WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sferra Bros. Ltd. v. Michele Dinoia aka SZK.com
Case No. D2006-0054
1. The Parties
The Complainant is Sferra Bros. Ltd., Edison, New Jersey, United States of America.
The Respondent is Michele Dinoia, Pineto, Italy.
2. The Domain Name and Registrar
The disputed domain name <sferra.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2006. On January 16, 2006, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On January 17, 2006, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 24, 2006. The Center verified that the Complaint together with the amendment to 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”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 15, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 14, 2006. The Response was filed with the Center on February 9, 2006.
The Center appointed Edward C. Chiasson, Q.C. as the sole panelist in this matter on February 15, 2006. The panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. The Panel finds that it was properly constituted.
4. Factual Background
The following information derives from the Complaint.
The Complainant is the worldwide owner of:
United States Trademark Registration No. 3,012,913 for SFERRA BROS. in International Class 24 for table linens, namely, tablecloths not of paper, coasters, table mats not of paper, napkins, placemats, table runners, bed linens, bed sheets, bedspreads, pillow cases, pillow covers, pillow shams, duvet covers, blankets, throws, lap robes, baby blankets, baby bed linens, baby quilts, shams, guest towels, bath towels, hand towels, washcloths and bath sheets.
United States Trademark Application No. 78/674,526 for SFERRA in International Class 24 for table linens, namely, tablecloths not of paper, coasters, table mats not of paper, napkins, placemats, table runners, bed linens, bed sheets, bedspreads, pillow cases, pillow covers, pillow shams, duvet covers, blankets, throws, lap robes, baby blankets, baby bed linens, baby quilts, shams, guest towels, bath towels, hand towels, washcloths and bath sheets.
The Complainant has been using its Trademarks openly and notoriously in United States interstate commerce since 1891, in connection with the advertising and sale of its bed, bath, and table linen and related products. The Complainant’s Trademarks have become famous and distinctive trademarks that designate the Complainant as the single source of such products bearing the Complainant’s marks and brands.
The Respondent has no connection or affiliation with the Complainant or any predecessor in-interest of the Complainant.
The Respondent has no rights by contract, license, assignment, or otherwise, to use the mark SFERRA.
At the end of December 2005, the Respondent’s website was a generic search portal. Although the site claims that it possesses links to “all the best resources on the net,” the links on the sferra.com homepage are weighted heavily towards products for which the Complainant and its SFERRA trademark are best known, such as linens and bedding. The “www. sferra.com” homepage link subjects then included “luxury linens,” “tableware,” “bedding,” “sferra,” “fine linens,” “sheets,” “bed,” and “imported linens”.
The Respondent has a documented history of cyber-squatting. Since 2001, Michele Dinoia and/or his affiliated entity SZK.com has been the party Respondent in over 20 (and perhaps many more) actions brought before the Center and the National Arbitration Forum by aggrieved trademark owners seeking the transfer of domain names bearing well-known trademarks adopted, registered and held by the Respondent in bad faith. In all but one of the cases identified (20 of 21) by the Complainant, the panelists found the Respondent to have acted in bad faith and ordered transfer of the domains to the complaining trademark owners.
The following information derives from the Response.
There is no registered mark of the word “sferra” valid in the United States because the filing date of the Complainant’s trademark application was July 20, 2005, and the mark is not yet registered.
The registration date of the subject domain name (May 12, 2003) is prior to such filing date.
The registration of the Complainant’s mark SFERRA BROS took place only on November 8, 2005, and the filing date of the application was September 16, 2003. The Respondent registered the contested domain name months earlier, on May 12, 2003.
The business model of the Respondent is, among others, to register numerous domain names that comprise generic or descriptive terms and to develop business-oriented websites using these domain names.
The Respondent invested in a dedicated web server for his business and negotiated with software developers to complete the software applications necessary to his business. The subject domain name was registered because it is a highly marketable domain name with many different possible end-users. The Respondent is engaged in a pattern of registering generic terms, short letter combinations and descriptive terms that are amenable to the Respondent’s advertising business.
“Sferra” is a common Italian surname.
The Respondent registered the subject domain name as part of its domain name website development enterprise because many Italian or Italian-origin Internet users were likely to be interested in typing such a domain name on their browsers.
Moreover <sferra> is the imperative mood of the Italian verb <sferrare>, which is the Italian for <to launch (an attack)>, or <to give a blow>, <attack Strike at>, <poke at>, <thrust at>; <aim a blow at>, <deal a blow at>; <give one a blow>, <fetch one a blow>, <fetch one a kick>, <give one a kick>; <launch out against>; <bait>, <slap on the face>; <make a thrust at>, <make a pass at>, <make a set at>, <make a dead set at>; <bear down upon>.
Soon after the registration and before any notice to it of a dispute, the Respondent used the subject domain name in connection with a bona fide offering of goods or services; that is to say, the Respondent added the domain name to its already large list of domain names that it uses in its business.
The Respondent was associating the subject domain name with a set of associated results from a paid advertiser database. The Respondent is in the business of obtaining lapsed domain names and putting them to use in this manner.
At the website to which the subject domain name resolves, the Respondent offers free vanity e-mail and free forum services.
The Respondent had no intent to divert consumers or to tarnish the trademark at issue.
The Respondent has no pattern of engaging in preventing trademark owners from reflecting their marks in corresponding domain names or intentionally attempting to attract for commercial gain Internet users to sites by creating confusion with the complainants’ marks.
The Respondent is an Italian citizen, living in Italy. The Complainant carries on business in the United States. Its marks are not registered in Italy.
5. Parties’ Contentions
The Complainant asserts that the “SFERRA trademark is confusingly similar, if not identical (save the generic “.com” designation) to the Respondent’s disputed domain name sferra.com”.
The Complainant points to the usual indicia of a lack of legitimate interest: not known by the subject domain name; no connection with the Complainant; not authorized to use the Complainant’s marks. It also notes that the website to which the subject domain name resolves is (or at least used to be) weighted heavily towards the type of products with which the Complainant deals.
The Complainant contends that users will be mislead and confused by the subject domain name. It also relies on the fact that the Respondent has a history of cyber-squatting.
The Respondent says, “…the Complainant had no trademark rights neither in the word ‘sferra’ nor in the words ‘sferra bros’, at the time the Respondent registered the domain name, because no such marks were existing, being valid and in force”.
It is asserted that a domain name cannot be identical to or confusingly similar to a mark that does not exist at the time the domain name is registered.
The Respondent contends that the Complainant has not established the distinctiveness that would be required to establish a common-law trademark.
The Respondent denies bad faith and asserts that the Complainant has adduced no evidence to establish that the Respondent knew of the Complainant or its marks at the time it registered the subject domain name.
The Respondent says that it is carrying on a legitimate business of warehousing domain names.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the domain name 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
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances that indicate that the Respondent has registered or has acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain names registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain names;
(ii) registration of the domain names 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;
(iii) registration of the domain names primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain names, intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
The parties rely on previous domain name dispute decisions. While often these are helpful, they are neither controlling nor binding on this Administrative Panel.
A. Identical or Confusingly Similar
The Complainant’s assertion of its position is not correct for two reasons: first, the inquiry is whether the subject domain name is identical or confusingly similar to the Complainant’s mark, not whether the mark is identical or confusingly similar to the subject domain name; second, there is a distinction between the two. The criteria and the information that is required to examine them differ, although, in this case it is not of consequence.
The Administrative Panel is not satisfied that the absence of trademark registration at the time of the registration of a domain name is a complete answer to whether the domain name is identical to or confusingly similar to a mark.
Although the Complainant refers to the longevity of its use of its marks, since 1891, the Complainant does not appear to assert that it has a common-law trademark.
The fact that the Complainant’s registrations and use of its marks are in the United States only does not preclude a finding that the subject domain name is identical or confusingly similar. The question is whether it has a trademark or service mark and the answer is that it does.
The subject domain name differs from the Complainant’s mark “sferra” only by the addition of .com, which is of no significance.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The fact that the website to which the subject domain name once resolved appeared to focus on the Complainant’s products, may support the Complainant’s position that the Respondent does not have a legitimate interest in the subject domain name as do the facts that the Respondent is not known by “sferra” and has no connection with or authorization by the Complainant.
Militating against the Complainant is the information supplied by the Respondent that it is in the business of warehousing domain names and the fact that “sferra” is an Italian surname and part of an Italian verb.
Also relevant is the fact that the Complainant’s business is interstate commerce in the United States, whereas the Respondent lives in Italy and says that his use of the word “sferra” is targeted at Italian users or persons of Italian origin.
Although the legitimacy of warehousing domain names could be debated, in the context of this case and relative to the Complainant, it does not appear to be illegitimate.
The Administrative Panel is not satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Respondent did not comment on the fact that he appears to have violated the Policy on a number of previous occasions. This similar fact information is relevant, but not determinative.
The Respondent’s position is that there is no or insufficient information provided by the Complainant to establish bad faith either at the time of registration or in the use of the subject domain name. That is, there is no information to support a conclusion that the Respondent knew of the Complainant or its interests.
The Respondent also relies on the facts it advanced concerning the alleged lack of a legitimate interest: the Complainant does business only in the United States; the Respondent is in Italy and is targeting Italians or persons of Italian origin; the word “sferra” is used in Italy.
On balance, the Administrative Panel is not satisfied that the Complainant has met the requirements of paragraph 4(a)(iii) of the Policy.
Based on its findings of fact and the information provided to it the Administrative Panel concludes that the Complainant has not established its case. It is dismissed.
Edward C. Chiasson Q.C.
Dated: February 27, 2006.