Gianvito Rossi SRL Unipersonale v. luo yuandong
Claim Number: FA1808001799842
Complainant is Gianvito Rossi SRL Unipersonale (“Complainant”), represented by William Bak of Howson & Howson LLP, Pennsylvania, USA. Respondent is luo yuandong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gianvito-rossi-sale.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 2, 2018; the Forum received payment on August 2, 2018. The Complaint was received in both Chinese and English.
On August 7, 2018, Xin Net Technology Corporation confirmed by e-mail to the Forum that the <gianvito-rossi-sale.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 August 20, 2018, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of September 10, 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-rossi-sale.com. Also on August 20, 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 September 13, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
Language of the Proceedings
The Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. 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.
A. Complainant
Complainant, Gianvito Rossi SRL Unipersonale, is a global leader in the high fashion women’s footwear industry. Complainant has rights in the GIANVITO ROSSI mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,619,465, registered May 12, 2009.) Respondent’s <gianvito-rossi-sale.com> is confusingly similar to Complainant’s mark as Respondent merely adds multiple hyphens, the generic term “sale”, and the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
Respondent does not have any rights or legitimate interests in the <gianvito-rossi-sale.com> domain name. Respondent is not permitted or licensed to use Complainant’s GIANVITO ROSSI mark and is not commonly known by the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the <gianvito-rossi-sale.com> domain name to offer competing goods.
Respondent has registered and is using the domain name in bad faith. Respondent likely registered and used the domain name as part of a bad faith pattern of such registrations. Additionally, Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, Internet users by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. Finally, Respondent must have had actual and/or constructive knowledge of Complainant’s GIANVITO ROSSI mark prior to registering the <gianvito-rossi-sale.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Gianvito Rossi SRL Unipersonale, is a global leader in the high fashion women’s footwear industry. Complainant has rights in the GIANVITO ROSSI mark based upon the registration with the USPTO (e.g., Reg. No. 3,619,465, registered May 12, 2009.) Respondent’s <gianvito-rossi-sale.com> is confusingly similar to Complainant’s mark.
Respondent registered the <gianvito-rossi-sale.com> domain name on May 10, 2018.
Respondent does not have any rights or legitimate interests in the <gianvito-rossi-sale.com> domain name. Respondent uses the <gianvito-rossi-sale.com> domain name to offer competing goods.
Respondent has registered and is using the 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 has rights to the GIANVITO ROSSI mark based upon registration with the USPTO. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <gianvito-rossi-sale.com> domain name is confusingly similar to Complainant’s mark. Respondent merely adds a generic term, multiple hyphens, and a gTLD to Complainant’s GIANVITO ROSSI mark.
Respondent has no rights or legitimate interests in the <gianvito-rossi-sale.com> domain name. Complainant has not authorized Respondent to use Complainant’s GIANVITO ROSSI mark. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, lack of evidence in the record to indicate that a respondent has been authorized to register a domain name using a complainant’s mark supports a finding that the respondent does not have rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies the Registrant as “luo yuandong” and there is no evidence in the record to suggest Respondent is authorized to use Complainant’s GIANVITO ROSSI mark. Therefore, the Panel finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the disputed domain name
Respondent fails to use the domain name to make a bona fide offering or goods or services or for a legitimate noncommercial or fair use. Respondent uses the <gianvito-rossi-sale.com> domain name to offer products that compete directly with Complainant. 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). See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, Respondent's website prominently displays the GIANVITO ROSSI trademark along with photographs of women’s footwear which compete directly with Complainant’s business.
Respondent registered and is using the <gianvito-rossi-sale.com> domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv) by disrupting Complainant’s business and diverting users to the disputed domain name which sells competing products. See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); 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).”).
Respondent registered the <gianvito-rossi-sale.com> domain name with actual knowledge of Complainant’s mark. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (concluding actual knowledge to be sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith).
Complainant 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-rossi-sale.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 27, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page