1) TOD'S S.P.A. (hereinafter referred to as the Complainant) submits that despite some differences in the details provided in the official WHOIS records for the eight domain names included in the complaint, the domain names 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.<\/p>\n
2) 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.<\/p>\n
3) 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 2022 Annual revenues of Tod’s Group were almost 668 million of Euros of which 50% came from the trademark \"TOD’S\".<\/p>\n
4) The Complainant has duly proved to be the owner of the registered well-known trademarks \"TOD'S\" and \"HOGAN\" in several classes in numerous countries all over the world including China, where all the Respondents are located and that these trademark registrations long predate the registration of the disputed domain names (all registered on 2022).<\/p>\n
5) The Complainant has been extensively using the \"TOD'S\" and the \"HOGAN\" denominations on all internet environments including and not limited to the company's official websites https:\/\/www.tods.com. The Complainant has registered a number of domain names containing the wording TODS (considering that due to technical limitations the apostrophe cannot be included in domain names) and HOGAN, for example <tods.com>, <tods.it>, <tods.fr>, <tods.eu>, <tods.cn>, <hogan.com>, <hogan.it>, <hogan.fr>, <hogan.eu>, <hogan.cn>. The Complainant also has official accounts on the major social networks such as Facebook, Instagram and Twitter.<\/p>\n
6) Before the commencement of this proceedings, on October 12, 2022, the Complainant made an attempt to contact the owners of the disputed domain names through a cease and desist letter sent via form online indicated in the corresponding websites related to the domain names. The addresses have simply disregarded said communication.<\/p>\n
7) According to the Complainant, the domain names in dispute are similar to its \"TOD'S\" and \"HOGAN\" trademarks. Actually, in all cases the domain names incorporate the Complainant’s \"TOD’S\" or \"HOGAN\" trademarks in its entirety with the mere adding of non-distinctive elements such as geographical indicators or generic words.<\/p>\n
8) The Complainant informs that the owners of the disputed domain names are not licensees or authorized agents of the Complainant and that they are not authorized to use the Complainant’s trademarks. Furthermore, the Complainant has not found that the owners of the disputed domain names are commonly known by the disputed domain names or that they have any protectable interest over the domain names in dispute.<\/p>\n
9) The Complainant argues that by virtue of the extensive worldwide use, the Complainant trademarks \"TOD’S\" and \"HOGAN\" have become well-known trademarks in the sector of shoes and leather goods. Therefore, it is clear, in the Complainant's view, that the Respondents were well aware of the trademarks \"TOD’S\" and \"HOGAN\" and decided to register the disputed domain names with the clear intention to refer to the Complainant and its trademarks \"TOD'S\" ad \"HOGAN\".<\/p>\n
10) According to the Complainant, the use of the disputed domain names in connection with commercial websites where the Complainant trademarks are misappropriated and counterfeit \"TOD’S\" and \"HOGAN\" 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 trademarks by diverting Internet users seeking \"TOD’S\" and \"HOGAN\" products to their websites for financial gain, by intentionally creating a likelihood of confusion with the Complainant trademarks as to the source, sponsorship, affiliation, or endorsement of its web sites and\/or the goods offered or promoted through said websites. <\/p>", "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.<\/p>", "no_response_filed": "
Complainant´s contentions are summarised in the Factual background section above.
NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED. <\/p>",
"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).<\/p>", "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).<\/p>", "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).<\/p>", "procedural_factors": "
Consolidation of Respondents
According to Article 3(c) of Rules for Uniform Domain Name Dispute Resolution Policy (\"Rules\"), the Complaint may relate to more than one domain name, provided that the disputed domain names are registered by the same domain-name holder. According to Article 10(e) of Rules a Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.
The Complainant requests to consolidate its claims against the registrants of the disputed domain names notwithstanding that the registrant details are different, on the grounds that all the 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. In addition, according to the Complainant, all the disputed domain names (i) share the same lay-out of the websites and of the offers, (ii) share the same products offered for sale (except for hoganshop-us.com), (iii) share the same opening hours of the shops, (iv) share the same footer of the websites including the same ways of payment and the pattern of the copyright. Finally, the Complainant notes that all the disputed domain names incorporate either the Complainant's \"TOD'S\" or \"HOGAN\" mark in its entirety and couple it with geographical and\/or descriptive terms.<\/p>\n
Notwithstanding the differences in registrant details, the Panel considers that all the disputed domain names are under the same common control. In addition to the points raised by the Complainant, it must be noted that the dates of registration of the disputed domain names are really close (between April 2022 and September 2022), all the websites pretend to give the impression to be official websites of the Complainant and all the Respondents originate from China. Finally, the Respondents have had the opportunity to challenge in these proceedings the Complainant assertions of common control but have chosen not to do so.
In previous cases similar to the one at hand the Panel has decided to order the consolidation (see, for example, Tod's SPA v Web Commerce Communications Limited; CAC Case No. 103815) and the Panel therefore agrees to the Complainant’s request, even considering that, due to the circumstances of the present case, it is equitable and procedurally efficient to consolidate the proceedings. <\/p>\n
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.<\/p>", "decision": "Accepted", "panelists": [ "Guido Maffei" ], "date_of_panel_decision": "2023-02-01 00:00:00", "informal_english_translation": "
Tod's S.p.A. is the owner of various trademark registrations, in particular:<\/p>\n