San Telmo,
Inc. v. Link Comercial Corp.
Claim Number: FA0110000100632
PARTIES
Complainant is San Telmo, Inc., Barrington, IL (“Complainant”) represented by Gary R. Gillen, of Wildman, Harrold, Allen & Dixon. Respondent is Link Comercial Corp., Nassau, Bahamas (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAMES
The domain names at issue are <valeria.com> and <valeriamazza.com>, registered with Network Solutions, Inc.
PANEL
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 15, 2001; the Forum received a hard copy of the Complaint on October 17, 2001.
On October 17, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <valeria.com> and <valeriamazza.com> are 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. 5.0 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 October 17, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 6, 2001 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@valeria.com and postmaster@valeriamazza.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 Forum transmitted to the parties a Notification of Respondent Default.
On November 28, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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.” 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.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant asserts the following:
1. Complainant bases this Complaint on its rights in
the following trademark registrations and applications:
U.S. Trademark Registration No. 2,204,587 for
Valeria
U.S. Trademark Registration No. 2,442,953 for Valeria
U.S. Trademark Registration No. 2,325,011 for Valeria (stylized)
U.S. Trademark Registration No. 2,446,687 for Valeria (stylized)
U.S. Trademark Registration No. 2,222,075 for Valeria Mazza
U.S. Trademark Registration No. 2,459,943 for Valeria Mazza
European Community
Trademark Registration No. 000694596 for Valeria
Australia Trademark
Registration No. 761688 for Valeria
Brazil Trademark
Application No. 820783301 for Valeria Mazza
Brazil Trademark
Application No. 820642398 for Valeria (stylized)
Chile Trademark
Registration No. 526645 for Valeria
China Trademark
Registration No. 1437246 for Valeria
China Trademark
Registration No. 1426176 for Valeria
Colombia Trademark
Application No. 98022727 for Valeria
Czech Republic
Trademark Registration No. 222211 for Valeria
Ecuador Trademark
Registration No. 6570-00 for Valeria
Japan Trademark
Registration No. 4,438,993 for Valeria
Mexico Trademark
Registration No. 618063 for Valeria
New Zealand
Trademark Registration No. 292600 for Valeria
Panama Trademark
Application No. 102723 01 for Valeria
Panama Trademark
Registration No. 102721 for Valeria
Paraguay Trademark
Registration No. 21495 for Valeria
Peru Trademark
Registration No. 048448
Poland Registration
Application No. Z-186.485
Puerto Rico
Trademark Registration No. 46,980 for Valeria
Puerto Rico
Trademark Registration No. 46,981 for Valeria
Uruguay Trademark
Application No. 303.633 for Valeria
Venezuela Trademark Application No. 12513-2000 for
Valeria
Czech Republic
Trademark Registration No. 21918 for Valeria (stylized)
Hong Kong Trademark
Registration No. 5805/98 for Valeria (stylized)
Taiwan Trademark
Registration No. 854889 for Valeria (stylized)
2.
Complaint also
bases this Complaint on its rights in the following domain name registrations:
<valeria.net>
<valeria.org>
<valeriamazza.net>
<valeriafragrance.com>
3.
Complainant states that the subject domain names registered by Respondent
are identical to or confusingly similar to Complainant’s common law trademarks
and trademark applications and registrations for the marks VALERIA and VALERIA
MAZZA. The generic top level domain,
“.com”, does not affect the fact that
Respondent’s second level domain names are identical to the Complainant’s
marks.
4. Complainant urges
that Respondent has no rights or legitimate interests in respect of the domain
names that are the subject of the complaint due to the fact that Respondent is
not a licensee of Complainant and Respondent is not otherwise authorized by
Ms. Valeria Mazza to use the VALERIA or VALERIA MAZZA marks. Complainant has not licensed or otherwise
permitted Respondent to use its trademarks and has not licensed or otherwise
permitted Respondent to apply for or use any domain name incorporating any of
those marks.
5. Complainants contends that the domain names registered by Respondent, <valeria.com> and <valeriamazza.com>, were registered and are being used in bad faith because Respondent registered the domain names <valeria.com> and <valeriamazza.com> in order to prevent Complainant, the owner of the VALERIA and VALERIA MAZZA trademarks, from reflecting these marks in a corresponding domain name. Complainant urges further that Respondent has engaged in a pattern of such conduct.
B. Respondent did not submit a Response in this proceeding.
FINDINGS
Complainant and its affiliates manufacture,
distribute and sell various VALERIA and VALERIA MAZZA products with the full
support and consent of its partner, international model and personality Valeria
Mazza. Valeria Mazza is a native of
Argentina and for over 10 years has graced the covers of magazines in the
United States, South America, Latin America and Europe. For instance, in 1996, she appeared on the
cover of Sports Illustrated’s Swimsuit issue along with Tyra Banks and
again appeared in the Sports Illustrated Swimsuit issue in 1997. Additionally, Ms. Mazza has appeared
numerous times on the cover of U.S.
Glamour (three times in 1998 alone), as well as on Glamour en español, Cosmopolitan,
Elle Argentina, Hola Spain, GQ-Italy, Gente and Para Tí-Argentina,
Shape, Fitness and Opulence in
U.S. and many other publications. As a
result of her international fame, she is most often referred to and known in
the fashion industry and to the general public simply by her first
name—Valeria.
For years, Valeria has modeled on runways
throughout the world, including Paris, Milan and New York. In 1992, Valeria modeled Gianni Versace’s
spring collection in Milan. She
appeared at the San Remo’s Festival and parade in Piazza Espagna in Italy in
1996. More recently, she has become a
well-known television personality, hosting certain fashion programs on the MTV
network including hosting MTV’s Latin version of the program, House of Style. Valeria’s July 1998 wedding was featured on
the E-channel’s (E-entertainment television) special presentation of famous
celebrities’ weddings. In 1998, Valeria
hosted the Italian television show “Domenica In” and appeared in the film
“Paparazzi.” In addition, she has
appeared in many advertising campaigns for well-known products, including Guess
Jeans, Victoria’s Secret, Spiegel, Escada Sport and Pepsi’s Next Generation promotions.
Complainant and its affiliates have partnered
with Valeria to promote and sell various products throughout much of the world
under the VALERIA and VALERIA MAZZA marks.
Complainant has the right to use and license the VALERIA and VALERIA
MAZZA marks (as well as the image and likeness of Ms. Mazza) with the full
consent of Ms. Valeria Mazza. As a
result of the substantial investment which San Telmo has made through
development costs as well as trademark filings throughout the world and
extensive advertisement and promotion of its products and Ms. Mazza, San
Telmo’s VALERIA and VALERIA MAZZA names and marks are well known throughout the
United States and in many foreign countries and have come to represent a
valuable goodwill identified with San Telmo’s business and products. Complainant, San Telmo, Inc., is the owner
of more than thirty (30) trademark registrations and applications for the marks
VALERIA and VALERIA MAZZA.
Respondent registered the domain names on
July 2, 1997. Since the time Respondent
registered the domain names at issue, the <valeria.com> and <valeriamazza.com> websites have been and continue to be
inactive.
Respondent
has registered hundreds of domain names including many that incorporate
well-known names and trademarks of others.
Among the domain names Respondent has registered are:
<newcoke.com> |
<mercedesdealers.com> |
<newpepsi.com> |
<chryslerdealers.com> |
<thekingofbeers.com> |
<ladydi.com> |
<bigboyinternational.com> |
<evaperon.com> |
<mrsteak.com> |
<zorba.com> |
<njjets.com> |
<silviosantos.com> |
<rotaryclub.com> |
<franciscomacri.com> |
<chevroletdealers.com> |
<paulomaluf.com> |
<buickdealers.com> |
<jehova.com> |
<nissandealers.com> |
<catholicchurch.com> |
<cadillacdealers.com> |
|
<lotusdealers.com> |
|
<suzukidealers.com> |
|
DISCUSSION
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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(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 shown in this proceeding that it has established rights to VALERIA and VALERIA MAZZA. See Seymour v. Burgar d/b/a Stephanie Seymour Club, FA 97112 (Nat. Arb. Forum May 29, 2001) (“Through her years of international fame as a top supermodel, Complainant [Stephanie Seymour] has established a common law right to her name,” and “that the requirements of Paragraph 4(a)(i) have been satisfied”). The disputed domain names, <valeria.com> and <valeriamazza.com>, are identical to Complainant’s common law and federally-registered marks; the generic top level domain, “.com”, does not distinguish the domain names from the VALERIA and VALERIA MAZZA marks. See Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding Respondent’s domain name, <karlalbrecht.com>, identical to Complainant’s common law mark).
Therefore, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Rights to or
Legitimate Interests
Complainant has further established that it has rights to and legitimate interests in the marks contained in their entirety in the disputed domain names that Respondent registered. In addition Complainant has shown that Respondent has no such rights. Respondent’s passive holding of the <valeria.com> and <valeriamazza.com> domain names do not demonstrate a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name).
No evidence is found in this record, and Respondent has not come forward to establish such evidence, that Respondent is commonly known by the <valeria.com> and <valeriamazza.com> domain names, pursuant to Policy ¶ 4(c)(ii). Additionally, Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks and has not licensed or otherwise permitted Respondent to apply for or use any domain name incorporating any of those marks. See Systima Ltd. v. Byrne, D2001-0300 (WIPO Apr. 23, 2001) (finding "[t]here is no indication from the evidence before this Administrative Panel that the Respondent has ever been known by the said domain name so as to claim rights or a legitimate interest in accordance with Paragraph 4(c)(ii) of the Policy").
Furthermore, no evidence demonstrates that Respondent is making any legitimate, noncommercial or fair use of the <valeria.com> and <valeriamazza.com> domain names pursuant to Policy ¶ 4(c)(iii). See Chanel, Inc. v. Heyward, D2000-1802 (Feb. 23, 2001) (finding no rights or legitimate interests where "Respondent registered the domain name and did nothing with it").
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has urged that Respondent registered the <valeria.com> and <valeriamazza.com> domain names in bad faith pursuant to Policy ¶ 4(b)(ii) because Respondent’s registration of the disputed domain names prevents Complainant from reflecting its marks in a corresponding domain name. Complainant has further alleged and shown that Respondent has engaged in a pattern of such behavior. See Armstrong Holdings, Inc. v. JAZ Associates, FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks); see also Pep Boys Manny, Moe, and Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that where Respondent registered many domain names, held them hostage, and prevented the owners from using them constituted bad faith).
Respondent’s passive holding of the <valeria.com> and <valeriamazza.com> domain names also permits an inference of Respondent’s bad faith. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three of the elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.
Accordingly, it is Ordered that the <valeria.com> and <valeriamazza.com> domain names be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 10, 2001.
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