Gianvito Rossi SRL Unipersonale v. inflatable bouncer, inflatablebouncerforsale.com
Claim Number: FA1409001579116
Complainant is Gianvito Rossi SRL Unipersonale (“Complainant”), represented by William Bak of Howson & Howson LLP, Pennsylvania, USA. Respondent is inflatable bouncer, inflatablebouncerforsale.com (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gianvitorossisale.com>, registered with GoDaddy.com, LLC.
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 September 10, 2014; the National Arbitration Forum received payment on September 10, 2014.
On September 11, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <gianvitorossisale.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 12, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 2, 2014 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@gianvitorossisale.com. Also on September 12, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 7, 2014, 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 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 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 <gianvitorossisale.com> domain name, the domain name at issue, is confusingly similar to Complainant’s GIANVITO ROSSI mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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."
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.
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.”).
FINDINGS
Complainant owns the GIANVITO ROSSI mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3, 619,465, registered May 12, 2009). Complainant’s rights in the GIANVITO ROSSI mark are further demonstrated through its trademark registrations around the world, which it uses in connection with footwear goods.
The <gianvitorossisale.com> domain name is confusingly similar to Complainant’s GIANVITO ROSSI mark because Respondent has simply attached the generic term sale to the mark. Respondent lacks rights or legitimate interests in the disputed domain and is not commonly known by the <gianvitorossisale.com> domain name. Respondent is neither authorized nor licensed to use the GIANVITO ROSSI mark. Respondent does not provide any bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name. Respondent currently uses the disputed domain name in an attempt to attract confused Internet users to its own web page for commercial gain.
Respondent registered the disputed domain name on July 16, 2014.
Complainant uses the GIANVITO ROSSI mark in connection with its footwear `products and services and owns the GIANVITO ROSSI mark through its trademark registrations with the USPTO (e.g., Reg. No. 3, 619,465, registered May 12, 2009). Complainant’s rights in the GIANVITO ROSSI mark are further demonstrated through trademark registrations around the world. Such registrations are sufficient to establish rights in the GIANVITO ROSSI mark pursuant to Policy ¶ 4(a)(i) requirements. 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). Thus, in its registrations with the USPTO and trademark registrations around the world, Complainant has established its rights in the mark pursuant to Policy ¶ 4(a)(i).
The <gianvitorossisale.com> domain name is confusingly similar to Complainant’s GIANVITO ROSSI mark because Respondent has simply added the generic term “sale” to the mark. The disputed domain name differs from the mark given the affixation of the generic top-level domain (“gTLD”) “.com” and the omission of a space between the words. Previous panels have generally found that a domain name differing from a mark by the addition of a generic term does not escape confusing similarity, and that the affixation of a gTLD and the omission of a space are irrelevant to the Policy ¶ 4(a)(i) analysis. See Best Western Int’l, Inc. v. Lost in Space, SA, FA 126834 (Nat. Arb. Forum Nov. 7, 2012) (finding that the deletion of spacing in a mark and the addition of a gTLD are irrelevant as they are dictated by the standardized nature of second- and top-level domain names, and further that the addition of generic and descriptive terms fails to negate confusing similarity). As such, this Panel finds that the disputed domain name is confusingly similar to Complainant’s GIANVITO ROSSI mark.
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <gianvitorossisale.com> domain name. The WHOIS information identifies a domain name concerning the sale of inflatable bouncers as the registrant of the disputed domain name. Further, Respondent is neither licensed nor authorized to use the GIANVITO ROSSI mark. Respondent has failed to submit a response to refute any of Complainant’s contentions. Given the lack of evidence to infer otherwise, the Panel finds that Respondent is not commonly known by the <gianvitorossisale.com> domain name pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. Respondent currently uses the disputed domain name to sell competing goods. Previous panels that have addressed such an issue have refused to find a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy). Accordingly, the Panel finds that Respondent does not provide any bona fide offering of goods or services and does not make a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent currently uses the disputed domain name to attract confused Internet users to the web page for its own commercial gain. The notes that the disputed domain name resolves to a website filled with competing products. Previous panels have found that such use constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv).) Thus, the Panel holds that Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gianvitorossisale.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 8, 2014
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