Gianvito Rossi S.R.L. Unipersonale v. Vastsee Wholesale Co., Ltd c/o Nick Wang
Claim Number: FA1706001735793
Complainant is GIANVITO ROSSI S.R.L. UNIPERSONALE (“Complainant”), represented by William Bak of Howson & Howson LLP, Pennsylvania, USA. Respondent is VASTSEE WHOLESALE CO., LTD. c/o NICK WANG (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <gianvitorossishoes.com> and <gianvitorossioutlet.com>, registered with FastDomain 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 14, 2017; the Forum received payment on June 14, 2017.
On June 14, 2017, FastDomain Inc. confirmed by e-mail to the Forum that the <gianvitorossishoes.com> and <gianvitorossioutlet.com> domain names are registered with FastDomain Inc. and that Respondent is the current registrant of the names. FastDomain Inc. has verified that Respondent is bound by the FastDomain 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 June 15, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 2017 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@gianvitorossishoes.com, postmaster@gianvitorossioutlet.com. Also on June 15, 2017, 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 July 9, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in GIANVITO ROSSI and alleges that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domains name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant sells footwear by reference to the trademark GIANVITO ROSSI;
2. the trademark is registered, inter alia, with the United States Patent and Trademark Office (“USPTO”) as Reg. No. 3,619, 465 registered May 12, 2009[i];
3. the disputed domain names were created in July 2013;
4. the disputed domain names are not in use and there is no evidence of their use in the past; and
5. there is no commercial relationship between the parties and Complainant has not authorized Respondent to use its trademarks or to register any domain name incorporating its trademarks.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registration with a national authority provides evidence of trademark rights.[ii] Complainant provides evidence of its USPTO registration for GIANVITO ROSSI and so it has trademark rights in that name.
The disputed domain names takes the whole of the trademark and add either the word “shoes” or “outlet,” plus the gTLD “.com.” For the purposes of comparison, the gTLD can generally be ignored, as it can in this case.[iii] The additional words are wholly non-distinctive and do not affect the identity of the trademark.[iv] The trademark remains the distinctive element of the domain names and the Panel is satisfied that the disputed domain names are confusingly similar to Complainant’s trademark.
The Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[v]
The publicly available WHOIS information identifies “NICK WANG / VASTSEE WHOLESALE CO., LTD” as the registrant and so does not provide any prima facie evidence that Respondent might be commonly known by either of the disputed domain names.
There is no evidence that Respondent has relevant trademark rights and Complainant has not permitted Respondent to use its trademark.
Complainant makes the unsupported assertion that the disputed domain names are not in use. Given that the domain names have been registered for four years it is surprising that Complainant has made no effort to prove that claim by way of screenshots or internet archive records.
Nonetheless, the Panel has made its own enquiries and can find no resolving websites or indications of past use of the domain names and in the absence of a Response finds no evidence of use, or demonstrable preparations to use, the domain names in connection with a bona fide offering of goods or services, nor evidence of noncommercial or fair use of the domain names.
The Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the disputed domain names. Again, absent a Response, there is nothing on which a claim to rights or interests in the disputed domain names can rest and so the Panel finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and that they are being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
The Complaint does not make a compelling case for the application of one or more of those subparagraphs. It does, however, petition the Panel to find, as separate matters, registration in bad faith and use in bad faith.
Complainant relies on an earlier UDRP decision between itself and Respondent which involved the same trademark. The case of Gianvito Rossi SRL Unipersonale v. NICK WANG / VASTSEE WHOLESALE CO., LTD.[vi]
concerned the domain name, <shopgianvitorossi.com>. Respondent also defaulted in that case and did not file a Response.
The only passage from that earlier decision of relevance is set out below, where the panelist wrote:
“Complainant contends that it is a world leader in the high fashion shoes for women industry and Complainant’s brand is well known in such industry and by consumers of footwear for women. Complainant also contends that Respondent’s website is directed to the sale of footwear for women. Complainant argues that Respondent uses the disputed domain name to attract Internet users to its own website for commercial gain. Complainant believes that such use of a disputed domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). Previous panels have agreed with the argument. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Consequently, the Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iv).”
In the present case Complainant asserts that the trademark has been used internationally and was well-known before the disputed domain name was created. The evidence of those claims is limited to screenshots from Complainant’s website (essentially showing articles of clothing) and reference to its international trademark portfolio. None of that information establishes a reputation in the trademark as claimed.
In the earlier UDRP case it is not clear whether the panelist made his own finding that the trademark was well-known. There is no reference in the case to any evidence of renown and the panelist seems to have simply accepted Complainant’s uncontested claim.
The earlier UDRP case appears to have involved a competitive website resolving from the at-issue domain name. In the present cases the domain names are not in use.
The earlier UDRP case was decided some time ago. However, the Panel observes that the at-issue domain name there was registered in July 21, 2013 at the same time as the disputed domain names in the present case. To the extent that the Complaint insinuates bad faith registration of the disputed domain names because of the decision against Respondent in the earlier UDRP case, it rests on a false premise since all three domain names were registered essentially at the same time.
In short, the Panel does not find the earlier UDRP case instructive. If Complainant is to succeed it must somehow be established to the Panel’s satisfaction that the disputed domain names were, in 2013, registered in bad faith and, in spite of their conceded non-use, were “used” in bad faith in a sense understood by the Policy.
The Complaint as framed establishes neither of those matters. It is poorly supported and another panelist might have denied it. That said, there are factors which have influenced this Panel to make its own revision of the evidence.
Respondent resides in China. The trademark consists of an Italian first name and family name. In the absence of a Response it has to be questioned why Respondent would choose to adopt that name. Further, there is no evidence of reputation but Complainant asserts that it makes international sales. The earlier UDRP case does not allude to evidence of reputation but is proof that one of the domain names registered by Respondent in July 2013, which incorporated the trademark, was then used to sell goods directly competitive with those sold by Complainant under the trademark. Again, in the absence of any contrary explanation from Respondent, a reasonable inference can be drawn that Complainant’s trademark had come to Respondent’s attention before the disputed domain names were registered. Finally, the domain names themselves are, as already found, confusingly similar to the trademark in at least the sense that they add English language words to the trademark which directly relate to either goods sold by Complainant under the trademark or to a sales mode for those types of goods.
Panel finds registration of both disputed domain names in bad faith.
The domain names are not in use and so Complainant faces a hurdle in terms of proof of use in bad faith. Nonetheless, in limited circumstances, panelists have held so-called “passive holding” of a domain name to constitute use in bad faith. That reasoning was first laid out in the case of Telstra Corporation Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000).[vii] A pre-condition is that that the relevant trademark has a level of reputation such that it is difficult to conceive of any good faith use of the at-issue domain name. In uncovering the earlier UDRP case between the parties referred to above[viii], the Panel found several UDRP actions brought by Complainant in respect of alleged misuse of the trademark, all successful. Notwithstanding the limited information contained in the earlier UDRP case discussed herein[ix], there is something of a consensus arising from those cases that the trademark has been widely used.
For these reasons and in the absence of any contest by Respondent, the Panel finds use of the domain names in bad faith.
The Panel accordingly finds that Complainant has established the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gianvitorossishoes.com> and <gianvitorossioutlet.com>domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons
Panelist
Dated: July 18, 2017
[i] This USPTO registration is for a representation of the name in cursive script but for the purposes of para. 4(a)(i) of the Policy has been treated by the Panel as equivalent in effect to a word mark registration.
[ii] See State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
[iii] See PepsiCo, Inc. v. Shah, FA 103934 (Nat. Arb. Forum Mar. 4, 2002); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000))
[iv] See, for example, Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (FORUM Jan. 21, 2016) determining that confusing similarity exists where a disputed domain name contains complainant’s mark and differs only by the addition of a generic or descriptive phrase and top-level domain.
[v] See Do The Hustle, LLC v. Tropic Web, D2000- 0624 (WIPO Aug. 21, 2000).
[vi] FORUM Claim Number: FA1410001584845
[vii] finding “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate”.
[viii] A copy not being made available with the Complaint.
[ix] And putting to one side the fact that UDRP decisions are not constrained by principles of precedent in the same way as certain court decisions.
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