Officina Profumo Farmaceutica di Santa Maria Novella S.p.A. v; Haoming Lyu and dfg sd

WIPO Case No. D2025-1712

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Officina Profumo Farmaceutica di Santa Maria Novella S.p.A. v.
Haoming Lyu and dfg sd

Case No. D2025-1712

1. The Parties

The Complainant is Officina Profumo Farmaceutica di Santa Maria Novella S.p.A., Italy, represented by

Bugnion S.p.A., Italy.

The Respondents are Haoming Lyu, United States of America (“United States”), and dfg sd, United States.

2. The Domain Names and Registrar

The disputed domain names <smnovellaglobal.shop> and <smnovella-us.shop> are registered with

Spaceship, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2025. On April 30, 2025, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain names. On April 30, 2025, the Registrar transmitted by email to the Center its verif ication response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Haoming Lyu and Unknown) and contact information in the Complaint.

The Center sent an email communication to the Complainant on May 2, 2025 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrar, requesting the Complainant to either file separate complaints for the disputed domain names associated with dif ferent underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. The Complainant f iled an amendment to the Complaint on May 7, 2025.

The Center verif ied that the Complaint together with the amendment to the Complaint satisf ied 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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notif ied the Respondent of the Complaint, and the proceedings commenced on May 14, 2025. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2025. The Respondent did not submit any response. Accordingly, the Center notif ied the Respondent’s default on June 10, 2025.

The Center appointed Marilena Comanescu as the sole panelist in this matter on June 16, 2025. The Panel
f inds 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 Complainantis an Italian joint stock company with a history dating back in 1221. Initially, it was a pharmaceutical workshop inside a convent located in the area of the Florentine church Santa Maria Novella. Currently, the products of the Complainant, consisting of ancient preparations, cosmetics, fragrances extracts and essences, home fragrances, wax products, herbals, liquors, and specialty foods, are sold in the Complainant’s shop/museum in Florence as well as in numerous flagship stores, retailers around the world and through its official website and authorized ecommerce platforms.

Besides specific product trademarks, all the Complainant’s products are sold under the general trademarks

SANTA MARIA NOVELLA, S. MARIA NOVELLA, S.M.NOVELLA, SMN, and variations thereof.

The Complainant owns a worldwide trademark portfolio, including the following registrations for
S.M.NOVELLA:

- the European Union trademark registration number 013125893 for S.M.NOVELLA (word), filed on July 30, 2014 and registered on September 6, 2015, covering goods in International classes 3, 4, 5, 30, and 33; and

- the International trademark registration number 1365123 for S.M.NOVELLA (word), registered on June 8,
2017, designationg many jurisdictions inluding the United States, and covering goods and services in

International classes 3, 4, 5, 30, 33, and 35.

The Complainant holds domain names incorporating the S.M.NOVELLA mark, such as <smnovella.com>,
<smnovella.eu>, <smnovella.it>, <smnovellausa.com>, and <smnovella.us>.

The disputed domain name <smnovellaglobal.shop> was registered on March 22, 2025, and, the disputed domain name <smnovella-us.shop> was registered on February 16, 2025.

At the time of filing of the Complaint, the disputed domain name <smnovellaglobal.shop> was used in relation to a commercial website, offering for sale purported S.M.NOVELLA branded products, and also using unauthorized copies of the Complainant’s official trademarks, product images, and structure of the Complainant’s websites. Also, on the website under the disputed domain name, the Respondent claimed copyright protection, and did not provide accurate contact information on the disputed domain name holder.

At the time of filing of the Complaint, the disputed domain name <smnovella-us.shop> was not actively used. However, according to the Complaint, the disputed domain name <smnovella-us.shop> was used to resolve to a website having the same content as the website under the disputed domain name

<smnovellaglobal.shop>, as above described.

According to the Complainant, the disputed domain name <smnovellaglobal.shop> was registered shortly af ter the content on the disputed domain name <smnovella-us.shop> was blocked by the Registrar, upon the Complainant’s Notif ication of March 10, 2025.

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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 virtually identical with its trademark and company name because they incorporate the S.M.NOVELLA trademark in its entirety with the addition of the acronym for United States, “us”, or the generic term “global”; the Respondents have no rights or

legitimate interests in the disputed domain names and the Complainant further requests that the burden of proof be shifted to the Respondents to bring forward evidence of rights or legitimate interests in respect of the disputed domain names; the disputed domain names have been registered and are being used in bad faith, mainly since they are used to resolve to websites which include a virtually identical version of the Complainant’s mark in the header and have a structure almost identical to that of the Complainant’s own website, promoting Complainant’s products, displaying photographs and label description taken f rom the Complainant’s website and, thus, the Internet users will believe that the goods displayed on the websites under the disputed domain names are those of the Complainant and that the disputed domain names are related to Complainant and/or Complainant’s company or concern membership/association with

Complainant.

B. Respondents

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

6. Discussion and Findings
6.1. Preliminary Procedural Issue: Consolidation of Multiple Respondents

The Complaint and the amendment to the Complaint were f iled in relation to nominally dif ferent disputed domain name registrants. The Complainant alleges that the disputed domain name registrants are the same entity or mere alter egos of each other, or under common control. The Complainant requests the

consolidation of the disputes against the multiple disputed domain name registrants pursuant to paragraph

10(e) of the Rules.

The disputed domain name registrants did not comment on the Complainant’s request.

Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.

In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.

As regards common control, the Panel notes that the disputed domain names: (i) were created in a similar manner, incorporating the Complainant’s trademark S.M.NOVELLA, followed additional elements, a hyphen and the geographic acronym “US” f rom the “United States”, respectively the dictionary term “global”; (ii) were registered within a span of 36 days from each other, and, according to the Complaint, the disputed domain name <smnovellaglobal.shop> was registered shortly af ter the disputed domain name

<smnovella-us.shop> was blocked by the Registrar, and was used for the same purposes; (iii) are
registered with the same Registrar; (iv) are registered under the generic Top Level Domain “.shop”; and (v)
the Respondents have not objected to the consolidation claims made by the Complainant despite the
communications sent by the Center to them.

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As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.

Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding.

6.2. Substantive Issue: Three Elements

Under the Policy, the Complainant is required to prove on the balance of probabilities that:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the f irst 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 names. WIPO Overview 3.0, section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The Panel f inds the mark S.M.NOVELLA is recognizable within each of the disputed domain names.
Accordingly, each of the disputed domain names is confusingly similar to the mark for the purposes of the
Policy. WIPO Overview 3.0, section 1.7.

While the addition of other terms, here “us” and “global”, respectively the hyphen, may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a f inding of confusing similarity between the disputed domain names and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel f inds the f irst 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 of ten 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 satisf ied 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.

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According to the evidence, the Respondent has used the disputed domain names in connection with websites purportedly promoting and offering for sale goods of the Complainant, displaying the Complainant’s trademark, and of f icial product description and images, without providing any accurate and prominent disclaimer regarding the relationship between the Respondent and the Complainant. Furthermore, when the content on the website under the disputed domain name <smnovella-us.shop> was blocked by the Registrar upon the Complainant’s request, the Respondent registered the second disputed domain name, namely <smnovellaglobal.shop>, and continued such activity. The Panels have held that the use of a domain name for illegal activity (such as claimed impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The Panel also notes that the composition of the disputed domain names itself carries a risk of implied affiliation given that the Complainant’s distinctive trademark has been combined with the geographical descriptor “us” designating the United States, or the dictionary term “global”.

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 disputed domain names were registered in bad faith, with knowledge of the Complainant and its trademark particularly because the Complainant’s trademark predates the registration of the disputed domain names by almost 10 years, has acquired international reputation in its industry and the composition of the disputed domain names itself, comprising the S.M.NOVELLA trademark, followed by non-distinctive terms. Further, the use of the disputed domain names reinforces such f inding.

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.

Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith.

Creating a website displaying the Complainant’s trademarks, products pictures and descriptions, without providing any disclaimer, in this Panel’s view, the Respondent has intended to attract Internet users accessing the websites corresponding to the disputed domain names who may be confused and believe that the website is held, controlled by, or somehow affiliated or related to the Complainant, for its commercial gain.

Also, the use of a domain name for illegal activity such claimed impersonation/passing of f can never confer rights or legitimate interests on a respondent and it is considered evidence of bad faith. WIPO Overview 3.0, section 3.4.

The Respondent choose not to participate in these proceedings and, along with the other circumstances in this case, this may be a further sign of bad faith.

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

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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 <smnovellaglobal.shop> and <smnovella-us.shop> be transferred to the Complainant.

/Marilena Comanescu/
Marilena Comanescu
Sole Panelist
Date: June 26, 2025