Richard Ginori S.r.l. v Hongxia Zheng

WIPO Case No. D2023-2094

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Richard Ginori S.r.l. v. Hongxia Zheng

Case No. D2023-2094

1. The Parties

The Complainant is Richard Ginori S.r.l., Italy, represented by Studio Barbero, Italy.

The Respondent is Hongxia Zheng, China.

2. The Domain Name and Registrar

The disputed domain name <ginorishop.com> (the “Disputed Domain Name”) is registered with Name.com,

Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2023.

On May 11, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 11, 2023, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 the due date for Response was June 13, 2023. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on July 6, 2023.

The Center appointed Peter Wild as the sole panelist in this matter on July 11, 2023. 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.

page 2

4. Factual Background

The Complainant is owner of the well-known trademark GINORI (in different combinations), which it uses

since 1735 for porcelain goods, including tableware and decorative artistic products. The Complainant’s

trademark and products receive wide press coverage, awards and are well-known. The Complainant owns a
number of trademarks with the main element GINORI, e.g., International Trademark Registration No.
1570910 for GINORI 1735 ITALIA (figurative mark) of September 18, 2020, in classes 3, 4, 8, 11, 20, 21, 24,
27, 35, and 43, designating also China and European Union Trade Mark Registration No. 013153333 for
RICHARD GINORI of December 29, 2014. The Complainant also owns and uses the domain name

<ginori1735.com>.

The Disputed Domain Name was registered on January 18, 2022. It resolves to a website which offers, with

significant discount, products which look exactly like the Complainant’s products and which uses the

photographic pictures from the Complainant’s website. The website also offers goods of the Complainant’s

competitors. It shows direct copies of pictures and logos of the Complainant’s website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it is the owner of a number of trademarks consisting of GINORI (in various combinations) and that it has a strong reputation for the products under this trademark. The Complainant asserts that the Disputed Domain Name is confusingly similar to the above-mentioned GINORI trademark and that the Respondent offers counterfeit products under the look alike website. The Complainant alleges

that the Respondent has no rights or legitimate interests in the Disputed Domain Name, which was

registered and is used in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant owns registered rights including the element “GINORI” (with various elements, such as

GINORI 1735 ITALIA and RICHARD GINORI). The trademarks clearly predate the Disputed Domain Name.

The dominant element of the trademarks, the element “GINORI”, is fully integrated in the Disputed Domain only one element in the Disputed Domain Name which differs from the Complainant’s trademark: in the end,

the word “shop”.

Further to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition

(“WIPO Overview 3.0”), section 1.8, “[w]here the relevant trademark is recognizable within the disputed

domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such

additional term(s) may however bear on assessment of the second and third elements”. Accordingly, the

Disputed Domain Name is confusingly similar to the Complainant’s trademark regardless of the added term.
The addition of the term “shop” does not prevent a finding of confusing similarity between the Disputed
Domain Name and the Complainant’s trademarks.

page 3

See e.g.: Miele & Cie. KG v. Krisjanis Ramans, WIPO Case No. D2022-4503 (<mieleshops.com>).

Therefore, the Panel is satisfied that the first element of the Policy is met.

B. Rights or Legitimate Interests

The Complainant must establish a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Once such prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.

The Respondent is not commonly known under the Disputed Domain Name and has no connection with or

authorisation from the Complainant. The Respondent’s activity under the website to which the Disputed

Domain Name resolves is infringing the copyright and other rights of the Complainant. The evidence provided by the Complainant shows that the Disputed Domain Name resolves to a website allegedly selling

the Complainant’s goods and displaying the Complainant’s copyrighted images. The very low prices are,

according to the Complainant, a prima facie indication that counterfeit goods are sold. See, along these

lines, Bottega Veneta SA v. Demp Cross, WIPO Case No. D2013-1534:

The Respondent therefore cannot show a bona fide offering or fair use of the Disputed Domain Name. See
Eli Lilly and Company and Novartis Tiergesundheit AG v. Manny Ghumman / Mr. NYOB / Jesse Padilla,
WIPO Case No. D2016-1698.

Moreover, the construction of the Disputed Domain Name, consisting of the dominant element “GINORI” mark along with the term “shop” is even apt to increase confusion since users could believe that the

Disputed Domain Name is used by the Complainant or, at least, by the Complainant’s affiliated entity, in

connection with its official web portal.

In the absence of any explanation by the Respondent, the Complainant’s establishment of the prima facie

case is sufficient.

With the evidence on file, this Panel is satisfied that the second element of the Policy is met.

C. Registered and Used in Bad Faith

The Disputed Domain Name is used to offer products which look identical to the products which the Complainant offers on its website. The Complainant claims that these goods are unauthorised or counterfeit goods. However, the Complainant does not offer evidence on this last point. Given the use of identical photos, the almost identical Disputed Domain Name and the significantly reduced prices for which the Respondent offers the goods are however strong indications of this. The Panel is therefore inclined, taking in consideration the overall picture and the absence of any defence or explanation from the Respondent, to accept that the goods are unauthorised or counterfeit indeed.

Taking into account the strength of the Complainant’s trademark GINORI and the context which the Disputed its products and website, elements which it copied directly. In this Panel’s view, this establishes bad faith

registration of the Disputed Domain Name.

This Panel therefore comes to the conclusion that the third element of the Policy is met.

page 4

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 <ginorishop.com> be transferred to the Complainant.

/Peter Wild/

Peter Wild

Sole Panelist
Date: July 25, 2023