Mario Valentino S.p.A. v shopify pro, Valentino

WIPO Case No. D2025-2435

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Mario Valentino S.p.A. v. shopify pro, Valentino

Case No. D2025-2435

1. The Parties

The Complainant is Mario Valentino S.p.A., Italy, represented by Società Italiana Brevetti S.p.A., Italy.

The Respondent is shopify pro, Valentino, Pakistan.

2. The Domain Names and Registrar[s]

The disputed domain names <valentinoshoe.site> and <valentinoshoe.store> are registered with Hostinger

Operations, UAB (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2025.
On June 20, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain names. On June 23, 2025, the Registrar transmitted by email to the
Center its verification response disclosing registrant and contact information for the disputed domain names
which differed from the named Respondent (redacted for privacy) and contact information in the Complaint.
The Center sent an email communication to the Complainant on June 23, 2025, providing the registrant and
contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the

Complaint. The Complainant filed an amended Complaint on June 25, 2025.

The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 27, 2025. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2025.

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The Center appointed W. Scott Blackmer as the sole panelist in this matter on July 24, 2025. The Panel
finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration
of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph

7.

4. Factual Background

The Complainant is an Italian company headquartered in Naples, Italy, which has been producing leather search results for “Valentino” and “Valentino shoes” from Internet search engines refer to the Complainant.
goods including shoes, bags, and fashion accessories since 1952, succeeding to the long-established
Valentino family business. The record includes ample evidence of the renown of the Complainant’s

The Complainant’s VALENTINO branded goods are sold through high-end retailers worldwide as well as online. The Complainant owns the domain name <valentinoshoes.com>, registered in 2004, which redirects to its principal website at “ published in Italian and English, with linked social media accounts.

The Complainant holds numerous trademark registrations for the VALENTINO word mark, including the following:

Mark	Jurisdiction	Registration No.	Registration Date	Goods / Services
VALENTINO	Italy	0000756306	August , 1998	IC 25
(word)
VALENTINO	Italy	0001218830	October 6, 1986	IC 25
(word)
VALENTINO	International	513872	June 20, 1987	IC 18, 25
(word)	(multiple designations)
VALENTINO	European Union	96669	April 1, 1996	IC 18, 25
(word)

The disputed domain name <valentinoshoe.store> was created on January 29, 2025, and is registered in the name of “shopify pro”, listing the organization as “Valentino” with a postal address in Pakistan and a Gmail contact email address. The disputed domain name <valentinoshoe.site> was created two days later, on January 31, 2025, using the same Registrar and with the same registration details.

At the time of this Decision, the disputed domain name <valentinoshoe.site> resolves to a landing page “powered by Shopify” (an e-commerce platform) with the announcement, “This store does not exist” and buttons inviting the visitor to “Explore other stores” or “Start a free trial” of Shopify. However, the Complaint

attaches screenshots of the website to which the disputed domain name <valentinoshoe.site> resolved
earlier in 2025 (the “Respondent’s former website”). This was an English-language e-commerce site headed
“VALENTINO” advertising shoes purportedly manufactured by the Complainant as well those of other well-
known, competing brands including VERSACE, SALVATORE, and YSL, all displayed with photos and
heavily discounted prices. The website did not identify the website operator, referring only to itself on the
“About Us” page as “At Valentino …”.

The disputed domain name <valentinoshoe.store> does not resolve to an active website, and the Internet resolved.

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5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.

Notably, the Complainant contends that the disputed domain names are confusingly similar to its Complainant sells. The Complainant states that it has not authorized the Respondent to use its VALENTINO mark, and there is no evidence that the Respondent “shopify pro” is known by a corresponding name. The Complainant observes that the Respondent has not put the disputed domain name <valentinoshoe.store> to use and has not employed the disputed domain name <valentinoshoe.site> in connection with a “bona fide” commercial offering, as it advertised competing, third-party products.

The Complainant points out that the Respondent was clearly aware of the Complainant’s mark, as the
Respondent used it to advertise shoes on the Respondent’s former website. The Complainant also cites
prior WIPO UDRP decisions finding that its VALENTINO marks are well known globally. Mario Valentino
S.p.A. v. Yu Guo, WIPO Case No. D2022-3160; Mario Valentino S.p.A. v. Jiaqin Huang, WIPO Case No.
D2023-3916. The Complainant concludes that the Respondent, which has no connection to the
Complainant, used the Complainant’s VALENTINO mark in the disputed domain names in bad faith to attract
Internet users for commercial gain. The inference of bad faith is further supported by the fact that the
Respondent appears to have furnished false contact details in registering the disputed domain names, based
on the Complainant’s search of the register of companies in Pakistan, which contains no entities named
“Valentino”, nor does the postal address given in the registration appear to exist. The Complainant cites the
“passive holding” doctrine to argue that bad faith should also be found in the case of the other, similar
disputed domain name <valentinoshoe.store>, based on the same registration details and history, despite

the fact that it has not yet been used for a website advertising the Complainant’s and competitors’ goods.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark (the VALENTINO word mark) for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The Panel finds the VALENTINO mark is recognizable within the disputed domain namesas it is included in its entirety. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms (here, “shoe”) may bear on assessment of the second and third elements, the Panel finds the addition of such a term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise. The Respondent does not appear to be known by a corresponding name (Policy, paragraph 4(c)(ii)). Even if the Respondent’s former website genuinely offered the Complainant’s resold goods, which is not established on this record, it did not disclose the Respondent’s identity and relationship, if any, with the Complainant and unfairly exploited the Complainant’s mark to advertise the goods of competitors. This conduct would deprive the Respondent of any claim to legitimate, nominative fair use of the mark in the disputed domain names as a reseller. WIPO Overview 3.0, section 2.8.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent was plainly aware of the Complainant and its long- established and well-known VALENTINO mark, using it in the disputed domain names, displaying it on the Respondent’s former website, and advertising what appeared to be photos of the Complainant’s shoes. In the case of the disputed domain name <valentinoshoe.site>, the association with the Respondent’s former website is a classic instance of the example of bad faith given in the Policy, paragraph 4(b)(iv), intentionally attempting to attract Internet users for commercial gain with a domain name likely to create confusion with the Complainant’s mark. Adding the word “shoe” to the mark merely enhances the likelihood of confusion with the disputed domain names, as those are the principal goods branded with the Complainant’s mark and advertised on the Respondent’s former website.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels also have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding, and this applies to the Respondent’s disputed domain name <valentinoshoe.store>. WIPO Overview 3.0, section 3.3. Having reviewed the

available record, the Panel notes, as have earlier WIPO panels, the distinctiveness or reputation of the
Complainant’s VALENTINO trademark and the composition of the disputed domain names, and finds that in

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the circumstances of this case the passive holding of the disputed domain names does not prevent a finding
of bad faith under the Policy.

The Panel also takes note of the Respondent’s apparent provision of false contact details in the registration of the disputed domain names, the Respondent’s failure to identify the operator of the Respondent’s former website associated with the disputed domain name <valentinoshoe.site>, and the Respondent’s failure to

submit a Response or otherwise communicate in this proceeding as indicative of bad faith.

The Panel finds that the Complainant has established the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <valentinoshoe.site and valentinoshoe.store> be transferred to the Complainant.

/W. Scott Blackmer/
W. Scott Blackmer
Sole Panelist
Date: August 6, 2025