MAGLITAL, S.R.L. Limited Liability Company v. Consultation, DBD
Claim Number: FA1211001473029
Complainant is MAGLITAL, S.R.L. Limited Liability Company (“Complainant”), represented by Bruno Cilio of Cilio & Partners, P.C., New York, USA. Respondent is Consultation, DBD (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cruciani-bracelet.net>, registered with NETWORK SOLUTIONS, LLC.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically November 27, 2012; the National Arbitration Forum received payment November 28, 2012.
On November 28, 2012, NETWORK SOLUTIONS, LLC. confirmed by e-mail to the National Arbitration Forum that the <cruciani-bracelet.net> domain name is registered with NETWORK SOLUTIONS, LLC. and that Respondent is the current registrant of the name. NETWORK SOLUTIONS, LLC. verified that Respondent is bound by the NETWORK SOLUTIONS, LLC. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 2012, 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@cruciani-bracelet.net. Also on December 6, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 7, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 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.
Complainant makes the following allegations in this proceeding:
Respondent did not submit a response in this proceeding.
1. The Panel notes that Respondent registered the <cruciani-bracelet.net> domain name September 27, 2011, some ten years after Complainant has shown rights in the mark.
The disputed domain name is confusingly similar to a mark in which Complainant has protected rights.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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 Complainant to 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 to 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.
Given 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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Identical to or Confusingly Similar
Complainant contends that it has established rights in the CRUCIANI mark through its registration of the mark with the USPTO. The Panel notes that Complainant presented evidence of its trademark registration for the CRUCIANI mark with the USPTO (Reg. No. 2,457,020 registered June 5, 2001). The Panel finds that Complainant’s registration with the USPTO establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i), regardless of Respondent’s purported location of Hong Kong. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant also contends that the <cruciani-bracelet.net> domain name is confusingly similar to Complainant’s CRUCIANI mark for the purposes of Policy ¶ 4(a)(i). Complainant notes that the disputed domain name adds a hyphen, the descriptive term “bracelet,” and the generic top-level domain (“gTLD”) “.net” to Complainant’s mark. Complainant states that the sale of CRUCIANI-branded bracelets comprises a significant portion of Complainant’s business. The Panel finds that none of these alterations are sufficient to distinguish Respondent’s <cruciani-bracelet.net> domain name from Complainant’s CRUCIANI mark for the purposes of Policy ¶ 4(a)(i). See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”). Accordingly, the Panel finds that the <cruciani-bracelet.net> domain name is confusingly similar to Complainant’s CRUCIANI mark for the purposes of Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent is not commonly known by the <cruciani-bracelet.net> domain name for the purposes of Policy ¶ 4(c)(ii). Complainant also asserts that it has not given Respondent permission to use Complainant’s mark in a domain name. The Panel notes that Respondent failed to satisfy its burden of providing the Panel with a Response in this proceeding, meaning that no evidence in the record refutes Complainant’s claims. Moreover, the Panel notes that the WHOIS information for the disputed domain name identifies the domain name registrant as “Consultation, DBD,” which the Panel finds bears no resemblance to the <cruciani-bracelet.net> domain name. Given these findings, the Panel finds that Respondent is not commonly known by the disputed domain name for the purposes of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant contends that Respondent is using the disputed domain to operate a commercial venture offering CRUCIANI-branded bracelets, without Complainant’s authorization. Complainant argues that Respondent’s use cannot be fairly considered to be a legitimate and noncommercial or fair use. The Panel agrees, holding that Respondent’s use of the <cruciani-bracelet.net> domain name to sell what Respondent purports to be Complainant’s products constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant asserts that through its registration and use of the <cruciani-bracelet.net> domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion.” Complainant states that Respondent uses the disputed domain to sell “knock-off” versions of Complainant’s bracelets at reduced prices. The Panel finds that Respondent’s selection of a confusingly similar domain name, coupled with the inclusion of Complainant’s mark on its website, may well confuse consumers into believing that the disputed domain name is associated with Complainant. The Panel is permitted to make an inference that Respondent realizes an economic gain through the sale of these counterfeit bracelets that purport to be Complainant’s wares, suggesting that the confusion it creates was motivated by Respondent’s own commercial interests. The Panel finds that Respondent’s registration and use of the <cruciani-bracelet.net> domain name constitutes attraction for commercial gain and supports findings of bad faith under Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant also argues that Respondent knew of Complainant's rights in the CRUCIANI mark, as Complainant first began using the mark in 1995 and began using it for the sale of bracelets several months prior to Respondent’s registration of the <cruciani-bracelet.net> domain name. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel here finds that Respondent had actual knowledge of Complainant's mark and rights given the particular use of this domain name. The Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cruciani-bracelet.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 21, 2013.
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