SIELTE S.p.A. v. Salvatore Gueci
Claim Number: FA1109001408629
Complainant is SIELTE S.p.A. (“Complainant”), represented by Lorenzo Nicoletti, Italy. Respondent is Salvatore Gueci (“Respondent”), Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sielte-nig.com>, registered with Tucows, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 22, 2011; the National Arbitration Forum received payment on September 22, 2011.
On September 22, 2011, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <sielte-nig.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 19, 2011 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@sielte-nig.com. Also on September 29, 2011, 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 October 31, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sielte-nig.com> domain name is confusingly similar to Complainant’s SIELTE mark.
2. Respondent does not have any rights or legitimate interests in the <sielte-nig.com> domain name.
3. Respondent registered and used the <sielte-nig.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, SIELTE S.p.A., is an Italy-based company operating in the field of telecommunications, technological systems for transport and infrastructures, and energy systems. Complainant owns the SIELTE mark, which it has used for the last 20 years to identify and promote its products and services. Complainant claims that it holds a number of trademark registrations, including an International Trademark (Reg. No. 581,953 registered on January 30, 1992) and Italian Trademarks (e.g., Reg. No. 983,753 filed June 4, 2001).
Respondent, Salvatore Gueci, registered the <sielte-nig.com> domain name on October 25, 2007. The disputed domain name resolves to a website that is under construction and boasts the title “System Information Ethernet Line Termination Equipment – Network Implementation Group.”
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 contends that it has established rights in the SIELTE mark. Complainant claims to own several trademark registrations for the SIELTE mark, including an International Trademark (Reg. No. 581,953 registered January 30, 1992) and Italian Trademarks (e.g., Reg. No. 983,753 filed June 4, 2001). However, Complainant has not provided evidence of these trademark registrations. Therefore, the Panel finds that Complainant has failed to demonstrate rights in the SIELTE mark through its trademark registrations pursuant to Policy ¶ 4(a)(i). Complainant may still establish rights in the mark by providing evidence of common law rights under Policy ¶ 4(a)(i). 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 Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Here, Complainant states that it is an international company in the field of telecommunications, technological systems for transport and infrastructures, and energy systems, with over 2,500 employees and 20 operative centers around the world. Complainant provides a certificate of incorporation for its subsidiary, SIELTE Nigeria Limited, which lists the incorporation date as June 7, 2000 in the Federal Republic of Nigeria. Complainant proffers that in the last 20 years it has focused on third-world countries to carry out its development projects, such as the ones executed in Nigeria through its subsidiary SIELTE Nigeria. The Panel finds that Complainant has demonstrated secondary meaning in its SIELTE mark through its continuous and exclusive use of the mark for the past 20 years in connection with its telecommunications company. Therefore, the Panel finds that Complainant has proven common law rights in the SIELTE mark under Policy ¶ 4(a)(i). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership); see also Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years).
Respondent’s <sielte-nig.com> domain name is confusingly similar to its SIELTE mark. The disputed domain name incorporates Complainant’s entire mark and alters it only by adding a hyphen, the letters “nig,” which reference Nigeria, and the generic top-level domain name (“gTLD”) “.com.” The Panel finds that the addition of a descriptive or geographic word, or, in this case, a geographically descriptive abbreviation, “nig,” which references Complainant’s subsidiary SIELTE Nigeria, does not avoid a finding of confusing similarity. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). The Panel also finds that the addition of a hyphen and gTLD do not significantly differentiate the disputed domain name from Complainant’s mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s SIELTE mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant contends that Respondent does not have rights or legitimate interests in the disputed domain name. Previous panels have held that a complainant must first make a prima facie showing in support of its allegations, and then the burden of proof shifts to the respondent to show that it does have rights and legitimate interests. See TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16, 2002) (“In order to bring a claim under the Policy, Complainant must first establish a prima facie case. Complainant’s [initial burden] is to provide proof of valid, subsisting rights in a mark that is similar or identical to the domain name in question.”). The Panel finds that Complainant has made a prima facie case. Due to Respondent’s failure to submit a response to the Complaint, the Panel is free to assume that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel elects to examine the record under Policy ¶ 4(c) to determine if Respondent has rights and legitimate interests in the disputed domain name.
Complainant claims that Respondent is not commonly known by the <sielte-nig.com> domain name and is not authorized to use its SIELTE mark. The WHOIS information identifies the registrant of the disputed domain name as “Salvatore Gueci,” which the Panel determines is not similar to the disputed domain name. Therefore, the Panel concludes that Respondent is not commonly known by the <sielte-nig.com> domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s <sielte-nig.com> domain name currently resolves to a website that states “Under Construction” and contains the title “System Information Ethernet Line Termination Equipment – Network Implementation Group.” The Panel finds that Respondent’s failure to make an active use of the disputed domain name is evidence that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <sielte-nig.com> domain name. See Broadcom Corp. v. Wirth, FA 102713 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to display an “under construction” page did not constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) ("Respondent's unsupported statement that a potentially legitimate [genealogy] website will be coming soon will not suffice to demonstrate rights or interests under Policy ¶ 4(a)(ii)" where the respondent provided no evidence that it actually planned to host a genealogy site and misspelled the only instance of the word "genealogy" on its website).
According to Complainant, Respondent offered to sell the <sielte-nig.com> domain name to Complainant. In an e-mail from Respondent to Complainant, Respondent states, “I am willing to sell the domain name.” The Panel determines that this is sufficient evidence that Respondent has offered to sell the domain name to Complainant, which further supports a finding that Respondent lacks rights and legitimate interests in the <sielte-nig.com> domain name under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”).
Complainant alleges that Respondent is a former employee of Complainant and that Respondent registered the <sielte-nig.com> domain name for the purpose of hosting Complainant’s official website for its SIELTE Nigeria subsidiary. Respondent registered the disputed domain name in its own name instead of in Complainant’s name. Respondent resigned in February 2011, and, after receipt of Complainant’s cease-and-desist letters in regard to its ownership and use of the domain name, Respondent changed the resolving website to the “under construction” page. The Panel concludes that this evidence is further proof that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Vinidex Pty Ltd. v. Auinger, AF-0402 (eResolution Oct. 18, 2000) (finding that the respondent lacked rights and legitimate interests in the domain name because it did not resolve to a developed website and the respondent, a former employee of the complainant, had constructive knowledge of the complainant’s rights in the mark); see also Sci., Eng’g & Tech. Assocs. Corp. v. Freeman, FA 637300 (Nat. Arb. Forum Mar. 14, 2006) (holding that the respondent, the Chief Financial Officer of the complainant, was not authorized or licensed to register or use domain names that incorporate Complainant’s mark and therefore did not have rights or legitimate interests in the domain name containing the complainant’s mark).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
As the Panel has previously determined that Respondent has offered to sell the <sielte-nig.com> domain name, the Panel concludes that Respondent’s willingness to sell the disputed domain name to Complainant is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any context other than to offer it for sale to the complainant amounts to a use of the domain name in bad faith).
Respondent’s <sielte-nig.com> domain name resolves to an inactive website that only contains the phrase “under construction,” the title of the website, and an e-mail address. The Panel determines that Respondent’s failure to make an active use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Respondent is a former employee of Complainant and was hired to register the disputed domain name for Complainant. Respondent instead registered the <sielte-nig.com> domain name in Respondent’s personal name. The Panel concludes that Respondent’s status as a former employee indicates that Respondent’s registration and use of the <sielte-nig.com> domain name was, and is, in bad faith pursuant to Policy ¶ 4(a)(iii). See Arab Bank for Inv. & Foreign Trade v. Akkou, D2000-1399 (WIPO Dec. 19, 2000) (finding bad faith registration and use where the respondent was formerly employed by the complainant, was fully aware of the name of her employer, and made no use of the infringing domain name); see also Anbex Inc. v. WEB-Comm Techs. Group, FA 780236 (Nat. Arb. Forum Sept. 19, 2006) (finding bad faith registration and use where the complainant hired the respondent to register the disputed domain name and the respondent later re-registered the disputed domain name on its own behalf and refused to transfer it to the complainant once their business relationship ended).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sielte-nig.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 7, 2011
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