{ "case_number": "CAC-UDRP-102054", "time_of_filling": "2020-12-02 09:40:25", "domain_names": [ "todshopjp.com", "todsclearanshop.com" ], "case_administrator": " Iveta Špiclová (Czech Arbitration Court) (Case admin)", "complainant": [ "TOD'S S.P.A." ], "complainant_representative": "Convey srl", "respondent": [ "shuo tina" ], "respondent_representative": null, "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\n1) TOD'S S.P.A. (hereinafter referred to as the Complainant) submits that despite some minor differences in the details provided in the official WHOIS records for the two domains included in the complaint, the domains should be considered to be under common control. This also in consideration of the fact that there are substantial commonalities in the web sites to whom the disputed domain names resolved.\r\n\r\n2) The Complainant declares to be the operating holding of a Group, amongst the leading players in the world of luxury goods, with the trademarks Tod's, Hogan, Fay and Roger Vivier with about 4.600 employees worldwide. Furthermore, the Complainant informs to have numerous stores around the world, including showrooms and large flagship stores in Europe, the U.S., China, Japan, Malaysia, Singapore, Hong Kong, Indonesia, Turkey and Australia.\r\n\r\n3) According to the Complainant, the high standard of quality met by the products is guaranteed by the strong craftsmanship involved in every and each phase of the production: every product is handmade, crafted with techniques of the highest skilled handcraftsmanship. The Complainant also informs that the 2019 Annual revenues of Tod’s Group were almost 920 million of Euros of which 50% came from the trademark \"TOD’S\". \r\n\r\n4) The Complainant has duly proved to be the owner of the registered well-known trademark \"TOD'S\" as a word and figure mark in several classes in numerous countries all over the word including in China, where the Respondent is located and that these trademark registrations long predate the registration of the disputed domain names ( on February 24, 2020 and on March 9, 2020>).\r\n\r\n5) The Complainant has registered a number of domain names containing the wording TOD'S (considering that due to technical limitations the apostrophe cannot be included in domain names), for example , , , , . Furthermore, the Complainant has, and extensively uses, official accounts on the major social networks such as Instagram, Facebook, YouTube, WeChat and Pinterest.\r\n\r\n6) Before the commencement of this proceedings, on November 18, 2020, the Complainant made an attempt to contact the owners of the disputed domain names through a cease and desist letter sent to the domain name owners known e-mail addresses indicated at that time in the WhoIs records and in the websites; the addresses have simply disregarded said communication.\r\n\r\n7) According to the Complainant, the domain names in dispute are similar to its \"TOD'S\" trademark. Actually, in both cases the domain names incorporate the Complainant’s \"TOD’S\" trademark in its entirety with the mere adding of non-distinctive elements such as the geographical indicator “jp” (for Japan), the words “shop” and “clearance”, and the generic Top Level Domains \".com\".\r\n\r\n8) The Complainant informs that the Respondent is not a licensee or an authorized agent of the Complainant and that it is not authorized to use the Complainant’s trademark. Furthermore, the Complainant has not found that the Respondent is commonly known by the disputed domain names or that it has any protectable interest over the domain names in dispute.\r\n\r\n9) The Complainant argues that by virtue of its extensive worldwide use, the Complainant’s trademark \"TOD’S\" has become a well-known trademark in the sector of luxury goods. Therefore, it is clear, in the Complainant's view, that the Respondent was well aware of the trademark \"TOD’S\" and registered the disputed domain names with the intention to refer to the Complainant and its trademark \"TOD'S\". \r\n\r\n10) According to the Complainant, the use of the disputed domain names in connection with commercial websites where the Complainant’s trademark is misappropriated and counterfeit \"TOD’S\" branded goods are offered for sale clearly indicates that the Respondent purpose in registering the disputed domain names was to capitalize on the reputation of the Complainant's trademark by diverting Internet users seeking \"TOD’S\" products to their websites for financial gain, by intentionally creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of its web sites and\/or the goods offered or promoted through said websites. ", "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 names.", "no_response_filed": "NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.\r\n\r\n", "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 Respondent 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 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": [ "Avv. Guido Maffei" ], "date_of_panel_decision": "2021-01-07 00:00:00", "informal_english_translation": "TOD'S S.P.A. is the owner, among others, of the following trademark registrations related to \"TOD'S\" which enjoy protection in numerous countries and, inter alia, in China:\r\n\r\n- Word mark \"TOD'S\", European Office for Intellectual Property (EUIPO), Registration No. 10158889, registered on December 29, 2012;\r\n\r\n- Word mark \"TOD'S\", European Office for Intellectual Property (EUIPO), Registration No. 407031, registered on September 13, 2004 and duly renewed;\r\n\r\n- Word-\/design mark \"TOD'S\", World Intellectual Property Organization (WIPO), Registration No. 1006548, registered on June 1, 2009 and duly renewed;\r\n\r\n- Word-\/design mark \"TOD'S\", World Intellectual Property Organization (WIPO), Registration No. 858452, registered on May 20, 2005 and duly renewed; and\r\n\r\n- Word-\/design mark \"TOD'S\", Australian Trademark Office, Registration No. 1117869, registered on April 2, 2012.\r\n", "decision_domains": { "TODSHOPJP.COM": "TRANSFERRED", "TODSCLEARANSHOP.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }