Pianegonda S.r.l. v. AKEY S.r.l. c/o
Pellizzer Luigi
Claim
Number: FA0503000433188
Complainant is Pianegonda S.r.l. (“Complainant”), represented
by Luca Sandri, P.zza Castello, 26, Milano, Italy. Respondent is AKEY S.r.l. c/o Pellizzer Luigi (“Respondent”), Via Coghi N. 9, Lusiana
I-36046, Italy.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <pianegonda.biz> and <pianegonda.info>,
registered with Onlinenic, Inc. d/b/a China-Channel.com, R170-Lrms.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
1, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 3, 2005.
On
March 2, 2005, Onlinenic, Inc. d/b/a China-Channel.com, R170-Lrms confirmed by
e-mail to the National Arbitration Forum that the domain names <pianegonda.biz>
and <pianegonda.info> are registered with Onlinenic, Inc. d/b/a
China-Channel.com, R170-Lrms and that Respondent is the current registrant of
the names. Onlinenic, Inc. d/b/a
China-Channel.com, R170-Lrms has verified that Respondent is bound by the Onlinenic,
Inc. d/b/a China-Channel.com, R170-Lrms registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
March 8, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 28, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@pianegonda.biz and postmaster@pianegonda.info by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 31, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Sandra
Franklin 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <pianegonda.biz>
and <pianegonda.info> domain names are identical to Complainant’s
PIANEGONDA mark.
2. Respondent does not have any rights or
legitimate interests in the <pianegonda.biz> and <pianegonda.info>
domain names.
3. Respondent registered and used the <pianegonda.biz>
and <pianegonda.info> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Pianegonda S.r.l., is an international company founded in 1994 in Vicenza,
Italy that specializes in creating and selling jewelry and luxury watches. Complainant’s jewelry is currently
distributed and sold worldwide, including Europe, the United States, and Asia.
Complainant has
registered its PIANEGONDA mark with numerous trademark authorities worldwide,
including Italy (Reg. Nos. 811,884 issued May 12, 2000; 835,196 issued January
31, 2001; 897,001 issued June 11, 2003), the United States (Reg. Nos. 2,599,924
issued July 30, 2002; 2,676,304 issued January 21, 2003) and the European
Community (Reg. No. 1,417,625 issued November 29, 2000).
Respondent
registered the <pianegonda.biz> and <pianegonda.info>
domain names on March 26, 2004.
Respondent’s domain names do not resolve to active websites.
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."
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.
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.
Complainant has
established rights in the PIANEGONDA mark through registration of the mark in
various international jurisdictions. See
Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration
of a mark is prima facie evidence of
validity, which creates a rebuttable presumption that the mark is inherently
distinctive). The respondent has the
burden of refuting this assumption. See also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum
Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption
that they are inherently distinctive and have acquired secondary meaning.”).
Respondent’s <pianegonda.biz>
and <pianegonda.info> domain names are identical to Complainant’s
PIANEGONDA mark because Respondent’s domain names incorporate Complainant’s
mark in its entirety and merely add the generic top-level domains “.biz” and
“.info.” Such additions are
insufficient to distinguish Respondent’s domain names from Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum
May 27, 2003) (“The addition of a top-level domain is irrelevant when
establishing whether or not a mark is identical or confusingly similar, because
top-level domains are a required element of every domain name.”); see also
J.W. Spear & Sons PLC v. Klinket, FA 356377 (Nat. Arb. Forum Dec. 13,
2004) (“Complainant’s numerous trademark registrations demonstrate that
Complainant has rights in the SCRABBLE mark.
The disputed domain name <scrabble.biz> is identical to this mark
but for the addition of the ‘.biz’ top-level domain suffix. It is therefore identical to the mark for
purposes of the Policy.”); see also State Farm Mut. Auto. Ins. Co. v. Domain
For Sale Latonya Thompson, FA 366229 (Nat. Arb. Forum Jan. 17, 2005)
(finding that the respondent’s <statefarms.info> domain name was
confusingly similar to the complainant’s STATE FARM mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel may accept all reasonable allegations and
assertions in the Complaint as true and accurate. See 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.”); see also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence).
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain names, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
interpret Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <pianegonda.biz> and <pianegonda.info>
domain names pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that, by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”).
Respondent has
made no use of the disputed domain names, which are identical to Complainant’s
PIANEGONDA mark, since registering them on March 26, 2004 and, as such, cannot
be said to be using the domain names in connection with 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).
Thus, the Panel finds that Respondent lacks rights and legitimate
interests in the domain names pursuant to Policy ¶ 4(a)(ii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13,
2000) (finding no rights or legitimate interests where the respondent failed to
submit a response to the complaint and had made no use of the domain name in
question); see also Ritz-Carlton
Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that
prior to any notice of the dispute, the respondent had not used the domain
names in connection with any type of bona fide offering of goods and services).
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
disputed domain names or authorized to register domain names featuring
Complainant’s PIANEGONDA mark. Thus,
the Panel concludes that Respondent lacks rights and legitimate interests in
the <pianegonda.biz> and <pianegonda.info> domain
names pursuant to Policy ¶ 4(c)(ii). See
Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interests where the respondent was not commonly known by the mark
and never applied for a license or permission from the complainant to use the
trademarked name); see also Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining if Policy ¶ 4(c)(ii) applies).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered the <pianegonda.biz> and <pianegonda.info> domain
names on March 26, 2004, and the domain names currently do not resolve to
active websites. The Panel does not
find it necessary to wait for Respondent to actively use the domain names
before concluding that the domain names have been registered and used in bad
faith because the domain names are identical to Complainant’s mark and any
probable use would almost certainly be in violation of Complainant’s
rights. Thus, the Panel finds that Respondent
registered and used the disputed domain names in bad faith pursuant to Policy ¶
4(a)(iii). See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital,
D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no
use of the domain name in question and there are no other indications that the
respondent could have registered and used the domain name in question for any
non-infringing purpose); see also Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000)
(finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not
used the domain name because “It makes no sense whatever to wait until it
actually ‘uses’ the name, when inevitably, when there is such use, it will
create the confusion described in the Policy”).
Furthermore,
Respondent registered the <pianegonda.biz> and <pianegonda.info>
domain names with actual or constructive knowledge of Complainant’s rights in
the PIANEGONDA mark due to Complainant’s registration of the mark with various
international trademark authorities, including Italy, Respondent’s country of
residence. Registration of a domain
name that is identical to another’s mark despite actual or constructive
knowledge of the mark holder’s rights is evidence of bad faith registration and
use pursuant to Policy ¶ 4(a)(iii). See
Samsonite Corp. v. Colony Holding,
FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat.
Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <pianegonda.biz> and <pianegonda.info>
domain names be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
April 12, 2005
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