Decision for dispute CAC-UDRP-107145

The Panel is unaware of any other pending or concluded legal proceedings concerning the domain name <lapetiterobedichiaraboni.shop> ('the disputed domain name').

The Complainant, Chiara Boni & Sons, asserts rights to the following registered trade marks:

• EU trade mark registration no. 014671689, registered on 9 March 2016, for the figurative mark CHIARA BONI La Petite Robe, in classes 3, 18, 25, and 35 of the Nice Classification;

• International trade mark registration no. 1286255, registered on 15 October 2015, designating, inter alia, China, for the figurative mark CHIARA BONI La Petite Robe, in classes 3, 18, 25, and 35 of the Nice Classification;

• Italian trade mark registration no. 2015000060159, registered on 26 October 2018, for the figurative mark CHIARA BONI La Petite Robe, in classes 3, 18, 25, and 35 of the Nice Classification;

• Chinese trade mark registration no. 5570767, registered on 14 October 2009, for the word mark CHIARA BONI, in class 25 of the Nice Classification.

The aforementioned trade marks shall be referred to as 'the Complainant's trade mark' or 'the trade mark CHIARA BONI'. Furthermore, the Complainant owns several domain names incorporating the name 'Chiara Boni', notably <chiaraboni.com>, registered in 2011; and <chiaraboni.eu>, registered in 2010.

The disputed domain name was registered on 5 November 2024 and does not currently resolve to an active website (for present purposes, 'the Respondent's website').

A. Complainant's Factual Allegations

The Complainant is known as 'Chiara Boni La Petite Robe'. The brand derives its name from its founder, Chiara Boni, who began her design career in 1971 in Florence, Italy. In 1985, she established a partnership with the Gruppo Finanziario Tessile, resulting in the formation of 'Chiara Boni S.p.A'. The Complainant specialises in high-quality prêt-à-porter collections for women, leveraging collaborations with renowned stylists.

The introduction of the trade mark 'La Petite Robe' in 2007 highlighted innovative garments made from stretch fabrics, which gained international recognition. Chiara Boni has expanded her brand through significant participation in prestigious fashion shows and has successfully entered global markets, particularly in the United States. The Complainant has seen robust growth, reporting a turnover of approximately 14.2 million EUR in 2021, with a wide distribution of products through both physical boutiques and major online platforms.

B. Respondent's Factual Allegations

The Respondent has failed to submit a Response in this UDRP administrative proceeding, resulting in the Complainant's allegations remaining unchallenged.

A. Complainant's Submissions

A.1 Preliminary Issue - Language of the Proceeding Request

With respect to the language of the proceedings, the Panel notes the following:

• The Complaint is submitted in English and the Complainant has made a request that English be the language of this UDRP administrative proceeding;

• According to the registrar's verification response ('the RVR'), the language of the registration agreement for the disputed domain name <lapetiterobedichiaraboni.shop> is Chinese; and

• The Complainant's grounds for English to be the language of this UDRP administrative proceeding can be summarised as follows: (i) neither the Complainant nor its representatives understand Chinese; (ii) translating the Complaint and its annexes would impose undue burden and expense and would unnecessarily prolong the proceedings, contrary to the expedited nature of the UDRP process; and (iii) the abusive use of the disputed domain name has already caused significant damage to the Complainant's reputation, such that any delays would further exacerbate these damages. 

A.2 Substantive grounds

The Complainant's contentions can be summarised as follows.

A.2.1 The disputed domain name is confusingly similar to a trade mark in which the Complainant has rights

The comparison of the disputed domain name with the trade mark CHIARA BONI reveals evident confusing similarity. The only distinction lies in the reversal of word order and the addition of the Italian preposition 'di'. Such alterations do not diminish the distinctive character of the Complainant's trade mark. Moreover, the website associated with the disputed domain name reinforces this confusion by displaying the trade mark CHIARA BONI without authorisation. Hence, the first requirement of the UDRP Policy is satisfied.

A.2.2 The Respondent has no rights or legitimate interests in respect of the disputed domain name

The Complainant asserts that the Respondent lacks rights or legitimate interests in the disputed domain name. There is no relationship between the Parties, nor has the Respondent secured approval to use the Complainant's trade mark. The disputed domain name is employed to impersonate the Complainant by displaying the trade mark CHIARA BONI without authorisation, thereby evidencing a lack of bona fide use. 

A.2.3 The Respondent registered and is using the disputed domain name in bad faith

The registration and use of the disputed domain name occurred in bad faith. Given the notoriety of the trade mark CHIARA BONI, it is inconceivable that the Respondent was unaware of the Complainant's rights at the time of registration of the disputed domain name. Moreover, the website at the disputed domain name directs Internet users to counterfeit products, undermining the Complainant's reputation.

A.2.4 Relief sought

The Complainant requests that the disputed domain name be transferred to it.

B. Respondent's Submissions

The Respondent has defaulted in this UDRP administrative proceeding, failing to advance any substantive defence.

The Complainant has, to the satisfaction of the Panel, shown that the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the UDRP 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 name (within the meaning of paragraph 4(a)(ii) of the UDRP Policy).

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 UDRP Policy).

1. Complainant's Language Request

The Panel is afforded discretion under Rule 11 of the UDRP Rules to determine the appropriate language of the UDRP administrative proceeding. The Panel notes Rule 10 of the UDRP Rules, which vests the Panel with authority to conduct the proceedings in a manner deemed appropriate while ensuring equality for both parties and granting each a fair opportunity to present its case.

In this matter, the Panel adopts the language of proceeding test applied in CAC Case no. 104144, Writera Limited v. alexander ershov, which outlines the following guiding factors:

(i) Language of the disputed domain name string: this factor is immaterial given that the disputed domain name contains French and Italian words only;

(ii) Content of the Respondent's website: the Respondent's website does not hold any content, rendering this factor likewise immaterial;

(iii) Language of the Parties: the Complainant is incorporated in Italy, while the Respondent appears to be based in China. English would therefore be considered a common or neutral language for both Parties;

(iv) Respondent's behaviour: the Respondent has shown no inclination to participate in this UDRP administrative proceeding;

(v) Panel's overall concern with due process: the Panel has fulfilled its duty under Rule 10 (c) of the UDRP Rules; and

(vi) Balance of convenience: the determination of English as the language of this UDRP administrative proceeding is unlikely to cause the Respondent inconvenience. Conversely, a determination of Chinese would likely cause considerable inconvenience to the Complainant and impede expedition under the UDRP Rules.

In view of the above factors, the Panel has decided to accept the Complainant's language request, thereby making the decision in English.

2. Miscellaneous

The Panel is satisfied that all procedural requirements under the UDRP have been duly met, with no grounds preventing a decision from being issued. 

A. Jurisdiction and Burden of Proof

Pursuant to Rule 15 of the UDRP Rules, the Panel will determine the case based on the statements and documents submitted, alongside the UDRP Policy, UDRP Rules, and any pertinent rules and principles of law.

Under paragraph 4(a) of the UDRP Policy, the onus is on the Complainant to establish three essential elements for a successful claim:

i. The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

ii. The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

iii. The disputed domain name has been registered and is being used in bad faith.

These three elements will be referred to as 'the requirements of the UDRP Policy'. The standard of evidence in UDRP administrative proceedings is the balance of probabilities. The Panel will assess each requirement in turn.

B. Identical or Confusingly Similar

The Panel finds that the Complainant possesses UDRP-relevant rights in the registered trade mark CHIARA BONI as of 2016.

The disputed domain name <lapetiterobedichiaraboni.shop> includes the Complainant's trade mark in its entirety, albeit in inverted order, along with the letters 'di', which may refer to the Italian preposition meaning 'of'. Such combination does not materially affect the recognisability of the Complainant's trade mark. The generic Top-Level Domain ('the TLD') (in this case, <.shop>) is disregarded for the purposes of this assessment, although, in this instance, it heightens confusion as the Complainant operates in the clothing sector and through online shopping. The Panel concludes that the Complainant has satisfied the first requirement of the UDRP Policy.

C. Rights or Legitimate Interests

The Respondent's default permits the Panel to draw adverse inferences. The evidence indicates that the Respondent is not commonly known by the disputed domain name and has not obtained the requisite authorisation from the Complainant for its registration or use. Furthermore, it appears that the Respondent has not legitimate use of the disputed domain name for a bona fide offering of goods or services, nor has any legitimate non-commercial or fair use been demonstrated.

The Panel finds that the Complainant has met the second requirement of the UDRP Policy.

D. Registered and Used in Bad Faith

The evidence supports that the Respondent registered and has used the disputed domain name to deliberately target the Complainant. The Complainant's reputation, including in China, and the evident similarity with the disputed domain name, alongside the Respondent's failure to rebut the Complainant's claims, strongly infer bad faith.

In addition, there is evidence that the Respondent has used the disputed domain name to mislead Internet users by offering products that appear to infringe upon the Complainant's rights, indicating faith under paragraph 4(b)(iv) of the UDRP Policy.

The Panel therefore finds that the Complainant has satisfied the third and final UDRP Policy requirement.

E. Decision

For the foregoing reasons, in accordance with paragraph 4(a) of the UDRP Policy and Rule 15 of the UDRP Rules, the Panel orders that the disputed domain name <lapetiterobedichiaraboni.shop> be transferred to the Complainant.