Decision for dispute CAC-UDRP-107369

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

The Complainant is the owner of a number of trademark registrations for “STEFANO RICCI” (the “STEFANO RICCI trademark”), including the following representative registrations with effect in the Russian Federation, where the Respondent is located:

− the International trademark STEFANO RICCI with registration No. 407525, registered on 27 May 1974 for goods in International Classes 18 and 25;

− the International trademark STEFANO RICCI with registration No. 767523, registered on 17 September 2001 for goods in International Classes 3, 9, 14, 18, 21 and 25; and

− the International trademark STEFANO RICCI with registration No. 1192240, registered on 5 August 2013 for goods and services in International Classes 3, 8, 9, 11, 12, 14, 16, 18, 20, 21, 24, 25, 26, 33, 34, 35, 37 and 42.

The Complainant is an Italian company in the fashion and luxury Industry with headquarters in Florence. It was established in 1972 and produces luxury menswear, shoes, fragrances, accessories and other similar goods. The Complainant employs over five hundred people worldwide and operates its official website at the domain name <stefanoricci.com>.

The disputed domain name was registered on February 16, 2025. It is currently inactive. At the time of filing of the Complaint, it resolved to a parking webpage that offered it for sale with the following notice:

 “The domain name is for sale

stefano-ricci.store

Buy in Rucenter  USD 5986,20, price negotiation is available”.

COMPLAINANT

The Complainant states that the disputed domain name is confusingly similar to the STEFANO RICCI trademark, because it incorporates the trademark in full.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name, because it is not a licensee or an agent of the Complainant and has not been authorized to use the Complainant’s STEFANO RICCI trademark. The Complainant adds that the Respondent is not commonly known by the disputed domain name and has not used it in connection with a bona fide offering of goods or services before any notice of the dispute.

The Complainant maintains that the disputed domain name was registered and is being used in bad faith. It notes that it has many boutiques and a worldwide distribution network, including in Moscow in the Russian Federation, where the Respondent is based, that its STEFANO RICCI trademark enjoys worldwide reputation in the sector of luxury fashion and is highly distinctive, as it reflects the name of the Complainant’s founder Stefano Ricci, and that the disputed domain name was registered fifty years after the Complainant’s trademark was first registered. According to the Complainant, it is inconceivable that the Respondent was unaware of the existence of the Complainant’s trademark at the time of the registration of the disputed domain name.

The Complainant contends that the Respondent attempts to receive profit of the strong reputation of the Complainant by offering the disputed domain name for sale for an amount of USD 5986,20 that exceeds the reasonable out-of-pocket costs directly associated with the registration and maintenance of the disputed domain name.

The Complainant also notes that on 19 February 2025 it sent a cease-and-desist letter to the Respondent, but received no response.

RESPONDENT

The Respondent did not submit a formal Response in this proceeding.

In his informal communications to the CAC, the Respondent made the following statements:

“Previously we want to give this domain (Stefano-Ricci.store) as present for Stefano Ricci S.p.A. (Ticket in attachment) We respect the Stefano Ricci brand very much. We love it. And we will definitely transfer the domain to this great brand. Please message my by WhatsApp […] And please can we hereby request to suspend the proceeding until due to settlement negotiations commenced by the Parties.”

“Hi. Previously we want to give this domain (Stefano-Ricci.store) as present for Stefano Ricci S.p.A. (Ticket in attachment) We respect the Stefano Ricci brand very much. We love it. And we will definitely transfer the domain to this great brand. Please message my by WhatsApp […]”

“I am an artist. and I would like to offer Stefano Ricci my nft paintings as elements of clothing design. Please evaluate my work. And accept the offer of a settlement agreement on this dispute we transfer the domain to Stefano Ricci necessarily and absolutely, because we intended to do this earlier.”

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).

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).

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).

1. Procedural issue – Language of the Proceeding

According to the information received from the Registrar, the language of the Registration Agreement for the disputed domain name is Russian.

Paragraph 11(a) of the Rules provides that unless otherwise agreed by the Parties or specified otherwise in the registration agreement between the Respondent and the Registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to act judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.

The Complaint was filed in English, and the Complainant requests that the language of the proceedings be English. In support of its language request, the Complainant submits that:

 the disputed domain name contains Latin characters, including the English word “store”, that the content of the website at the disputed domain name is in English, and that English is the primary language for international relations and business, all of which according to it indicates that the Respondent has a good knowledge of English. The Complainant adds that translating the Complaint into Russian would lead to undue delay and substantial expense incurred by the Complainant;

the Respondent did not express any views with respect to the language of the proceeding and did not object to the Complainant’s language request, but made several submissions in English to the CAC, which show that it has sufficient command of this language to understand the Complaint and to present his case. The Panel is also mindful of the need to ensure the proceeding to be conducted in a timely and cost-effective manner.

Considering the above, the Panel grants the Complainant’s language request and determines that the language of the proceeding shall be English.

2. Procedural issue – Respondent’s consent to the transfer of the disputed domain name

On 11 March 2025, the Respondent stated that he agreed to transfer the disputed domain name to the Complainant, proposed to start settlement negotiations, requested the suspension of the proceeding, and sent the signed settlement form to the CAC. On 12 March 2025, the CAC informed the Parties about the procedure for settlement and invited them to state whether they wished to follow this procedure. On the same day, the Complainant informed the CAC that it did not wish to settle the dispute and requested the continuation of the proceeding, while the Respondent sent to the CAC the settlement form signed by the Respondent. On 13 March 2025, the CAC informed the Parties that the Panel had been appointed and that the original deadline of 31 March 2025 for the filing of the Response was reinstated due to the failure of the settlement negotiations between the Parties. The Respondent made no further submissions to the CAC.

These procedural developments raise the question of how the Panel should proceed: whether he should issue a reasoned decision based on the full consideration of the merits of the Complaint, or he should rather issue a simple decision recording only the Respondent’s consent to the remedy requested by the Complainant and granting this request, without discussion of the substantive merits of the Complaint.

The Complainant has submitted a regular Complaint in compliance with the requirements of the Policy and has paid the respective fees, and is entitled to receive a decision on the merits of its Complaint. It may waive this by concluding a settlement with the Respondent, but is under no obligation to do so or to otherwise accept the Respondent’s settlement proposal in whole or in part.

Here, the Complainant has expressly stated that it does not wish to settle the dispute and has requested the continuation of the proceeding and the issuance of a decision. This means that the Complainant has rejected the Respondent’s settlement offer and that the Parties have not reached an agreement on any issue.

Considering the above, the Panel is satisfied that all procedural requirements under UDRP have been met and that it is proper to issue a reasoned decision based on the full consideration of the merits of the Complaint.

Pursuant to the Policy, paragraph 4(a), a complainant must prove each of the following to justify the transfer of a domain name:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name was registered and is being used in bad faith.

In this case, the Respondent received actual notice of the Complaint and was given a fair opportunity to present its case.

By Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …”

Identical or confusingly similar

The Complainant has provided evidence and has thus established its rights in the STEFANO RICCI trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the general Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel will follow the same approach here and will disregard the “.store” gTLD section of the disputed domain name for the purposes of this comparison.

The disputed domain name reproduces the STEFANO RICCI trademark entirely with the omission of the interval between the two word elements of the trademark, and intervals are not technically allowed in domain names. As discussed in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), in cases where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.

Taking all the above into account, the Panel finds that the disputed domain name is confusingly similar to the STEFANO RICCI trademark in which the Complainant has rights.

Rights and legitimate interests

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, because it has not been authorized to use the Complainant’s STEFANO RICCI trademark and there is no relationship between the Parties. The Complainant adds that the Respondent is not commonly known by the disputed domain name and has not used it in connection with a bona fide offering of goods or services before any notice of the dispute. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not provided any plausible explanation as to why he has registered the disputed domain name and how he intends to use it. In his informal communications to the CAC, the Respondent states that his intention was to transfer the disputed domain name as a gift to the Complainant, and attempts to enter into some kind of relationship with the Complainant by offering to it what he refers to as elements of clothing design allegedly created by the Respondent.

At the same time, the disputed domain name has until recently been offered for sale, and the Respondent did not respond to the Complainant’s cease-and-desist letter sent to him prior to the commencement of the present proceeding. If the Respondent indeed intended to make a gift to the Complainant by transferring to it the disputed domain name for free and wished to cooperate with the Complainant, it would not have acted in this way. It rather appears that the Respondent has sought to receive financial gain by selling the disputed domain name and that his statements in this proceeding are an attempt to evade responsibility.

The circumstances of this case therefore lead the Panel to the conclusion that the Respondent does not have rights or legitimate interests in the disputed domain name.

Bad faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The registration of the distinctive STEFANO RICCI trademark predates by 50 years the registration of the disputed domain name, which is almost identical to this trademark and includes the “.store” gTLD, so Internet users would regard it as an official webstore offering the Complainant’s goods. The Respondent confirms his knowledge of the Complainant and does not provide a credible explanation as to why he decided to register the disputed domain name and how he intends to use it, and has offered the disputed domain name for sale for an amount that exceeds the reasonable out-of-pocket costs related to its registration. The Panel therefore considers that the Respondent has registered the disputed domain name with knowledge of the Complainant’s trademark and with the intention of taking advantage of its goodwill for commercial gain.

This satisfies the Panel that the disputed domain name has been registered and used in bad faith.