Hotel Cipriani S.P.A v. REDACTED FOR PRIVACY
Claim Number: FA1910001865191
Complainant: Hotel Cipriani S.P.A of Venice, Italy.
Complainant Representative:
Complainant Representative: Bird & Bird LLP of London, United Kingdom.
Respondent: PERFECT PRIVACY, LLC of Jacksonville, Florida, US.
Respondent Representative: N/A
REGISTRIES and REGISTRARS
Registries: Minds + Machines Group Limited
Registrars: Network Solutions, LLC
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 Examiner in this proceeding.
Flip Jan Claude Petillion, as Examiner.
Complainant submitted: October 3, 2019
Commencement: October 4, 2019
Default Date: October 21, 2019
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
The Complainant, Hotel Cipriani S.P.A, is the owner of the Belmond Hotel Cipriani on the island of Giudecca in Venice, more commonly and historically known as the Hotel Cipriani. Complainant is the holder of inter alia the EU word mark "CIPRIANI" used in relation to a range of products and services related to Complainant's hotel and accommodation business.
Respondent registered the disputed domain name <cipriani.casa> on May 10, 2019. The disputed domain name resolves to a standard parking page displaying sponsored links.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
[URS
1.2.6.1] The registered domain name(s) is/are identical or confusingly similar
to a word mark:
(i) for which the Complainant holds a valid national or regional registration
and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the
time the URS complaint is filed.
Determined: Finding for Complainant
The record makes clear that the Complainant "holds a valid national or regional registration and that [it] is in current use". The Examiner finds that the second-level portion of the disputed domain name is identical to the Complainant’s CIPRIANI registered trademark. As the top level domain is irrelevant in assessing identity or confusing similarity, the new gTLD “.CASA” is of no consequence here (Facebook Inc. v. Radoslav, Claim Number: FA1308001515825). As the registered domain name is identical to a word mark for which the Complainant holds a valid national or regional registration that is in current use, the Examiner considers that Complainant has satisfied the first element of the URS in accordance with paragraph 1.2.6.1 of the URS.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for Complainant
Complainant has not authorized Respondent to use its registered CIPRIANI trademark. Respondent has not submitted any evidence to prove that he or she is commonly known under the disputed domain name. There is no evidence about rights or legitimate interest in CIPRIANI and the disputed domain name, or evidence about a fair use either. The use of the disputed domain name to host a parked page comprising sponsored links does not represent a bona fide offering of goods or services as it capitalizes on the reputation and goodwill of the Complainant’s mark (see section 2.9 of WIPO Overview 3.0). In addition, the Panel notes that the Disputed Domain Name is identical to the Complainant’s CIPRIANI trademark, which carries a high risk of implied affiliation (see section 2.5.1 of WIPO Overview 3.0). Respondent does not contest the arguments of Complainant. Therefore, Examiner finds that the second element for Complainant to obtain the suspension of a domain name under URS 1.2.6.2 has also been proven.
[URS
1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
a. Registrant 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 documented out-of-pocket costs directly related to the domain name;
or
b. Registrant has registered the domain name in order to prevent the trademark
holder or service mark from reflecting the mark in a corresponding domain name,
provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract
for commercial gain, Internet users to Registrant’s web
site 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 Registrant’s web site or location or of a
product or service on that web site or location.
Determined: Finding for Complainant
The Examiner observes that the Respondent uses the disputed domain name for a parking page, displaying pay-per-click links, generating click-through-revenue. While the intention to earn click-through-revenue is not in itself illegitimate, the Examiner finds that the use of the disputed domain name that is identical to the Complainant’s trademark to obtain click-through-revenue constitutes bad faith use (see Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258; L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623). This indicates that the domain name is used to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with the Complainant's CIPRIANI trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Complainant is subsequently also prevented from reflecting its trademark in the corresponding disputed domain name.
It is inconceivable to the Examiner that Respondent was unaware of Complainant and its trademark rights when it registered the disputed domain name which is identical to Complainant’s CIPRIANI registered trademark. Given the distinctive character of Complainant's CIPRIANI trademark, Respondent must have had Complainant's trademark in mind when registering the disputed domain name. This is further supported by the fact that the Respondent registered the disputed domain name under the new gTLD “.CASA”, which is a word that can be linked to the Complainant’s hotel business. Moreover, Examiner finds that, given the distinctive character of the Complainant’s CIPRIANI trademark, it is difficult to imagine any future good faith use of the disputed domain name by Respondent. Additionally, the use of a privacy service by Respondent further indicates that Respondent has purposely intended to avoid being notified of a UDRP proceeding filed against it, which further supports an inference of bad faith.
Respondent did not file any response to contest the above. Therefore, Examiner finds that the third element for Complainant to obtain the suspension of a domain name under URS 1.2.6.3 has been proven.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
<cipriani.casa>
Flip Jan Claude Petillion, Examiner
Dated: October 24, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page