Decision for dispute CAC-UDRP-107668

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 owner of the following registered trademarks:

• European Union trademark (word) "FENDI" no. 003500535, registered since 27 May 2005 in Nice classes 3, 9, 14, 18, 25;

• US trademark (word) "FENDI" no. 4409049, registered since 1 October 2013 in Nice classes 3, 9, 14, 18, 20, 24, 25, 35, 43.

Furthermore, the Complainant owns the domain name <fendi.com> registered since 19 March 2019 and used in relation to the Complainant's main website to promote its goods and services.

The above-mentioned rights of the Complainant are hereinafter referred to as the FENDI Trademark.

The Complainant is an Italian luxury fashion house producing fur, ready-to-wear clothing, leather goods, shoes, fragrances, eyewear, timepieces, and accessories. Founded in Rome in 1925 by fashion designers Edoardo Fendi and Adele Casagrande, the Complainant is particularly well known for its fur, fur accessories, and leather goods. Since 2001, the Complainant has been part of the "Fashion & Leather Goods" division of the French group LVMH. Its headquarters are located in Rome, in the Palazzo della Civiltà Italiana, and it operates over 215 stores worldwide.

The "Baguette" bag is a well-known handbag model designed by Silvia Venturini Fendi and launched by the Complainant in 1997. Characterized by its compact, rectangular shape and short shoulder strap, it quickly became an iconic accessory in the fashion world. Its popularity surged after being prominently featured in the television series "Sex and the City", where it was famously referred to as "not a bag, it’s a Baguette", reinforcing its status as a fashion symbol. Over the years, the Complainant has continuously reissued and reinvented the Baguette bag in various styles and materials, solidifying its reputation as one of the first true "It bags"—a term used in the fashion industry to describe a highly coveted designer handbag that achieves widespread popularity and cultural significance.

The Respondent is Antron Vedrov, an individual residing in Ukraine.

The disputed domain name was registered on 7 May 2025. At the time of this decision, the disputed domain name does not resolve to any active website. In the past, it was associated with a webpage that allegedly sold bags advertised under the FENDI Trademark.

The facts asserted by the Complainant are not contested by the Respondent.

Complainant:

The Complainant contends that the disputed domain name is confusingly similar to its trademark, as the FENDI Trademark is reproduced in its entirety. The addition of generic and descriptive terms does not prevent a likelihood of confusion between the disputed domain name and the Complainant’s trademark.

The Complainant further asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with, nor authorized by, the Complainant in any way. The Complainant has no business relationship with the Respondent and has never granted any license or authorization for the use of its trademark or for the registration of the disputed domain name.

The Complainant also argues that the disputed domain name is not being actively used and that the Respondent has made no demonstrable preparations to use it in good faith. On the contrary, the disputed domain name was previously used to resolve to a website allegedly selling bags advertised under the FENDI Trademark. Therefore, the Complainant submits that the Respondent has not used the domain name in connection with a bona fide offering of goods or services.

Finally, the Complainant contends that the registration of a domain name confusingly similar to its well-known FENDI Trademark, combined with the Respondent's constructive knowledge of the Complainant's rights, the previous use of the domain name, and its current passive holding, clearly indicate that the disputed domain name was registered and is being used in bad faith.

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

Respondent:

The Respondent has filed a Response in which he states that he does not wish to contest the Complaint and expresses his consent to transfer the disputed domain name to the Complainant.

The Complainant has not agreed to accept such consent and has expressed a preference for the decision.

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).

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.

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements to succeed in the administrative proceeding:

(i) the disputed domain name is 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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.

I. THE COMPLAINANT'S RIGHTS AND THE IDENTITY OR CONFUSING SIMILARITY OF THE DISPUTED DOMAIN NAME TO THE COMPLAINANT'S MARK

The Complainant has established that it has rights in the FENDI Trademark.

The disputed domain name consists of the terms "fendi", "baguette", and "borsa" (which means "handbag" in Italian), followed by the top-level domain (TLD) ".site".

In line with established UDRP practice, the test for confusing similarity involves a straightforward comparison of the trademark with the domain name to assess whether the mark is recognizable within the domain name. When a domain name incorporates a complainant’s trademark in its entirety or contains it as a dominant element, it is generally considered confusingly similar for the purposes of the Policy. The TLD is typically disregarded for purposes of this comparison.

The addition of the generic or descriptive terms "baguette" and "borsa" to the Complainant's trademark does not prevent a finding of confusing similarity, since the FENDI Trademark remains clearly recognizable in the disputed domain name.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and that the Complainant has satisfied the first element of paragraph 4(a) of the Policy.

II. THE RESPONDENT'S LACK OF RIGHTS OR LEGITIMATE INTERESTS IN RESPECT OF THE DISPUTED DOMAIN NAME

Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Once a prima facie case is made, the burden of production shifts to the Respondent to demonstrate rights or legitimate interests in the domain name.

As the Complainant has pointed out, there is no evidence that the Respondent—whether as an individual, business, or other organization—has been commonly known by the disputed domain name, nor that the Respondent has acquired any trademark or trade name rights corresponding to it.

The Complainant further asserts that it has no relationship whatsoever with the Respondent, and that the Respondent has never been authorized—whether expressly or implicitly—to use the Complainant’s FENDI Trademark or to register or use the disputed domain name.

The disputed domain name was registered on 7 May 2025, well after the Complainant's FENDI Trademark had been registered and acquired international recognition. As noted above, the disputed domain name is confusingly similar to that mark.

The Complainant has also submitted evidence showing that, in the past, the disputed domain name resolved to a webpage allegedly offering for sale bags advertised under the FENDI Trademark.

On this basis, the Panel finds that the Complainant has established a prima facie case.

The Respondent has submitted a Response in which he states that he does not wish to contest the Complaint and expresses his willingness to transfer the disputed domain name to the Complainant voluntarily.

In light of the above, the Panel finds no evidence that the Respondent, prior to notice of the dispute, used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, the evidence on record suggests an attempt to mislead Internet users, divert traffic, or otherwise take unfair advantage of the Complainant’s reputation—none of which constitutes legitimate non-commercial or fair use under the Policy.

The Respondent's non-contestation and willingness to transfer the disputed domain name further support this conclusion.

Accordingly, the Panel finds that the Complainant has satisfied the second requirement under paragraph 4(a) of the Policy.

III. REGISTRATION AND USE OF THE DISPUTED DOMAIN NAME IN BAD FAITH

The Complainant has adequately demonstrated its rights in the well-known FENDI Trademark, which predates the registration of the disputed domain name by many years. Given the distinctiveness and international recognition of the FENDI Trademark, it is implausible that the Respondent registered the disputed domain name without actual knowledge of the Complainant and its rights.

The disputed domain name incorporates the Complainant's FENDI Trademark in its entirety, together with the terms "baguette" and "borsa" (meaning "handbag" in Italian)—terms that directly relate to the Complainant’s iconic "Baguette" handbag line and its general field of activity. This composition suggests an intentional targeting of the Complainant and its reputation.

The Complainant has submitted evidence that the disputed domain name was previously associated with a website allegedly selling bags advertised under the FENDI Trademark. Such use is indicative of an attempt to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant's FENDI Trademark as to the source, sponsorship, affiliation, or endorsement of the website. This falls squarely within the scope of paragraph 4(b)(iv) of the Policy.

Although the disputed domain name currently does not resolve to an active website, passive holding in these circumstances does not preclude a finding of bad faith (see WIPO Case No. D2000-0003 Telstra Corporation Limited v. Nuclear Marshmallows; WIPO Case No. D2000-0400 CBS Broadcasting, Inc. v. Dennis Toeppen). In light of the Complainant's well-known FENDI Trademark, the lack of any plausible legitimate use, and the Respondent's consent to transfer the disputed domain name without contesting the substance of the Complaint, the Panel finds sufficient grounds to infer bad faith registration and use.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.

The Complainant has satisfied the third requirement under paragraph 4(a) of the Policy.