Colibri Corporation v. Dinoia Michele
Claim Number: FA0603000662937
PARTIES
Complainant is Colibri Corporation (“Complainant”), 100 Niantic Avenue, Providence, RI 02907. Respondent is Dinoia Michele (“Respondent”), represented by Avvocato Valerio Donnini, 4 Via Venezia 65121, Pescara, PE Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <calibri.com>,
registered with Tuonome.it SRL.
PANEL
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.
Debrett Lyons as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 21, 2006; the National Arbitration Forum received a
hard copy of the Complaint on March 23, 2006.
On March 24, 2006, Tuonome.it SRL confirmed by e-mail to the National
Arbitration Forum that the <calibri.com>
domain name is registered with Tuonome.it SRL and that the Respondent is the
current registrant of the name. Tuonome.it
SRL has verified that Respondent is bound by the Tuonome.it SRL 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 27, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of April 17, 2006 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@calibri.com by e-mail.
A timely Response was received and determined to be complete on April
14, 2006.
On April 22, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Debrett Lyons as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant alleges that its mark COLIBRI is well known by
cigarette and cigar smokers, having been used since at least 1928. The mark has been registered in a number of
countries in respect of cigarette lighters and other smokers’ articles, lighter
fuel, jewelry, watches, clocks and writing instruments.
It contends that the disputed domain name < calibri.com> is
confusingly similar to its trademark.
It alleges that to native English language speakers, “calibri” is a common misspelling of
“colibri”.
The Complainant argues that the Respondent has no rights or legitimate
interests in the disputed domain name as it is not known by that name and is
not using the name in connection with a bona fide offering of goods or
services. Instead it has used the
disputed domain name to confuse Internet users and, amongst other things,
advertise goods which compete with the Complainant’s goods.
The Complainant also contends that the disputed domain name was
registered and is being used in bad faith as it was the intention of the
Respondent to attract internet users to a website corresponding with the domain
name by creating a likelihood of confusion and for its commercial gain.
B. Respondent
The
Respondent denies the allegations of confusing similarity, lack of legitimate
interest and bad faith use and registration and instead alleges that the
Complainant is attempting to hijack (so-called Reverse Domain Name Hijacking)
the domain name which it has registered lawfully.
The Respondent claims that the disputed domain name was chosen simply
because it used a common dictionary work in Italian, “calibri”, which has the
same meaning as the word “calibre” in English (the diameter of a tube or gun
barrel). It claims that the word is
both descriptive and generic and that “the domain name in question was
registered as it is a highly marketable domain name with many different
possible end users”.
The Respondent argues that because of the Italian language meaning of
the word “calibri”, the disputed domain name cannot be suggestive of the
Complainant, and must be considered a common descriptive word when used in
contexts and channels of commerce outside those provided by the Complainant.
The Respondent goes on to explain that its business is “to register
numerous domain names that comprise generic, descriptive or geographic terms .
. . and to develop business-oriented websites using these domain names.”
Accordingly, it argues that it has a legitimate interest in the
disputed domain name. It further argues
that since it has a bona fide business dealing in generic domains, there
is no question that the name was registered in bad faith, nor any proof of
subsequent use in bad faith.
In these
respects, the Respondent asserts that there is no evidence that it registered
the disputed domain name with the Complainant’s mark in mind; it had no
intention to cybersquat as evidenced by the fact that the domain was registered
for some years without the Respondent approaching the Complainant; it put
nothing on the <calibri.com> website to suggest the Respondent was
associated with the Complainant; and the Complainant has adduced no evidence
that the disputed domain name has in fact caused any confusion.
The Respondent submits that “to prove bad faith registration and use of
a common word domain name, the Complainant must prove either that the disputed
domain name was registered specifically to sell to the Complainant, or that its
value derives exclusively from the fame of the Complainant’s mark”.
FINDINGS
1.
The disputed
domain name was registered on June 30, 2003.
2.
Absent contest
by the Respondent, the Panel accepts that the Complainant’s mark has been used
since at least 1928 and from a time prior to the registration of the disputed
domain name enjoyed a reputation amongst the cigarette and cigar smoking
public.
3.
Absent contest
by the Respondent, the Complainant has shown by copies of registration
certificates and change of name / renewal certificates that it is the
registered proprietor of the trade mark COLIBRI in a number of jurisdictions
including the United States and Italy.
4.
The Complainant
put the Respondent on notice of its rights by its email dated February 9, 2006.
By the same email, the Complainant offered to purchase the disputed domain name
for US$200.
5.
Agreement for
sale and purchase was not made before the Complaint was filed.
6.
At the time the
Complainant wrote to the Respondent on February 9, 2006, the portal style
website <calibri.com> read “Welcome to calibri.com – For resources
on Colibri and Lighter” (sic.). The
Complainant’s products were featured but the site also carried links to
products competitive with the Complainant’s goods, such as “Zippo” brand
lighters, “Fossil” brand watches, and many other third party goods.
7.
After February
9, 2006 changes were made to the website to de-emphasize the Complainant’s
goods and by March 1, 2006 the site carried a link offering sale of the
disputed domain name.
8.
Subsequent
email correspondence between the Complainant and the Respondent was uneventful
and did not resolve the dispute before the Complaint was filed on March 21,
2006.
9.
Absent
contradiction by the Respondent, the Panel accepts the Complainant’s statement
that the word “colibri” means “hummingbird” in the Spanish, Italian and French
languages.
10. Absent contra-indications in the evidence,
the Panel accepts the Respondent’s statement that “calibri” is an Italian dictionary
word which has the same meaning as the word “calibre” in English ( the diameter
of a tube or gun barrel).
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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.
The Panel finds that the Complainant has
rights in the trademark COLIBRI established through registration and also
through common law usage.
The Complainant is the proprietor of a number
of registrations in the U.S. and around the world for the mark COLIBRI in both
plain and stylized forms, including by way of example only, (Reg. No. 441,305
issued November 16, 1948) and (Reg. No. 442,064 issued February 8,1949), both
on the Principal Register. Those registrations alone establish the
Complainant’s rights in the mark. See
Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18,
2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”); see also 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 [or]
have acquired secondary meaning”).
The registered rights all well predate the
disputed domain name registration.
It is accordingly unnecessary to discuss the
Complainant’s additional rights in the mark which accrued through use and
reputation.
The Panel also finds that the disputed domain
name is confusingly similar to the Complainant’s trademark. The gTLD, .com, is inconsequential in
determining this issue and the only question is whether the word CALIBRI is
confusingly similar to the work COLIBRI.
See Deutsche Telekom AG v. Domainsforlife.com, D2002-0164 (WIPO
June 5, 2002).
Clearly the words are both visually and
phonetically similar and the Complainant has provided cogent evidence that the
relevant purchasing public frequently misuses the word CALIBRI to refer to the
Complainant’s goods.
Nevertheless, the correct question is not
whether there is public confusion but whether the terms are confusingly similar
and in this regard it can be of relevance if one or both words has/have a
commonly understood dictionary meaning.
The Panel is of the view that the meaning of
neither work is likely to be known to the average Anglophone. The Panel is also of the view that even in
their own languages, neither work is a particularly common noun. Accordingly, it is not improper for
comparison purposes to treat them as largely unknown words and within that
context they only differ by a single letter. A domain name that differs by only
one letter from, and appears to be a common misspelling of, a complainant’s
mark renders the disputed domain name confusingly similar to that mark. See Belkin Components v. Gallant, FA
97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain
name confusingly similar to the complainant's BELKIN mark because the name
merely replaced the letter “i” in the complainant's mark with the letter “e”).
Accordingly, the Panel finds that the
Complainant has satisfied the first requirement of the Policy.
The Complainant contends in essence that the
Respondent is using the confusingly similar <calibri.com> domain name to support a website that features either links or pop-ups
to various commercial websites from which Respondent presumably receives
referral fees.
It has already been accepted that the website
has featured third party branded products which compete in the market with the
Complainant’s products and so the
Panel is of the opinion that the Complainant has made a prima facie case under ¶ 4(a)(ii) of the Policy.
Accordingly, the
burden shifts to the Respondent to show that it does have rights or legitimate
interests. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 23, 2000) (holding
that, where the complainant has asserted that the respondent has no rights or
legitimate interests with respect to the domain name, it is incumbent on the
respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28,
2000) (finding that, under certain circumstances, the mere assertion by the
complainant that the respondent has no right or legitimate interest is
sufficient to shift the burden of proof to the respondent to demonstrate that
such a right or legitimate interest does exist).
The central plank to the Respondent’s
argument rests on the decisions of previous UDRP panels which have reasoned
that, in principle, the business of registering bulk generic domain names, even
for the purpose of re-sale, is not per se an illegitimate activity.
The present Panel finds no issue with that
general statement of principle.
The Respondent looks for support to ¶ 4(c)(i)
of the Policy by arguing that before it had any knowledge of this dispute, it
had used the domain name in connection with a bona fide offering of
goods or services, in its own words, by adding “the name to its already large
list of domain names that it uses in its business”.
The Respondent filed in evidence a list of “some” of those domain
names. It can be seen that the list is
not exhaustive since the disputed domain name does not appear, nor do any of
the domain names which have been the subject of other UDRP contests to which
the Respondent refers in its submissions.
The Panel is of the view that, as a
non-exhaustive list of all domains owned by the Respondent, it carries no
weight in establishing legitimate activity of any kind.
In any event, the Panel observes that it does
not follow that every domain name registered by a legitimate business
enterprise is ipso facto registered in good faith or is proof of a
legitimate interest or right in that domain name. Put another way, a legitimate business activity may be a
necessary, but is not a sufficient, condition for a legitimate interest in a
particular domain name registration.
The correct enquiry is whether, in all the
circumstances, the Respondent has shown a legitimate interest in the disputed
domain name.
In the first place, the Panel notes that
there has been no argument that the Respondent was making a legitimate
noncommercial or fair use of the name pursuant to ¶ 4(c)(iii) of the
Policy. Indeed, the Respondent’s own
stated rationale in registering the names is “to develop business-oriented
websites”.
With reference to ¶ 4(c)(i) of the Policy,
the enquiry then becomes one of whether, prior to February 9, 2006 when the
Complainant first wrote to the Respondent, there was use of the disputed domain
name in connection with a bona fide offering of goods or services.
The Respondent states in its submissions that
“there is no evidence that [it] specifically targeted the Complainant’s
mark”. The Panel however is more ready
to accept the statement in the Complainant’s February 9, 2006 letter that
“[c]learly you are aware of our trademark, as the content of the web site that
you are providing at the domain name calibri.com is composed exclusively of
links that refer to our products. The only possible reason for registration of
the domain name calibri.com is to take advantage of the spelling mistake that
people often make in referring to our products”.
Were the Complainant’s statement above
strictly correct and the Respondent was faithfully promoting the Complainant’s
goods merely under a misspelt domain name, then a different analysis might have
been required, but as noted above, the site in fact carried at that time links
to competitive third party products.
The Panel finds that such diversionary use
for commercial gain is not a bona fide offering of goods or services
pursuant to the Policy. 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 received a referral fee for each
misdirected Internet user, was not a bona fide offering of goods or
services as contemplated by the Policy); see also Black & Decker Corp.
v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding
that the respondent’s use of the disputed domain name to redirect Internet
users to commercial websites, unrelated to the complainant and presumably with
the purpose of earning a commission or pay-per-click referral fee did not
evidence rights or legitimate interests in the domain name).
For completeness, the Panel will address the
Respondent’s submission that there is nothing on its website at <calibri.com>
which suggests that the Respondent is associated with the Complainant.
Although a case concerned with the activities
of an authorized user/Respondent, the panelist in Oki Data Americas, Inc. v. ASD, Inc., D2001‑0903 (WIPO Nov.
6, 2001), held that to be bona fide
within ¶ 4(c)(i), the offering must meet several minimum requirements,
including that:
‑ the
Respondent must actually be offering the goods or services at issue;
‑ the
Respondent must use the site to sell only the trademarked goods;
‑ the
site must accurately disclose the Respondent’s relationship with the trademark
owner.
The
Respondent has not met any of these requirements of bona fide use.
The Panel therefore finds that the Respondent
has no rights or legitimate interests in the disputed domain name and that the
Complainant has established this second element of its case.
Paragraph 4(b)
of the Policy sets out the circumstances, which shall be evidence of the
registration and use of a domain name in bad faith:
(i) circumstances indicating that you have
registered or you have 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 your
documented out‑of‑pocket costs directly related to the domain name;
or
(ii) you have 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 you have engaged in a pattern of
such conduct; or
(iii) you have registered the domain name primarily
for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have
intentionally attempted to attract, for commercial gain, Internet users to your
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 your website or location or of a product or service on your
website or location.
These sets of
circumstances are not exhaustive and other instances of bad faith might be in
evidence however what is noteworthy about paragraphs 4(b)(i) – (iv) is
that they are all cases of both
registration and use in bad faith.
Other times, there will be evidence of use in bad faith or registration
in bad faith and the Panelist will need to find both since the requirements of
¶ 4(a)(iii) of the Policy are conjunctive.
It is therefore
logical to first test the facts against these given circumstances.
The Panel is of the
view that use of the disputed domain name up until the time of the
Complainant’s February 9, 2006 email falls squarely within paragraph (iv)
above. The intention of the website was
to attract Internet users for commercial gain.
It did so by using a domain name confusingly similar with the
Complainant’s trademark.
In addition, the
Panel finds that Respondent’s attempts subsequent to notice of the dispute to
sell the disputed domain name also constituted use in bad faith and fall within
the circumstances described in ¶ 4(b)(i) of the Policy, set out
above. The Complainant make a
reasonable offer of US$200 to purchase the disputed domain name, an amount
consistent with, if not exceeding, the likely out‑of‑pocket costs
normally connected with registering a domain name. The Respondent’s attorney in its email letter to the Complainant
dated March 2, 2006 and by the use of elliptical language inferred that a
higher offer would be required to secure the name. There is an open question of whether the Complainant in fact
received that letter but not one which detains the Panel or influences its
reasoning. Suffice to say that whether this message reached the Complainant or
not, it nonetheless indicates the Respondent’s intentions.
For all the
aforegoing reasons, the Panel holds that the disputed domain name was
registered and used in bad faith and that the Complainant has satisfied the
third and final element of the Policy.
Reverse Domain Name
Hijacking
In view of the
above findings there is no need for the Panel to address this point.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <calibri.com>
domain name be TRANSFERRED from Respondent to Complainant.
Debrett Lyons, Panelist
Dated: May 5, 2006
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