DECISION

 

Bruno Magli IP Holdings LP v. Dylan Carroll

Claim Number: FA2606002227690

PARTIES

Complainant is Bruno Magli IP Holdings LP ("Complainant"), represented by Matthew Mills of ArentFox Schiff LLP, District of Columbia, USA. Respondent is Dylan Carroll ("Respondent"), Arizona, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <brunomagliwear.shop> (the "Disputed Domain Name"), registered with Dynadot Inc.

 

PANEL

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.

 

David L. Kreider, Chartered Arbitrator (UK), as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on June 16, 2026; Forum received payment on June 16, 2026.

 

On June 21, 2026, Dynadot Inc. confirmed by e-mail to Forum that the <brunomagliwear.shop> domain name is registered with Dynadot Inc. and that Respondent is the current registrant of the name. Dynadot Inc. has verified that Respondent is bound by the Dynadot Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

Complainant submitted an Amended Complaint on June 22, 2026, following the Registrar's disclosure of the underlying registrant information.

 

On June 23, 2026, Forum served the Amended Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 13, 2026, 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@brunomagliwear.shop. Also on June 23, 2026, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On July 14, 2026, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David L. Kreider as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant alleges:

 

That it owns numerous trademark registrations in the United States and around the world consisting of or incorporating the mark BRUNO MAGLI (collectively, the "BRUNO MAGLI Marks"), used for and in connection with luxury Italian footwear, handbags, accessories, and apparel. Complainant's trademark portfolio includes over 400 registrations spanning more than 70 countries, among them U.S. Reg. No. 907,217, registered February 2, 1971; U.S. Reg. No. 2,924,741, registered February 8, 2005; and U.S. Reg. No. 5,087,393, registered November 22, 2016. The BRUNO MAGLI brand is a globally recognized luxury house and a well-known name in the fashion industry. Complainant has also established common law rights in the BRUNO MAGLI Marks, having begun using the BRUNO MAGLI mark as early as 1951 in connection with its luxury footwear and leather goods. Complainant owns and uses the domain name <brunomagli.com> to advertise and promote its products and services.

 

That the Disputed Domain Name <brunomagliwear.shop> is confusingly similar to the BRUNO MAGLI Marks because it wholly incorporates Complainant's BRUNO MAGLI mark in its entirety, deviating from the mark only by appending the generic or descriptive term "wear" and the generic top-level domain ("gTLD") ".shop." The term "wear" relates directly to the goods Complainant sells under the BRUNO MAGLI Marks and, far from differentiating the Disputed Domain Name, increases the likelihood of confusion, while the ".shop" gTLD reinforces the commercial and e-commerce association.

 

That Respondent has no rights or legitimate interests in the Disputed Domain Name. Respondent is not commonly known by the Disputed Domain Name, which was registered through a privacy service; Complainant has not licensed, permitted, or authorized Respondent to use the BRUNO MAGLI Marks; and there is no affiliation or business relationship whatsoever between Complainant and Respondent. The website resolving from the Disputed Domain Name claims to be from Bruno Magli and prominently displays Complainant's BRUNO MAGLI trademark and logo, creating the false impression that it is an official BRUNO MAGLI website. The website claims to have been operating "since 1936" (Complainant's actual founding year), offers categories for men's and women's shoes, handbags, and accessories, all product categories in which Complainant operates, advertises promotional discounts of up to 65% off, and solicits consumer personal information through product purchases and newsletter sign-ups, nowhere stating who the actual site sponsor is or disclaiming an association with Complainant. Such passing off does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.

 

That Respondent registered and is using the Disputed Domain Name in bad faith. Respondent registered the Disputed Domain Name on May 15, 2026, more than five decades after Complainant obtained its earliest U.S. registration, and the resolving website displays Complainant's trademark and logo and specifically references Complainant's products, services, and history, from which Respondent's actual knowledge of Complainant's rights may be inferred. Respondent is using the Disputed Domain Name to attract users to its website for commercial gain by intentionally creating confusion with the BRUNO MAGLI Marks as to source, affiliation, or sponsorship, within Policy ¶ 4(b)(iv), and to impersonate Complainant and pass itself off as an official BRUNO MAGLI online retailer.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Bruno Magli IP Holdings LP, is the proprietor of the BRUNO MAGLI Marks, used in connection with luxury Italian footwear, handbags, accessories, and apparel. The Bruno Magli house was founded in Bologna, Italy in 1936, and the BRUNO MAGLI mark has been used in commerce since as early as 1951. Complainant's portfolio comprises over 400 registrations spanning more than 70 countries, including U.S. Reg. No. 907,217 (registered February 2, 1971), U.S. Reg. No. 2,924,741 (registered February 8, 2005), and U.S. Reg. No. 5,087,393 (registered November 22, 2016), together with registrations in, among other jurisdictions, the European Union, the United Kingdom, Canada, and Australia. Complainant promotes and sells its goods through its official website at <brunomagli.com> (Compl. Annex C).

 

Respondent registered the Disputed Domain Name <brunomagliwear.shop> on May 15, 2026, through a privacy service, as reflected in the WHOIS record (Compl. Annex A). Following Forum's verification request, the Registrar, Dynadot Inc., disclosed the underlying registrant as "Dylan Carroll" of Mesa, Arizona, USA. Nothing in the record suggests that Respondent is commonly known by the Disputed Domain Name or by any name incorporating BRUNO MAGLI, and Complainant has not licensed or otherwise authorized Respondent to use the BRUNO MAGLI Marks.

 

The Disputed Domain Name resolves to an online storefront (the "Respondent's Website") that presents itself as Complainant's official web presence. The Respondent's Website carries the browser page title "Official Bruno Magli Website | Bruno Magli," displays the BRUNO MAGLI mark, and announces "Timeless Italian Luxury Since 1936," appropriating Complainant's actual founding year. It offers purported BRUNO MAGLI footwear, handbags, sunglasses, and accessories, in the same product categories as Complainant's official website and using product images and model names taken from Complainant's own catalog, at discounts of as much as 65% off. The Respondent's Website invites visitors to create accounts, place orders through a shopping cart, and subscribe to a newsletter, thereby soliciting consumers' personal information, and it displays purported customer testimonials. Nowhere does the Respondent's Website identify its true operator or disclaim a connection with Complainant.

 

The Panel finds that Respondent has used the Disputed Domain Name to impersonate Complainant and to pass the Respondent's Website off as an official BRUNO MAGLI online store.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 and 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(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 Overview 3.1 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").

 

Identical and/or Confusingly Similar

Complainant has established its rights in the BRUNO MAGLI mark for purposes of Policy ¶ 4(a)(i) through its registrations of the mark, including on the Principal Register of the United States Patent and Trademark Office, the earliest of which, U.S. Reg. No. 907,217, issued on February 2, 1971 (Compl. Annex B). A nationally registered trademark prima facie satisfies the threshold requirement of trademark rights under the first element. See WIPO Overview 3.1, ¶ 1.2.1.

 

The Disputed Domain Name <brunomagliwear.shop> incorporates Complainant's BRUNO MAGLI mark in its entirety, the only differences being the appended descriptive term "wear" and the gTLD ".shop." Neither addition prevents a finding of confusing similarity. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); SanMar Corporation v. Simei Bert, FA 2209920 (Forum Apr. 11, 2026) (finding confusing similarity where the addition of the descriptive term "wear" was insufficient to distinguish the domain name from the complainant's mark and instead evoked the complainant's business). If anything, the term "wear" describes the very apparel and footwear for which Complainant's mark is registered and used, reinforcing rather than dispelling the association with Complainant.

 

The gTLD ".shop" is a technical requirement of registration and is disregarded for purposes of the confusing similarity analysis. See WIPO Overview 3.1, ¶ 1.11.1; Kala Brand Music Co. v. jiao qiujian, FA 2169293 (Forum Aug. 28, 2025) (finding the disputed domain name <kalabrand-us.shop> confusingly similar where the domain incorporated the complainant's mark with a geographic term and the ".shop" gTLD).

 

The Panel finds that the Disputed Domain Name is confusingly similar to Complainant's BRUNO MAGLI mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name, at which point the burden shifts to Respondent to come forward with evidence of such rights or interests. See WIPO Overview 3.1, ¶ 2.1; Hanna-Barbera Prods., Inc. v. Ent. Commentaries, FA 741828 (Forum Aug. 18, 2006) (burden shifts after prima facie case).

 

The Registrar-disclosed WHOIS information identifies Respondent as "Dylan Carroll," a name bearing no resemblance to the Disputed Domain Name, and there is no evidence that Respondent has ever been commonly known by the Disputed Domain Name or by BRUNO MAGLI under Policy ¶ 4(c)(ii). See Optima, Inc. and Optima Real Estate, Inc. v. Kenric Hwang, FA 1067632 (Forum Oct. 9, 2007) (finding respondent had no rights or legitimate interests where the WHOIS information did not indicate respondent was known by the disputed domain name). Respondent is not affiliated with Complainant and has not been licensed, permitted, or authorized by Complainant to use the BRUNO MAGLI Marks or to register domain names incorporating them.

 

Nor does Respondent's use of the Disputed Domain Name give rise to rights or legitimate interests. The Respondent's Website impersonates Complainant: it titles itself the "Official Bruno Magli Website," displays the BRUNO MAGLI mark, appropriates Complainant's 1936 founding year, copies product imagery from Complainant's official website, offers purported BRUNO MAGLI goods at discounts of up to 65% off, and solicits consumers' personal information, all without identifying its true operator or disclaiming any connection with Complainant. Passing oneself off as the trademark owner in this fashion is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See BALENCIAGA SA v. ling lin, FA 1768542 (Forum Feb. 16, 2018) ("The disputed domain names incorporate Complainant's registered mark, and are being used for websites that prominently display Complainant's mark and logo, along with apparent images of Complainant's products, offering them for sale at discounted prices. The sites do not disclaim any connection with Complainant, and in fact seem to be designed to create an appearance of such a connection. Such use does not give rise to rights or legitimate interests.").

 

Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the Disputed Domain Name, and Respondent, by failing to submit a Response, has come forward with no evidence to rebut that showing. The Panel finds that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name under Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Respondent registered the Disputed Domain Name on May 15, 2026, more than five decades after Complainant's earliest U.S. registration of the BRUNO MAGLI mark issued in 1971, and some ninety years after the founding of the Bruno Magli house whose year the Respondent's Website itself invokes. The content of the Respondent's Website, which reproduces Complainant's mark, product imagery, product categories, and corporate history, forecloses any suggestion that Respondent was unaware of Complainant. The very composition of the Disputed Domain Name, joining the BRUNO MAGLI mark to the apparel term "wear" under the commerce-oriented ".shop" gTLD, evidences a deliberate effort to hold the Disputed Domain Name out as the address of an official BRUNO MAGLI online store. The Panel finds that Respondent had actual knowledge of Complainant and its rights in the BRUNO MAGLI Marks when it registered the Disputed Domain Name. See Nortel Networks Ltd. v. BuyMeBuyMe.com, Inc., FA 671847 (Forum May 16, 2006) (noting that registration of a domain name with knowledge of a trademark owner's rights has been consistently found to constitute bad faith); Google Inc. v. Ahmed Humood, FA 1591796 (Forum Jan. 7, 2015) ("[P]anels have found Policy ¶ 4(a)(iii) bad faith where the circumstances support an inference of actual knowledge.").

 

Respondent's use of the Disputed Domain Name falls squarely within Policy ¶ 4(b)(iv). By operating a copycat storefront that mimics Complainant's official website and holds itself out as Complainant, Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's Website by creating a likelihood of confusion with the BRUNO MAGLI Marks as to the source, sponsorship, affiliation, or endorsement of that website and of the products offered on it. See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where "Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant's own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant."); Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu Yi KaiQi, FA 1612750 (Forum May 13, 2015) ("The Panel agrees that Respondent's use of the website to display products similar to Complainant's, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).").

 

Respondent's impersonation of Complainant is itself further evidence of bad faith. The Respondent's Website solicits orders and consumers' personal information from Internet users who have been deceived into believing they are dealing with Complainant, conduct that can only damage Complainant's goodwill and its relationship with its customers. See Am. Int'l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding bad faith where the respondent used the disputed domain name to host a website that duplicated the complainant's mark and logo, giving every appearance of being associated or affiliated with the complainant's business).

 

The Panel finds that Respondent registered and is using the Disputed Domain Name in bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <brunomagliwear.shop> domain name be TRANSFERRED from Respondent to Complainant.

 

 

David L. Kreider, Panelist

Dated: July 15, 2026