Grapos Postmixsirup Vertriebs GmbH v. Gioacchino Zerbo
Claim Number: FA1007001335182
Complainant is Grapos
Postmixsirup Vertriebs GmbH (“Complainant”), represented by MMag Dr. Rainer Beck,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <grapos.com>, registered with FABULOUS.COM PTY LTD.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 13, 2010.
On July 14, 2010, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <grapos.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.COM PTY LTD. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 21, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@grapos.com. Also on July 21, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 17, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <grapos.com> domain name is identical to Complainant’s GRAPOS mark.
2. Respondent does not have any rights or legitimate interests in the <grapos.com> domain name.
3. Respondent registered and used the <grapos.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Grapos Postmixsirup Vertriebs GmbH, produces syrup and soft drink beverages. Complainant has used the GRAPOS mark in conjunction with its business since 1984. Complainant also registered and has used the <grapos.at> domain name since January 16, 2000. In addition, Complainant holds a trademark registration with the Swiss Federal Institute of Intellectual Property (“SFIIP”) for the GRAPOS mark (e.g., Reg. No. 544343 registered on February 2, 2006).
The disputed <grapos.com> domain name was registered July 1, 2003. Respondent, Gioacchino Zerbo, received the <grapos.com> domain name on June 30, 2010. The disputed domain name resolves to a directory website that provides links to commercial websites and displays pop-up advertisements.
Complainant offers evidence that Respondent has a history of registering domain names that infringe upon the trademark rights of others and has been ordered by previous UDRP panels to transfer the disputed domain names to the respective complainants. See ExxonMobil Oil Corp. v. Gioacchino Zerbo, D2008-0046 (WIPO Feb. 27, 2008); see also Lego Juris A/S v. Gioacchino Zerbo, D2009-0500 (WIPO June 29, 2009).
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant asserts rights in the GRAPOS mark through its registration of the mark with the SFIIP (e.g., Reg. No. 544343 registered on February 2, 2006). The Panel finds Complainant has established rights in the mark pursuant to Policy ¶ 4(a)(i) through registration of the GRAPOS mark with a valid trademark authority. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). Furthermore, the Panel finds it irrelevant that Complainant registered its trademark in a country other than the one in which Respondent resides. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant also asserts common law rights in the GRAPOS mark through its continuous use of the mark since 1984 and the consequent development of secondary meaning in the mark. Complainant claims it began using its GRAPOS mark in conjunction with its business in 1984. Complainant also provides evidence that it incorporated its business, which includes the term “Grapos” in the name of the business, in 1989. Moreover, Complainant has operated the <grapos.at> domain name in connection with its business since January 16, 2000. Complainant contends GRAPOS is an internationally recognized mark. The Panel finds Complainant has provided sufficient evidence of its continuous use and acquired secondary meaning in the GRAPOS mark to establish common law rights in the mark under Policy ¶ 4(a)(i) predating Respondent’s registration of the disputed domain name. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”).
Complainant argues Respondent’s <grapos.com> domain name is identical to its GRAPOS mark. In Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000), the panel found <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant. Likewise, in SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008), the panel concluded that the “domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.” Here, the Panel finds Respondent fully incorporates Complainant’s GRAPOS mark in the disputed domain name and then merely adds the gTLD “.com” to the mark. Based on precedent, the Panel finds Respondent’s <grapos.com> domain name is identical to Complainant’s GRAPOS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first make a prima facie case showing Respondent lacks rights and legitimate interests in the <grapos.com> domain name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Although Respondent failed to submit a Response, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
The WHOIS information lists “Gioacchino Zerbo” as the registrant of the disputed domain name. The Panel finds “Gioacchino Zerbo” is not similar to the <grapos.com> domain name. Without evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant asserts Respondent uses the <grapos.com>
domain name to resolve to a directory website that provides links to commercial
websites and displays pop-up advertisements.
The Panel presumes Respondent profits from this use of its confusingly
similar domain name. Consequently, the
Panel finds Respondent’s use does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii). See Pioneer Hi-Bred Int’l Inc. v.
Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that the
respondent did not have rights or legitimate interests in a domain name that
used the complainant’s mark and redirected Internet users to a website that
pays domain name registrants for referring those users to its search engine and
pop-up advertisements); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that
using a domain name to direct Internet traffic to a website featuring pop-up
advertisements and links to various third-party websites is neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i)
nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the
registrant presumably receives compensation for each misdirected Internet
user).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant provides evidence that Respondent has been subject to numerous UDRP proceedings wherein the disputed domain names were transferred from Respondent to the respective complainants in those cases. See ExxonMobil Oil Corp. v. Gioacchino Zerbo, D2008-0046 (WIPO Feb. 27, 2008); see also Lego Juris A/S v. Gioacchino Zerbo, D2009-0500 (WIPO June 29, 2009). Based on these cases, the Panel finds that Respondent has engaged in a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See Arai Helmet Am., Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”); see also Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been the subject of numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
As previously discussed, Respondent uses the disputed domain name, which is confusingly similar to Complainant’s GRAPOS mark, to profit from displaying links to third-party websites and pop-up advertisements. The Panel finds Respondent intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark. Therefore, the Panel finds this behavior qualifies as registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <grapos.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 20, 2010
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