The Complainant, Tod’s S.p.A., is a company with headquarters in Italy. It has its roots in the early '900. Its first success came with the Gommino driving shoe, which has gummy little rubber pebbles on the soles. In few years the production was expanded to the bags and in 1997 the D-Bag was launched becoming in few years an iconic model. From 2006 and 2009 the Complainant introduced ready-to-wear, promoting the apparels with the celebrities as Katie Holmes, Jessica Alba and Gwyneth Paltrow, and sunglasses. The brand HOGAN was founded in 1985 with the aim of creating the concept of luxury sneaker. In 2011, Tod’s Group sponsored the restoration of the Colosseum in Rome with a disbursement of €25m in five years, it has also been a permanent founding member of the Fondazione Teatro alla Scala and one of main sponsor of Padiglione di Arte Contemporanea (PAC) in Milan. The Complainant has numerous stores around the world, about 403 mono-brand stores, including showrooms and large flagship stores in Europe, the U.S., China, Japan, Malaysia, Singapore, Hong Kong, Indonesia, Turkey and Australia. 2022 annual revenues of the Complainant’s Group were almost 668 million of Euros of which almost 50% came from the trademark TOD’S. <\/p>\n
The disputed domain names were registered on May 25, 2023; June 19, 2023; June 20, 2023; July 22, 2023; and October 7, 2023. <\/p>\n
The disputed domain names have been resolved to websites where the Complainant’s trademarks TOD’S and HOGAN are published, and prima facie counterfeit products are offered for sale. <\/p>\n
The Complainant sent a cease-and-desist letter to the Respondent on October 19, 2023.<\/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:<\/p>\n
i) The Complainant has rights in the TOD’S and HOGAN marks as identified in section “Identification of rights” above. The disputed domain names are confusingly similar to the Complainant's TOD’S and HOGAN marks because they incorporate the Complainant’s marks in their entirety and add non-distinctive elements such as geographical terms, generic commercial terms and the generic top-level domains “.com” and “.net.” <\/p>\n
ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not a licensee, authorized agent of the Complainant or in any other way authorized to use the Complainant’s trademarks. The Respondent is not commonly known by the disputed domain names. The Respondent has not provided a bona fide offering of goods or services in connection with the disputed domain names. The disputed domain names have been redirected by the Respondent to websites where the Complainant’s trademarks TOD’S and HOGAN are published, and prima facie counterfeit products are offered for sale. There is no disclaimer as to the Respondent’s lack of relationship with the Complainant. <\/p>\n
iii) The Respondent has registered and is using the disputed domain names in bad faith. The use of the disputed domain names in connection with commercial websites where the Complainant’s trademarks are misappropriated and prima facie counterfeit TOD’S and HOGAN branded products are offered for sale, clearly indicates that the Respondent’s purpose for registering the disputed domain names was to capitalize on the reputation of the Complainant's trademarks. The Respondent has been engaged in a pattern of conduct preventing the Complainant from reflecting the marks in the disputed domain names. The Respondent had knowledge of the Complainant’s rights in the TOD’S and HOGAN marks before registering the disputed domain names, which constitutes bad faith registration.
<\/p>\n
RESPONDENT:<\/p>\n
NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.<\/p>", "rights": "
The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are 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": "
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS<\/strong> <\/p>\n The Complainant has alleged that it is likely that the disputed domain names are under the control of a single entity and consolidation is appropriate in this matter. Paragraph 3(c) of the Rules (the “Rules”) for the Uniform Domain Name Dispute Resolution Policy (the “UDRP” or “Policy”) 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.” The Complainant contends that the disputed domain names are subject to an evident common control, thus making the consolidation of the dispute equitable and procedurally efficient. The disputed domain names, which all incorporate the trademarks TOD’S and HOGAN in their entirety, are under the control of a single individual or entity or, at least, reflective of a group of individuals acting in concert given that: <\/p>\n (i) There are circumstances indicating that different registrants were alter egos of the same beneficial holder: (a) cases where respondents had common administrative contact or technical contact, or other instances of commonality in the registration information, such as the same postal address or email address; and (b) circumstances indicating that a single person or entity had registered multiple domain names using fictitious names; <\/p>\n (ii) Substantial commonalities in the websites to which the disputed domain names resolved and the use of the same domain name servers; and <\/p>\n (iii) The incorporation of the Complainants’ trademarks in its entirety together with a descriptive or geographical term. The first group of the disputed domain names has been registered using the registrar ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED being the registrant’s country indicated in the Whois is the same, i.e.<\/em> Spain, and the corresponding websites are identical, showing in foreground the word “SALES”; <\/p>\n The second group of the disputed domain names has been registered using the registrar Paknic Private Limited being the registrant organization is Web Domains By Proxy. The corresponding websites show in foreground the word “SALES,” which are identical to the ones in the first group, including for the favicons of the websites of both groups; and <\/p>\n The third group of the disputed domain names, including all the trademark TOD’S, has been registered using the registrar ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED being the registrant’s country indicated in the Whois is the same, i.e.<\/em> Italy, and the corresponding websites are identical. Each website described in the above-mentioned groups has the following similarities: <\/p>\n - the banner in the header dedicated to the free delivery, the lower price guarantee, the extra discount for the first order and the return policy;<\/em><\/p>\n - same footer; <\/em><\/p>\n - the wording of the disclaimers: Copyright © 2023 “domain name without the extension”; <\/em><\/p>\n - the icons of Social Media indicated in identical position: Facebook, Twitter, Pinterest, Instagram, TikTok and WhatsApp; <\/em><\/p>\n - same ways of payment: Visa, Mastercard, PayPal, Amazon, Google Wallet; <\/em><\/p>\n - identical subscription to the newsletter; and <\/em><\/p>\n - identical lay-out of the contact form.<\/em> In light of all the information related above and the relationships between the use of the disputed domain names in each group, the Complainant believes that the present one is a clear case where the disputed domain names are under the actual control of a single individual or entity or, at least, reflective of a group of individuals acting in concert. <\/p>\n The Complainant provides exhibits showing the circumstances as listed above. The Panel finds that the circumstances indicated above are concrete and sufficient to prove that the disputed domain names are subject to a common control by a single entity. The Panel agrees and finds that the disputed domain names are commonly owned\/controlled by a single Respondent who is using multiple aliases. Throughout the decision, the Respondents will be collectively referred to as “Respondent.” <\/p>\n The Panel is satisfied that all other 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": [
"Mr. Ho-Hyun Nahm Esq."
],
"date_of_panel_decision": "2023-12-16 00:00:00",
"informal_english_translation": " The Complainant owns trademark registrations for the marks TOD’S and HOGAN, among others, the following: <\/p>\n For the mark TOD’S:<\/u><\/p>\n - European trademark Reg. No. 010158889 registered on December 19, 2011 in classes 3, 9, 14, 18, 25, 35;<\/p>\n - European trademark Reg. No. 000407031 registered on September 13, 2004 in class 9;<\/p>\n - International trademark Reg. No. 1006548 registered on June 1, 2009 in 14;<\/p>\n - International trademark Reg. No. 858452 registered on May 20, 2005 in classes 3, 9, 18, 25, 35;<\/p>\n - United States trademark Reg. No. 1459226 registered on September 29, 1987 in classes 3, 9, 18, 25, 35; and<\/p>\n - Australian trademark Reg. No. 1498996 registered on November 12, 2012 in classes 3, 9, 25, 35.<\/p>\n <\/p>\n For the mark HOGAN:<\/p>\n - International trademark Reg. No. 774193 registered on December 18, 2021 in classes 3, 9, 18, 25;<\/p>\n - International trademark Reg. No. 1129649 registered on March 23, 2012 in classes 3, 9, 18, 25; and<\/p>\n - European Union trademark Reg. No. 005184536 registered on January 20, 2010 in classes 3, 9, 18, 25, 35.<\/p>",
"decision_domains": {
"hoganargentina.com": "TRANSFERRED",
"hogancolombia.com": "TRANSFERRED",
"hoganhrvatska.com": "TRANSFERRED",
"hoganmexicostore.com": "TRANSFERRED",
"hoganromania.com": "TRANSFERRED",
"hoganslovenijashop.com": "TRANSFERRED",
"hoganuruguay.com": "TRANSFERRED",
"hoganbrasilshop.com": "TRANSFERRED",
"hoganchile.com": "TRANSFERRED",
"hogancz.com": "TRANSFERRED",
"hoganaustraliasale.com": "TRANSFERRED",
"hoganbelgique.com": "TRANSFERRED",
"hogandanmarkonline.com": "TRANSFERRED",
"hoganeesti.com": "TRANSFERRED",
"hoganirelandshop.com": "TRANSFERRED",
"hogannederlandsale.com": "TRANSFERRED",
"hoganportugalsale.com": "TRANSFERRED",
"hogansouthafrica.com": "TRANSFERRED",
"hogansuomi.com": "TRANSFERRED",
"hogannorgeoutlet.com": "TRANSFERRED",
"hogansuisse.com": "TRANSFERRED",
"hoganbelgieshop.com": "TRANSFERRED",
"hogansrbijastore.com": "TRANSFERRED",
"hogancanadasale.com": "TRANSFERRED",
"hoganbulgaria.com": "TRANSFERRED",
"hoganjapan.com": "TRANSFERRED",
"hoganlatvija.com": "TRANSFERRED",
"hoganlietuva.com": "TRANSFERRED",
"hoganisrael.com": "TRANSFERRED",
"hogankuwait.com": "TRANSFERRED",
"hoganuae.com": "TRANSFERRED",
"hogangreece.com": "TRANSFERRED",
"hoganuk.com": "TRANSFERRED",
"todsbulgaria.com": "TRANSFERRED",
"todsjapan.com": "TRANSFERRED",
"todslietuva.com": "TRANSFERRED",
"todsshoeslatvija.com": "TRANSFERRED",
"todsshopeesti.com": "TRANSFERRED",
"todsuae.com": "TRANSFERRED",
"todskuwait.com": "TRANSFERRED",
"todsisrael.net": "TRANSFERRED"
},
"panelist": null,
"panellists_text": null
}
<\/p>\n
<\/p>\n
<\/p>\n