Decision for dispute CAC-UDRP-105622

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

The Complainant, Poltrona Frau S.p.A., is the owner of numerous registered trade marks that incorporate the term “Poltrona Frau”.  These include:

• International trade mark registration no 627214 dated 12 October 1994, for a figurative mark the most prominent portion of which are the words “Poltrona Frau”, in classes  12, 18 and 20 and which has proceeded to grant in over 30 territories;
•  Chinese trade mark registration no. 589189 dated 30 March 1992 for a figurative mark in the same form as the Complainant’s international registration in class 20

The Complainant Cassina S.p.A. is the owner of numerous registered trade marks that incorporate or comprise the “Cassina”.   These include International trade mark registration no. 880466 dated 16 February 2006 for “CASSINA” as a word mark in classes 20 and 35, and which has proceeded to grant in over 20 territories including China.

FACTS ALLEGED BY THE COMPLAINANT AND NOT DISPUTED BY THE RESPONDENT

The Complainant, Poltrona Frau S.p.A. (“Poltrona Frau”) is a furniture-maker founded in 1912 by Renzo Frau in Turin, Italy, headquartered since the early 1960s in Tolentino, Italy (with the aim of positioning itself within the territory of the Marche region, renowned for its tanneries and leather processing works) and specializing in leather seating for interior and automotive applications. The name “POLTRONA FRAU” derives from the Italian word for armchair, “Poltrona,” and “Frau,” the last name of its founder.

In 1926 it was appointed supplier of the Italian Royal Family, the Savoia dynasty. From then on, it furnished all the most important houses, grand hotels, the interiors for Expo Turin 1928, and the first class of Transatlantico Rex of the Italian Marines.

Poltrona Frau has designed leather interiors for automobiles since 1986, when Lancia asked the company to design and manufacture interiors for their new version 8.32 Thema model. Alfa Romeo, Audi, Bugatti, Ferrari, Maserati, Mini, Fiat, Infiniti, Jaguar and Chrysler have been further automotive companies that commissioned interiors to POLTRONA FRAU. Poltrona Frau has created the leather seatings and pillions for a special edition of the Moto Guzzi’s California model and Scrambler 110 Ducati Club Italia model.

Poltrona Frau works alongside designers from all over the world to develop special furnishings for theatres, auditoriums, museums, airports, hotels, restaurants, cinemas, showroom/retail, offices and yachting as the European Parliament in Strasbourg, the Walt Disney Concert Hall in Los Angeles by Frank O. Gehry, the ‘Parco della Musica’ Auditorium in Rome by Renzo Piano, the Forum Building in Barcelona by Herzog & De Meuron.)

The company is known for its handcrafted products and exhaustive quality standard and counts 9 leather collections "in a total of 177 nuance".

The brand currently boasts 16 flagship stores, 150 single-brand stores and around 300 multibrand stores across the five continents.

The additional Complainant, Cassina S.p.A. ("Cassina”) was established in 1927 by Cesare and Umberto Cassina in Meda, Italy and since 2005 it has been part of the Poltrona Frau Group

In 1954 Cassina won the first Compasso D’Oro Award with the 683 Chair: a thin sheet of ash plywood, curved and shaped for its function by Carlo De Carli.

In 1964 the "Cassina I Maestri" Collection was born, with the acquisition of the rights to products designed by Le Corbusier, Pierre Jeanneret and Charlotte Perriand, the most important names of 20th century design. Today Cassina is the exclusive worldwide licensee of the Le Corbusier designs.

The New York MoMA exhibition of 1972 named "Italy: the New Domestic Landscape" and curated by Emilio Ambasz was co-sponsored by Cassina.

The Disputed Domain Names poltronafrau.asia and cassina.asia were registered by the Respondent, without authorization of Complainant, respectively on 22 May 2020 and on 21 February 2019 and were pointed to websites having identical layouts entirely dedicated to the promotion and sale of goods bearing the POLTRONA FRAU and CASSINA marks and further brands.

A cease and desist letter was sent on 1 February 2023 to the Respondent’s emails indicated in the websites corresponding to the Disputed Domain Names. Currently the websites corresponding to the Disputed Domain Names have been deactivated.   There has been no reply to that letter.

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED. 

The Complainants have, to the satisfaction of the Panel, shown the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainants have, 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 Complainants have, to the satisfaction of the Panel, shown the Disputed Domain Names have been registered and arebeing used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

This is a case where UDRP proceedings have been brought by separate Complainants, with separate marks which relate to separate domain names. Nevertheless, the Complainants form part of the same group of companies and the Panel is satisfied that each Complainant has been targeted in a similar manner through the operation of similar websites.  The Panel is also satisfied, notwithstanding that the “Registrant Organization” details disclosed by the Registrar in respect of each of Disputed Domain Names are different, that both Disputed Domain Names are controlled by the same person, entity or group of persons.   In each case the “Registrant Name” is the same; i.e. “Hung Sheng Huang”, and the Domain Names have been used for websites that are identical in form.  Given this the Panel is satisfied that a single set of proceedings can continue in respect of both Domain Names (as to which see section 4.11 of the WIPO Overview 3.0 and the analysis of this Panel in Meta Platforms, Inc.et al v. Domains By Proxy,LLC et al WIPO Case No. D2022-0212

The Panel is also satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

The Panel is satisfied that the Complainant, Poltrona Frau, is the owner of registered trade marks the dominant element of which are the words "Poltrona Frau", and that the Complainant, Cassina, is the owner of registered trade marks for the word "Cassina".

In order to satisfy the first element of the Policy it is usually sufficient for a complainant to show that the relevant mark is “recognizable with the disputed domain name”; as to which see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Domain Name <poltronafrau.asia> can most sensibly be read as the words "Poltrona Frau"" in combination with the ".asia", top level domain.  The Domain Name <cassina.asia> can most only be sensibly read as the word "Cassina"" in combination with the ".asia" top level domain.

The Complainants have, therefore, satisfied the requirements of paragraph 4(a)(i) of the Policy.

Further, each of the Disputed Domain Names take the form <[trade mark].[gTLD].   That this is also deliberate is clear from not only the  Domain Names themselves (which have no obvious reading that is unconnected with the Complainants), but also from the way in which they have each been used for websites that promote the sale of products under the Complainants marks.   As such each of the  Domain Names impersonate the Complainants in that they inherently misrepresent that they are operated by, or at least authorised by, the trade mark holder.  There is no right or legitimate interest in holding such a domain name and the registration and use of such a domain name is in bad faith, as to which see  Johnson & Johnson v. Ebubekir Ozdogan, WIPO Case No. D2015-1031 and sections 3.1.4 and 3.2.1 of the WIPO Overview 3.0.

These findings are sufficient to decide the case in the Complainants favour and there is no need to undertake an analysis of whether the websites operating from the Disputed Domain Names satisfy a "Oki Data" analysis.   Nevertheless, even if an Oki Data analysis were necessary, the Panel also accepts the Complainants' contention that the websites operating from the Disputed Domain Names would fail the Oki Data tests in that at the very least those websites do not adequately disclose the nature of the registrant’s relationship with the trade mark holders.

The Complainants have, therefore, satisfied the requirements of paragraph 4(a)(ii) and (iii) of the Policy.