Societe Civile
G.A.R. v. Giuseppe Scavetta
Claim Number: FA0503000445170
Complainant is Societe Civile G.A.R. (“Complainant”), represented by James P. Duffy, of Berg and Duffy LLP, 3000 Marcus Avenue, Suite 1 West 2, Lake Success, NY 11042. Respondent is Giuseppe Scavetta (“Respondent”), 57 Rue Grimaldi, Monaco, Monaco 98000.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <repossi.com>, registered with Network Solutions, 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. Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 22, 2005; the National Arbitration Forum received a hard copy of the Complaint on March 23, 2005.
On March 23, 2005, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <repossi.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 March 25, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 14, 2005 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@repossi.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 20, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Ralph Yachnin 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.” 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 <repossi.com> domain name is identical to Complainant’s REPOSSI mark.
2. Respondent does not have any rights or legitimate interests in the <repossi.com> domain name.
3. Respondent registered and used the <repossi.com> domain name in bad faith.
B. Respondent failed to submit a response in this proceeding.
Complainant holds and administers trademarks for the Repossi Group, which manufactures and markets jewelry, watches, and accessories. Complainant has used the REPOSSI mark in connection with its products since 1920. Complainant has spent significant time and money promoting and protecting the REPOSSI mark. Complainant holds a trademark on the Principal Register of the United States Patent and Trademark Office for the REPOSSI mark, Reg. No. 2,068,932 (issued June 10, 1997).
Respondent registered the <repossi.com> domain name on November 10, 2004. Respondent was formerly an authorized distributor of REPOSSI brand jewelry in the United States. However, Respondent was never licensed to use the REPOSSI mark in connection with a domain name. Complainant terminated Respondent’s distribution license on February 15, 2005 and demanded transfer of the disputed domain name. The domain name does not resolve to any active website.
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.
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 has established that it has rights in the REPOSSI mark through registration with the United States Patent and Trademark Office and through continuous use of the mark in commerce since 1920. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive and that a respondent has the burden of refuting this assumption).
The <repossi.com> domain name is identical to Complainant’s REPOSSI registered trademark. The domain name incorporates the mark and simply adds the “.com” generic top-level domain (“gTLD”). Adding a gTLD does not distinguish the domain name from Complainant’s mark. Thus, the Panel finds that the domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Porto Chico Stores, Inc. v. Zambon, D2000-1270 (WIPO Nov. 15, 2000) (stating that the issue of identicality or confusing similarity is to be resolved “by comparing the trademark and the disputed domain name, without regard to the circumstances under which either may be used”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to submit a response in this proceeding. In the absence of a response, the Panel accepts as true all reasonable allegations contained in the Complaint unless clearly contradicted by the evidence. Complainant has alleged that Respondent lacks rights and legitimate interests in the <repossi.com> domain name. Neither Respondent nor the evidence contradicts this allegation. Furthermore, because Respondent has failed to submit a response, Respondent has failed to propose any set of circumstances that could substantiate its rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a complaint to be deemed true); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
The <repossi.com> domain name does not resolve to any active website. Moreover, Respondent has failed to produce any evidence that it has made preparations to use the domain name for any purpose. The Panel finds that, under these circumstances, Respondent cannot establish rights or legitimate interests in the domain name under Policy ¶¶ 4(c)(i) or (iii). See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the respondent advanced no basis by which the panel could conclude that it had rights or legitimate interests in the domain names, and no use of the domain names was established); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question).
No evidence before the Panel suggests that Respondent is commonly known by the <repossi.com> domain name. The domain name’s WHOIS information indicates that the registrant of the disputed domain name is known as “Giuseppe Scavetta” and is not known by the second-level domain that infringes on Complainant’s REPOSSI mark. Moreover, Respondent is not licensed to use Complainant’s mark. Thus, Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in the respondent’s WHOIS information implies that the respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”).
Respondent was formerly an authorized distributor of
Complainant’s products. However, Complainant’s affiliate’s contract with
Respondent did not authorize it to register any domain names incorporating
Complainant’s REPOSSI mark. The Panel finds that, in the absence of a specific
agreement between the parties, Respondent lacks rights and legitimate interests
in a domain name identical to the REPOSSI mark under Policy ¶ 4(a)(ii). See Allen-Edmonds Shoe Corp. v. Takin’ Care of
Bus., D2002-0799 (WIPO Oct. 10, 2002) (“Without a specific agreement
between the parties, the reseller does not have the right to use the licensor’s
trademark as a domain name.”); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb.
Forum Feb. 27, 2001) (finding that the respondent, a reseller of the
complainant’s products, did not have rights or legitimate interests in a domain
name that was confusingly similar to the complainant’s mark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
While each of the four circumstances listed under Policy ¶ 4(b), if proven, evidences bad faith use and registration of the domain name, additional factors can also be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
Although Respondent was a distributor of Complainant’s
products, Respondent was not licensed to use Complainant’s mark in a domain
name. The Panel finds that Respondent could not make any use of the <repossi.com>
domain name without misleading Internet users to believe that Respondent, not
Complainant, is the source of Complainant’s products. Respondent’s
opportunistic holding of the <repossi.com> domain name evidences
that Respondent registered and used the domain name in bad faith under Policy ¶
4(a)(iii). See Sony Kabushiki
Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith
registration and use where it was “inconceivable that the respondent could make
any active use of the disputed domain names without creating a false impression
of association with the complainant”); see also Procter & Gamble Co. v.
Hlad, FA 126656 (Nat. Arb. Forum Nov. 20, 2002) (finding bad faith
registration and use where the respondent, a distributor of the complainant’s
products who was not the complainant’s licensee, used the complainant’s mark in
its domain name, fostering the inference that the respondent was the creator of
the complainant’s products rather than a mere distributor); see also Assoc’d
Materials, Inc. v. Perma Well, Inc., FA 154121 (Nat. Arb. Forum May 23,
2003) (finding that the respondent’s actual knowledge of the complainant’s
rights in the ULTRAGUARD mark, inferred from the fact that the respondent was a
distributor of the complainant, along with the respondent being on notice of
its own lack of rights evidenced that the domain name was registered and used
in bad faith).
Respondent’s registration of the disputed domain name, which is identical to Complainant’s mark, suggests that Respondent knew of Complainant’s rights in the REPOSSI mark. Additionally, Complainant’s trademark registration on the Principal Register of the United States Patent and Trademark Office gave Respondent constructive notice of Complainant’s mark. Moreover, the fact that Respondent was formerly a licensed reseller of Complainant’s products evidences Respondent’s actual notice of Complainant’s rights in the REPOSSI mark. Thus, the Panel finds that Respondent chose the <repossi.com> domain name based on the distinctive qualities of Complainant’s mark, which evidences bad faith registration and use under Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when the respondent reasonably should have been aware of the complainant’s trademarks, actually or constructively.”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”).
The Panel finds that Policy ¶ 4(a)(iii) has been 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 <repossi.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: April 26, 2005.
National
Arbitration Forum
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