{ "case_number": "CAC-UDRP-102892", "time_of_filling": "2020-02-05 09:54:29", "domain_names": [ "hogansito-ufficialeonline.com", "hogansitoufficialeoutletonline.com" ], "case_administrator": "Šárka Glasslová (Case admin)", "complainant": [ "TOD'S S.p.A." ], "complainant_representative": "Convey srl", "respondent": [ "Athena Reynolds" ], "respondent_representative": null, "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\n\r\n\r\nThe Complainant is an Italian producer of luxury goods under the trademarks Tod's, Hogan, Fay and Roger Vivier. It has about 4,600 employees worldwide and operates stores in Europe, the United States, China, Japan, Malaysia, Singapore, Hong Kong, Indonesia, Turkey and Australia. The annual revenues of the Complainant for 2018 amounted to EUR 950 million, of which 22% came from the sales of products under the HOGAN trademark. \r\n\r\nThe Complainant maintains official websites at the domain names , , , and .\r\n\r\nThe Respondents registered the disputed domain names on 26 January 2019. They resolve to similar websites where counterfeit products bearing the HOGAN trademark are offered for sale.\r\n\r\nThe Complainant sent a cease and desist letter to the Respondents on 17 December 2019. The Respondents did not respond, but the disputed domain names were redirected to parking webpages displaying various sponsored links.\r\n", "other_legal_proceedings": "The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name. ", "no_response_filed": "\r\n\r\nNO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.\r\n\r\n\r\n\r\nPARTIES' CONTENTIONS:\r\n\r\n\r\n\r\nCOMPLAINANT:\r\n\r\nThe Complainant submits that the disputed domain names are confusingly similar to the HOGAN trademark in which the Complainant has rights, because they incorporate the HOGAN trademark. The inclusion of the non-distinctive elements “sito” (Italian for “site”), “ufficiale” (Italian for “official”), “online” and “outlet” does not affect the confusing similarity. Rather, the combination of the HOGAN trademark with these terms suggests to consumers that the disputed domain names and the corresponding websites have been authorized by the Complainant.\r\n\r\nAccording to the Complainant, the Respondents have no rights or legitimate interests in respect of the disputed domain names, because they are not authorized resellers of the Complainant and have not been authorized by the Complainant to use the HOGAN trademark, they are not related to the Complainant and the disputed domain names do not correspond to their names. The Complainant adds that the Respondents have not used the disputed domain names in connection with a bona fide offering of goods or services before any notice of the dispute. Rather, the disputed domain names resolved to websites featuring the Complainant’s HOGAN trademark and offering counterfeit low-priced HOGAN branded products for sale without any disclaimer as to the Respondents’ lack of relationship with the Complainant.\r\n\r\nThe Complainant contends that the disputed domain names were registered and are being used in bad faith. According to the Complainant, the HOGAN trademark is widely known around the world in connection with shoes and leather goods items, and the Respondents chose and registered the disputed domain names with knowledge of this trademark and in order to capitalize on its reputation by diverting Internet users seeking original products under the HOGAN trademark to their commercial websites. Before receiving the cease and desist letter, the Respondents offered for sale discounted price counterfeit replicas of the Complainant’s shoes and reproduced the HOGAN trademark in the websites at the disputed domain names. Following the cease and desist letters, the Respondents removed these commercial websites and redirected the disputed domain names to parking webpages containing sponsored links.\r\n\r\n\r\n\r\n\r\nRESPONDENT:\r\n\r\nThe Respondents did not reply to the Complainant's contentions and did not submit any arguments or evidence in their defence. ", "rights": "The Complainant has, to the satisfaction of the Panel, shown 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 Policy). ", "no_rights_or_legitimate_interests": "The Complainant has, to the satisfaction of the Panel, shown the Respondents to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy). ", "bad_faith": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy). ", "procedural_factors": "The registrant of the disputed domain name is Athena Reynolds, United States, while the registrant of the disputed domain name is Timothy Igo, United States. The Complainant has named these two registrants as Respondents in this proceeding and requests that the two disputed domain names and the named Respondents be consolidated in a single UDRP proceeding. According to the Complainant, the disputed domain names are under common control or under the control of a group of individuals acting in concert, because they share the same date of registration, registrar, hosting provider, whois privacy shield and IP address and resolve to websites that offer the same products for sale.\r\n\r\nWhere a complaint is filed against multiple respondents, panels look at whether the disputed domain names or corresponding websites are subject to common control, and whether the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in the content or layout of the websites corresponding to the disputed domain names, and any naming patterns in the disputed domain names.\r\n\r\nThis Panel is satisfied that these factors are present in this proceeding. The websites to which the disputed domain names used to refer indeed look very similar, if not identical, and the two disputed domain names differ very little. It also appears that a consolidation of the proceedings in respect of the two disputed domain names would contribute to procedural efficiency, and neither of the Respondents has objected to the Complainant’s consolidation request. Therefore, the Panel decides to consolidate the proceedings in respect of the two disputed domain names and and their registrants Athena Reynolds and Timothy Igo, which will jointly be referred to in this decision as “the Respondents”.\r\n\r\nThe 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.", "decision": "Accepted", "panelists": [ "Assen Alexiev" ], "date_of_panel_decision": "2020-03-15 00:00:00", "informal_english_translation": "The Complainant is the owner of the following trademark registrations for the sign HOGAN (the “HOGAN trademark”):\r\n\r\n- the International trademark HOGAN with registration No. 1129649, registered on 23 March 2012 for goods in International Classes 3, 9, 18 and 25; and\r\n\r\n- the European Union trademark HOGAN with registration No.005184536, registered on 20 January 2010 for goods and services in International Classes 3, 9, 18, 25 and 35.\r\n", "decision_domains": { "HOGANSITO-UFFICIALEONLINE.COM": "TRANSFERRED", "HOGANSITOUFFICIALEOUTLETONLINE.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }