Gianvito Rossi SRL Unipersonale v. Rossi Gianvito / Gianvito Rossi
Claim Number: FA1501001601449
Complainant is Gianvito Rossi SRL Unipersonale (“Complainant”), represented by William Bak of Howson & Howson LLP, Pennsylvania, USA. Respondent is Rossi Gianvito / Gianvito Rossi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gianvitorossipumps.com>, registered with Bizcn.com,Inc.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 22, 2015; the Forum received payment on January 22, 2015. The Complaint was submitted in both English and Chinese.
On January 26, 2015, Bizcn.com,Inc. confirmed by e-mail to the Forum that the <gianvitorossipumps.com> domain name is registered with Bizcn.com,Inc. and that Respondent is the current registrant of the name. Bizcn.com,Inc. has verified that Respondent is bound by the Bizcn.com,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 February 3, 2015, the Forum served the Chinese language Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 2015 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@gianvitorossipumps.com. Also on February 3, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 2, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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.
Complainant
Complainant uses GIANVITO ROSSI to identify its footwear offerings. Complainant owns the GIANVITO ROSSI mark through trademark registrations throughout the world, including with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,619,465, registered May 12, 2009) and the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 5,248,679, registered August 17, 2009). The disputed domain name includes the registered GIANVITO ROSSI mark to which the term “pumps” and generic top-level domain (“gTLD”) “.com” are added. The term “pumps” is a term for a woman’s shoe having medium or high heels. The resulting <gianvitorossipumps.com> domain name is confusingly similar to the GIANVITO ROSSI mark as the added term relates to Complainant’s footwear products.
Respondent has no rights or legitimate interests in the <gianvitorossipumps.com> domain name. Respondent has no authorization to use the GIANVITO ROSSI mark in domain names. There is no indication that Respondent is commonly known by the disputed domain name despite a WHOIS listing identifying “Rossi Gianvito” as registrant. Respondent directs the disputed domain name to a website purporting to sell footwear for women.
Respondent has engaged in bad faith registration and use of the <gianvitorossipumps.com> domain name. Respondent uses Complainant’s stylized mark on the resolving page to promote the sale of footwear for women. Respondent is intentionally attracting users to its own website by creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain name.
Respondent
Respondent did not submit a Response in this proceeding.
Language of the Proceedings
The Registration Agreement is written in Chinese, thereby making Chinese the language of the proceedings. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings may be conducted in English.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.”).
Complainant uses GIANVITO ROSSI to identify its fashionable footwear offerings. Complainant claims to own the GIANVITO ROSSI mark through trademark registrations throughout the world, including with the USPTO (Reg. No. 3,619,465, registered May 12, 2009) and the OHIM (Reg. No. 5,248,679, registered August 17, 2009). The Panel agrees that such trademark holdings sufficiently demonstrate Complainant’s rights in the GIANVITO ROSSI mark pursuant to Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant claims the disputed domain name is confusingly similar as it includes the registered GIANVITO ROSSI mark to which the term “pumps” and generic top-level domain (“gTLD”) “.com” are added. Complainant argues that the term “pumps” is a term for a woman’s shoe having medium or high heels, a product offered under Complainant’s brand. Past panels have determined that the addition of a term relating to a complainant’s mark plays no mitigating role in the confusing similarity analysis, but instead serves to increase the likelihood of confusion. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”). The disputed domain name removes the space from the mark and affixes the gTLD “.com,” both of which panels have found irrelevant to the confusing similarity analysis as spacing is not replicable and all domain names require some TLD. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). As such, the Panel agrees the <gianvitorossipumps.com> domain name is confusingly similar to the GIANVITO ROSSI mark pursuant to Policy ¶ 4(a)(i) as the relevant added term relates to Complainant’s footwear products.
Complainant has proven this element.
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.”).
Complainant claims Respondent has no rights or legitimate interests in the <gianvitorossipumps.com> domain name. Regarding Policy ¶ 4(c)(ii), Complainant asserts Respondent has no authorization to use the GIANVITO ROSSI mark in domain names. Further, despite the WHOIS listing of “Rossi Gianvito / Gianvito Rossi” as registrant, Complainant claims there is no indication that Respondent is actually commonly known by the name. Past panels have required some affirmative evidence beyond the self-serving WHOIS listing in order to showing “commonly known as” and rebut under Policy ¶ 4(c)(ii). See, e.g., Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”). As there is no such affirmative evidence before the Panel, the Panel finds Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Complainant further claims that Respondent directs the disputed domain name to a website purporting to sell footwear for women. The promoted footwear purports to be genuine GIANVITO ROSSI goods, and lists the goods for sale. The Panel determines that Respondent’s use of the <gianvitorossipumps.com> domain name to sell goods bearing Complainant’s brand without Complainant’s authority 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). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant).
Complainant has proven this element.
Complainant argues Respondent has engaged in bad faith pursuant to Policy ¶ 4(b)(iv). Complainant claims that Respondent uses Complainant’s stylized mark on the resolving page to sell footwear for women. Complainant claims Respondent is intentionally attracting users to this website by creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain name and goods promoted therein. Past panels have found evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent is using a confusingly similar domain name to make unauthorized sales of the complainant’s goods. See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”). As such, the Panel determines Respondent’s behavior falls within Policy ¶ 4(b)(iv) bad faith registration and use.
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <gianvitorossipumps.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: March 4, 2015
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