On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No. 104258
Time of Filing 2022-01-10 09:14:32
Disputed domain name STEFANORICCI.ONLINE
Case Administrator
Name Iveta Špiclová
Complainant
Organization STEFANO RICCI S.P.A.
Authorized Representative
Organization Convey srl
Respondent
Name Wojciech Muras
Other Legal Proceedings
The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.
Identification of rights
The Complainant is the owner of several trademarks consisting of or containing the name “STEFANO RICCI”, such as:

- Int. Trademark no. 407525 – “STEFANO RICCI” – Nice Classification: 18, 25 - Date of registration May 27, 1974;

- Int. Trademark no. 767523 – “STEFANO RICCI” – Nice Classification: 03, 09, 14, 18, 21, 25 - Date of registration September 17, 2001;

- Int. Trademark no. 1192240 (extended to the EU) – “STEFANO RICCI” – Nice Classification: 03, 08, 09, 11, 12, 14, 16, 18, 20, 21, 24, 25, 26, 33, 34, 35, 37, 42 - Date of registration August 5, 2013;

- Int. Trademark no. 1402542 “STEFANO RICCI” – Nice Classification: 25, 26, 28, 35 - Date of registration September 7, 2017;

- EU Trademark no. 018161355 “STEFANO RICCI LUXURY TECH” – Nice Classification: 3, 9, 14, 18, 20, 25, 28, 35 – Date of registration June 19, 2020.


Furthermore, the Complainant is the owner of several domain names, consisting of the name "STEFANO RICCI”, such as <STEFANORICCI.COM> or <STEFANORICCI.IT>.
Factual Background
FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

The Complainant is a company with headquarters in Florence, Italy. The founder, Mr. Stefano Ricci, established the company in 1972. Since then, it has produced unique and hand-designed fashion. It also produces exclusive cufflinks and leather goods, such as belts, bags and wallets. Furthermore, the brand is expanding with its home collection, covering porcelain and crystal dinner services, silverware, furnishing accessories, luxury linens and leather goods.

Summarised, the Complainant is one of the leading companies in the fashion and luxury industry and has continuously and extensively used and advertised its trademarks and company name in multiple channels including the Internet, making the “STEFANO RICCI” brand well-known in many parts of the world. Furthermore, the Complainant uses hundreds of registered domain names, inter alia <STEFANORICCI.COM>, for its services.

The disputed domain name <STEFANORICCI.ONLINE> has been registered by the Respondent on September 28, 2021. Prior to receiving a cease and desist letter by the Complainant, the domain name at stake pointed to a website look-alike the BBC (British Broadcasting Corporation) website. Since then, it has no longer pointed to any active website. The disputed domain name is offered for sale via Sedo’s platform (https://sedo.com).
 
NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

Rights
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).
No rights or legitimate interests
The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).
Bad faith
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).
Procedural Factors
The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.
Principal Reasons for the Decision
As the Respondent did not file an administratively compliant Response, pursuant to paragraph 14(b) of the Rules, the Panel may draw such inferences therefrom as it considers appropriate. Thus, the Panel considers the contentions of the Complainant as conceded by the Respondent.


A. The disputed domain name is identical to the trademarks “STEFANO RICCI” of the Complainant

The Complainant has, to the satisfaction of the Panel, shown that it has valid trademarks rights in “STEFANO RICCI”. The disputed domain name includes – apart from a space, that cannot be displayed in a domain name – the Complainant's trademarks in its entirety.

Also, the addition of the gTLD suffix “.ONLINE” is not sufficient to escape the finding that the disputed domain name is identical to the Complainant's trademarks and does not change the overall impression of the designation as being connected to the trademarks of the Complainant.


B. The Respondent has no rights or legitimate interests in respect of the disputed domain name within the meaning of the Policy

The Complainant has established a prima facie proof that the Respondent has no rights or legitimate interests in the disputed domain name, since the Respondent is not a licensee of the Complainant nor has the Complainant granted any permission or consent to use its trademarks in a domain name. Specifically, the Respondent is not an authorized reseller of the Complainant.

In addition, the disputed domain originally pointed to a BBC look-alike website, currently does not refer to any website and is also offered for sale. The former misleading use and the now passive holding of the disputed domain name as well as the intention to sell it indicates that the Respondent lacks rights and legitimate interests in the disputed domain name.

Furthermore, the disputed domain name does not correspond to the name of the Respondent nor is he commonly known as “STEFANO RICCI”.

Summarised, there is no evidence for a use of the disputed domain name for any bona fide offer of goods or services or a legitimate non-commercial or fair use.


C. The disputed domain name has been registered and is being used in bad faith within the meaning of the Policy

The Complainant’s trademarks “STEFANO RICCI” are well known. Given the distinctiveness of the Complainant's trademarks and reputation and in view of the fact that the Respondent is located in Poland, thus where an EU trademark “STEFANO RICCI” of the Complainant is registered, it can be concluded that the Respondent has registered the disputed domain name with full knowledge of the Complainant's trademarks.

Further, the now merely passive holding of the domain after receipt of the cease and desist letter with presumed knowledge of the Complainant’s corresponding trademark rights indicates that the Respondent has registered and uses the disputed domain name in bad faith.

Beyond this, a bad faith registration and use is especially indicated by the fact that the Respondent offers the disputed domain name for sale, which is without doubt in excess to the out-of-pocket costs of the Respondent directly related to the disputed domain name. Therefore, the Panel finds that the Respondent has registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the corresponding trademarks or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs direct-ly related to the disputed domain name.
Decision
For all the reasons stated above, the Complaint is Accepted
and the disputed domain name(s) is (are) to be
STEFANORICCI.ONLINE Transferred to Complainant
Panellists
Name Dominik Eickemeier
Date of Panel Decision 2022-02-15
Publication of the Decision
Publish the Decision