Decision for dispute CAC-UDRP-107367

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 various trademark registrations, including the following:

European Union trademark registration no. 000464800 for CARRERA, registered on December 23, 2003;

European Union trademark registration No. 009569906 for CARRERA, registered on November 2, 2011;

International trademark registration No. 385526 for CARRERA, registered on February 24, 1972;

International trademark registration No. 674738 for CARRERA, registered on May 21, 1997;

 United States trademark registration No. 4694130 for CARRERA (stylized), registered on March 3, 2015.

 The Complainant owns and operates its various official domain names, including:-

• <carreraworld.it>, registered on January 26, 2017;
• <carreraworld.fr>; and
• <carreraworld.net> registered on May 28, 2007.

The disputed domain name was registered on May 13, 2025, and at the time of filing the Complaint, it resolved to an inactive website.

 The Respondent is Coul ASasasd of 5569Provinciale, Spain, China 55965.

The Complainant is an Italian company that designs, produces, and distributes prescription frames and eyewear under its own brands, including its CARRERA, and other licensed brands. Established in 1878 in Calalzo di Cadore, it moved to Safilo in 1934 and is one of the oldest players in the Italian eyewear industry today. Through the years, the Complainant has expanded its exports to countries in Europe, North Africa, the Middle East, and South America, and is currently the third largest company active in the eyewear sector worldwide.

The Complainant’s CARRERA trademark was born in 1956 in Austria by Wilhelm Anger. Since then, the CARERRA brand has expanded its goods to include ski goggles and sunglasses during the 1970s. The CARRERA trademark was acquired by the Complainant in 1996. CARRERA eyewear has been worn by many celebrities, such as Al Pacino, Robert De Niro, and Chris Hemsworth.

The Complainant’s CARRERA trademark has been registered for many years, is distinctive, and is well known around the world in the eyewear sector.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it. No administratively compliant Response has been filed.

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).

Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese.  Pursuant to the Uniform Domain Name Dispute Resolution Policy (the “Rules“), paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.

The Complaint was filed in English.  The Complainant requested that the language of the proceedings be English as the disputed domain name is in Latin characters, the disputed domain name fully incorporates the Complainant’s English language trademark and the English words “world” and “vip”, which suggests that the Respondent is able to understand English for the purposes of understanding the Complaint. Further, the Respondent’s website, while it was active, was in English and Italian. The Complainant would also incur substantial additional expense and delay if the Complaint has to be submitted in English. It is also submitted that the Respondent’s details are prima facie false, and therefore it is uncertain what is the Respondent’s actual language.

The Respondent did not make any submissions with respect to the language of the proceeding. 

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion 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 (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).

Having considered the circumstances of this case including the neutrality of English as a common language between parties, the fact that the disputed domain name consists of Latin characters and fully incorporates the Complainant’s English trademark and the English words “world” and “vip”, and the fact that the Complainant would incur significant additional expense and delay if the Complaint was to be translated and submitted in English, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.  There does not appear to be any reason that warrants a delay and additional expense in ordering the Complainant to translate the Complaint.

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

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a complainant to show that a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

The Complainant has provided evidence that it owns registered trademark rights in the CARRERA mark.

In this case, the disputed domain name consists of the Complainant’s CARRERA trademark in its entirety with the addition of the generic suffix “worldvip”. The mere addition of a generic term to a registered trademark would not prevent a finding of confusing similarity. Thus, the disputed domain name is confusingly similar to the Complainant’s trademark.

As for the generic Top-Level Domain (“gTLD”) “.com”, it is well established that the gTLD is not relevant to the issue of identity or confusing similarity between the Complainant’s trademarks and the domain name in dispute (see WIPO Overview 3.0, section 1.11.1).

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the domain name (see WIPO Overview 3.0, section 2.1).

In the present case, the Complainant has demonstrated a prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.

The Complainant has provided evidence that it has been the registered owner of the CARRERA mark long before the date that the disputed domain name was registered and that it has not authorised the Respondent to use the Complainant’s trademarks. There is no evidence that the Respondent is commonly known by the disputed domain name. The Complainant also provided evidence showing that the Respondent was using the domain name for what appears to be the sale of counterfeit goods under the Complainant's CARRERA mark. Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. (see WIPO Overview 3.0, section 2.13.1).

The Respondent did not submit a Response and did not provide any explanation for its choice of the disputed domain name nor evidence to show rights or legitimate interests in the disputed domain name which would be sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant must also show that the respondent registered and is using the disputed domain name in bad faith (see Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant’s trademark was registered years before the registration of the disputed domain name. The disputed domain name incorporates the entirety of the Complainant’s CARRERA mark with no alterations. 

Further, the disputed domain name differs from the Complainant’s official domain names by the mere addition of the suffix “worldvip”. This is likely an attempt to confuse internet users as to the ownership and/or affiliation of the disputed domain name, by implying an affiliation of the disputed domain name with the Complainant.

 The Complainant provided evidence showing that prior to filing the Complaint, the disputed domain name resolved to a website that copied the look and feel of the Complainant's website, using the Complainant's CARRERA mark, including its stylized mark and offering what appears to be counterfeit goods at a substantially reduced prices. Given that the use of a domain name for per se illegitimate activity, such as the sale of counterfeit goods or phishing, can never confer rights or legitimate interests on a respondent, such behaviour is manifestly considered evidence of bad faith. (see WIPO Overview 3.0, section 3.1.4).

 Given the particular circumstances of this case, the distinctive nature of the Complainant's trademark, the degree of the Complainant's reputation, and the implausibility of any good faith use to which the domain name may be put, the Panel is persuaded by the evidence that the Respondent registered and was using the disputed domain name in bad faith with the aim of specifically targeting the Complainant.

  The Panel notes that the Respondent failed to respond to a demand email sent by the Complainant, to submit a response, and provided no explanation nor evidence to rebut the Complainant’s case. The Respondent also registered the disputed domain name with obviously fictional contact details. These are additional indications of bad faith.

 Accordingly, having regard to the circumstances of this case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.