PELLETTERIA ORLANDI MARINO v. tian tao
Claim Number: FA1702001715717
Complainant is PELLETTERIA ORLANDI MARINO (“Complainant”), represented by Sara Giacomini of ING. CLAUDIO BALDI SRL, Italy. Respondent is tian tao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marinoorlandi.org>, registered with GoDaddy.com, LLC.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 3, 2017; the Forum received payment on February 6, 2017.
On February 3, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <marinoorlandi.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 2017 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@marinoorlandi.org. Also on February 7, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 10, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant registered the MARINO ORLANDI mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,220,254, registered Jan. 26, 1999), and many other countries. Respondent’s <marinoorlandi.org> domain is identical or confusingly similar to the MARINO ORLANDI mark as it fully incorporates mark, less the space, and only adds the generic top-level domain (“gTLD”) “.org” at the end.
ii) Respondent has no rights or legitimate interests in <marinoorlandi.org>. There is no evidence that Respondent is commonly known by the mark, nor has Complainant licensed or otherwise permitted Respondent to use Complainant’s mark or use a domain name with the mark.
iii) Respondent registered and is using the <marinoorlandi.org> in bad faith. Respondent uses the disputed domain name to sell products identical to Complainant’s and specifically mentions Complainant.
B. Respondent
Respondent did not submit a Response in this Proceeding. The Panel notes that Respondent registered <marinoorlandi.org> on Mar. 18, 2016.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
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 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.
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(f), 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 (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 is a large retail company that sells a broad spectrum of products to consumers in many different countries. Complainant has used the MARINO ORLANDI mark since 1989. Complainant claims it registered the MARINO ORLANDI mark with the USPTO (e.g., Reg. No. 2,220,254, registered Jan. 26, 1999) and many other countries. Panels have established that registration of a mark with multiple governmental agencies sufficiently recognizes a registrant’s rights in a mark. See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). Therefore, the Panel finds that Complainant has established rights in the MARINO ORLANDI mark for the purposes of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <marinoorlandi.org> is identical or confusingly similar to Complainant’s mark as it uses the entire mark without the space and adds the gTLD “.org.” Panels have held that adding a gTLD does not sufficiently distinguish a domain name from a registered mark. See Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to the complainant’s mark); see also Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”). Therefore, while Respondent has made alterations contemplated by Microsoft Corp. and Health Republic Insurance Company, the Panel agrees that Respondent has not included elements in the disputed domain name that would provide distinction from Complainant’s mark under Policy ¶ 4(a)(i).
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 shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 contends that Respondent has no rights or legitimate interests in <marinoorlandi.org>. Complainant notes that it has not given Respondent authorization or license to use Complainant’s mark in any manner. When a Respondent fails to respond, relevant information considered under Policy ¶ 4(c)(ii) includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). A WHOIS search identifies “tian tao” as the registrant. Complainant argues that no evidence exists to demonstrate that Respondent previously had any connection with the disputed domain name before its registration. Accordingly, the Panel agrees that Respondent is not commonly known by <marinoorlandi.org> under Policy ¶ 4(c)(ii).
Under Policy ¶ 4(a)(ii), Complainant has not made any arguments as to why Respondent lacks rights or legitimate interests through use/nonuse of the domain name. The Panel looks to arguments made by Complainant under Policy ¶ 4(a)(iii) and applies them to a consideration of Respondent’s possible bona fide offering of goods or services or any legitimate noncommercial or fair use. Complainant does provide a contention that Respondent attempts to sell identical products and incorporating Complainant’s mark on its resolving website. Competitive use may not demonstrate rights or legitimate interests. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel notes that Complainant has provided evidence of Respondent’s alleged use. The Panel agrees that such use does not amount to rights and legitimate interests under Policy ¶¶ 4(c)(i) or (iii).
Complainant claims that Respondent registered and uses the <marinoorlandi.org> domain name in bad faith because Respondent uses the disputed domain name to confuse Complainant’s customers and sell identical products under the language of Policy ¶ 4(b)(iv). Typically, panels have agreed with similar arguments. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). The disputed domain name resolves to a webpage that appears to be Complainants and offers items similar to those of Complainant. Accordingly, the Panel finds that Respondent’s efforts to commercially benefit by confusing users seeking Complainant shows bad faith by Respondent under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marinoorlandi.org> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: March 17, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page