{ "case_number": "CAC-UDRP-103815", "time_of_filling": "2021-11-04 09:16:53", "domain_names": [ "hoganmalaysia.com ", "hogansingapore.com ", "hoganschoenen.com ", "hoganmexico.com ", "hoganpolska.com ", "hoganportugal.com ", "hogansko.com ", "hoganshoesau.com ", "hoganuksale.com ", "hoganindiasale.com ", "hogancipo.com ", "hoganenucuz.com", "hoganinsaldo.com ", "hoganshopgr.com", "hogansoldes.com", "hoganbaratas.com", "hogan-deutschland.com", "hogantilbud.com", "hoganoutletsuomi.com", "hogankaufen.com" ], "case_administrator": "Denisa Bilík (CAC) (Case admin)", "complainant": [ "TOD'S S.p.A." ], "complainant_representative": "Convey srl", "respondent": [ "Web Commerce Communications Limited" ], "respondent_representative": null, "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\nThe Complainant is a long-established company, with its headquarters in Italy, which manufactures and retails footwear and other leather goods products. It has about 4,600 employees worldwide and operates around 403 mono-brand stores in addition to showrooms and other stores. Its revenues in 2020 were approximately EUR 650 million. \r\n\r\nThe Complainant sells its products under a number of brand names, including HOGAN and ROGER VIVIER, and it owns many trade marks to protect these trading styles, including the marks in respect of which full details are given above. The Complainant also owns many domain names which comprise or include its trade marks including , and , which resolve to websites promoting its products. \r\n\r\nThe disputed domain names were registered on various dates between June 23, 2021 and September 17, 2021. Save for the domain name , which does not presently appear to resolve to an active website, all the disputed domain names resolve to websites which purport to be owned and\/or operated by the Complainant and to offer its products for sale. \r\n\r\nThe disputed domain names are confusingly similar to the Complainant’s HOGAN or ROGER VIVIER trade marks. Each disputed domain name incorporates the whole of either the Complainant’s ROGER VIVIER or HOGAN trade marks and adds to it non-distinctive elements, such as “outlet” or the foreign language equivalent of words associated with the Complainant such as “shoes”, “shop”, “sales” and so on, and\/or a geographical indicator such as “Singapore” or “Mexico”. The addition of generic or geographical terms of this type does not prevent the disputed domain names from being found confusingly similar to the Complainant’s mark. \r\n\r\nThe Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not in any way authorised to use the Complainant’s marks nor has it been authorized to register or use the disputed domain names. The Respondent is not, to the Complainant’s knowledge, known by the names HOGAN or ROGER VIVIER nor by any of the disputed domain names. There is no evidence of the Respondent’s use of, or demonstrable preparations to use, any of the disputed domain names in connection with a bona fide offering of goods and services. The Respondent is using each of the disputed domain names to offer for sale counterfeit copies of the Complainant’s products and such use cannot give rise to a legitimate interest in them. \r\n\r\nThe Respondent has registered and is using the disputed domain names in bad faith. The repute of the Complainant is such that, when registering the disputed domain names, the Respondent must have been aware of its marks. Indeed, the fact that the Respondent is offering for sale counterfeit copies of the Complainant’s shoes, using its HOGAN and ROGER VIVIER trade marks, provides confirmation of this. Registration of a domain name with knowledge of a complainant’s mark is evidence of bad faith. The low prices at which the Respondent’s goods are offered for sale points to them being counterfeit. The Respondent is seeking to divert Internet users to its websites by creating a likelihood of confusion with the Complainant’s products as to the source, sponsorship, affiliation or endorsement of its websites and\/or the goods offered through them. ", "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": "NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.", "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 name have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).", "procedural_factors": "Procedural Factors – Consolidation\r\n\r\nThe Complainant seeks to consolidate its claims against the registrant of the disputed domain name and the registrant of the other disputed domain names, notwithstanding that the registrant details are different, on the grounds that this domain name and the other disputed domain names are subject to common control and that it is equitable and procedurally efficient to consolidate the proceedings. The Complainant relies on the following factors that all the disputed domain names have in common, namely that they each use the .com Top Level Domain extension, the same hosting provider, the same Autonomous System Number and the same registrar (more accurately, they each use registrars within the same corporate group). They all also incorporate either the Complainant's HOGAN or its ROGER VIVIER mark in its entirety and couple it with a geographical or descriptive term.\r\n\r\nThere are, in fact, some notable difference between and the remaining disputed domain names. In particular, the stylisation of the website, to which this disputed domain name resolves, is more crude than the websites to which the other disputed domain names resolve, the brand which is being replicated is different and the identity and country location of the underlying registrant is different, albeit the Complainant says that the registrant details on the WhoIs record for are incorrect.\r\n\r\nNotwithstanding these differences, on balance, the Panel considers that is under the same common control as the remaining disputed domain names. In addition to the points raised by the Complainant, the date of registration of this disputed domain name, June 23, 2021, is close in time to the registration of many of the other disputed domain names, nine, of which were also registered in late June 2021, and all the websites masquerade at websites of the Complainant and purport to sell the Complainant’s footwear products. Moreover, the Respondents have had the opportunity to challenge in these proceedings the Complainant’s assertions of common control but have chosen not to do so.\r\n\r\nConsolidation of disputes involving domain names under common control would usually be ordered if, as here, it is both equitable and procedurally efficient to do so (see, for example, CAC Case No. 101576, ROGER VIVIER S.P.A. v Sun Cai Long, Liu You Quin) and the Panel therefore agrees to the Complainant’s request for consolidation.\r\n\r\nProcedural Factors – Language of the registration agreement\r\n\r\nParagraph 11 of the Rules for Uniform Domain Name Dispute Resolution Policy (the \"Rules\") UDRP Rules provides that unless otherwise agreed by the parties, the default language of the proceedings is the language of the registration agreement, subject to the authority of the panel to determine otherwise. The registration agreement in respect of the disputed domain name is in the Chinese language. The Complainant maintains that, notwithstanding this, it is appropriate for the proceedings to be conducted in the English language. In support of this assertion, it points out that the website to which this disputed domain name resolves is in English and the disputed domain name contains Latin characters and a word which has a meaning in English. Additionally, it says that translation of the Complaint into Chinese would also cause additional expense and delay, making it unfair to proceed in Chinese, and that English is the primary language for business and international relations.\r\n\r\nThe Panel accepts these points. See also the decision of the panel in CAC Case No. 104156 Vivendi v Chen Jun. It accordingly directs that the language of the proceedings shall be English.\r\n\r\nThe Panel is accordingly satisfied that all procedural requirements under UDRP are met and there is no other reason why it would be inappropriate to provide a decision.", "decision": "Accepted", "panelists": [ "Antony Gold" ], "date_of_panel_decision": "2021-12-12 00:00:00", "informal_english_translation": "The Complainant is the owner of many trade marks for;\r\n-\tHOGAN including, by way of example only, European Union trade mark registration number 005184536 in classes 3, 9, 18, 25 and 35 registered on January 20, 2010; and\r\n-\tROGER VIVIER, including, by way of example only, European Union trade mark, registration number 006349138 in classes 3, 9, 14, 16, 18, 20, 21, 24, 25, 26, 34, 35 and 42, registered on October 17, 2008. ", "decision_domains": { "HOGANMALAYSIA.COM ": "TRANSFERRED", "ROGERVIVIEROUTLETS.COM": "TRANSFERRED", "HOGANSINGAPORE.COM ": "TRANSFERRED", "HOGANSCHOENEN.COM ": "TRANSFERRED", "HOGANMEXICO.COM ": "TRANSFERRED", "HOGANPOLSKA.COM ": "TRANSFERRED", "HOGANPORTUGAL.COM ": "TRANSFERRED", "HOGANSKO.COM ": "TRANSFERRED", "HOGANSHOESAU.COM ": "TRANSFERRED", "HOGANUKSALE.COM ": "TRANSFERRED", "HOGANINDIASALE.COM ": "TRANSFERRED", "HOGANCIPO.COM ": "TRANSFERRED", "HOGANENUCUZ.COM": "TRANSFERRED", "HOGANINSALDO.COM ": "TRANSFERRED", "HOGANSHOPGR.COM": "TRANSFERRED", "HOGANSOLDES.COM": "TRANSFERRED", "HOGANBARATAS.COM": "TRANSFERRED", "HOGAN-DEUTSCHLAND.COM": "TRANSFERRED", "HOGANTILBUD.COM": "TRANSFERRED", "HOGANOUTLETSUOMI.COM": "TRANSFERRED", "HOGANKAUFEN.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }