond to well-known third party trademarks in the field of fashion. It has been held several times that this kind of behavior evidences bad faith registration and use pursuant to Policy 4(b)(ii), as for example in Philip Morris Inc. v. r9.net, WIPO Case No. D2003-0004 and also in Australian Stock Exchange Limited and ASX Operations Pty Limited v. Community Internet (Australia) Pty Ltd, WIPO Case No. D2000-1384.
Complainant has met the bad faith requirement of paragraphs 4(a)(iii), 4(b) of the Policy and, therefore, has shown a right to relief under the Policy.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant uses the FERRAGAMO mark to market its shoes and handbags. Complainant has trademark registrations for the mark around the world, including with the United States Patent & Trademark Office (“USPTO”) (e.g., 1,031,093 registered January 20, 1976), the Italian Patent & Trademark Office (“IPTO”) (e.g., Reg. No. 56,351 registered on September 25, 1937) and the Norwegian Industrial Property Office (“NIPO”) (Reg #19511 issued on January 6, 2009). Evidence of trademark registration in these jurisdictions sufficiently evidences Policy ¶4(a)(i) rights in the mark. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”); Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant claims Respondent’s <ferragamooutlet.us> domain name is confusingly similar to the FERRAGAMO mark because it only adds the generic term “outlet” to the FERRAGAMO mark. The domain name also features the country-code top-level domain (ccTLD) “.us,” which must be disregarded in this analysis. See CDW Computer Ctrs., Inc. v. The Joy Co., FA 114463 (Nat. Arb. Forum July 25, 2002) (finding that the addition of the ccTLD “.us” is inconsequential and does not defeat a claim of confusing similarity). The panel in Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000), found the introduction of a single generic term to be insufficient to differentiate the domain name from the underlying mark. This Panel agrees and finds Respondent’s <ferragamooutlet.us> domain name is confusingly similar to the FERRAGAMO mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent has no evidence it owns a mark equivalent to the <ferragamooutlet.us> domain name because it doesn’t. By failing to respond, Respondent has shown no evidence suggesting it has such a mark sufficient to satisfy Policy ¶4(c)(i).
Complainant points out Respondent claims to be “Ferruccio Ferragamo,” a man who is the heir of Complainant’s founder. This is highly unlikely because the real Ferruccio Ferragamo is the President of Complainant, and does not reside in Oslo, Norway. It is a highly unlikely coincidence Respondent would have such a name and just happen to be in the business of selling counterfeit FERRAGAMO goods. The more likely answer is Respondent has falsified Respondent’s registration information.
Complainant has never authorized or endorsed this Respondent’s use of the FERRAGAMO mark in the <ferragamooutlet.us> domain name.
Complainant has provided an adequate explanation for the Respondent’s WHOIS information being disregarded and finding Respondent is not known as “Ferruccio Ferragamo” under Policy ¶4(c)(iii). See, e.g., Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
Complainant claims Respondent is using the <ferragamooutlet.us> domain name to sell off counterfeit FERRAGAMO goods to the unsuspecting public. The <ferragamooutlet.us> domain name resolves to a website promoting an array of fashion goods under the FERRAGAMO mark. The sale of counterfeit FERRAGAMO goods constitutes neither a Policy ¶4(c)(ii) bona fide offering of goods or services, nor a Policy ¶4(c)(iv) legitimate noncommercial or fair use. See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).
Complainant claims Respondent falsely suggests it is Complainant through the use of the FERRAGAMO mark throughout the <ferragamooutlet.us> domain name’s websites. Many of the goods promoted through the disputed domain name use the FERRAGAMO mark, along with descriptions including the name of Complainant’s founder, Salvatore Ferragamo. In Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003), the panel found that there was no bona fide offering, or legitimate noncommercial or fair use, when the domain name was being used to allow the respondent to pass itself off as the complainant. Respondent’s use of the domain name suggests Respondent seeks to pass itself off as Complainant in the eyes of consumers. Therefore, Respondent has acquired neither rights nor legitimate interests in the domain name under Policy ¶4(a)(ii).
Furthermore, Respondent cannot acquire any rights or legitimate interests if Respondent does not disclose Respondent’s true identity. Since Respondent has not done that, Respondent has acquired no rights or legitimate interests.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent seeks to disrupt and dilute Complainant’s business by encouraging Internet users to purchase inferior and counterfeit goods through the <ferragamooutlet.us> domain name. The goods sold through the <ferragamooutlet.us> domain name bear the FERRAGAMO mark, and are sold featuring the name of Complainant’s founder. In the case of Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008), the panel determined respondent disrupted the complainant’s business by operating a website to sell counterfeit goods. Selling competing counterfeit goods constitutes bad faith registration and use of the disputed domain name under Policy ¶4(b)(iii).
Complainant claims Respondent’s use of the <ferragamooutlet.us> domain name is an attempt to confuse Internet users about the source or origin of the counterfeit FERRAGAMO goods sold through the domain name’s websites. The domain name’s website makes use of Complainant’s own marks in promoting the counterfeit FERRAGAMO goods. Respondent’s business of selling counterfeit FERRAGAMO goods through the <ferragamooutlet.us> domain name causes a likelihood Internet users will confuse Complainant as the source or origin of Respondent’s goods. See, e.g., H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion). Respondent has engaged in bad faith registration and use under Policy ¶4(b)(iv).
Complainant claims Respondent tries to pass itself off as Complainant through the use of the FERRAGAMO mark in selling counterfeit goods. Based upon the screenshots provided, Respondent is making a Policy ¶4(a)(iii) bad faith attempt to pass itself off as Complainant in the eyes of the consuming public. See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
Finally, Respondent has provided false WHOIS information. In the commercial context, this raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut that presumption.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the usTLD Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <ferragamooutlet.us> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, November 11, 2013
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