Societe Civile G.A.R. v. Giuseppe
Scavetta
Claim Number: FA0503000445171
PARTIES
Complainant
is Societe Civile G.A.R., (“Complainant”)
represented by James P. Duffy III, of Berg and Duffy LLP, 3000 Marcus
Avenue, Suite 1 West 2, Lake Success, NY 11042. Respondent is Giuseppe Scavetta, (“Respondent”), 57
Rue Grimaldi, Monaco, Monaco 98000.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <repossi.us>,
registered with Network Solutions, LLC.
PANEL
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.
Hon.
Ralph Yachnin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 22, 2005; the Forum received a hard copy of the
Complaint on March 23, 2005.
On
March 23, 2005, Network Solutions, LLC confirmed by e-mail to the Forum that
the domain name <repossi.us>
is registered with Network Solutions, LLC and that Respondent is the current
registrant of the name. Network
Solutions, LLC has verified that Respondent is bound by the Network Solutions,
LLC registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with the U.S. Department of
Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On
March 25, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 14,
2005
by which Respondent could file a Response to the Complaint, was transmitted to
Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute
Resolution Policy (the “Rules”).
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
April 22,2005, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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. Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
Policy, the 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1. The domain name registered by Respondent,
<repossi.us>, is identical to Complainant’s REPOSSI mark.
2. Respondent does not have any rights or
legitimate interests in the <repossi.us> domain name.
3. Respondent registered and/or used the <repossi.us>
domain name in bad faith.
B.
Respondent failed to submit a response in this proceeding.
FINDINGS
Complainant, Societe Civile G.A.R., holds
and administers trademarks for the Repossi Group, which manufacturers and
markets high quality jewelry, watches and accessories. Complainant established
through extrinsic proof in this proceeding that it owns the trademark for the
REPOSSI mark, registered with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 2,068,932, issued June 10, 1997).
Complainant and Respondent entered into a
contractual relationship in September 2004, whereby Complainant provided
Respondent with goods from September 2004 through January 2005. After
Respondent failed to make payment for the goods received, Complainant
terminated the agreement in February 2005, and requested that Respondent
immediately cease using any of Complainant’s names, logos, descriptions, or any
other representations indicating the trademarks of Complainant.
Respondent registered the <repossi.us>
domain name on July 13, 2004, which was before Complainant and Respondent
had a contractual relationship. The domain name does not resolve to an active
website. Respondent is passively holding the domain name.
DISCUSSION
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 the 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.
Paragraph
4(a) of the Policy requires that the 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 the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights; and
(2)
the Respondent has no rights or legitimate interests in respect of the domain
name; and
(3)
the domain name has been registered or is being used in bad faith.
Given
the similarity between the Uniform Domain Name Dispute Resolution Policy
(“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as
applicable in rendering its decision.
Complainant established with extrinsic
proof in this proceeding that it has rights to the REPOSSI mark as evidenced by
its registration with the USPTO. See 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.”); see also 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. Respondent has the burden of refuting this
assumption.).
Respondent’s <repossi.us> domain
name is identical to the REPOSSI mark because the domain name fully
incorporates the mark and merely adds the country-code “.us.” See Tropar
Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that
since the addition of the country-code “.us” fails to add any distinguishing
characteristic to the domain name, the <tropar.us> domain name is
identical to Complainant’s TROPAR mark); see also Shirmax Retail Ltd. v. CES
Mktg Group Inc., AF-0104 (eResolution Mar. 20, 2000) (refusing to interpret
Policy ¶ 4(a)(i) in the conjunctive rather than disjunctive sense in holding
that “mere identicality of a domain name with a registered trademark is
sufficient to meet the first element [of the UDRP], even if there is no
likelihood of confusion whatsoever”).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Complainant has alleged that Respondent
has no rights or legitimate interests in the <repossi.us> domain
name, which contains Complainant’s REPOSSI mark. Due to Respondent’s failure to
respond to the Complaint, the Panel assumes that Respondent lacks rights and
legitimate interest in the disputed domain name. See Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that Respondent has no rights or legitimate
interests in the domain name because Respondent never submitted a response or
provided the Panel with evidence to suggest otherwise); see also
Furthermore, nothing in the
record establishes that Respondent is commonly known by the disputed domain
name. Moreover, Respondent does not hold rights in a mark similar to the domain
name in dispute. Therefore, the Panel concludes that Respondent lacks rights
and legitimate interests in the domain name pursuant to Policy ¶¶ 4(c)(i) and
(iii). See Gallup Inc. v. Amish
Country Store, FA 96209
(Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights
in a domain name when Respondent is not known by the mark); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant; (2) Complainant’s rights in the mark precede Respondent’s
registration; (3) Respondent is not commonly known by the domain name in
question).
According to the Complaint, Respondent
has been passively holding the disputed domain name because the domain name
does not resolve to an active website. The Panel accepts this assertion as
true. Passively holding a domain name does not evidence rights or legitimate
interests in a domain name pursuant to Policy ¶¶ 4(c)(ii) or (iv). See Am. Home Prod. Corp. v. Malgioglio,
D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in
the domain name <solgarvitamins.com> where Respondent merely passively
held the domain name); see also Chanel,
Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or
legitimate interests where “Respondent registered the domain name and did
nothing with it”).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent registered the <repossi.us>
domain name, with constructive knowledge of Complainant’s rights in the
REPOSSI mark due to Complainant’s registration of the mark with the USPTO and
Complainant’s aggressive promotion of the mark in commerce. Moreover, the Panel
finds that Respondent had actual knowledge of Complainant’s rights in the mark
due to prior contractual negotiations between the Respondent and Complainant. Thus,
the Panel finds that Respondent registered and used the <repossi.us> domain
name in bad faith pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of
bad faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively.”); 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”).
Moreover, Respondent’s passive holding is
evidence that Respondent registered and used the <repossi.us> domain
name in bad faith pursuant to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in bad
faith); see also Caravan Club v.
Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent
made no use of the domain name or website that connects with the domain name,
and that passive holding of a domain name permits an inference of registration
and use in bad faith).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Complainant having established all three
elements required under the usTLD Policy, the Panel concludes that relief
should be GRANTED.
Accordingly, it is ordered that the <repossi.us>
domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: April 26, 2005
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page