Tipo Oil Corporation v. Andrea Tosetti
Claim Number: FA15005001620120
Complainant is Tipo Oil Corporation (“Complainant”), represented by Steven L. Rinehart, Esq., California, USA. Respondent is Andrea Tosetti (“Respondent”), Borgomanero, Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cizeta-automobili.com>, registered with Register.it SpA.
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.
Dr. Reinhard Schanda as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 18, 2015; the Forum received payment on May 18, 2015.
On May 20, 2015, Register.it SpA confirmed by e-mail to the Forum that the <cizeta-automobili.com> domain name is registered with Register.it SpA and that Respondent is the current registrant of the name. Register.it SpA has verified that Respondent is bound by the Register.it SpA 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 May 26, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 2015 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@hthehomedepot.com. Also on May 26, 2015, 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 timely Response was received and determined to be complete on May 29, 2015.
On June 3, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dr. Reinhard Schanda as Panelist.
On June 3, 2015 Complainant submitted an Additional Submission that was in compliance with Supplement Rule # 7.
On June 4, 2015 Respondent submitted an Additional Submission that was in compliance with Supplement Rule # 7.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has registered the CIZETA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,018,990, registered Sept. 6, 2005). The mark is used on or in connection with the sale of repair, customization, and maintenance services for automobiles. The <cizeta-automobili.com> domain name is confusingly similar to the CIZETA mark because the domain name contains the entire mark and adds the generic top-level domain (“gTLD”) “.com” along with a hyphen and the descriptive Italian word “automobili.”
Respondent has no rights or legitimate interests. Respondent is not commonly known as the domain name, nor is Respondent a licensee of Complainant. Further, Respondent is using the domain name in an attempt to either pass itself off as Complainant or sell competing good or services, or both.
Respondent has engaged in bad faith registration and use. Respondent is attempting to commercially profit from a likelihood of confusion. Further, Respondent has actual and/or constructive knowledge of Complainant’s trademark rights.
B. Respondent
Respondent does not contest Complainant’s registered rights in the CIZETA mark in the United States. Respondent argues that Complainant cannot assert its trademark rights it because Respondent is located in Italy. Respondent does not contest Complainant’s assertion that the disputed domain name is confusingly similar to the mark.
Respondent claims it has rights or legitimate interests in the disputed domain name. Respondent claims that it owns a legitimate business and that it has a trademark registration for the CIZETA AUTOMOBILI mark in Italy.
Respondent claims that its rights or legitimate interests preclude a finding of bad faith.
C. Complainant’s Additional Submission
Complainant asserts that it does not need to register its mark in the country where Respondent is located in order to asserts its trademark rights in this UDRP proceeding. Complainant also asserts that the other domains mentioned in the response are irrelevant to this proceeding.
D. Respondent’s Additional Submission
Respondent asserts that Complainant’s trademark registration is only valid in the US.
Preliminary issue – Foreign Language Response
According to Registrar’s Verification the language of the registration agreement is Italian. Since the Respondent is communicating with the Forum in English, the Panel is of the view that Respondent apparently understands the language of the Complaint. Therefore the Panel determines English as language of the administrative proceeding under paragraph 11 (a) of the UDRP. See L'Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585, <shuuemura.com>, Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679, <cebit.com>, SWX Swiss Exchange v. SWX Financial LTD, WIPO Case No. D2008-0400, <swxtrader.com>, MySpace Inc. v. Will Eom, WIPO Case No. D2008-0448, <mypsace.com>, Fissler GmbH v. Chin Jang Ho, WIPO Case No. D2008-1002, <fissler.com>, Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, <shop-zappos.com> and Biotechnology and Biological Sciences Research Council v. Kim Jung Hak, WIPO Case No. D2009-1583, <bbsrc.com>.
FINDINGS
The Panel finds that:
1. The domain name <cizeta-automobili.com> is confusingly similar to Complainant’s registered trademark.
2. The Respondent has not established rights or legitimate interests in the domain name <cizeta-automobili.com>.
3. The Respondent has registered and is using the domain name <cizeta-automobili.com> 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.
Complainant has registered the CIZETA mark with the USPTO (e.g., Reg. No. 3,018,990, registered Sept. 6, 2005). The mark is used on or in connection with the sale of repair, customization, and maintenance services for automobiles. The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). The Panel also notes that Complainant does not need to register the mark in the country where Respondent is located. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant argues that the <cizeta-automobili.com> domain name is confusingly similar to the CIZETA mark. Complainant notes that the domain name contains the entire mark and adds the gTLD “.com.” The Panel further notes that the domain name adds a hyphen and the descriptive Italian word “automobili.” As a general rule, a gTLD or punctuation-related changes (such as adding a hyphen) can never distinguish a domain name from the mark at issue. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"). Also, prior panels have found that the addition of a descriptive term to a domain name that contains the entire mark results in a confusing similarity. See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”). Thus, the Panel finds that the disputed domain name is confusingly similar to the CIZETA mark.
Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made 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 prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Technologies, Inc. v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corporation v. Khaled Ali Soussi, D2000-0252 WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant asserts that Respondent is not commonly known as the <cizeta-automobili.com> domain name, nor is Respondent in possession of licensing rights that would allow him to use the CIZETA mark in domain names. The Panel notes that “Andrea Tosetti” is listed as the registrant of record for the disputed domain name.
However, the Panel notes that Respondent has presented evidence that it owns a trademark registration with the European Union’s Office for Harmonization in the Internal Market (“OHIM”) for the CIZETA AUTOMOBILI mark (see Response), and thus could be commonly known as the disputed domain name. Panels have tended to recognize that a respondent's registration of a trademark which corresponds to a disputed domain name normally will, but does not necessarily, establish respondent rights or legitimate interests in that domain name for the purpose of the second element of the UDRP. For example, panels have generally declined to find respondent rights or legitimate interests in a domain name on the basis of a corresponding trademark registration where the overall circumstances demonstrate that such trademark was obtained primarily to circumvent the application of the UDRP. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847, <madonna.com>, Chemical Works of Gedeon Richter Plc v. Covex Farma S.L., WIPO Case No. D2008-1379, <cavinton.com> inter alia, Transfer, British Sky Broadcasting Group Plc. and British Sky Broadcasting Limited v. Global Access, WIPO Case No. D2009-0817, <skytravel.com>,
This Panel also finds that Respondent is not commonly known as the disputed domain name and therefore declines to award Respondent rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the <cizeta-automobili.com> domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant argues that Respondent is using the domain name in an attempt to pass itself off as Complainant, and also to offer competing goods or services. The Panel notes that the resolving webpage contains the header “Cizeta Automobili” and pictures of automobiles (see Compl., at Attached Ex. E), as well as Complainant’s logo (see Compl., at Attached Ex. C for a screenshot of Complainant’s website containing the same logo as that appearing on the resolving webpage). Prior panels have found that attempts by a respondent to either pass itself off as the complainant or use a confusingly similar domain name to sell competing goods or services, or both, cannot consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. 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).”); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”). The Panel finds that Respondent is attempting to pass itself off as the complainant. The Panel further finds that Respondent uses a confusingly similar domain name to sell competing goods and services. As a result the Panel finds that Respondent does not have rights under Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent has engaged in bad faith registration and use. Complainant contends that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. To support this claim, Complainant argues that because the resolving webpage contains the same logo that appears on Complainant’s actual website (a mark in which Complainant asserts trademark rights), and because the website advertises competing services, Internet users who view the resolving webpage are likely to be confused as to the website’s source or origin. Complainant also argues that Respondent must be commercially profiting in the process. The Panel again notes that the resolving webpage contains the header “Cizeta Automobili” and pictures of automobiles (see Compl., at Attached Ex. E), as well as Complainant’s logo (see Compl., at Attached Ex. C for a screenshot of Complainant’s website containing the same logo as that appearing on the resolving webpage). It is well-established that a respondent has engaged in Policy ¶ 4(b)(iv) bad faith when they register a domain name that creates a likelihood of confusion for commercially gain. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Since the Panel finds that a likelihood of confusion exists, and that Respondent is commercially profiting the panel finds Policy ¶ 4(b)(iv) bad faith.
Complainant also argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the mark. To support this assertion, Complainant notes that its trademark registrations for the CIZETA mark existed well before the registration of the disputed domain name. Complainant also notes that Respondent applied for registration of the CIZETA AUTOMOBILI mark with the USPTO, but that said application was denied for likelihood of confusion with Complainant’s CIZETA mark. See Compl., at Attached Ex. F for a screenshot of the TESS database search revealing Respondent’s trademark application; see also Compl., at Attached Ex. H for a copy of an office action sent from the USPTO advising Respondent of their decision to deny the application. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cizeta-automobili.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: June 16, 2015
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