Blanco GMBH + Co. KG v. Vito Anton Laera
Claim Number: FA2010001916986
Complainant is Blanco GMBH + Co. KG (“Complainant”), represented by Jeanne Hamburg of Norris McLaughlin, P.A., Germany. Respondent is Vito Anton Laera (“Respondent”), Cuba.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blanco2020.com>, registered with Gandi SAS.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 14, 2020; the Forum received payment on October 14, 2020.
On October 15, 2020, Gandi SAS confirmed by e-mail to the Forum that the <blanco2020.com> domain name is registered with Gandi SAS and that Respondent is the current registrant of the name. Gandi SAS has verified that Respondent is bound by the Gandi SAS 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 October 22, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 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@blanco2020.com. Also on October 22, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 17, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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
Respondent lacks rights and legitimate interests in the <blanco2020.com> domain name as he is not commonly known by the disputed domain name and is not licensed to use the BLANCO mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent diverts Internet traffic to a website that promotes competing goods.
Respondent registered and uses the <blanco2020.com> domain name in bad faith. Respondent has displayed a pattern of bad faith domain name registration. Respondent falsely affiliates itself with Complainant to divert business to a competing website. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the BLANCO mark and in violation of a valid and binding Court order.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has shown that it has rights in the BLANCO mark through its registration with the USPTO, Reg. No.1,555,655, registered on September 12, 1989 for basins, sinks, faucets, bowls, drain boards, colanders, chopping boards and sieves.
Respondent’s <blanco2020.com> domain name is confusingly similar to Complainant’s BLANCO mark since it contains the entire mark, adding only the number “2020”, which does nothing to distinguish the domain name from the mark, and the inconsequential “.com” gTLD, which may be ignored.
Complainant has established this element.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Amended Complaint Exhibit 8 is a copy of a Judgment entered with the consent of both Complainant and Respondent by the U.S. District Court for the Southern District of Florida on April 4, 2013, which included the following Order:
“2. Defendants [including Respondent] …are hereby permanently restrained and enjoined from . . .
(c) registering any domain name which consists of or incorporates any slogan, name or mark confusingly similar to the BLANCO Marks, including, without limitation VALANCO, VIANCO, VLANCO, or BLANCO, but excluding VILANCO and VALCO, which the Defendants may use”.
This Judgment was entered several years before Respondent registered the <blanco2020.com> domain name on April 25, 2017. The domain name resolves to a website displaying Complainant’s BLANCO mark and offering for sale products of the kind marketed by Complainant under that mark.
These circumstances, coupled with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the domain name. See 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”).
Respondent has made no attempt to do so. In the circumstances of this case, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
Respondent registered the domain name many years after Complainant registered its mark and had established an online presence for its products. Having regard to the use to which the domain name has been put, the Panel is satisfied that Respondent registered it with Complainant in mind and did so primarily for the purpose of disrupting the business of a competitor and in order intentionally to attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of the products on his website.
Further, the domain name was registered in violation of a valid and binding Court Order.
Subsequent to the making of that Order, Respondent was found on more than one occasion to have contravened the Order and to be in contempt of Court. The history of Respondent’s conduct is contained, inter alia, in the decision of the United States Court of Appeals for the Eleventh Circuit in Blanco GMBH + Co. KG v. Laera, Jul 16, 2015. 620 F. App'x 718 (11th Cir. 2015). This leads the Panel to the further conclusion that Respondent’s registration of the <blanco2020.com> domain name in 2017 was done in order to prevent Complainant, the owner of the BLANCO trademark, from reflecting that mark in a corresponding domain name and that Respondent has engaged in a pattern of such conduct.
Accordingly, the Panel finds Respondent registered and is using the domain name in bad faith.
Complainant has established this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <blanco2020.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: November 23, 2020
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