Ricci International S.r.l. v Name Redacted
WIPO Case No. D2024-4585
•10-01-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Ricci International S.r.l. v. Name Redacted
Case No. D2024-4585
1. The Parties
The Complainant is Ricci International S.r.l., Italy, represented by Akran Intellectual Property, Italy.
The Respondent is Name Redacted.1
2. The Domain Name and Registrar
The disputed domain name <rrdrobertoriccidesigns.com> is registered with Sav.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2024. On November 8, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 8, 2024, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name 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 November 12, 2024, 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 November 15, 2024.
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”).
1Respondent appears to have used the name and contact details of a third person when registering the disputed domain name. In light
of the potential identity theft, the Panel has redacted Respondent’s name from this Decision. However, the Panel has attached as
Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name which includes Respondent’s
name. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding and has
indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See ASOS plc. v. Name
Redacted, WIPO Case No. D2017-1520; Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO
Case No. D2009-1788.
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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 22, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2024. On December 2 and December 3, 2024,
a third party sent email communications to the Center. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on December 16, 2024.
The Center appointed Benjamin Fontaine as the sole panelist in this matter on December 27, 2024. 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 specializing in the design and manufacturing of equipment for water sports, in particular surfing, and related clothing.
The company was founded in 1989 between Grosseto in Tuscany, and the island of Maui in the United States of America (“USA”) from the passion of Roberto Ricci, the founder, building windsurfing boards since the early years of this sport's development. Roberto Ricci Designs has been creating equipment for all water sports ever since, and today offers a wide range of products distributed internationally.
The Complainant holds a whole portfolio of trade marks for RRD ROBERTORICCIDESIGNS in multiple jurisdictions around the world. For the purpose of this case, it is sufficient to refer to:
| - | European Union trade mark no. 018780363 registered on May, 10, 2023. |
The Complainant’s official website is available at <robertoriccidesigns.com>.
The Complainant also demonstrates a strong presence on social media pages featuring its verbal and
figurative trade marks, as illustrated by the following pages: “ and
“
The disputed domain name was registered on July 23, 2024.
It points out to an active website, in Italian, reproducing the Complainant's RRD logo and copyrighted
pictures of the Complainant’s products. The website appears to be offering the Complainant’s products for
sale at highly reduced prices. The website hosted under the disputed domain name contains the following
statement in one of its sections (translated from Italian): ““rrdrobertoriccidesigns.com” is part of the Group
and is a fashion brand with a clear logo and unique sign. We want to help customers highlight their strengths
and cleverly cover their weaknesses through our collections. These collections must be elegant, comfortable,
original and individual. That’s why we are committed to protecting people and the environment. We use eco-
friendly fabrics whenever possible. rrdrobertoriccidesigns.com launches four collections each year with
multiple themes (…).”
However, according to test purchases carried out by the Complainant - and for which appropriate evidence is submitted - the Respondent does not appear to actually sell products. When consumers try to acquire a desired product, they are required to provide the following personal details: full name and address, credit card number, telephone number and delivery address (all mandatory fields). Once all the data has been submitted, customers do not receive any confirmation of the payment or an e-mail containing the details of the transaction. However, when they try to repeat the order, the system blocks them and informs them that the order has already been placed.
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The Complainant's representative attempted to contact the Registrar’s Abuse Center to report that the disputed domain name and website were infringing the Complainant’s rights. On August 27, 2024, the Complainant’s representative sent a copyright complaint letter to the Registrar, but only received an
automatic reply.
According to the information provided by the Registrar, the Respondent is an individual located in the USA. However, the Center received an email communication from a person with the same name who has seemingly received the Center’s written communication and who has expressly denied any involvement in the registration or use of the disputed domain name. The Panel finds it likely that this person was the victim of an identity theft.
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 name.
First, the Complainant contends that a simple parallel comparison shows that the disputed domain name <rrdrobertoriccidesigns.com> is a reproduction of its trade marks and consequently, identical or confusingly similar to its registered trade mark RRD ROBERTO RICCI DESIGNS. As per previous UDRP panel decisions, the generic Top-Level Domain “.com” must not be considered in the evaluation of the identity or confusing similarity between a disputed domain name and the prior mark since this is a standard registration requirement.
| disputed domain name. A trade mark search conducted in the Respondent’s name - as disclosed by the | Second, the Complainant states that the Respondent has no rights or legitimate interests in respect of the <clothing.robertoriccidesigns.com>. Prima facie the disputed domain name website seems to be the original one, or at least an affiliated website. Even when drafting the Complaint, the Complainant’s representative acknowledges that it was difficult to tell the difference between the official website and the website at the disputed domain name. Customers that register on the website at the disputed domain name with the intent to buy Roberto Ricci’s products are attracted by the high discounts offered. And, as evidenced in the Complaint, the Respondent does not deliver any of the products purchased. Therefore, the Respondent is not making a bona fide offering of goods. The Respondent is using the disputed domain name to mislead consumers into believing that the products offered for sale on the corresponding website are sold by the Complainant directly, and to collect personal data from consumers, including banking details. |
| Third, the Complainant asserts that the disputed domain name was registered and is being used in bad faith: | |
| Regarding registration, the disputed domain name is identical to the Complainant’s prior registered trade mark RRD ROBERTO RICCI DESIGNS. This disputed domain name points to a website that has the same layout as the Complainant’s website, even though the Respondent is not a reseller of the Complainant’s products or in any way associated to the Complainant. This is clear evidence that the Respondent was aware of the Complainant and the Complainant’s trade mark rights when registering the disputed domain name. | |
| Regarding use, the visual similarities between the websites (including the use of the Complainant’s trade marks) are clearly intended to mislead unsuspecting Internet users accessing the Respondent's website, or |
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to confuse them as to the source and ownership of the website, and to collect sensitive information. The activities.
The disputed domain name has therefore been registered and is being used in bad faith. The Complainant requests the transfer of the disputed domain name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions. However, on December 2 and December 3, 2024, a third party whose name corresponds to the name of the registrant of the disputed domain name sent email communications to the Center denying any involvement in the registration or use of the disputed
domain name.
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 trade mark 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 trade mark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.
The entirety of the textual element of the mark is reproduced within the disputed domain name. Accordingly,
the disputed domain name is identical to textual element of the mark for the purposes of the Policy.
WIPO Overview 3.0, sections 1.7 and 1.10.
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 name. 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 name such as those enumerated in the Policy or otherwise.
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Much to the contrary, the disputed domain name is used by the Respondent to host an impersonating website reproducing the Complainant's RRD logo and copyrighted product images and offering the Complainant’s products for sale at highly discounted prices, without actually delivering any goods. The Complainant has also provided evidence showing that the payment facility form on the website at the disputed domain name invites users to provide a variety of personal and financial details. The use of a domain name for illegitimate activity, here impersonation/passing off and alleged phishing, can never confer rights or legitimate interests on a respondent. See WIPO Overview 3.0, section 2.13.1.
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 registered a domain name composed entirely of the textual element of the Complainant's registered trade mark RRD ROBERTO RICCI DESIGNS, which is a recognized trade mark in the sector of water sports, and did so on the eve of the 2024 Olympic Games. The Respondent has presumably used the name of a third party in the contact details provided to the Registrar. The Respondent then used the disputed domain name to host a website which is substantially similar to that of the Complainant, to offer for sale the Complainant’s products at highly discounted prices, without actually delivering any goods, allowing for collection of a variety of personal and financial details. Such endeavor to impersonate the Complainant in order to confuse Internet users amounts to bad faith registration and use in accordance with paragraph 4(b)(iv) of the Policy.
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 name <rrdrobertoriccidesigns.com> be transferred to the Complainant.
/Benjamin Fontaine/
Benjamin Fontaine
Sole Panelist
Date: January 10, 2025
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