WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mr. Felipe Augusto Vicini Lluberes, Grupo Vicini, Ltd. v. Increase Web Traffic Inc
Case No. D2011-0552
1. The Parties
The Complainants are Mr. Felipe Augusto Vicini Lluberes of Santo Domingo, Dominican Republic, and Grupo Vicini, Ltd., a company duly incorporated and organized pursuant to the laws of the British Virgin Islands, United Kingdom of Great Britain and Northern Ireland, with its headquarters located in Santo Domingo, Dominican Republic, represented by Staff Legal Abogados, Dominican Republic (hereafter “Complainants”).
The Respondent is Increase Web Traffic Inc of Panama City, Panama.
2. The Domain Names and Registrar
The disputed domain names <felipevicini.com> and <vicinigroup.com> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2011. On March 28, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On March 30, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on March 31, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on April 8, 2011. 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced April 13, 2011. In accordance with paragraph 5(a) of the Rules, the due date for Response was May 3, 2011. On April 13, 2011 and April 17, 2011 respectively, the Respondent filed two communications with the Center in response to the Complaint.
The Center appointed Brigitte Joppich, Roberto Bianchi and Gabriel F. Leonardos as panelists in this matter on May 30, 2011. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
4. Factual Background
The first Complainant is a Dominican citizen and President of the second Complainant, a company incorporated under the laws of the British Virgin Islands with headquarters in Santo Domingo, doing business inter alia in the fields of tourism, real estate, industry, energy, finances, insurance, food, beverages, retail and communications.
The disputed domain names were registered on October 3, 2010 and are used in connection with websites criticizing the Complainants and providing information on Haitian cane workers in the Dominican Republic. The websites are part of a network named “DominicanWatchdog.org”, a consumer protection website for the Dominican Republic.
5. Parties’ Contentions
The Complainants contend that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name <felipevicini.com> is identical to the personal name of the first Respondent, in which he has rights. The disputed domain name <vicinigroup.com> is identical to the trademark and business name of the Second Complainant. Regarding both domain names the Complainants argue that the TLD is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark.
(2) The Respondent has no rights or legitimate interests in the disputed domain names as it has no trademark rights and is not commonly known by the disputed domain names, as it is taking malicious advantage of the Complainants’ use of “Vicini”, and is using the disputed domain names with the intention of disturbing the Complainants or attracting the Complainants’ visitors to the Respondent’s own websites, as it has no relationship with or permission from the Complainants to use the disputed domain names, as it does not offer any goods or services related to the bona fide business of the Complainants but produces defamatory information about the Complainants, which is unsubstantiated and most of all false, and as the Respondent is not commonly known by the disputed domain names. Furthermore, the Complainants argue that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain names but uses the disputed domain names for commercial gain in order to mislead and divert customers as the websites available at the disputed domain names contain links to the website available at “www.dominicanwatchdog.org”, which invites people to donate money to its cause, aimed at tarnishing the Complainants’ rights in their trademarks, service marks and personal name.
(3) The disputed domain name has been registered and is being used in bad faith. The Complainants contend that it is not possible to assume that the Respondent did not know of the Complainants’ existence when registering the disputed domain names as the websites available at the disputed domain names refer to the Dominican Republic. The Complainants further state that the registration of the disputed domain names suggests opportunistic bad faith because the Complainants have a high degree of renown, that the use of the disputed domain names constitutes bad faith because the content available at the disputed domain names is false and defamatory, and that the disputed domain names have obviously been registered for the purpose of disrupting the Complainants’ business.
The Respondent states that the disputed domain names are used “as part of our educational program to inform the world of the unjust conditions for sugar cane workers in the Dominican Republic”, that “www.DominicanWatchdog.org”, a free service, is hosting more than 600 articles about fraud, corruption and murders of tourists in the Dominican Republic, that it is the only international consumer protection agency for the Dominican Republic, and that it has answered more than 800 emails from scammed consumers in the two years of its operation. The Respondent further states that the goal of “Dominican Watchdog” is to stop American consumers from using sugar from the Dominican Republic by letting them know under which wrongful conditions “they are buying this slavery sugar”, that the website has readers from 150 countries and more than 20,000 page views per month, and that all articles posted on “Dominican Watchdog” or any other website at one of the domain names domain controlled, rented or used by the Respondent are written by international or local media.
The Respondent states that it does not sell anything from the websites at the disputed domain names, that it has no personal interest in the Complainants except informing on the actual horrible situation in the Dominican Republic, and that it controls hundreds of domain names for this purpose.
The Respondent further states that there are third parties using the name “VICINI Group” as well, that the Complainants have not registered any trademark rights for “VICINI” or “VICINI Group” and that the Complainants’ only interest is to remove the content available at the disputed domain names. The Respondent states that it registered the domain names “vicini-group.com” and “felipe-vicini.com”, which had not been registered by the Complainants, who are not interested in owning any domain names corresponding to their names but to remove the content provided by the Respondent.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trade mark; 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.
In their Complaint, the Complainants rely on rights in the personal name of the first Respondent and rights in the trademark and business name of the Second Complainant.
The Panel finds that the Complainants did not provide sufficient evidence that they can rely on trademark rights under the UDRP for the following reasons:
It is well established that that the UDRP does not specifically protect personal names as such. However, in situations where a personal name unregistered as a trademark is being used for trade or commerce, the complainant may be able to establish common law or unregistered trademark rights in that name. In order to do so, proof of use of the person's name as a distinctive identifier of goods or services offered under that name would normally be required (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition; Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210 (<juliaroberts.com>); Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235 (<jeanettewinterson.com> et al.); Dr. Michael Crichton v. In Stealth Mode, WIPO Case No. D2002-0874 (<michael-crichton.com>); Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560 (<tomcruise.com>)). Merely having a famous name (such as a businessperson who does not actually use his or her name as an identifier for the business engaged in, or a religious leader), or making broad unsupported assertions regarding the use of such name in trade or commerce, would not necessarily be sufficient to show unregistered trademark rights (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition; Israel Harold Asper v. Communication X Inc., WIPO Case No.D2001-0540 (<izzyasper.com> et al.); Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, WIPO Case No.D2003-0248 (<aboutsrichinmoy.com> et al.); David Pecker v. Mr. Ferris, WIPO Case No.D2006-1514 (<davidpecker.com>)).
In the present case, the Complainants did not provide any evidence that the name “Felipe Vicini”, which is not even identical to the first Complainant’s name, has been used in connection with any goods or services and thereby became a distinctive identifier of such goods or services. The Complainants merely relied on the history of the first Complainant’s family in the Dominican Republic dating back to 1859. The Panel was not able to find a single reference to the use of the name “Felipe Vicini” in connection with goods or services in the documents provided by the Complainants. Therefore, the Panel cannot but find that the Complainants have failed to establish the first element of the Policy regarding the disputed domain name <felipevicini.com>.
Regarding <vicinigroup.com>, the Panel in not convinced that the Complainants have rights in the trademark and commercial name of the Second Complainant either.
To rely on unregistered common law rights under the UDRP the complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. A conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice. Specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition with further references).
In the present case, the Complaint and its annexes do not contain any evidence that “Vicini Group” or “Grupo Vicini” was ever used as a mark deserving protection as a de facto mark or common law mark or established mark, i.e. as a source of goods or services, or as an identifier for goods or services. Furthermore, the Complainants did not make any claim with regard to common law trademark rights. Finally, the Respondent denied that the Complainants can rely on any rights under the UDRP, and the Complainants did not react at all as to the Respondent’s argument that Complainants have no mark to rely upon and have not requested permission of the Panel to submit evidence of registration or use.
Therefore, the Panel finds that the overall evaluation of this case and the materials presented to the Panel do not support a finding that the Complainants can rely on rights in “Grupo Vicini” under the UDRP either.
Since the Complainants have failed to establish the first element of the Policy, there is no need to enter into a discussion of whether the Respondent has rights to or legitimate interests in the disputed domain names and whether they were registered and used in bad faith.
However, the present decision does not establish any rights of the Respondent in the disputed domain names, nor does it prevent future proceedings brought by a party able to prove rights in names identical or confusingly similar to the disputed domain names.
For all the foregoing reasons, the Complaint is denied.
Gabriel F. Leonardos
Dated: June 13, 2011