Gianvito Rossi SRL Unipersonale v. david backhumn
Claim Number: FA1507001628059
Complainant is Gianvito Rossi SRL Unipersonale (“Complainant”), represented by William Bak of Howson & Howson LLP, Pennsylvania, USA. Respondent is david backhumn (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gianvitorossistore.com>, registered with Xin Net Technology Corporation.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 9, 2015; the Forum received payment on July 9, 2015. The Complaint was received in both Chinese and English
On July 9, 2015, Xin Net Technology Corporation confirmed by e-mail to the Forum that the <gianvitorossistore.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 July 10, 2015, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 10, 2015 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@gianvitorossistore.com. Also on July 10, 2015, the Chinese language 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 Forum transmitted to the parties a Notification of Respondent Default.
On August 11, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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" 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Pursuant to Rule 11(a), the Panel determines the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Trademark/Service Mark Information: ICANN Rule 3(b)(viii).
[i.] U.S. Trademark Registration No. 3,619,465 for GIANVITO ROSSI Goods include : “FOOTWARE” (in International Class 025)
The above trademark, GIANVITO ROSSI, has been registered throughout the world for FOOTWARE goods. For example, see the following registrations:
International Reg. No. 911665
Italian Reg. No. 1029361
European Union Reg. Nos. 5248679 & 5872205 United Arab Emirates Reg. Nos. 100992 & 84828
Argentina Reg. Nos. 2198651, 2198652, 2198653 & 2198654
Bahrain Reg. Nos. 67042 & 67043
Brazil Reg. Nos. 828832005,828831998, 828831980 & 828831971
Canadian Reg. No. TMA716133
Chile Reg. Nos. 923608 & 912465
Hong Kong Reg. No. 300707689
Indonesia Reg. No. IDM000187671
Israel Reg. Nos. 198990 & 198992
India Reg. No. 1543116
Jordan Reg. Nos. 103449 & 103450
Kuwait Reg. Nos. 97087 & 97051
Lebanon Reg. No. 116806
Macau Reg. Nos. N/037410 & N/037411
Mexico Reg. Nos. 1203515 & 1180703
Qatar Reg. Nos. 57429 & 57430
Saudi Arabia Reg. Nos. 1112/40 & 937/32
Tunisia Reg. No. TN/E/2010/2122
Taiwan Reg. No. 01298963
Venezuela Reg. No. P285610
South African Reg. Nos. 2010/11279 & 2010/11280
China Reg. Nos. 5988097 & 9133931
[ii.] U.S. Trademark Registration No. 1,954,967 for GR GIANVITO ROSSI ITALIAN STYLE
Goods include: “FOOTWARE” (in International Class 025)
The above trademark, GR GIANVITO ROSSI ITALIAN STYLE, has been registered throughout the world for FOOTWARE goods. For example, see the following registrations:
International Reg. No. 588120
Italian Reg. No. 572421
European Union Reg. No. 000389916
Japanese Reg. No. 3078865
[iii.] U.S. Trademark Registration No. 4,607,685 for GIANVITO ROSSI MILANO
Goods include: “FOOTWARE” (in International Class 025)
The above trademark, GIANVITO ROSSI MILANO, has been registered throughout the world for FOOTWARE goods. For example, see the following registrations or pending applications:
International Reg. No. 1175975
Italian Reg. No. 1539987
European Union Reg. No. 11716495
Applications pending in Cambodia, Malaysia & Thailand.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
[a.] [Specify in the space below the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.] UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).
The domain name at issue is GIANVITOROSSISTORE.COM.
Thus, the domain name includes Complainant’s registered trademark “GIANVITO ROSSI” to which the generic term “STORE” and “.COM” have been appended.
It should be further understood that Complainant owns the domain name GIANVITOROSSI.COM (i.e., “GIANVITO ROSSI” and “.COM”).
Complainant’s U.S. Trademark Registration No. 3,619,465, European Community Registration Nos. 5248679 & 5872205, and International Registration No. 911665 are each for the mark GIANVITO ROSSI used in connection with footware. As demonstrated by the list of other trademark registrations identified above (including registrations in China), registrations for GIANVITO ROSSI for use in connection with footware are owned by Complainant throughout the world. It should be understood that the Complainant is a world leader in the high fashion women’s shoes industry and that the Complainant’s brand is well known in the high fashion shoes industry. (A printout of the home page of Complainant’s web site is attached.)
With respect to the domain name at issue, GIANVITOROSSISTORE.COM, the Respondent has merely added the generic term “STORE” to the end of Complainant’s worldwide registered trademark, GIANVITO ROSSI.
The goods identified in Complainant’s trademark registrations include “footware”. Respondent’s website is directed to the sale of footware for women.
Respondent’s domain name and Complainant’s worldwide registered trademark are identical or are extremely similar and confusingly similar and are used in connection with the sale of identical goods (footware, more specifically, shoes for women).
[b.] [Specify in the space below why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint.] UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii).
Complainant has been using the mark, GIANVITO ROSSI, worldwide in connection with the sale of high fashion shoes for women for many years as evidenced by Complainant’s trademark registrations.
Complainant conducted a trademark search for trademark registrations of others for GIANVITO ROSSI for use in connection with the sale of footware and did not locate any such usage.
The Complainant has not authorized or licensed use of its mark to Respondent anywhere in the world.
In addition, Complainant respectfully submits that the organization and address information provided by Respondent to obtain the domain name, GIANVITOROSSISTORE.COM, are believed to be inaccurate, false, and intentionally misleading.
For instance, Registrant’s name and organization are listed as “David Bachhumn”. Searches by Complainant were unable to locate or confirm the existence thereof. Accordingly, Complainant respectfully submits that these reflect intentionally misleading entries by Respondent and that verification and proof of the accuracy of name, organization and address of Respondent should be required in any response submitted to this Complaint.
Still further, Registrant’s address is listed as “David Backhumn Gard, Ludon, Ludon, China 765423”. Complainant was unable to locate a city, state, or province named “Ludon” in China and was unable to locate a street address of “David Backhumn Gard”.
Accordingly, Complainant respectfully submits that all of the above discussed entries of Registrant used to obtain the domain name are believed false, intentionally misleading, and fraudulent. These false entries provide clear evidence of Registrant’s lack of legitimate rights in the use of Complainant’s trademark in the domain name, GIANVITOROSSISTORE.COM.
[c.] [Specify in the space below why the domain name(s) should be considered as having been registered and being used in bad faith.] UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii).
By using the domain name, GianvitoRossiStore.com, Respondent has intentionally attempted in bad faith to attract Internet users to Respondent’s web site for commercial gain by creating a likelihood of confusion with Complainant’s worldwide registered trademark, GIANVITO ROSSI, as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and products offered for sale on Respondent’s web site.
Complainant is a world leader in the high fashion shoes for women industry and Complainant’s brand is well known in such industry and by consumers of footware for women. Complainant has not authorized or licensed use of its mark to Respondent anywhere in the world.
With respect to the domain name at issue, GianvitoRossiStore.com, Respondent has merely added the generic terms “Store” and “.com” to the end of Complainant’s worldwide registered trademark, GIANVITO ROSSI. The goods identified in Complainant’s trademark registrations include “footware”.
Respondent’s website is directed to the sale of footware for women.
As additional evidence of Respondent’s bad faith, it should be noted that the identical stylized lettering and form of Complainant’s registered trademark are copied and used by Respondent in Respondent’s website without change. Thus, not only are the words “GIANVITO ROSSI” copied, but also the exact stylized lettering and form of the trademark.
Accordingly, Respondent’s domain name and website clearly use Complainant’s worldwide registered trademark (GIANVITO ROSSI) in bad faith to intentionally attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and footware (shoes for women) offered for sale and information related thereto.
Yet further, Complainant respectfully submits that Respondent’s use of inaccurate, false, and intentionally misleading organization and address information to obtain the domain name, GIANVITOROSSISTORE.COM, provides additional evidence that the domain name was obtained by Respondent in bad faith and is being used in bad faith.
Accordingly, Complainant respectfully submits that these reflect intentionally misleading entries by Respondent and that verification and proof of the accuracy of name, organization and address of Respondent should be required in any response submitted to this Complaint.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 the following three elements to obtain an order cancelling or transferring a domain name:
(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.
In view of 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 draw such inferences it 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.”).
Complainant claims rights in the GIANVITO ROSSI mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,619,465, registered May 12, 2009), inter alia. Complainant has provided documentation of this registration, along with several other registrations of the mark. Registration with the USPTO (or any other governmental authority) suffices to demonstrate rights in a mark under Policy ¶4(a)(i), even where a respondent operates and/or resides in a different country. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under 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). At this stage of the proceeding, Complainant need only show some rights to the mark, not that Complainant has superior rights to the mark. Complainant has rights in the GIANVITO ROSSI mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <gianvitorossistore.com> domain name is confusingly similar to Complainant’s GIANVITO ROSSI mark because it contains the entire mark, and is altered by only the removal of the space between the words of the mark and the additions of the word “store” and the gTLD “.com.” Domain name syntax prohibits spaces in a domain name, so their absence must be disregarded when comparing a mark with a disputed domain name under Policy ¶4(a)(i). Domain name syntax requires a gTLD, so its presence must be disregarded when comparing a mark with a disputed domain name under Policy ¶4(a)(i). See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The word “store” is a generic term, and does nothing to adequately distinguish the domain name from the GIANVITO ROSSI mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶4(a)(i)). Respondent’s <gianvitorossistore.com> domain name is confusingly similar to Complainant’s GIANVITO ROSSI mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent is not commonly known by the <gianvitorossistore.com> domain name. The WHOIS information lists “david backhumn” as Registrant. There is no obvious relationship between Respondent’s name and the disputed domain name. Respondent has failed to provide any evidence to indicate he is commonly known by the domain name. Such a lack of evidence is sufficient to show a respondent is not commonly known by a domain name under Policy ¶4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”). Respondent is not commonly known by the <gianvitorossistore.com> domain name under Policy ¶4(c)(ii).
Complainant claims Respondent does not use the <gianvitorossistore.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and Policy ¶4(c)(iii). The resolving website appears to impersonate Complainant (it certainly uses Complainant’s stylized mark) and sells shoes competing with Complainant. Such a competitive use sufficient to show a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”). Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and Policy ¶4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent uses its resolving website to take advantage of the initial confusion of Internet users for financial gain by using the <gianvitorossistore.com> domain name to confuse Internet users into believing the website is associated with Complainant. Respondent does this by using the resolving website to compete with Complainant regarding the sale of shoes. Respondent displays Complainant’s GIANVITO ROSSI mark in the same stylized font Complainant uses on its own website. The text suggests it is Complainant’s authentic web site. Such a use shows bad faith in use and registration pursuant to Policy ¶4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site). It appears to this Panel that Respondent is passing itself off as Complainant. Respondent registered and uses the <gianvitorossistore.com> domain in bad faith pursuant to Policy ¶4(b)(iv) even though Complainant did not sue those words.
Finally, Respondent used false contact information in its WHOIS record, akin to using a privacy service. This raises the rebuttable presumption of bad faith registration and use in a commercial context (which this is). Respondent has done nothing to rebut that presumption. This ground alone justifies the finding of bad faith registration and use.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <gianvitorossistore.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, August 12, 2015
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