Decision for dispute CAC-UDRP-108968

The Panel is unaware of any other pending or decided legal proceedings in respect of the domain names <hogan-australia.com>, <hogan-uae.com>, <hogan-uk.com>, <hogan-usa.com>, <hoganamsterdam.com>, <hogansaudiarabia.com> and <hoganturkiyeonline.com> (the "disputed domain names"). 

The Complainant, Tod's S.p.A., owns numerous registrations for the trade mark HOGAN, including:

•  International trade mark registration no. 774193, designating, among others, China, registered on 18 January 2001; and 

•  European Union trade mark registration no. 005184536, registered on 20 January 2010. 

The Complainant uses the HOGAN trade mark in connection with its luxury goods business and maintains an online presence through, among others, the website <hogan.com>.

A. Complainant's Factual Allegations

The Complainant is an Italian company headquartered in Sant'Elpidio al Mare, Italy, and forms part of the Tod's Group, which operates internationally in the luxury goods sector. The Group's brands include Tod's, HOGAN, Fay and Roger Vivier. 

The Complainant states that HOGAN products are sold internationally and that the HOGAN trade mark has been extensively used online and through retail channels.

B. Respondent's Position

The Respondent did not file a Response.

C. Disputed Domain Names

The disputed domain names were registered on 23 January 2026 through Vantage of Convergence (Chengdu) Technology Co., Ltd. (the "Registrar").

The Registrar verification identifies Xia HaiFeng (夏海峰), of Jiangsu Province, China, as the registrant of all seven disputed domain names. The registration records disclose the same email address, telephone number and physical address for each of the disputed domain names. The language of the Registration Agreement is Chinese. The Registrar has also confirmed that the disputed domain names have been locked for the purposes of this proceeding.

The evidence submitted with the Complaint shows that the disputed domain names previously resolved to English-language commercial websites displaying the HOGAN trade mark and offering products presented as HOGAN products. The Complainant states that the websites had substantially the same look and feel. The Complainant further states that, following its enforcement actions, the websites were suspended and the disputed domain names ceased to display active content.

A. Complainant

A.1 The disputed domain names are identical or confusingly similar to a trade mark in which the Complainant has rights 

The Complainant submits that it owns longstanding registered rights in the HOGAN trade mark.

The Complainant contends that each disputed domain name incorporates the HOGAN trade mark in its entirety together with geographical or other terms. Those additional elements do not prevent the HOGAN trade mark from remaining clearly recognisable within the disputed domain names and, in the case of the geographical terms, may suggest an association with the Complainant's activities in the corresponding markets. 

A.2 The Respondent has no rights or legitimate interests in respect of the disputed domain names

The Complainant submits that the Respondent is neither a licensee nor an authorised distributor and has not been authorised or otherwise permitted to use the HOGAN trade mark or to register domain names incorporating it. 

The Complainant notes that there is no evidence that the Respondent is commonly known by any of the disputed domain names. The Complainant further points to the previous use of the disputed domain names for commercial websites displaying the HOGAN trade mark and offering products presented as HOGAN products. The websites reproduced elements of the Complainant's branding and gave the false impression that they were operated, sponsored, endorsed or otherwise authorised by the Complainant. The Complainant therefore submits that such use cannot constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.

A.3 The disputed domain names were registered and are being used in bad faith 

The Complainant asserts that the Respondent registered the disputed domain names with knowledge of, and an intention to target, the HOGAN trade mark.

In support of its case, the Complainant points to its prior trade mark rights, the incorporation of HOGAN in each disputed domain name, the geographical terms appearing in the disputed domain names and the content of the corresponding websites. In particular, the websites prominently displayed the HOGAN trade mark, offered products presented as HOGAN products and closely imitated the look and feel of the Complainant's official website. 

The Complainant further submits that the subsequent suspension and current inactivity of the disputed domain names do not prevent a finding of bad faith, having regard to their prior use. 

A.4 Consolidation

The Complainant requests that the disputed domain names be dealt with in a single proceeding.

The Complainant points to their registration through the same Registrar on the same date, the common appearance of the corresponding websites and the registration data disclosed by the Registrar. The Complainant submits that the disputed domain names are subject to common control and that dealing with them in a single proceeding is fair, equitable and procedurally efficient.

A.5 Language of the Proceeding 

The Complainant acknowledges that the language of the Registration Agreement is Chinese but requests that English be the language of the proceeding pursuant to Rule 11 of the UDRP Rules.

In support of that request, the Complainant points principally to the use of Latin characters and geographical terms in the disputed domain names and to the fact that the corresponding websites displayed their content entirely in English. The Complainant further submits that requiring translation of the Complaint into Chinese would cause additional expense and delay and that proceeding in English would not prejudice the Respondent. 

A.6 Relief sought

The Complainant requests that all seven disputed domain names be transferred to it.

B. Respondent

No Response was filed. The Panel therefore proceeds on the basis of the evidence before it and may draw such inferences from the Respondent's default as it considers appropriate pursuant to Rule 14(b) of the UDRP Rules. The Respondent's default does not, however, relieve the Complainant of its burden of establishing each of the elements required by paragraph 4(a) of the UDRP Policy.

The Complainant has, to the satisfaction of the Panel, shown that the disputed domain names are 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 UDRP Policy).

The Complainant has, to the satisfaction of the Panel, shown that the Respondent has no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the UDRP Policy).

The Complainant has, to the satisfaction of the Panel, shown that the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the UDRP Policy).

1. Multiple Disputed Domain Names

The Complaint concerns multiple disputed domain names. The Registrar verification confirmed that all of the disputed domain names are registered by the same domain-name holder, who is the Respondent in this proceeding.  Paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. Accordingly, no separate determination on consolidation is required. The Panel will proceed to determine the Complaint in respect of all of the disputed domain names.

2. Language of the Proceeding 

Rule 11(a) of the UDRP Rules provides that, unless otherwise agreed by the parties or specified in the Registration Agreement, 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 proceeding.

The Registrar has confirmed that the language of the Registration Agreement is Chinese. The Complaint was filed in English, and the Complainant requests that English be adopted as the language of the proceeding.

The evidence shows that the websites previously associated with the disputed domain names were presented entirely in English. Several of the disputed domain names also incorporate English-language geographical identifiers including "Australia", "UK" and "USA".

The Respondent did not file a Response and has not objected to the Complainant's request that English be the language of the proceeding. Having regard to all the circumstances, including the English-language content of the websites, the Panel is satisfied that conducting the proceeding in English would not unfairly prejudice the Respondent. Requiring translation of the Complaint into Chinese would, in contrast, result in unnecessary delay and expense.

The Panel therefore determines pursuant to Rule 11(a) of the UDRP Rules that English shall be the language of the proceeding.

3. Miscellaneous

The Panel is satisfied that all procedural requirements under the UDRP Policy, the UDRP Rules, and the CAC Supplemental Rules have been met. 

A. Applicable Legal Framework

Pursuant to Rule 15 of the UDRP Rules, the Panel decides on the basis of the statements and evidence submitted, in accordance with the UDRP Policy, the UDRP Rules and any applicable principles of law.

Under paragraph 4(a) of the UDRP Policy, the Complainant must establish, on the balance of probabilities, that:

(i) the disputed domain names are 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 names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

B. Identical or Confusingly Similar

The Panel finds that the Complainant has established registered rights in the HOGAN trade mark.

The HOGAN trade mark is clearly recognisable within each disputed domain name. The addition of geographical or other terms does not prevent a finding of confusing similarity under the first element of the UDRP Policy. The generic Top-Level Domain <.com> is a standard registration requirement and does not affect the assessment of confusing similarity.

The Panel therefore finds that the disputed domain names are confusingly similar to a trade mark in which the Complainant has rights and that the first element of paragraph 4(a) of the UDRP Policy has been established.

C. Rights or Legitimate Interests

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.

There is no evidence before the Panel that the Respondent has been authorised to use the Complainant’s HOGAN trade mark or is commonly known by any of the disputed domain names. The evidence shows that the disputed domain names were used for commercial websites prominently displaying the HOGAN trade mark and offering products presented as HOGAN products. The websites also reproduced elements of the Complainant’s branding and substantially shared the same presentation. In the circumstances, such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.

The Respondent has not participated in the proceeding and has provided no evidence capable of rebutting the Complainant's prima facie case.

The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain names and that the second element of paragraph 4(a) of the UDRP Policy has been established.

D. Registered and Used in Bad Faith

The Panel is satisfied that the Respondent registered the disputed domain names with knowledge of, and an intention to target, the Complainant and its HOGAN trade mark.

The Complainant's registered rights substantially predate the registration of the disputed domain names. Each disputed domain name incorporates HOGAN in its entirety and combines it with a geographical or other term. The Respondent registered all seven disputed domain names on the same date.

The use made of the disputed domain names confirms that conclusion. The corresponding websites prominently displayed the HOGAN trade mark, offered products presented as HOGAN products and substantially reproduced the same commercial presentation. On the evidence before it, the Panel considers that the websites were presented in a manner calculated to give Internet users the impression of an association with the Complainant.

The Panel is therefore satisfied that the Respondent intentionally attempted to attract Internet users for commercial gain by creating a likelihood of confusion with the HOGAN trade mark as to the source, sponsorship, affiliation or endorsement of the corresponding websites. Such conduct falls within paragraph 4(b)(iv) of the UDRP Policy.

The subsequent suspension and current inactivity of the disputed domain names do not alter that conclusion. Their present status does not negate the evidence of the use previously made of them.

The Panel therefore finds that the disputed domain names were registered and are being used in bad faith and that the third element of paragraph 4(a) of the UDRP Policy has been established.

E. Decision

For the foregoing reasons, in accordance with paragraph 4(i) of the UDRP Policy and Rule 15 of the UDRP Rules, the Panel orders that the disputed domain names <hogan-australia.com>, <hogan-uae.com>, <hogan-uk.com>, <hogan-usa.com>, <hoganamsterdam.com>, <hogansaudiarabia.com> and <hoganturkiyeonline.com> be transferred to the Complainant, Tod's S.p.A.