The Complainant is Luppi & Crugnola S.r.l, of Modena, Italy, represented by Ms. Incardona, Italy.
The Respondents are Eurobox Ltd, of St.Petersburg, Russian Federation and BusinessServis Ltd, of St. Petersburg, Russian Federation.
The disputed domain name <luppi-crugnola.com> is registered with Nicreg llc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2009. On February 25, 2009, the Center transmitted by email to Nicreg llc a request for registrar verification in connection with the disputed domain name. On March 3, 2009, Nicreg llc transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 3, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 5, 2009. 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” 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 Respondents of the Complaint, and the proceedings commenced on March 6, 2009. The proceedings were suspended on March 9, 2009. The proceedings were re-instituted on March 23, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2009. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on April 14, 2009.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on April 20, 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.
On May 7, 2009 the Panel issued Procedural Order No. 1 inviting further documentation concerning the Complainant's claim to unregistered trademark rights from the Complainant by May 17, 2009. The Respondent was given until May 20, 2009 to submit documents or comments on the Complainant's submission. On May 15, 2009, the Complainant provided additional information. The Respondent has not submitted any reply to the Panel Order or the Complainant's filing.
The facts relevant to the findings and decision in this case are that:
1. The Complainant is an Italian firm of patent and trade mark attorneys and legal practitioners specialising in intellectual property matters.
2. The evidence shows that firm does business under the name Luppi, Crugnola and Partners.
3. The firm is not in fact a partnership but is constituted as a limited liability company under Italian law.
4. The company was founded on November 19, 1997.
5. The domain name was registered on May 30, 2008.
6. Eurobox Ltd is a domain name proxy service company.
7. BusinessServis Ltd was identified by Eurobox Ltd as the beneficial owner of the disputed domain name.
8. The Complainant petitions the Panel to order transfer of the disputed domain name from the Respondents to the Complainant.
The Complainant asserts trademark rights and states that the disputed domain name is confusingly similar to its trademark.
The Complainant alleges that the Respondents have no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondents registered and used the disputed domain name in bad faith.
The Respondents did not reply to the Complainant's contentions or respond to the material provided by the Complainant pursuant to Procedural Order No. 1.
The difficulties presented by proxy service companies and the ways in which their existence has meant re-interpretation of the Rules are matters, in the opinion of this Panel, now sufficiently ventilated by recent decisions under the Policy that they require no further amplification here. Sufficient to say that the action taken by the Complainant to amend the Complaint to nominate both Eurobox Ltd and BusinessServis Ltd as the Respondents in this administrative proceeding is proper and is endorsed by this Panel.
Accordingly, the Panel moves to paragraph 4(a) of the Policy which requires that the 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 the Respondents is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondents have 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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry. First, a threshold investigation of whether a complainant has rights in a trademark, followed by an assessment of whether the trademark and domain name are identical or confusingly similar.
That portion of the Complaint devoted to the establishment of trademark rights under paragraph 4(a)(i) of the Policy is set out in full below:
“- The Complainant is the owner of the company name LUPPI & CRUGNOLA, of the unregistered trademark LUPPI & CRUGNOLA and of the domain name luppi-crugnola.it. The Complainant is a firm offering assistance in IP matters, which has been active since 1997.
- The Complainant has a right in the distinctive sign LUPPI & CRUGNOLA which corresponds to its company name and domain name under the laws of Italy for the following reasons.
- Luppi & Crugnola S.r.l. is a limited liability company registered in the commercial register of Modena and uses in a significant, genuine and substantial way its company name on a day to day basis. The Complainant is entitled to seek protection of its name on an exclusive basis, pursuant to Article 2 of the Italian Code on Industrial Property and pursuant to the provision on Unfair Competition set out in the Italian Civil Code. In particular, art.2598 of the Civil Code expressly states that:
‘…Without prejudice to the provisions governing the protection of distinctive signs and patent rights, acts of unfair competition are committed by any person who:
- uses names or distinctive signs which are apt to create confusion with the name or with the distinctive signs lawfully used by others, or slavishly imitates the products of a competitor, or in any way whatsoever performs acts which are likely to create confusion with the products or with the activities of a competitor; [omitted]
- directly or indirectly makes use of any other means not in conformity with the principles of professional fairness and likely to damage the business of others.'
- The registration of the domain name <luppi-crugnola.com> in the name of the Respondent is to be considered as an act of unfair competition as it is an indirect mean likely to damage its business since it is apt to create confusion with its name.”
Annexed to the Complaint is a document described as a “Certificate of the Chamber of Commerce of Modena and English language translation thereof”. The English language translation is a heavily redacted version of the Italian language document, in which it describes the registration on January 26, 1998 of a company in the register of Modena by the name of Luppi Crugnola Partners S.r.l., together with the “short name” of Luppi & Crugnola S.r.l. It is said that the company was founded on November 19, 1997. The English language translation appears to accurately restate the essential information from the Italian commercial register extract.
The Panel's Administrative Procedural Order No. 1 was in the following terms:
“In accordance with its power under paragraphs 10 and 12 of the UDRP Rules, the Panel hereby invites the Complainant to provide further evidence (if any) relevant to its claim of unregistered trademark rights under paragraph 4(a)(i) of the Policy, and to the time at which such rights are first said to have come into being.”
In response to that Order, the Complainant provided, inter alia:
- An unwitnessed statement from the president of the Complainant;
- Details of the Complainant's membership of national and international intellectual property law associations;
- Feature articles on the Complainant in Italian newspapers;
- Total invoices issued by the Complainant in the period 1999 – 2008;
- Excerpts from online directories of intellectual property law experts;
On this occasion, the Complainant also made the statement that the additional material showed that the Complainant had “unregistered trademark rights in connection with the combination of names LUPPI and CRUGNOLA”.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is widely accepted that a trademark registered with a national authority is prima facie evidence of trademark rights for the purposes of the Policy. In this case there is no evidence, nor any claim, that the Complainant holds a relevant registered trademark.
Nevertheless, for the purpose of establishing rights under paragraph 4(a)(i) of the Policy, registration is not mandatory if the Complainant can show trademark rights acquired through use and reputation.1 In this case, the Complainant lays claim to the unregistered trademark in the combination of names LUPPI and CRUGNOLA.
It is broadly known that WIPO has published an overview of panelist opinions on commonly recurring issues under the Policy.2 That overview looks at what should shown by a complainant in order to establish common law or unregistered trademark rights. The consensus view is stated as being that a “complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such ‘secondary meaning' includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”
Previous Panels have recognized that secondary meaning may exist in a small geographic area and UDRP complaints have succeeded based only on regional reputation, notably in cases of intrinsically localised service providers such as restaurateurs, tradespeople or car dealerships3.
Turning to the Complainant's submissions in this case, the Panel finds that registration of the company name, Luppi Crugnola Partners S.r.l. (or for that matter, Luppi & Crugnola s.r.l.) does not, of itself, suffice to show rights in a trademark corresponding with one or other of those names4. In G. Bellentani 1821 S.p.A. v. Stanley Filoramo, WIPO Case No. D2003-0783, the complainant was an Italian food company founded in 1821 and the owner of many trademark registrations incorporating the word BELLENTANI. The respondent in that case had registered the domain name <bellentani.net>.
The complainant argued that the domain name <bellentani.net> was confusingly similar to the trademark BELLENTANI and, relevantly, the trade name G. BELLENTANI 1821 S.p.A. in which it had exclusive rights by virtue of company registration.
The panel in that case said:
“First of all, the Policy does not extend to trade names. The reasons as to why the Policy should not extend to trade names have been discussed in the final Report of the Second WIPO Internet Domain Name Process, WIPO Publication No. 843, Paragraph 306-320. However, it is possible to obtain unregistered trademark and/or service mark rights to a trade name and unregistered trademark and/or service mark rights are sufficient for the purposes of paragraph 4(a)(i) of the Policy. In this case, the Panel need not make a determination regarding whether or not the Complainant has obtained unregistered trademark rights to its trade name due to the fact that the Complainant has shown that it owns several trademark registrations […]”
So far as common law rights are concerned, the Complainant was founded in late 1997. From its notepaper, the Panel observes that the Complainant appears to have three offices in large, northern, industrialised, cities in Italy. In response to the Panel Order, the Complainant has provided indications of profitability, professional stature, exposure from the legal and broader media, and other indicia of size and standing of a professional service provider broadly consistent with that which has been shown by legal service providers which were successful complainants in former UDRP proceedings5.
Looking at the totality of the Complainant's evidence, there is no proof of use of LUPPI-CRUGNOLA per se. Nor is there any clear use of LUPPI & CRUGNOLA per se. On the other hand, there is abundant use of the short form company name, Luppi & Crugnola s.r.l. and it can be reasonably inferred that there has been abundant use of the Complainant's notepaper which is headed “Luppi, Crugnola and Partners”.
The Panel finds that the Complainant has established rights (of an unregistered nature) in the words LUPPI and CRUGNOLA arising from their use in trade. For the purposes of paragraph 4(a)(i) of the Policy those rights are sufficient to enable the Complainant to bring a Complaint based on the claimed trademark LUPPI-CRUGNOLA6.
Discounting the gTLD in the disputed domain name, the Panel finds that the domain name and the trademark are identical. Accordingly, the Complainant has established the first element of the Policy.
The Complainant has the burden to establish that the Respondents have no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondents to demonstrate rights or legitimate interests7.
Notwithstanding the lack of a response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
The WhoIs data does not support any conclusion that the Respondents might be commonly known by the disputed domain name. There is no evidence that the Respondents have any trade mark rights in the name, registered or not. The Complainant has stated there to be no relationship between it and the Respondents.
The Respondents have not used the disputed domain name in connection with a bona fide offering of goods or services. Rather, the disputed domain name re-directs Internet users to a website carrying adult material. It is established by former decisions under the Policy that such action is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the domain name8.
The Panel finds that the Complainant has established a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain name, and that the Respondents in failing to reply have not discharged the onus which fell to them as a result.
The Panel finds that the Respondents have no rights or legitimate interests in the disputed domain name and so the Complainant has satisfied the second element of the Policy.
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
What is noteworthy about paragraphs 4(b)(i)-(iv) of the Policy is that they are cases of both registration and use in bad faith. The Complaint does not recite any of those paragraphs by number, although it uses the language of paragraphs 4(b)(iii) and (iv). On the facts, the Panel takes the view that the Respondents' conduct might be examined under paragraphs 4(b)(i) or (ii).
Complainant claims that it was the original owner of the disputed domain name which it inadvertently allowed to lapse. It states that the disputed domain name was then registered by Eurobox which “operates a back ordering system.” Complainant points out that Eurobox has been named as a respondent in many proceedings under the Policy.
The Complaint does not provide any proof that the Complainant was the first registered owner of the disputed domain name. Nonetheless, the Panel is entitled to accept reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory9. In that regard, the Panel notes from some of the material provided by the Complainant pursuant to the Procedural Order that legal directory entries for the Complainant include the website address “www.luppi-crugnola.com” along with other contact information.
The Panel finds it more likely than not that the Respondents opportunistically re-registered the disputed domain name when it lapsed, primarily for the purpose of later selling it for excessive consideration to the Complainant who is the owner of the trademark. There is no evidence that the Respondents intended to make legitimate use of the disputed domain name and there is every reason that the Complainant would not want to see ownership of the disputed domain name in third-party hands.
The Panel finds that the Respondents behaviour falls squarely under paragraph 4(b)(i) of the Policy, providing a basis for the finding that the disputed domain name was used and registered in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the third and final element of the Policy.
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, <luppi-crugnola.com> be transferred to the Complainant.
Debrett G. Lyons
Dated: May 27, 2009
1 See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights' means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the Policy); See also SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs, WIPO Case No. D2000-0131 (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); See also Zee TV USA, Inc. v. Siddiqi, NAF Claim No. 721969 (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy paragraph 4(a)(i)); See also Artistic Pursuit LLC v. calcuttawebdevelopers.com, NAF Claim No. 894477 (finding that Policy paragraph 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). See also Great Plains Metromall, LLC v. Creach, NAF Claim No. 97044 (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, (February 2005).
3 See, for example, Patrick Jaguar, LLC, d/b/a Patrick Land Rover v. Chris Batozech, NAF Claim No. 1190348.
4 Nor does it prove rights in a trademark merely because that company name might be protected by Italian unfair competition law.
5 For example, Middletons Lawyers, MMB Legal Pty v. Administration Local, WIPO Case No. D2003-0785; Clifford Chance LLP v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2007-0693; Hammond Suddards Edge v. Westwood Guardian Limited, WIPO Case No. D2000-1235.
6 The Panel follows the consensus view that words like “and partners” or the Italian incorporation style “S.p.A.” are inconsequential.
7 See, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. FA741828; AOL LLC v. Jordan Gerberg, NAF Claim No. 780200.
8 See, for example, Bank of America Corporation v. Azra Khan, NAF Claim No. 124515, finding that the respondent's diversionary use of the domain name to <magazines.com> was not a bona fide offering of goods or services, was not noncommercial use, and was not fair use); see also MEDIATIS S.A. v. Packalo S.A.RL. Cyberger and Stan Virgiliu, WIPO Case No. D2007-0312, stating that “[t]he website to which the domain name resolved, although active, only consisted in a parking page, hosted by Sedo and containing sponsored links to competitors of the Complainant. This use does not qualify as a bona fide offering of goods or services. Neither does it qualify as a non-commercial or fair use of the domain name”.
9 See Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Claim No. 95095 (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (In the absence of a response, it is appropriate to accept as true all allegations of the complaint).