The Complainants are Piaggio & C.S.p.A. of Pontedera, Italy, and Piaggio Group Americas, Inc. of New York, United States of America, represented by Paul, Hastings, Janofsky & Walker, LLP, United States of America.
The Respondent is Acme of New York, United States of America.
The disputed domain name <brooklynvespa.com> is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2009. On January 30, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On January 30, 2009, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 4, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 24, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 25, 2009.
On March 1, 2009, the Center received an email communication from the Respondent. The Center acknowledged receipt of the same on March 2, 2009, informing the Respondent that the Panel, upon its appointment, will be notified of the Center's receipt thereof, for the Panel's consideration, at its sole discretion.
The Center appointed Mr. William F. Hamilton as the sole panelist in this matter on March 5, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainants are, respectively, the owner of the VESPA mark and the exclusive licensee of the VESPA mark in the United States. Complainants manufacture the world famous VESPA scooter. Complainants' United States trademark registrations include the VESPA word mark, U.S. Reg. No. 1,929,118, dated October 24, 1995.
Respondent registered the disputed domain name on July 31, 2007.
Complainants contend this is a “classic case of bad faith domain name registration” where Respondent has intentionally utilized the Complainants' famous VESPA mark in the disputed domain name for commercial profit and to lure unsuspecting Internet users to the Respondent's website. Complainants contend the disputed domain name is identical or confusingly similar to the VESPA mark because the disputed domain name adopts Complainants' VESPA mark in its entirety and only adds the geographical prefix “brooklyn.” Complainants further contend that the Respondent has never been authorized to use the VESPA mark and has no rights or legitimate interests in the disputed domain name.
Respondent did not reply to Complainants' contentions. However, in email communications from Respondent to the Complainants (provided to the Center after the Default had been entered) Respondent contends that the disputed domain name was chosen for a future discussion and support forum for owners of VESPA scooters in Brooklyn. Respondent claimed to be a VESPA scooter rider and enthusiast. Respondent disclaimed any intention to commercially profit from the disputed domain name, and asserted in his email that the Complaint was “an egregious abuse of the UDRP and WIPO policy” and threatened to report this proceeding to “current and future customers” of Complainants.
Under paragraph 4(a) of the Policy, Complainants must prove each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainants must carry the burden of proof by a preponderance of evidence. (Bootie Brewing Company v. Deanna D. Ward and Grabebootie Inc., WIPO Case No. D2003-0185)
The disputed domain name is confusingly similar to the distinctive, famous VESPA mark. Indeed, the disputed domain name incorporates the VESPA mark in its entirety and only adds a geographic name as a prefix. A geographical prefix is generally not sufficient to avoid a finding of confusing similarity. (InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000-0076)
Paragraph 4(c) of the Policy sets out in particular, but without limitation, three circumstances which, if proved by respondent, shall be evidence of respondent's rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii), namely:
(i) before any notice of the dispute to respondent, respondent's use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and 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 consumers or to tarnish the trademark or service mark at issue.
Respondent appears to have never been licensed to use the VESPA mark, has never conducted a bona fide business under the VESPA mark, and has never been known by the disputed domain name.
Respondent in its email communications does, however, assert noncommercial fair use of the disputed domain name. Respondent's claim was not made in a formal response to the Complaint. Respondent has provided no excuse for this failure, nor requested the opportunity to submit a response, even after notification of the Default, notwithstanding Respondent's assertion to Complainants that Respondent would “retain counsel and file a timely Response” if the Complaint was not withdrawn.
The Panel is not persuaded by Respondent's claim of noncommercial fair use. Respondent is not currently using the disputed domain name for the claimed purpose, and in any event has not submitted any actual work or planning on the alleged discussion and support website even though the website's “construction” has been pending for over a year and a half. Respondent did not submit any affidavits or documents in support of fair use including, but not necessarily limited to, evidence of ownership of a VESPA scooter, evidence of the design of the planned discussion site, evidence of investment or funding of the planned discussion site, evidence of involvement in any VESPA scooter clubs and activities, or evidence of lack of involvement in placing and benefiting from the commercial content of the website as shown in the Complaint's Exhibit #5.
Accordingly, based upon the submissions, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. (See generally Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560; but see also Chivas USA Enterprises, LLC, et al. v. Cesar Carbajal, WIPO Case No. D2006-0551. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.5)
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of complainant, for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) 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 respondent has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's website or other on-line locations, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of respondent's website or locations or of a product.
The Panel finds the disputed domain name was registered and is being used in bad faith. The Complaint's Exhibit #5 contains screen shots of the Respondent's website. The landing page offers links to scooter related products. Regardless of Respondent's professed goal to establish a discussion and support forum for owners of VESPA scooters in Brooklyn, New York, the fact remains that the Complainants' VESPA mark was incorporated into the disputed domain name to attract unsuspecting Internet users and to promote websites offering competitive products. As noted above, the Panel finds Respondent's protests of innocence unavailing. Respondent has failed to provide what should be readily available probative evidence in support of Respondent's bald assertions contained in his emails to Complainants. Under the circumstances of this case, the Panel finds that the disputed domain name was registered and is being used in bad faith as contemplated by the Policy.
Moreover, the Panel in the exercise of its sound discretion determines the Respondent's emails should not be formally admitted. The Respondent has knowingly elected to bypass the Rules and Supplemental Rules and to submit unsubstantiated argument to the Complainants, copies of which were ultimately provided to the Center after a Default had been entered. The Respondent should not be rewarded for his knowing failure to follow the Rules and Supplemental Rules. This case does not present exceptional circumstances warranting the acceptance of the Respondent's belated, informal email submission. (Lloyds TSB Bank PLC v. Daniel Carmel-Brown, WIPO Case No. D2008-1889)
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <brooklynvespa.com> be transferred to Complainant Piaggio Group Americas, Inc.
William F. Hamilton
Dated: March 18, 2009