Valentino S.p.A. v Tin Dang

WIPO Case No. D2024-3782

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

VALENTINO S.p.A. v. Tin Dang

Case No. D2024-3782

1. The Parties

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

The Respondent is Tin Dang, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <valentinovision.shop> is registered with Spaceship, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2024. On September 17, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 18, 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 Purposes, Privacy service provided by Withheld for Privacy ehf.) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 19, 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 amendment to the Complaint on September 19, 2024.

The Center verified that the Complaint together with the amendment to 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 Complaint, and the proceedings commenced on September 24, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2024.

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The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on October 18, 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 owns a fashion business founded in 1960 by the famous fashion designer Valentino
Garavani and his business partner Giancarlo Giammetti.

The Complainant offers a wide range of luxury products from Haute Couture and Prèt-à-Porter to an extensive accessories collection that includes bags, shoes, small leather goods, belts, eyewear, silks, and perfumes.

The Complainant claims that VALENTINO is one of the most storied brands in the world, being available in over 90 countries thanks to a capillary retail network charted out over the decades of 160 directly operated Valentino stores located in the most elegant shopping streets in the world, as well as in over 1,300 points of sale.

The Complainant is the owner of numerous trademark registrations for VALENTINO (word mark), including the following:

- International Trademark Registration No. 570593, registered on April 24, 1991, and duly renewed, in

classes 3, 14, 18 and 25;

- International Trademark Registration No. 764790, registered on November 20, 2000, and duly renewed, in

classes 3, 9, 14, 16, 18, 19, 20, 21, 24, 25, 27, 34 and 35;

- European Union Trademark Registration No. 001990407, filed on December 7, 2000, registered on

September 18, 2008, and duly renewed, in classes 3, 9, 14, 16, 18, 19, 20, 21, 24, 25, 27, 34 and 35; and

- United States Trademark Registration No. 0910955, filed on February 10, 1970, registered on April 6, 1971,
and duly renewed, in class 25.

The Complainant is the owner of many domain names identical to or comprising the trademark VALENTINO, including <valentino.com>, registered on July 21, 1998.

The disputed domain name was registered on June 12, 2024, and resolves to a website featuring a VALENTINO, VLTN and V logos – at discounted prices, along with sunglass cases and chains which are identified as Valentino products but are not manufactured and sold by the Complainant. No disclaimer of non-affiliation with the Complainant appears on the website.

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.

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Notably, the Complainant contends that it is the owner of a broad array of trademark registrations worldwide for VALENTINO. The trademark has been regularly used by the Complainant for more than 60 years in connection with products in the high-fashion and leather industry, including ready-to-wear clothes, handbags, small leather goods, luggage, shoes, jewelry, eyewear, and fragrances.

In light of its use for decades and its impressive client base, VALENTINO is indisputably a well-known trademark worldwide, including in the United States. In Valentino S.p.A. v. Registration Private, Domains By Proxy, LLC / Green Jim, Jimgreen, WIPO Case No. D2022-2547, where the respondent was based in the United States, the panel found that “the widespread commercial recognition of the trademark VALENTINO is such that the Respondent must have had knowledge of the trademark before registering the disputed domain name”.

As an additional circumstance evidencing the Respondent’s bad faith, the Respondent provided inaccurate contact information in the WhoIs records, since at least the registrant email address is incorrect as the domain name <nyxbeautyhub.shoр>, on which the registrant email address […]@nyxbeautyhub.shoр is based, is not registered.

In addition to the above, the domain name <nyxbeautyhub.shoр> on which the registrant email address is based includes the cosmetics brand NYX owned by L’Oréal, a circumstance indicating that the Respondent is indeed familiar with the registration and/or use of domain names encompassing third-party trademarks.

Therefore, it is clear that the Respondent, by registering and using the disputed domain name, acted in bad faith with the purpose of confusing Internet users and leading them to believe that the website to which the disputed domain name resolves belongs to or is sponsored by the Complainant and thereby benefit from the

prestige of the Complainant’s trademark VALENTINO.

Finally, the Complainant requests the Panel to issue a decision ordering the transfer of the disputed domain name to the Complainant.

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

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is 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 “vision”, may bear on assessment of the second and third elements, the Panel finds the addition of such 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 “.shop” generic Top-Level Domain (“gTLD”) is viewed as a standard registration requirement and is
generally disregarded under the first element confusing similarity test, as set forth in section 1.11.1 of

WIPO Overview 3.0.

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.

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.

The Panel is satisfied that the Respondent must have been aware of the Complainant’s business and trademark VALENTINO mentioned in Section 4 above (Factual Background) and also the Complainant’s website to which its official domain names resolve when the Respondent registered the disputed domain name on June 12, 2024. By that time the Complainant had registered and used the well-known trademark VALENTINO for many years.

By registering the disputed domain name, the Respondent was targeting the Complainant and its business by incorporating the Complainant’s trademark VALENTINO in the disputed domain name in its entirety.

The Complainant’s trademark in the disputed domain name and the content of the website at the disputed domain name lead Internet users to mistakenly think that the website is an official website of the Complainant and thereby the Respondent may capitalize on the prestige of the trademark VALENTINO for its own monetary benefit.

The clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the disputed domain name and the nature of the disputed domain name, are indicative of bad faith (as stated in section 3.2.1 of the WIPO Overview 3.0).

Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

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

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 <valentinovision.shop> be transferred to the Complainant.

/Miguel B. O'Farrell/
Miguel B. O'Farrell
Sole Panelist
Date: October 25, 2024