Decision for dispute CAC-UDRP-105343

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.

The Complainant refers that Tod’s is the owner of various trademark registrations including HOGAN such as:

The Complainant, Tod’s SpA, is a company with headquarters in Sant’Elpidio al Mare, FM (ITALY).

Tod's has its roots in the early '900, when Filippo della Valle founded a small family business near Ancona in Italy. In the 70s, with the input and entrepreneurial creativity of his son Diego, the original leather goods grow and evolve. In the late 70’s the company was renamed in J. P. Tod’s by Diego della Valle, because it was short and easy to pronounce internationally and the J.P. was dropped in 1997. Tod’s first success came with the Gommino driving shoe, which has gummy little rubber pebbles on the soles. In few years the production was expanded to the bags and in 1997 the D-Bag was launched becoming in few years an iconic model. From 2006 and 2009 Tod’s introduced ready-to-wear, promoting the apparels with the celebrities as Katie Holmes, Jessica Alba and Gwyneth Paltrow, and sunglasses.

In 2011, Tod’s Group sponsored the restoration of the Colosseum in Rome with a disbursement of €25m in five years, it has also been a Permanent Founding Member of the Fondazione Teatro alla Scala and one of main sponsor of Padiglione di Arte Contemporanea (PAC) in Milan.

Today, Tod's SpA is the operating holding of a Group, amongst the leading players in the world of luxury goods, with the trademarks Tod's, Hogan, Fay and Roger Vivier with about 4.890 employees worldwide. Tod's has numerous stores around the world, about 403 mono-brand stores, including showrooms and large flagship stores in Europe, the U.S., China, Japan, Malaysia, Singapore, Hong Kong, Indonesia, Turkey and Australia. In November 2015, Tod’s acquired further stock in the Roger Vivier shoe brand for €415 million reaching about 60%.

In 2017 Chiara Ferragni - an Italian digital entrepreneur, fashion blogger, influencer and designer with a massive following on social media (over 23 million followers on her Instagram account) – started to collaborate with Tod’s Group on the occasion of the promotion of capsule collection - #ChiaraLovesTods - on social media through a video where Chiara Ferragni visited the company’s headquarters.

In April 2021, the collaboration between Tod’s Group and Chiara Ferragni results with the entry of the latter as member of the board of Tod’s Group in order to deal with social commitment, solidarity and dialogue with the younger generations. After the appointment of the Italian blogger as a member of board of directors, Tod’s Group shares soared to 12.1%.

From September 2022, Chiara Ferragni is no longer an independent member of the board of directors of Tod’s Group in light of lack of the requirements to be qualified as independent due to an occasional provision. However, the digital entrepreneur will continue to serve on the Tod’s Group board as a "non-independent member".

HOGAN teams up with Exclusible, the marketplace for luxury NFTs and upscale metaverse activations, to debut the “HOGAN Untraditional NFT Collection”. The NFT project is curated by creative studio Braw Haus and will feature artists Silvio Rondelli, Yoann De Geetere, Linear, Vincent Ghiotti and Finn Berenbroek. The NFTs artist series will be available for sale to the public on April 3 on Exclusible.

The high standard of quality met by the products is guaranteed by the strong craftsmanship involved in every and each phase of the production: every product is handmade, crafted with techniques of the highest skilled handcraftsmanship. All products are crafted in the Groups' owned factories, a total of 6 for shoes and 2 for leather goods, and in a limited number of specialized laboratories (with which the Group has bonded long term business relations). The buying of materials, the supervision of all the production phases and the control of the finished products, are centralized at the headquarters - this is done for all of the products as well as for the ones created in the external laboratories.

2022 Annual revenues of Tod’s Group were almost 668 million of Euros of which almost 50% came from the trademark TOD’S. 

Diego and his younger brother, Andrea, who is vice president, own a 61 percent stake in the company, which was listed on the Milan stock exchange in 2000.

Recent investor relations show that - since 2022 - Tod’s Group purposes a voluntary tender offer - promoted by DeVa Finance, a company owned by DI.VI. Finanziaria di Diego Della Valle & C and indirectly controlled by Diego Della Valle – which is aimed at acquiring all the ordinary shares of Tod's Group not yet in the hands of the entrepreneur and amounting to 25.55% of the capital.

PARTIES' CONTENTIONS:

No administratively compliant Response has been filed so that the allegations done by the Complainant have to be seen as undisputed and true as well as its legal assessments because of the Respondent's failure to file a Response.

COMPLAINANT: 

In light of the Respondent’s registration and use of the disputed domain names, confusingly similar to its registered and well-known trademark HOGAN the Complainant instructed its representative to address to the owner of the disputed domain names a cease-and-desist letter in order to notify the infringement of the Complainant’s trademark rights, requesting the immediate cease of any use, and the transfer, of the disputed domain names to the Complainant.

The cease-and-desist letters were therefore sent on 25 January 2023 via form online indicated in the corresponding websites related to the disputed domain names. The Respondent has not deemed appropriate to answer.

In light of the absence of a reply and the failure to comply with the request for transfer of the disputed domain names, the Complainant files the present Complaint in order to obtain the transfer of the disputed domain names under its ownership and control.

The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (Policy, Paragraph 4(a)(i); Rules, Paragraphs 3(b)(viii), (b)(ix)(1))

The disputed domain names registered by the Respondent are confusingly similar to trademarks in which Complainant has rights, as per copies of trademark registrations.

The disputed domain names incorporate the whole of the Complainant’s trademark HOGAN and the fact that they include a non-distinctive element such as geographical terms, generic commercial terms and the generic Top-Level Domain .com does not affect the confusing similarity.

It should be also noted that the geographical terms in the disputed domain names cannot be considered enough to distinguish Respondent’s domain names from the Complainant’s mark, are all the more apt to induce confusion among Internet users. HOGAN is, in fact, an internationally well-known mark in the sector of shoes, and the Complainant’s products are sold worldwide. Moreover, the Complainant is based in Italy and the disputed domain names are particularly problematic in light of the possible confusion for the internet users.

The combination of the trademark HOGAN with geographical terms could suggest improperly to consumers that the disputed domain names and corresponding web sites might be directly controlled or authorized by the Complainant. The Complainant itself operates online sale of its products.

Furthermore, the top level “.com” is merely instrumental to the use in Internet and not able to affect the confusing similarity of the disputed domain names to the Complainant’s trademark.

The Respondent has no rights or legitimate interests in respect of the disputed domain names; (Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2))

According to paragraph 4(a) of the Policy, the burden of proving the absence of the Respondent’s rights or legitimate interests in respect of the disputed domain names lies with the Complainant. It is nevertheless a well-settled principle that satisfying this burden is unduly onerous, since proving a negative fact is logically less feasible than establishing a positive. Accordingly, it is sufficient for the Complainant to produce prima facie evidence in order to shift the burden of production to the Respondent. The mere registration of a disputed domain name does not establish rights or legitimate interests in a disputed domain name.

The Respondent is not licensees, authorized agents of the Complainant or in any other way authorized to use Complainant’s trademarks. Specifically, the Respondent is not authorized a reseller of the Complainant and has not been authorized to register and use the disputed domain names.

Upon information and belief, the Respondent is not commonly known by any of the disputed domain names as individuals, business or other organization and his family name does not correspond to HOGAN or the Domain Name.

The Respondent has not provided the Complainant with any evidence of the use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services before any notice of the dispute.

As highlighted by the Complainant the disputed domain names are redirected by the Respondent to web sites where the Complainant’s trademarks HOGAN are published and counterfeit HOGAN branded products are offered for sale.

Moreover, there are not disclaimers as to the Respondent’s lack of relationship with the Complainant.

It is apparent that the Respondent's use could be considered neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the disputed domain names. Such wilful conduct clearly demonstrates, to the contrary, that Respondent is not intended to use the disputed domain names in connection with any legitimate purpose.

In light of the low prices - a pair of Hogan Hyperactive Chunky are sold to more than EUR 400, instead in the websites corresponding to the disputed domain names the same pair of shoes is sold to EUR 125,00 - the shoes, offered for sale via the website corresponding to the disputed domain names, are counterfeit and therefore such use of the disputed domain names cannot be deemed a legitimate non-commercial or fair use without intent for commercial gain. The sale of counterfeit products is circumstantial evidence supporting the illegal Respondent activity and, consequently the absence of no rights or legitimate interests in respect of the disputed domain names.

For all of the foregoing reasons, the Complainant concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names pursuant to paragraph 4(a)(ii) of the Policy.

The disputed domain names were registered and are being used in bad faith. (Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

As to the assessment of the Respondent’s bad faith at the time of registration, in light of the registration and intensive use of the trademark HOGAN since 1986, the advertising and sales of the Complainant’s products worldwide, the Respondent could not have possibly ignored the existence of the Complainant’s trademark, confusingly similar to the disputed domain names. The Complainant has many boutiques and distributors worldwide. The aforesaid trademark of the Complainant enjoys worldwide reputation in the sector of shoes and leather goods items. The Domain Names were registered years after the Complainant obtained its trademark registrations, only on 12 November 2022.

Furthermore, the actual knowledge of HOGAN trademarks by Respondent at the time of the registration of the disputed domain names Complainant’s shoes reproducing also the trademark HOGAN in the web sites corresponding to the disputed domain names.

By virtue of its extensive worldwide use, the Complainant’s trademark HOGAN has become a well-known trademark in the sector of shoes and leather goods items.

Therefore, it is clear that the Respondent was well aware of the trademark HOGAN and he has registered the disputed domain names with the intention to refer to the Complainant and its trademark. 

The registration of a disputed domain name with the knowledge of the complainant’s trademark is evidence of bad faith.

Use of the disputed domain names by the Respondent took place only long after the trademark HOGAN had become well known in the relevant public sector. Therefore, the Respondent should have been aware of the mark HOGAN when it applied to register the disputed domain names.

Indeed, the fact that replicas of HOGAN shoes are offered for sale on the web sites corresponding to the disputed domain names indicates that the Respondent has been fully aware of the Complainant’s mark’s reputation and association with the Complainant and that his purpose in registering the disputed domain names, which incorporate the Complainant's trademark HOGAN, was solely to capitalize on the reputation of Complainant's mark by diverting Internet users seeking products under the HOGAN mark to its own commercial web sites.

The use of the disputed domain names in connection with commercial web sites where the Complainant’s trademark is misappropriated where counterfeit HOGAN branded shoes and items of Complainant’s competitors are offered for sale clearly indicates that the Respondent’s purpose in registering the disputed domain names was to capitalize on the reputation of the Complainant's trademark by diverting Internet users seeking HOGAN products to his website for financial gain, by intentionally creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of its web sites and/or the goods offered or promoted through said web sites, according to paragraph 4(b)(iv) of the Policy.

Moreover, on the web sites corresponding to the disputed domain names, there are no disclaimer informing the users as to the Respondent’ lack of relationship with the Complainant and the Respondent.

In light of the high discounts proposed to the internet users and of low prices of the shoes sold via the websites corresponding to the disputed domain names, prima facie the Respondent sells counterfeit goods or Respondent utilizes the low prices of the shoes as bait to obtain personal data or payments by the internet users without providing the goods.

The Respondent offers for sale the Complainant’s products disproportionately below the market value: the same pair of shoes, i.e. Hogan Hyperactive Chunky, is offered for sale to more than EUR 400, instead in the websites corresponding to the disputed domain names the same pair of shoes is sold to EUR 125,00. Such conduct constitutes further evidence that the items offered for sale are counterfeited and that the disputed domain names have been registered and used in bad faith, as stated in the paragraphs 2.13.2 and 3.1.4 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition and in several decisions.

A failure to respond to a cease-and-desist letter can be evidence of bad faith. Such bad faith is compounded when the domain name owner or its duly authorized privacy service, upon receipt of notice that the disputed domain name is identical to a registered trademark, refuses to respond or even to disclose the disputed domain name owner’s identity to the trademark owner... Such conduct is not consistent with what one reasonably would expect from a good faith registrant accused of cybersquatting.

In view of the above, the Complainant respectfully submits that the disputed domain names were registered and are being used in bad faith in full satisfaction of paragraphs 4(a)(iii) and 4(b) of the Policy.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are confusingly similar to a trademark HOGAN in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

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 names (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

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.

In order to succeed in its claim, the Complainant has to prove that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests with respect to the disputed domain names; and

(iii) The disputed domain names have been registered and are being used in bad faith.

The Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations because of the Respondent's failure to submit a response. Therefore, it accepted as true all allegations of the Complainant as well of its legal assessments.

A. THE DISPUTED DOMAIN NAMES ARE CONFUSINGLY SIMILAR TO A TRADEMARK IN WHICH THE COMPLAINANT HAS RIGHTS

The Panel finds that the disputed domain names registered by the Respondent are confusingly similar to trademarks in which Complainant has rights, as per copies of trademark registrations. It is obvious that the disputed domain names incorporate the whole of the Complainant’s trademark HOGAN and the fact that they include a non-distinctive element such as geographical terms, generic commercial terms and the generic Top-Level Domain .com does not affect the confusing similarity. The geographical terms in the disputed domain names cannot be considered enough to distinguish the disputed domain names from the Complainant’s mark and induce confusion among Internet users. Moreover, the Complainant is based in Italy and the disputed domain names are particularly problematic in light of the possible confusion for the internet users. The Panel finds that HOGAN is an internationally well-known mark in the sector of shoes, and the Complainant’s products are sold worldwide. The combination of the trademark HOGAN with geographical terms suggests improperly to consumers also in the Panel's conclusion that the disputed domain names and corresponding web sites might be directly controlled or authorized by the Complainant while the Complainant itself operates online sale of its products. Furthermore, the top level “.com” is merely instrumental to the use in Internet and not able to affect the confusing similarity of the disputed domain names to the Complainant’s trademark.

The Panel therefore considers the disputed domain names to be confusingly similar to the trademark HOGAN in which the Complainant has rights and its conduct falls within the meaning of paragraph 4(a)(i) of the Policy.

B. RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTEREST IN RESPECT OF THE DISPUTED DOMAIN NAMES

In the Panel's view it is sufficient for the Complainant to produce prima facie evidence in order to shift the burden of production to the Respondent. The mere registration of a disputed domain name does not establish rights or legitimate interests in a disputed domain name. The burden of proving the absence of the Respondent’s rights or legitimate interests in respect of the disputed domain names lies with the Complainant. It is nevertheless a well-settled principle that satisfying this burden is unduly onerous, since proving a negative fact is logically less feasible than establishing a positive.

The Panel concluded that the Respondent should have already performed a carefully search before registering the disputed domain names and should have quickly learnt that the trademark HOGAN are owned by the Complainant and that the Complainant has been using its trademark in many other countries worldwide. Nevertheless, the Panel finds that the evidence shows that the Respondent obviously knew about the Complainant and its trademark HOGAN when it registered the disputed domain names and chose to register them as such.

The Respondent is not licensees, authorized agents of the Complainant or in any other way authorized to use Complainant’s trademarks. Specifically, the Respondent is not authorized a reseller of the Complainant and has not been authorized to register and use the disputed domain names.

The Panel does not find that the Complainant and the Respondent have ever had any previous relationships, nor that the Complainant has ever granted the Respondent with any rights to use the HOGAN trademark in any forms, including the disputed domain names. The Panel does not find that the Respondent is commonly known by the disputed domain names or that it has legitimate interests over the disputed domain names nor the Respondent contends it. Respondent’s name is obvious a company denomination “Web Commerce Communications Limited (Client Care)" alike.

The Respondent has not provided the Complainant with any evidence of the use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services before any notice of the dispute.

The Panel finds as highlighted by the Complainant that the disputed domain names are redirected by the Respondent to web sites where the Complainant’s trademarks HOGAN are published and counterfeit HOGAN branded products are offered for sale. Moreover, there are not disclaimers as to the Respondent’s lack of relationship with the Complainant.

It is apparent that the Respondent's use could be considered neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the disputed domain names. Such wilful conduct clearly demonstrates, to the contrary, that Respondent is not intended to use the disputed domain names in connection with any legitimate purpose.

In light of the low prices that a pair of Hogan Hyperactive Chunky are sold to more than EUR 400, instead in the websites corresponding to the disputed domain names the same pair of shoes is sold to EUR 125,00 the Panel tends to agree with the Complainant that the shoes, offered for sale via the website corresponding to the disputed domain names, are counterfeit and therefore such use of the disputed domain names is not deemed a legitimate non-commercial or fair use without intent for commercial gain. The sale of counterfeit products is a circumstantial evidence of the illegal Respondent activity and, consequently therefore in the Panel view there is the absence of no rights or legitimate interests in respect of the disputed domain names.

The Panel therefore finds that the Respondent does not have rights or legitimate interests in the disputed domain names and its conduct falls within the meaning of paragraph 4(a)(ii) of the Policy.

C. THE DISPUTED DOMAIN NAMES WERE REGISTERED AND ARE BEING USED IN BAD FAITH

1. Registration of the disputed domain names in bad faith

The Panel finds that the registration of the Complainant’s trademark HOGAN pre-dates the registration of the disputed domain name and the Respondent has never been authorized by the Complainant to use the HOGAN trademark nor to register the disputed domain names. The Panel finds that as far as registration in bad faith is concerned, the Respondent registered disputed domain names which contain a well-known third party’s trademark without authorization. By virtue of its extensive worldwide use, the Complainant’s trademark HOGAN has become a well-known trademark in the sector of shoes and leather goods items.

The Panel concluded that the Respondent should have already performed a carefully search before registering the disputed domain names and should have quickly learnt that the trademark HOGAN are owned by the Complainant and that the Complainant has been using its trademark in many other countries worldwide. Nevertheless, the Panel finds that the evidence shows that the Respondent obviously knew about the Complainant and its trademark HOGAN when it registered the disputed domain names and chose to register them as such.

The Panel is convinced in the Respondent’s bad faith at the time of registration, in light of the registration and intensive use of the trademark HOGAN since 1986, the advertising and sales of the Complainant’s products worldwide. The Panel finds that the Respondent have possibly ignored the existence of the Complainant’s trademark, confusingly similar to the disputed domain names. The evidence shows that the Complainant has many boutiques and distributors worldwide. The HOGAN trademark of the Complainant enjoys worldwide reputation in the sector of shoes and leather goods items. The disputed domain names <hogan-greece.com>, <hogansverige.com> and <hoganturkiye.com> were registered by the Respondent on 12 November 2022, without authorization of Complainant, and are pointed to websites where Complainant’s counterfeit products are offered for sale.

Furthermore, the actual knowledge of HOGAN trademarks by Respondent at the time of the registration of the disputed domain names Complainant’s shoes reproducing also the trademark HOGAN in the web sites corresponding to the disputed domain names.

The Panel finds that it is clear that the Respondent was well aware of the trademark HOGAN and he has registered the disputed domain names with the intention to refer to the Complainant and its trademark. 

The registration of a disputed domain name with the knowledge of the complainant’s trademark HOGAN is an evidence of bad faith and the misappropriation of a well-known trademark as disputed domain names by itself constitutes bad faith registration.

2. The disputed domain names are being used in bad faith

A conduct where Respondent sought or realized commercial gain, at least earning commission whenever an Internet user visits its website and clicks on one of the links published therein, indicates in the Panel's conclusion a bad faith by using the disputed domain names.

Use of the disputed domain names by the Respondent takes place only long after the trademark HOGAN had become well known in the relevant public sector. Therefore, the Respondent should have been aware of the mark HOGAN when it applied to register the disputed domain names.

Indeed, the fact that replicas of HOGAN shoes are offered for sale on the web sites corresponding to the disputed domain names indicates that the Respondent has been fully aware of the Complainant’s mark’s reputation and association with the Complainant and that his purpose in registering the disputed domain names, which incorporate the Complainant's trademark HOGAN, was solely to capitalize on the reputation of Complainant's mark by diverting Internet users seeking products under the HOGAN mark to its own commercial web sites.

The Panel finds that the use of the disputed domain names in connection with commercial web sites where the Complainant’s trademark is misappropriated where counterfeit HOGAN branded shoes and items of Complainant’s competitors are offered for sale clearly indicates that the Respondent’s purpose in registering the disputed domain names was to capitalize on the reputation of the Complainant's trademark by diverting Internet users seeking HOGAN products to his website for financial gain, by intentionally creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of its web sites and/or the goods offered or promoted through said web sites. Moreover, on the web sites corresponding to the disputed domain names, there are no disclaimer informing the users as to the Respondent’ lack of relationship with the Complainant and the Respondent. In light of the high discounts proposed to the internet users and of low prices of the shoes sold via the websites corresponding to the disputed domain names, leads the Panel to conclude that the Respondent sells counterfeit goods or Respondent utilizes the low prices of the shoes as bait to obtain personal data or payments by the internet users without providing the goods.

The Panel finds that the Respondent offers for sale the Complainant’s products disproportionately below the market value. Such conduct constitutes further evidence that the items offered for sale are counterfeited and that the disputed domain names have been registered and used in bad faith.

It is proven that the cease-and-desist letters were sent on 25 January 2023 via form online indicated in the corresponding websites related to the disputed domain names. The Respondent has not answered. The Panel concludes that a failure to respond to a cease-and-desist letter is evidence of bad faith. Such bad faith is compounded when the disputed domain names owner upon receipt of notice that the disputed domain name is identical to a registered trademark, refuses to respond or even to disclose the disputed domain name owner’s identity to the trademark owner. Such conduct is not consistent with what one reasonably would expect from a good faith registrant accused of cybersquatting.