World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cerruti 1881 s.a.s. v. Gurpreet Johar

Case No. D2012-1574

1. The Parties

The Complainant is Cerruti 1881 s.a.s., of Paris, France, represented by Studio Professionale Associato a Baker & McKenzie, Italy.

The Respondent is Gurpreet Johar, of Wembley, United Kingdom of Great Britain and Northern Ireland (UK).

2. The Domain Name and Registrar

The disputed domain name <ginocerruti.com> is registered with 1&1 Internet AG (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2012. On August 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 2012, 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 August 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2012. Upon request of the Respondent and comments of the Complainant, the due date for Response was extended to September 3, 2012. The Response was filed with the Center on September 3, 2012.

The Center appointed Torsten Bettinger as the sole panelist in this matter on September 17, 2012. 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.

4. Factual Background

The Complainant is the owner of nearly 1,500 trademark applications and registrations for its CERRUTI mark and variants thereof, many of which are used in connection with women’s clothing and luxury goods. The Complainant’s CERRUTI mark has been registered since as early as 1999, and similarly its NINO CERRUTI mark has enjoyed protection since at least 1976. The Complainant provides very little information about its business activities, instead inviting the Panel to visit its website to find out more about its corporate history, products and sales information. The Complainant indicates that it has been active in the fashion industry for more than 50 years and asserts that its marks and trade name are well-known.

The Respondent registered the disputed domain name on February 10, 2004, and uses it in connection with his company Gino Cerruti Limited, which is engaged in the production and sale of women’s formal wear. The Respondent registered his company with the UK business register on December 2, 2003. In August of 2011, the Respondent’s wife applied for a UK trademark registration for the GINO CERRUTI mark, but subsequently withdrew the application following opposition from the Complainant. The Respondent continues to operate his business under the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that all three of the elements of paragraph 4(a) of the Policy are satisfied.

With regard to the first element of the Policy, the Complainant alleges that the disputed domain name is confusingly similar to its well-known CERRUTI and NINO CERRUTI trademarks, and notes that the domain name fully includes the entire CERRUTI mark. The Complainant further notes the visual and phonetic similarity between “Nino Cerruti” and “Gino Cerruti”, which increases the likelihood of confusion between its marks and the disputed domain name.

With regard to the second element of the Policy, the Complainant states that the “Cerruti” last name is quite uncommon, and that it has been in use since 1881 when the Complainant’s predecessors in interest founded the company. The Complainant states that there is nothing in the record to suggest that the Respondent is commonly known by the domain name or a name corresponding to the domain name, and confirms that it has not authorized, licensed or in any other way permitted the Respondent to use its marks.

Concerning the bad faith element of paragraph 4(a), the Complainant notes its longstanding use of the CERRUTI trademark, and states that the Respondent selected the domain name with the intent to capitalize on its similarity to the well-known mark. As the Respondent is also engaged in the business of selling women’s formal wear, the Respondent knew or should have known of the Complainant’s rights and therefore his registration of the domain name was undertaken in bad faith. The Complainant further notes that the Respondent made no reply to its cease-and-desist letter of April 2012, and alleges that the Respondent’s apparent unwillingness to find an amicable solution further demonstrates his bad faith in this regard. The Complainant thus alleges that the Respondent has capitalized on Internet user confusion, and has prevented the Complainant from registering its mark in a corresponding domain name pursuant to paragraph 4(b)(iii) of the Policy.

B. Respondent

The Respondent alleges that he has been trading under the name GINO CERRUTI since 1988, operating a legitimate business in the United Kingdom specializing in women’s formal wear. He states that he selected the Gino Cerruti name because of his close association and friendship with an Italian family named Cerruti, whom he met in connection with a prior job in the finance industry. The Cerrutis, with whom he spent a good deal of time, began jokingly referring to him as a member of the family, “Italianizing” his name, Gurpreet, to Gino.

Although the Respondent did not provide substantiating evidence to support these statements about his nickname, he did supply the number of his company registration with the UK business register. The Respondent’s company, Gino Cerruti Limited, was registered on December 2, 2003, roughly two months before the Respondent registered the disputed domain name on February 10, 2004. Accordingly, the Respondent alleges that he had rights in the domain name at the time he selected it for registration, and further that he had been operating a bona fide, legitimate business through the domain name for many years prior to the Complainant’s first cease-and-desist notice in April of 2012. Historic screenshots of the disputed domain name, as well as an extensive sampling of the Respondent’s business banking records and sales receipts, confirm that the Respondent has been using the domain name in connection with the sale of women’s dresses and formalwear since the domain name was registered.

Although the Respondent concedes that the Complainant is the registered owner of the CERRUTI and NINO CERRUTI marks, he alleges that the text of the disputed domain name “gino cerruti” is not confusingly similar to the Complainant’s trademarks, as it constitutes an entirely different personal name. Further, the Respondent notes that “Cerruti” is a common Italian last name, and that numerous companies use the term in connection with their businesses. The Respondent also states that where a common surname is included in a trademark, consumers will likely be alert to small differences between two similar marks.

The Respondent further contends that, as the owner of a registered UK business of the same name, he was fully entitled to register the disputed domain name in 2004 and that, by using the domain name in connection with his ongoing business activities, he has at all times used the domain name in good faith. Accordingly, he claims both rights and legitimate interests in his <ginocerruti.com> domain name, and asserts that the registration was undertaken in good faith.

6. Discussion and Findings

The issues raised in this dispute are relatively unusual, and concern a broad range of intellectual property rights questions. The Respondent has, by virtue of his 2003 business registration, demonstrated rights in the disputed domain name at the time he selected <ginocerruti.com>, and his voluminous submissions of banking records and financial receipts indicate that he is conducting a substantial commercial enterprise through his Gino Cerruti Limited company. It is clear that the Respondent’s activities commenced long before the he received notice of the dispute via the Complainant’s cease-and-desist letter.

The Complainant is a very well-known company, engaged in the same general industry as the Respondent. Its claims concerning the Respondent’s knowledge prior to his selection of a business name may be persuasive in any subsequent trademark infringement action which the Complainant may elect to file. These claims, however, fall outside the narrow scope of the UDRP Policy.

The UDRP was designed to address only a very narrow class of domain name disputes – cases of abusive domain name registration, or cybersquatting. The Final Report of the WIPO Internet Domain Name Process of April 30, 1999 indicates that the mandatory alternative dispute resolution procedure proscribed by the UDRP must be limited in scope “to cases of bad faith, abusive registration of domain names that violate trademark rights”. Subsequent years of case law have echoed this sentiment, reserving to the courts the complex questions of inter alia trademark infringement, breach of contract and fraud. See, for example, Jimmy Alison v. Finland Property Services (Pty) Ltd., WIPO Case No. D2008-1141 and Edward Van Halen v. Deborah Morgan, WIPO Case No. D2000-1313: “The Policy is, thus, not designed to combat trademark infringement on the Internet or even questionable cases of cybersquatting, but rather, abusive, bad faith cybersquatting.”

In this case, the Respondent has demonstrated to the satisfaction of the Panel that he had, at the time he selected the disputed domain name for registration, a valid company registration in the United Kingdom. While the Complainant may be able to successfully show, in a full evidentiary proceeding before a court of competent jurisdiction, that the Respondent selected this business name with the intent to trade on their well-known CERRUTI mark, the abbreviated UDRP procedure is not an appropriate mechanism for resolving this dispute.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Torsten Bettinger
Sole Panelist
Date: September 28, 2012

 

Explore WIPO