national arbitration forum

DECISION

 

Maglital, S.R.L. Limited Liability Company v. David Hong / C Bracelet / C-Bracelet

Claim Number: FA1302001486250

PARTIES

Complainant is Maglital, S.R.L. Limited Liability Company (“Complainant”), represented by Bruno Cilio of Cilio & Partners, P.C., New York, USA.  Respondent is David Hong / C Bracelet / C-Bracelet (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain names at issue are <cruciani-bracelet.com>, <c-bracelet.com>, and <c-bracelet.net>, registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide; Network Solutions, LLC.

 

PANEL

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 21, 2013; the National Arbitration Forum received payment on February 21, 2013.

 

On February 21, 2013 and on February 22, 2013, Melbourne IT, Ltd. d/b/a Internet Names Worldwide; Network Solutions, LLC. confirmed by e-mail to the National Arbitration Forum that the <cruciani-bracelet.com>, <c-bracelet.com>, <c-bracelet.net> domain names are registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide; Network Solutions, LLC. and that Respondent is the current registrant of the names.  Melbourne IT, Ltd. d/b/a Internet Names Worldwide; Network Solutions, LLC. has verified that Respondent is bound by the Melbourne IT, Ltd. d/b/a Internet Names Worldwide; Network Solutions, LLC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On February 25, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 18, 2013 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.com, postmaster@c-bracelet.com, postmaster@c-bracelet.net.  Also on February 25, 2013, 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.

 

A timely Response was received and determined to be complete on March 18, 2013.

 

On March 25, 2013, Complainant submitted an Additional Submission regarding this proceeding.  The Forum received and found the Additional Submission compliant on March 24, 2013.

 

On March 29, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant[1]

·        Complainant owns United States Patent & Trademark Office (“USPTO”) trademark registrations for the CRUCIANI mark which it uses in the sale of knitwear and fabric clothing (particularly cashmere apparel).  Reg. No. 2,457,020 registered on June 1, 2001.  Complainant further owns registration for the C CRUCIANI mark with the USPTO (Reg. No. 4,259,866 registered on Dec. 18, 2012) and the World Intellectual Property Office (“WIPO”)(Reg. No. 1,118,704 registered on April 26, 2012).

·        Respondent’s domain names are confusingly similar to the C CRUCIANI and CRUCIANI marks.  The addition of generic top-level domains (“gTLD”) are not considered when comparing domain names to a mark.  The addition of “-bracelet” in a domain name is insufficient to distinguish the domain names from the C CRUICIANI mark.  Because the <c-racelet.com> and <c-bracelet.net> domain names are feeder websites for the <cruciani-bracelet.com> domain name all of the domain names are in effect making the same unauthorized use of the CRUCIANI mark.

·        Respondent is not commonly known by any of these domain names.  Complainant has not otherwise authorized or permitted Respondent to use Complainant’s marks in its domain names.

·        Respondent is providing no legitimate use of the domain names because all of the domain names ultimately resolve to websites that offer Complainant’s CRUCIANI goods despite Complainant’s lack of consent or authorization for Respondent to sell CRUCIANI goods.

·        Respondent was ordered to transfer to Complainant the <cruiani-bracelet.net> domain name on January 21, 2013.

·        Respondent is seeking to deceive Internet users who enter the resolving website into believing that they are on websites owned or authorized by Complainant.  Respondent’s goods are “knock offs” of Complainant’s iconic bracelets, sold at discounted prices in direct competition with Complainant.  Respondent is deceiving these Internet users in its pursuit of commercial gains.

·        Respondent had actual knowledge of Complainant’s marks.  Although Complainant has had these marks registered for a period of time, Respondent made no effort to register these domain names until after Complainant had began actively engaging in business in this mark.

 

B. Respondent

·     Neither the <c-bracelet.com> and <c-bracelet.net> domain names rightfully include the CRUCIANI or C-CRUCIANI trademarks.  The domain names simply do not contain these trademarks.

·     Respondent alleges that its agreement with Mr. Caprai gives it rights and legitimate interests in the <cruciani-bracelet.com> domain name.

·     Respondent relies on its verbal agreement with Mr. Caprai in shielding it from allegations of bad faith use and registration regarding the <cruciani-bracelet.com> domain name.

 

C. Complainant’s Additional Submission

The <c-bracelet.com> and <c-bracelet.net> domain names are confusingly similar because they offer nothing but items sold and identified as CRUCIANI products, and are likely only to be reached by Internet users who are directed to that website by entering the <cruciani-bracelet.com> domain name into their web browser.

 

FINDINGS

The question of the ownership of the <cruciani-bracelet.com> domain name is the subject of a business dispute between the parties and therefore not appropriate for resolution in this UDRP proceeding.

 

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."

 

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.

 

Preliminary Issue: Business/Contractual Dispute Outside the Scope of the UDRP

 

Respondent alleges that it entered into an agreement wherein it could register and use the <cruciani-bracelet.com> domain name for purposes of selling CRUCIANI products online.  Respondent has provided e-mail correspondence with one Luca Caprai seemingly authorizing Respondent’s use and registration of the domain name.  Complainant asserts that a plain reading of the parties’ correspondence demonstrates there was never any clear approval for Respondent to register the <cruciani-bracelet.com> domain name. 

 

 Whether Respondent is the proper registrant of the <cruciani-bracelet.com> domain name is a business and/or contractual dispute between two companies that falls outside the scope of the UDRP.  In Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007), the panel stated:

 

A dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy … the present case appears to hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty.  Thus, the majority holds that the subject matter is outside the scope of the UDRP and dismisses the Complaint.

 

See, e.g., See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties.  The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007) (“The Complaint before us describes what appears to be a common-form claim of breach of contract or breach of fiduciary duty.  It is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address.”); Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Dec. 27, 2006) (holding that disputes arising out of a business relationship between the complainant and respondent regarding control over the domain name registration are outside the scope of the UDRP Policy).

 

The Panel concludes that because the instant dispute contains a question of contractual interpretation and resolution of a business dispute, the Complaint falls outside the scope of the UDRP and should therefore be dismissed.

 

If the Panel considered Complainant’s allegations separately with respect to the <c-bracelet.com> and <c-bracelet.net> domain names without regard to the underlying dispute between the parties, the Panel would most likely conclude that these names are not confusingly similar to Complainant’s marks.   The domain names only overlap the trademark with respect to a single letter, “c”, and therefore these two domain names are not confusingly similar to Complainant’s marks. See  ISL Mktg. AG v. Chung, D2000-0034 (WIPO Apr. 3, 2000) (finding that, although one may argue that “wc” is an abbreviation for WORLD CUP, it is not likely the meaning most people would give to those letters).  However, because Complainant asserts that the <c-bracelet.com> and <c-bracelet.net> domain names are feeder websites for the <cruciani-bracelet.com> domain name, it could be subsequently concluded that all of the domain names are in effect making the same unauthorized use of the CRUCIANI and C CRUCIANI marks.  Thus, the question of the proper ownership of these marks should be left for another day.

 

DECISION

For the foregoing reasons, it is Ordered dismissing the Complaint without prejudice.

 

 

Bruce E. Meyerson, Panelist

Dated:  April 10, 2013