The Complainant is Ginetta Cars Limited of Leeds, England, United Kingdom of Great Britain and Northern Ireland represented by SFN Solicitors, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Gioacchino Zerbo of Senna Comasco, Como, Italy.
The disputed Domain Name <ginetta.com> is registered with Fabulous.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2009. On May 8, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 11, 2009, the Registrar 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 May 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 5, 2009.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on June 12, 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.
The Complainant is an English company headquartered in Leeds, England. It is a wholly owned subsidiary of LNT Group Limited (“LNT”), a Yorkshire-based conglomerate founded by the English racing car driver and businessman Lawrence Tomlinson.
The Complainant manufactures and sells road and racing cars under the GINETTA mark. It is the successor to the Ginetta Cars business established in 1958 in England, manufacturing sports car kits for automotive enthusiasts, production sports cars, racing cars, and replacement parts under the GINETTA mark. The Complainant currently sells GINETTA cars, parts, and kits in England and through appointed agencies in Scandinavia, Belgium, Spain, and Portugal. The Complainant also licenses third parties in England and Japan to use the GINETTA mark in connection with certain models of sports cars. In addition, the GINETTA mark is used in connection with three annual championship races limited to GINETTA cars, as well as in other British and European motorsports events. The Complainant operates a website at “www.ginettacars.com”.
The Complainant holds United Kingdom Trade Mark No. 1412300 (registered January 23, 1990) for the GINETTA mark. Its parent company, LNT, has pending applications for other marks featuring the name GINETTA.
The Complainant investigated the ownership of the Domain Name on April 2, 2009 and found that it was created on November 10, 2002 and was currently registered to an individual named M. Dinoia in Pineto, Teramo Province, Italy. (A printout from the Registrar's WhoIs database on that date is attached to the Complaint.) The Registrar is located in Australia, and the Domain Name resolved at that time to an English-language website.
The Complaint attaches screen shots of the website associated with the Domain Name on April 6, 2009. The landing page featured a photograph of an open sports car and displayed links to third-party advertisers in the automotive industry, including competitors of the Complainant, such as Fiat and Jaguar, as well as sources for information about the Complainant's products. Some of the category links resolved to a website about used cars and car kits at “www.motors.co.uk”, while others directed users to online newspaper articles and classified advertisements about cars and motorsports.
On April 7, 2009, counsel for the Complainant sent a cease-and-desist letter to the registrant of the Domain Name. There was no reply to this letter, but the Registrar's WhoIs database shows that eight days later, on April 15, 2009, the registration record for the Domain Name was modified to list the registrant as the Respondent, Mr. Zerbo, at an address in Senna Comasco, Italy. Counsel for the Complainant sent a cease-and-desist letter to the Respondent on April 16, 2009, again without reply. Since April 16, 2009, the Domain Name has not resolved to a website.
As no Response was submitted in this proceeding, there is little evidence in the record concerning the Respondent Mr. Zerbo or his business. However, Mr. Zerbo responded to a UDRP complaint in 2008 in which, as here, registration of the disputed domain name appeared first in the name of M. Dinoia and then, shortly after notice of the dispute, in the name of Gioacchino Zerbo. See Starline Publications, Inc v. Gioacchino Zerbo, WIPO Case No. D2008-1822. The panel in that proceeding, citing examples, found that both individuals “have a history of registering domain names that incorporate trademarks, and many of those domain names have been transferred by UDRP panels.”
The Complainant observes that the Domain Name is identical to its registered GINETTA mark, contends that the Respondent has no rights or legitimate interests in that mark, and concludes that the Domain Name was registered and used in a bad faith effort to trade on the Complainant's reputation for commercial gain.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy provides that in order to divest the respondent of a disputed domain name, the complainant must demonstrate each of the following:
(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.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
The Panel finds that the distinctive portion of the Domain Name (which does not include the “.com” generic top-level domain name) is identical to the Complainant's registered GINETTA mark. This is sufficient to establish the first element of the Complaint.
The Complainant asserts, and the Respondent does not deny, that the Complainant has not authorized the Respondent's use of a Domain Name that is identical to the Complainant's marks.
The Policy, paragraph 4(c), provides a non-exhaustive list of other circumstances in which the Respondent could demonstrate rights or legitimate interests in the Domain Name, including the following:
“(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.”
There is no evidence in the record that the Respondent has been commonly known by a name corresponding to the Domain Name or has relevant trademark rights. The Panel notes that “Ginetta” is an Italian girl's name, but it does not appear that the Domain Name has ever been employed in a manner relevant to this name or to any individual with this given name. It also does not appear that the current Respondent has made any active use at all of the Domain Name since the name of the registrant was changed in April 2009 after the Complainant's representative sent to the registrant a cease and desist letter regarding the same.
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing, as it has in this case. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. The Respondent has not done so, and the Panel therefore concludes that the Complainant has established the second element of the Complaint.
Paragraph 4(b)(iv) of the Policy lists the following as an instance of bad faith:
“circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 the respondent's website or location or of a product or service on its website or location.”
The similar pattern of conduct recounted in Starline Publications, supra, suggests that there is a relationship between the previous registrant of the Domain Name, named as M. Dinoia, and the current Respondent. While registered to M. Dinoia, the Domain Name resolved to a pay-per-click advertising website that linked to third parties offering new or used products manufactured by the Complainant as well as those produced by its competitors. This is consistent with the instance of bad faith described in the Policy, paragraph 4(b)(iv).
The illustrations of bad faith in paragraph 4(b)(iv) of the Policy are not exhaustive, and the Panel finds other indicia of bad faith in this case with respect to the current Respondent. The timing of the change in registration immediately after the first cease-and-desist letter suggests an attempt at cyberflight (an effort to delay or derail UDRP or judicial proceedings by changing registration details), as the panel found in Starline Publications with regard to precisely the same succession of registrants. The failure to respond directly to the two cease-and-desist letters and the history of bad-faith domain name registrations by the Respondent suggest that the Respondent has no legitimate claim to the Domain Name and acquired it in furtherance of a business practice of trading on the goodwill associated with the trademarks of others.
Moreover, consistent with the “passive use” doctrine articulated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the Panel considers that the Respondent's non-use of the Domain Name since the registration was changed does not preclude a finding of bad faith. The Complainant's mark is distinctive and well-known, and the Respondent has not offered any legitimate reason for acquiring an identical domain name. As in Telstra, supra, the Panel concludes that “the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith.”
In the totality of the circumstances in this proceeding, and in the absence of a Response rebutting the Complainant's reasonable inferences of bad faith based on the record, the Panel finds that the third element of the Complaint has been established.
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 <ginetta.com> be transferred to the Complainant.
W. Scott Blackmer
Dated: June 26, 2009