DECISION

 

Gianvito Rossi SRL Unipersonale v. jolin

Claim Number: FA2001001881175

 

PARTIES

Complainant is Gianvito Rossi SRL Unipersonale (“Complainant”), represented by William Bak of Howson & Howson LLP, Pennsylvania, USA.  Respondent is jolin (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <gianvito-rossi.com>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd..

 

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on January 30, 2020; the Forum received payment on January 30, 2020.

 

On February 6, 2020, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <gianvito-rossi.com> domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name.  Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. 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 11, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 2, 2020 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.com.  Also on February 11, 2020, 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.

 

A cursory Response was received on March 3, 2020, after the deadline for filing the same.

 

On March 6, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

Preliminary Issue: Deficient Response

The response came in after the deadline to file a response on March 3, 2020. Thus the Forum does not consider the Response to be in compliance with ICANN Rule 5.  The Panel, at its discretion, may choose whether to accept and consider this Response.  See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).

 

Upon consideration, the Panel elects not to accept or consider the Response.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant is a world leader in the industry of high-fashion women’s shoes and Complainant’s brand is well known in the high-fashion shoe industry. Complainant has rights in the GIANVITO ROSSI mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,954,967, registered Feb. 6, 1996). See Compl. Ex. 6. Respondent’s <gianvito-rossi.com> domain name is confusingly similar to Complainant’s mark as Respondent merely adds a hyphen between the two words in the mark and the “.com” generic top-level domain (gTLD).

 

2.    Respondents has no rights or legitimate interests in the <gianvito-rossi.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark.

 

3.    Respondent registered and used the disputed domain name in bad faith. Respondent attempted to sell the disputed domain name in excess of out of pocket costs. Additionally, Respondent is attempting to disrupt Complainant’s business by offering counterfeit products.

 

B.   Respondent

1.    Respondent filed a Response that the Panel has elected not to accept or consider.

 

FINDINGS

1.    Respondent’s <gianvito-rossi.com> domain name is confusingly similar to Complainant’s GIANVITO ROSSI mark.

 

2.    Respondent does not have any rights or legitimate interests in the <gianvito-rossi.com> domain name.

 

3.    Respondent registered or used the <gianvito-rossi.com> domain name in bad faith.

 

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."

 

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.

 

Identical and/or Confusingly Similar

Complainant claims rights in the GIANVITO ROSSI mark through its registration of the mark with the USPTO (e.g., Reg. No. 1,954,967, registered Feb. 6, 1996). See Compl. Ex. 6. Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the Complainant has rights in the GIANVITO ROSSI mark under Policy ¶ 4(a)(i).

 

Complainant argues Respondent’s <gianvito-rossi.com> domain name is confusingly similar to Complainant’s mark as Respondent merely adds a hyphen between the two words in the mark and the “.com” gTLD. Adding a hyphen and a gTLD to an otherwise recognizable mark may not sufficiently distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds Respondent’s <gianvito-rossi.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).

 

Complainant argues that Respondent has no rights or legitimate interests in the <gianvito-rossi.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Where a response is lacking, relevant WHOIS information, can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The Panel notes the WHOIS of record identifies the Respondent as “jolin” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the <gianvito-rossi.com> domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Registration and Use in Bad Faith

Complainant argues Respondent registered and used the disputed domain name in bad faith. Specifically, Respondent attempted to sell the disputed domain name in excess of out-of-pocket costs. Registering a disputed domain name for the mere purpose of selling the domain name to a complainant in excess of the costs of registration may be evidence of bad faith under Policy ¶ 4(b)(i). See Deutsche Lufthansa AG v. Kenechukwu Okoli, FA 1821759 (Forum Jan. 13, 2019) (“The domain name’s website listed the domain name for sale for $9,150. Respondent also contacted Complainant directly to offer the domain name for sale. Doing so suggests bad faith registration and use of the <lufthansamiles.com> domain name pursuant to Policy ¶ 4(b)(i).”). Here, Complainant provided screenshots of an email chain between the Complianant and the purported Respondent. See Compl. Ex 13. Therefore, the Panel finds Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(i).

 

Finally, Complainant argues Respondent is attempting to disrupt Complainant’s business in bad faith by offering counterfeit products. Registering a disputed domain name so to offer counterfeit goods of a complainant’s goods may be evidence of bad faith under Policy ¶ 4(b)(iii). See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum Dec. 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”). Therefore, the Panel finds Respondent is attempting to disrupt Complainant’s business in bad faith under Policy ¶ 4(b)(iii).

 

DECISION

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.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  March 18, 2020