Valentino S.p.A. v Bernice Kennedy

WIPO Case No. D2025-0703

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Valentino S.p.A. v. Bernice Kennedy

Case No. D2025-0703

1. The Parties

The Complainant is Valentino S.p.A., Italy, represented by Studio Barbero S.p.A., Italy.

The Respondent is Bernice Kennedy, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <valentinoz.com> (the “Domain Name”) is registered with Gname.com Pte. Ltd.

(the “Registrar”).

3. Procedural History

The Complaint was f iled with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2025. On February 20, 2025, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the Domain Name. On February 22, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 February 26, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant f iled an amendment to the Complaint on February 27, 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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notif ied the Respondent of the Complaint, and the proceedings commenced on March 5, 2025. In accordance with the Rules, paragraph 5, the due date for Response was March 25, 2025. The Respondent did not submit any response.

Accordingly, the Center notif ied the Respondent’s default on March 26, 2025.

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The Center appointed Ian Lowe as the sole panelist in this matter on April 2, 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 Complainant is a major manufacturer and retailer of haute couture dresses, women’s and men’s clothing and fashion accessories including bags and shoes. It was founded in 1960, and its brands are now available in over 90 countries with 160 Valentino operated stores and over 1,300 points of sale.

The Complainant is the proprietor of numerous registered trademarks for VALENTINO including International trademark number 570593 registered on April 24, 1991; European Union trademark number 001990407 registered on September 18, 2008; and United States trademark number 1153226 registered on May 5, 1981.

The Complainant is also the owner of over 1,000 domain names comprising VALENTINO, including
<valentino.com> at which it operates its principal website, “

The Domain Name was registered on February 24, 2023. It does not presently resolve to an active website, but at the time of preparation of the Complaint it resolved to a website of fering what the Complainant contends to be counterfeit products of the Complainant at significantly discounted prices, along with products of the Complainant’s competitors (the “Website”).

5. Parties’ Contentions
A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its VALENTINO trademark (the “Mark”), that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

B. Respondent

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

6. Discussion and Findings

For this Complaint to succeed in relation to the Domain Name the Complainant must prove that:

(i)        the Domain Name is identical or confusingly similar to a trademark or service mark in which the

Complainant has rights; and

(ii)       the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii)      the Domain Name has been registered and is 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 name. WIPO Overview of WIPO Panel Views on

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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 for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

Ignoring the generic Top-Level Domain “.com”, the Domain Name comprises the entirety of the Mark with the addition of the letter “z”. The Panel f inds that the addition of the letter “z” does not prevent a f inding of confusing similarity between the Domain Name and the Mark. WIPO Overview 3.0, section 1.8.

Accordingly, the Panel f inds that the Domain Name is confusingly similar to a trademark in which the

Complainant has rights, and 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. Accordingly, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shif ts 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.

The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. The Respondent has used the Domain Name not in connection with a bona fide offering of goods or services, but for a website of fering what the Complainant claims to be counterfeit products of the Complainant. The Panel notes that the Website is offering products for sale at what purport to be very substantially discounted prices, which is consistent with the products in question being counterfeit. There is no suggestion that the Respondent has ever been known by the Domain Name. The Respondent has chosen not to respond to the Complainant or to take any steps to counter the prima facie case established by the Complainant. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.

In addition, the nature of the Domain Name together with the website at the Domain Name create a strong risk of Internet user confusion.

The Panel f inds 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 Domain Name comprises the entirety of the Mark with the addition only of the letter ”z”. Further, the Panel notes that the Respondent has used the Domain Name for a website selling what purport to be the Complainant’s goods, and accordingly the Panel is in no doubt that the Respondent had the Complainant and its rights in the VALENTINO mark in mind when it registered the Domain Name.

In the absence of any response by the Respondent, the Panel has no reason to doubt that the Respondent is offering counterfeit goods of the Complainant on the Website, particularly given the very substantially discounted prices at which the Website is purporting to sell the goods. The Panel considers that the

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Respondent has registered and used the Domain Name to deceive Internet users into believing that the Domain Name is operated or authorized by the Complainant, and to attract Internet users by creating a likelihood of confusion with the Mark. In the Panel’s view, the use of a domain name for such activity, clearly with a view to commercial gain, amounts to paradigm bad faith registration and use for the purposes of the Policy.

Accordingly, the Panel f inds that the Domain Name has been registered and is being used in bad faith.

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 Domain Name <valentinoz.com> be transferred to the Complainant.

/Ian Lowe/
Ian Lowe
Sole Panelist
Date: April 16, 2025