Gianvito Rossi SRL Unipersonale v. sun yanqi
Claim Number: FA1803001776416
Complainant is Gianvito Rossi SRL Unipersonale (“Complainant”), represented by William Bak of Howson & Howson LLP, Pennsylvania, USA. Respondent is sun yanqi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gianvito-rossisale.com>, registered with Xin Net Technology Corporation.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 16, 2018; the Forum received payment on March 16, 2018. The Complaint was submitted in both Chinese and English.
On March 19, 2018, Xin Net Technology Corporation confirmed by e-mail to the Forum that the <gianvito-rossisale.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 March 26, 2018, the Forum served the Chinese Complaint and all Annexes , including a Chinese Written Notice of the Complaint, setting a deadline of April 16, 2018 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@gianvito-rossisale.com. Also on March 26, 2018, 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 April 20, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant, Gianvito Rossi SRL Unipersonale, is a world leader in the high fashion shoe industry.
Complainant uses its GIANVITO ROSSI ITALIAN STYLE and GIANVITO ROSSI marks to promote its products and services and established rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”) (GIANVITO ROSSI ITALIAN STYLE - e.g., Reg. No. 1,954,967, registered Feb. 6, 1996) (GIANVITO ROSSI – e.g., Reg. No. 3,619,465, registered May 12, 2009).
Respondent’s <gianvito-rossisale.com> domain name is confusingly similar to Complainant’s mark because it merely adds a hyphen and the generic term “sale” and the generic top-level domain (“gTLD”) “.com” to the fully incorporated mark.
Respondent does not have rights or legitimate interests in the <gianvito-rossisale.com> domain name. Complainant has used its mark for over 20 years and has not licensed or otherwise authorized Respondent to use its GIANVITO ROSSI mark in any fashion.
Respondent registered and is using the <gianvito-rossisale.com> domain name in bad faith. Respondent has engaged in a pattern of bad faith registration as evidenced by its involvement in prior adverse UDRP decisions. Further, Respondent is using the disputed domain name to create confusion with Complainant’s mark for Respondent’s commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the GIANVITO ROSSI mark as demonstrated by its registration of such mark with the USPTO.
Complainant’s rights in the GIANVITO ROSSI mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent uses the <gianvito-rossisale.com> domain name to address a <gianvito-rossisale.com> website so that Respondent may exploit the goodwill in Complainant trademark to encourage the sale of products that compete with those offered by Complainant.
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.”).
Preliminary Issue: Language of Proceeding
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for GIANVITO ROSSI, as well as multiple registrations for related marks worldwide, evidences Complainant’s rights in such marks for the purposes of Policy ¶ 4(a)(I). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Additionally, the at-issue domain name contains Complainant’s entire GIANVITO ROSSI trademark (its insignificant space replaced with an also insignificant hyphen) followed by the generic term “sale” and the top level domain name “.com”. The differences between the at-issue <gianvito-rossisale.com> domain name and Complainant’s GIANVITO ROSSI trademark are insufficient to distinguish the domain name from Complainant’s trademark for the purposes of the Policy. In fact, the use of the term “sale” enhances any confusion as it falsely suggests a Complainant sponsored sales outlet. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) Respondent’s <gianvito-rossisale.com> domain name is confusingly similar to Complainant’s GIANVITO ROSSI trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also, Eastman Chem. Co. v. Patel, FA 524752 (Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the <gianvito-rossisale.com> domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for the at-issue domain name identifies its registrant as “sun yang.” The record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by the <gianvito-rossisale.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also, IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Additionally, Respondent uses the <gianvito-rossisale.com> domain name and associated <gianvito-rossisale.com> website to sell goods competing with those goods offered by Complainant. Such use constitutes neither a bona fide offering of goods or services under Policy ¶4(c)(i) nor a non-commercial or fair use under Policy ¶4(c)(iii); See Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (finding that Respondent’s use of the disputed domain to sell products related to Complainant without authorization “does not amount to a bona fide offering of goods or services under policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <gianvito-rossisale.com> domain name was registered and used in bad faith. As discussed below without limitation, Policy ¶ 4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith regarding the domain name, pursuant to paragraph 4(a)(iii) of the Policy.
As touched on above, Respondent uses the <gianvito-rossisale.com> domain to facilitate an online store that improperly exploits the goodwill associated with Complainant’s GIANVITO ROSSI trademark. The <gianvito-rossisale.com> website offers goods for sale that compete with those offered by Complainant. Use of a domain name to create a false impression of affiliation with the Complainant in order to compete with and disrupt the complainant’s business is behavior indicative of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also, 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).”); see also, Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”).
Furthermore, Complainant’s shows that Respondent was subject to prior adverse UDRP decisions. Indeed, Respondent appears to be a respondent in Gianvito Rossi SRL Unipersonale v. Sara Caneva, FA1712001764620 (Forum Feb. 8, 2018) even though the listed registrar and registrant in that case are different than the respondent named in the present case. These multiple prior adverse decisions indicate a pattern of bad faith domain name registration and suggest Respondent’s bad faith registration and use in the present dispute under Policy ¶ 4(b)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gianvito-rossisale.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 23, 2018
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