WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Ciuffogatto S.r.l. v. Mr. Jacques Stade

Case No. D2003-0357

 

1. The Parties

The Complainant is Ciuffogatto S.r.l. of Torino, Italy, represented by Dr. Massimo Introvigne and Dr. Fabrizio Jacobacci, Studio Legale Jacobacci & Associati, Torino, Italy.

The Respondent is Mr. Jacques Stade of Paris, France.

 

2. The Domain Name and Registrar

This dispute concerns the domain name <ciuffo-gatto.com> (the "Domain Name").

The Domain Name <ciuffo-gatto.com> is registered with eNom, Inc (the "Registrar").

 

3. Procedural History

On May 8, 2003, the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") received a complaint by e-mail (the "Complaint"); on May 13, 2003, the Center received the hard copy version.

On May 9, 2003, the Center acknowledged receipt of the Complaint by email to the representative of the Complainant and the Respondent.

On May 9, 2003, the Center transmitted to the Registrar by email a request for registrar verification in connection with the Domain Name at issue. On May 15, 2003, the Registrar transmitted to the Center by email its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

On May 19, 2003, the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules") and that the required payment has been made by the Complainant.

In accordance with the Rules, paragraphs 2(a) and 4(a), on May 19, 2003, the Center transmitted a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent, its administrative contact, billing contact and technical contact by courier (with attachments) as well as by facsimile and e-mail (without attachments). A copy of the notification was sent to Complainant. Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that an administrative proceeding in accordance with the Policy had commenced and that the Respondent was required to submit a Response to the Center on or before June 8, 2003.

The Notification of Complaint and Commencement of Administrative Proceeding sent to the Respondent by courier was returned. There are no reasons to believe that the transmission to the Respondent by facsimile and email or the transmission to the Italian administrative contact, billing contact and technical contact by email and courier has failed, though.

The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on June 18, 2003.

On June 25, 2003, after having received a Statement of Acceptance and Declaration of Impartiality and Independence from Michael A.R. Bernasconi in accordance with Paragraph 7 of the Rules, the Center notified the Complainant and Respondent by email that Michael A.R. Bernasconi has been appointed as Administrative Panel (Sole Panelist).

 

4. Factual Background

The Complainant is a company domiciled in Italy and runs business in the field of pet products. It is the registered owner of the trademarks "GIUFFOGATTO" and "GIUFFO GATTO" ("GIUFFOGATO" word; "GIUFFO GATTO" word and design) in Italy. The trademark "GIUFFO GATTO" is registered since November 21, 1994.

The Respondent is the registered owner of the disputed Domain Name <ciuffo-gatto.com> as he is for several domain names identical or confusingly similar to well-known trademarks, such as <ferrari-scuderia.info> and <nutella.bz>.

With an email dated April 17, 2003, the Complainantís representative asked the Respondent to transfer the Domain Name to the Complainant for free since the Domain Nameís use by Respondent would violate Complainantís trademark rights. On the same day, the Respondent replied that the Domain Name is for sale and that he would be willing to sell it to the Complainant for EUR 20,000.

An informal check of the website under the disputed Domain Name by the Panelist on July 7, 2003, showed that it contains links to a range of online merchants whose names are in no connection with the Domain Name.

An informal check of the website "www.ferrari-scuderia.info" showed that it is a copy of the website under the disputed Domain Name. The website under the domain name <nutella.bz> offers pornography.

 

5. Partiesí Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the trademarks "CIUFFOGATTO" and "CIUFFO GATTO" in which the Complainant has rights.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name, as the Respondent is not commonly known under the Domain Name and has never done or made demonstrable preparation to use a name corresponding to the Domain Name with a bona fide offering of goods.

The Complainant contends that the domain name was registered and is being used in bad faith since the Respondent must have known of the renown trademarks of the Complainant considering that France is a main market for Complainantís products. Further, the Respondent has offered to sell the Domain Name for an amount exceeding Respondentís reasonable registration expenses and has registered other domain names identical or confusingly similar with well-known trademarks.

B. Respondent

The Respondent did not reply to the Complainantís contentions. Accordingly, and based on Paragraph 14(a) of the Rules, the Panel shall draw such inferences from this default of Respondent as it considers appropriate.

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) 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

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(ii) the Domain Name has been registered and is being used in bad faith.

(i) Identical or Confusingly Similar

It is undisputed that the Complainant is the owner of the trademarks "CIUFFOGATTO" and "CIUFFO GATTO".

In the view of the Sole Panelist, the disputed Domain Name is confusingly similar to the trademarks "CIUFFOGATTO" and "CIUFFO GATTO". The hyphen contained in the Domain Name, in difference to the trademarks, does not make the predominant element "CIUFFO GATTO" less distinctive and leads consumers to reasonably expect under the Domain Name a website of the Complainant. Given the fact that the Complainant has registered and uses the domain names <ciuffogatto.com> and < ciuffogatto.it> the likelihood of confusion with respect to the Respondentís use of <ciuffo-gatto.com> becomes even bigger.

The ending ".com" is a generic top level domain, which of course is not sufficient to render a domain name dissimilar or to prevent consumer confusion.

The first criterion, as per Paragraph 4(a) of the Policy, is established.

(ii) Rights or Legitimate Interests

It has not been demonstrated that the Respondent has a legitimate interest in the Domain Name.

The Respondent has neither demonstrated to be commonly known under the Domain Name nor to have made demonstrable preparation to use a name corresponding to the Domain Name with a bona fide offering of goods or services.

The content of the website under the disputed Domain Name has no connection with the marks "CIUFFOGATTO" and "CIUFFO GATTO", the business of the Complainant or its products.

On the website under the dispute Domain Name no goods and services are offered. Instead the website contains links to other websites of online merchants, whose names have just as little connection with the Domain Name, for a range of different goods and services, identical to other websites registered by the Respondent, such as "www.ferrari-scuderia.info". It must be suspected that the website under the disputed Domain Name is posted to simulate any fair use.

Under these circumstances, the Panel concludes that Complainant has established that Respondent has no rights or legitimate interests in respect of the disputed Domain Name. The second requirement of Paragraph 4(a) of the Policy is therefore satisfied.

(iii) Registered and Used in Bad Faith

On the third element of paragraph 4(a) of the Policy, i.e. the issue of a bad faith registration and use, it is undisputed that the Respondent offered the Domain Name for sale and refused to sell the Domain Name for a consideration of EUR 20,000 which amount is in excess of the out-of-pocket cost for a domain name. Further, it is undisputed that the Respondent has registered several other domain names identical or confusingly similar to well-known trademarks, such as <ferrari-scuderia.info> and <nutella.bz>. In consideration of this pattern of conduct, it must be presumed that the Respondent knew of the Complainant and its trademarks, prior to registering the disputed domain name.

As a matter of fact, according to paragraph 4(b) of the Policy, for the purposes of the third element of paragraph 4(a), circumstances indicating that a registrant has registered a domain name primarily for the purpose of selling, renting or otherwise transferring the domain name to a Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name, if found by a Panel to be present, shall be evidence of the registration and use of the domain name in bad faith.

By running a website under a domain name identical or confusingly similar to the Complainantís trademarks and business name for his own use, the Respondent is abusing Complainantís reputation and good-will in its name and trademarks to mislead and divert consumers to his website. That could not be considered as a good faith use of the Domain Name in connection with a bona fide offering of goods and services nor could it be considered a legitimate non-commercial or fair use of the Domain Name without intent for commercial gain.

Under these circumstances, and taking into consideration the fact that the Respondent has not provided any evidence whatsoever of any actual or contemplated legitimate good faith use by himself of the Domain Name, the Panel considers that the Respondent has registered and used the Domain Name in bad faith.

Thus, the third requirement of paragraph 4(a) of the Policy is satisfied.

 

7. Decision

Therefore, and in consideration of the Complainantís compliance with the formal requirements for this domain name dispute proceeding, of Respondentís default in submitting a Response, of the factual evidence and legal contentions that were submitted, of the confirmation of the presence of each of the elements contemplated in Paragraph 4(a)(i),(ii) and (iii) of the Policy, and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraphs 14(a) and (b) and 15(a) of the Rules, it is found:

(1) that the disputed Domain Name is confusingly similar to the Complainantís trademarks and company name;

(2) that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name; and

(3) that the Domain Name has been registered and is being used in bad faith by the Respondent.

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Administrative Panel orders that the Domain Name <ciuffo-gatto.com> shall be transferred to the Complainant.

 


 

Michael A.R. Bernasconi
Sole Panelist

Dated: July 9, 2003