WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Grupo Vicini, Ltd., Mr. Juan Bautista Vicini Cabral, and Mr. Juan Bautista Vicini Lluberes v. Ángel Ortiz

Case No. D2011-0561

1. The Parties

Complainants are 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 main headquarters located in Santo Domingo, Dominican Republic; and Mr. Juan Bautista Vicini Cabral, and Mr. Juan Bautista Vicini Lluberes, both of Santo Domingo, Dominican Republic, represented by Staff Legal Abogados, Dominican Republic (collectively and indistinctly, “Complainant”).

Respondent is Ángel Ortiz of Santo Domingo, Dominican Republic.

2. The Domain Name and Registrar

The disputed domain name is <juanvicini.com> which is registered with Omnis Network, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2011. On March 29, 2011, the Center transmitted by email to Omnis Network, LLC. a request for registrar verification in connection with the disputed domain name. On March 29, 2011, Omnis Network, LLC., transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 26, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 27, 2011.

The Center appointed Gerardo Saavedra as the sole panelist in this matter on May 10, 2011. This Panel finds that it was properly constituted. This 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

Mr. Juan Bautista Vicini Cabral and Mr. Juan Bautista Vicini Lluberes are Dominican citizens, descendant of a family of Dominican entrepreneurs of Italian origin, established for over 150 years in the Dominican Republic.

Grupo Vicini, Ltd., is a company incorporated in the British Virgin Islands and registered in the Dominican Republic, with its main headquarters located in Santo Domingo, Dominican Republic.

Complainant has rights over (i) the trade name GRUPO VICINI, registration No. 227526 with the National Office of Industrial Property of the Dominican Republic, and (ii) the placard (rótulo) VICINI, registration No. 265377 with the National Office of Industrial Property of the Dominican Republic, both registered in 2007.

The disputed domain name was created on June 24, 2006.

5. Parties’ Contentions

A. Complainant

Complainant’s assertions may be summarized as follows:

The history of the Vicini family in the Dominican Republic begins with the arrival of Mr. Juan Bautista Vicini Canepa from Italy to the island in 1859, who managed to acquire large parcels of land for the cultivation of sugar cane. His sons increased the investments, modernizing the factories and country labors in the sugar cane industry, in real estate properties in the urban areas as well as in the rural areas of the nation.

The dynamic participation as well as the wealth of the Vicini family were fundamental to create the private banking, universities, associations, corporations, nonprofit organizations, all promoters of the development of the country and new businesses that opened the path for the nation’s progress.

The Vicini family has used its surname for years to identify a number of business enterprises. The conglomerate Grupo Vicini Ltd.,¹ has been incorporated for the purpose of acting as the holding entrepeneurial group for the Vicini family ventures.

It is quite evident that the disputed domain name is identical or confusingly similar to the trademark and trade name of Complainant in which Complainant has rights. The only difference concerns the domain name denominator, but this circumstance is irrelevant.

Respondent has no rights or legitimate interests in the disputed domain name since Respondent has no trademark rights and is not commonly known by the disputed domain name.

Respondent has no relationship with or permission from Complainant for the use of the disputed domain name, their personal names or their Vicini family surname or Complainant’s personal names corresponding to the disputed domain name in connection with a bona fide offering of goods or services; as a matter of fact, Respondent does not offer any goods or services related to the bona fide businesses carried out by Complainant.

Respondent is not making a legitimate non commercial or fair use of the disputed domain name. However, when anyone access the website held by the disputed domain name, it becomes evident that its intent is addressed for commercial gain in order to mislead and divert consumers and to tarnish the trademark or service mark, and personal names at issue related to Complainant.

Nothing in the record supports a conclusion that Respondent has adopted and used the personal name “Juan Vicini” in good faith. It is obvious that this name was selected and has been used by Respondent with the intent to attract for commercial gain Internet users to Respondent’s web site by trading on the fame of Complainant’s names, mark, name and prestige.

As regards the burden of proof, several WIPO decisions have ruled that once a Complainant establishes a prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of proof shifts to Respondent to rebut the showing.

Since Complainant are entrepreneurs that operate businesses in the Dominican Republic and the Caribbean region for the corporate conglomerate Grupo Vicini, Ltd., it is not possible to assume or believe that Respondent did not know of their existence and the existence of the personal names, Complainant’s trademark, when registering the disputed domain name. For starters, this fact constitutes bad faith.

In view of the notoriety of Complainant, it is obvious that when registering the disputed domain name, Respondent knowingly chose names which are identical to Complainant’s trademark and surnames, thereby creating a situation which is at odds with legal rights and obligations to Complainant.

Prior Panels have stated that, where a trademark used in a domain name has a high degree of renown and the respondent has no right or legitimate interest in the mark, this of itself suggests opportunistic bad faith.

In this case, Respondent is perceptibly a Dominican citizen with domicile in Santo Domingo, Dominican Republic, and has evidently created a domain name to take advantage of Complainant name, trademark and wealth producing capacity. Moreover, Respondent is specifically taking advantage from Complainant.

Respondent has adopted the disputed domain name for the specific purpose of trading off the name and reputation of Complainant and Respondent is absolutely unable to offer an explanation for his adoption of the disputed domain name.

The only plausible explanation for Respondent’s actions appears to be an intentional malicious effort to trade upon the name and good reputation of Complainant’s personal name and mark for commercial gain.

Respondent could not have any other reason than to force Complainant to acquire the disputed domain name from him by pecuniary means.

Complainant requests that the disputed domain name be transferred to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to “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”. It is not this Panel’s role to elaborate arguments on behalf of any of the parties or to look for evidence that might have been provided by the parties.²

The lack of a response from Respondent does not automatically result in a favorable decision for Complainant.³ The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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.

A. Identical or Confusingly Similar

The first element to be proved by Complainant is that Complainant has rights over a trademark or service mark. It is clear that the Policy is not limited to a registered mark; an unregistered or common law mark is sufficient for purposes of paragraph 4(a)(i). Furthermore, the Policy is not limited to trademarks or service marks owned by Complainant, it is sufficient that Complainant demonstrates it has rights over a mark.

According to Dominican Law No. 20-00 of Industrial Property (i) a trade name is the name, designation or abbreviation that identifies a company or establishment, and (ii) a placard (rótulo) is any visible sign used to identify a determined commercial establishment.

On the other hand, according to principles of international law and to such Dominican Law No. 20-00 of Industrial Property, a mark is any visible sign able to distinguish the products or services of an enterprise from the products or services of other enterprises. Further, under Article 72.1) of such Dominican Law No. 20-00 of Industrial Property, a name may be registered as a mark.

From the language of the Policy it is clear that this administrative proceeding only applies to disputes involving trademarks or service marks, not to trade names, establishment names, placards or other commercial designations.⁴

Complainant asserts that the disputed domain name is identical or confusingly similar to the trademark and commercial name of Complainant in which Complainant has rights.

It is undisputed that Complainant has rights over the trade name GRUPO VICINI and the placard VICINI, which are registered in the Dominican Republic.

However, there is no evidence in the file showing that the terms VICINI or GRUPO VICINI are registered as trademarks or service marks. Likewise, Complainant did not produce any argument or evidence showing that any of such terms is used by Complainant as a mark (whether or not registered).

Complainant cites Barocco Roma srl Unipersonale v. Eurobox Ltd./Whois privacy services, provided by DomainProtect LLC / “Barocco Roma srl Unipersonale”, WIPO Case No. D2008-0047 and Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226. However, those two cases involved domain names that incorporated registered trademarks.

Complainant merely claims that they are entrepreneurs that operate businesses in the Dominican Republic and the Caribbean region and that the Vicini family has used its surname for years to identify a number of business enterprises (i.e. as a trade name but not as a trademark or service mark). Further, Complainant claims that the surname “Vicini” has a high degree of renown in the Dominican Republic.

Complainant asserts that, when registering the disputed domain name, “Respondent knowingly chose names which are identical to the trademark Grupo Vicini LTD, Mr. Juan Bautista Vicini Cabral and Mr. Juan Bautista Vicini Lluberes and the Vicini family surname”. Again, there is no evidence in the file, not to say the slightest statement, indicating that any of those is in fact used as a trademark or service mark (i.e. which might constitute an unregistered mark).

Furthermore, the fact of being widely known under a particular name/surname, or that such name/surname has acquired substantial prestige in a business community or otherwise, does not strictly confer rights over such name/surname as a mark. Several UDRP decisions support the view that in order to consider a personal name as a trademark or service mark it needs to be used as such.⁵

This Panel considers there is certain similarity between the case at hand and R. E. ‘Ted’ Turner and Ted Turner Film Properties, LLC v. Mazen Fahmi, WIPO Case No. D2002-0251, where the learned panel established: “The evidence shows that Mr. Turner was a well-known personality worldwide at the time the [domain] name was registered and since. His name is generally associated with business acumen and commercial success. However, there is insufficient evidence that his personal name has been used commercially as a trademark to promote goods and services. The inclusion of the Turner name in that of several media companies is not enough to make the name ‘Ted Turner’ a trademark. In cases involving entertainers, authors, professional sports people, the Complainant had usually succeeded, especially where it could be shown that the Complainant had either used his/her name as a marketable commodity or had allowed the name to be used for a fee to promote either the Complainant’s own or someone else’s goods and services... (a) the "Turner" name but not the "Ted Turner" name does form part of the name of several major companies owned by Mr Turner (e.g. Turner Network Television, Turner Classic Movies and Turner Broadcasting System) and (b) the words "Ted Turner" appear in the name of the Complainant TTFP. However, no evidence was given by TTFP of use of the name as a trademark. The distinction between names and trademarks is also recognized by the authorities both in Anglo-Australasian law and in United States law, see for example Shanahan, Australian Law of Trademarks and Passing Off at page 1: "A trademark must be distinguished from a trade name, that is to say the name whether it be a personal name or a business or company name under which a person carries on business. Where goods or services are provided under a trade name, that name functions also as a trademark; but a trademark need not be a trade name... " McCarthy on Trademarks and Unfair Competition (2^nd Edition) at pages 578 and 579 states the U.S. position thus: "Personal names (surnames and first names) have been placed by the common law into that category of non-inherently distinctive terms which require proof of secondary meaning for protection. Thus, since personal names are not regarded as being inherently distinctive marks, they can be protected as trademarks only upon proof that through usage, they have acquired distinctiveness and secondary meaning … … that is, the public has come to recognize the personal name as a symbol which identifies and distinguishes the goods or services of only one seller.".

Thus where a name (either a full name or just a surname) is not registered as a trademark or service mark, this Panel considers it is not enough to merely rely on the national or international recognition or prestige of the individual or family carrying such name, or the business success or other type of fame of an individual or family: it is necessary that such a name be used as a mark and, of course, that such fact be sufficiently proved. At least on the evidence in this present Policy proceeding, the Panel does not find such trademark rights to have been adequately established.

Therefore, this Panel finds that Complainant failed under paragraph 4(a)(i) of the Policy.

Given the aforesaid, this Panel considers unnecessary to discuss whether Complainant might have succeeded under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, the Complaint is denied.

Gerardo Saavedra
Sole Panelist
Dated: March 24, 2011

¹ This Panel notes that the Commercial Registration Certificate (“Certificado de Registro Mercantil”) issued in Dominican Republic, attached to the Complaint, shows August 27, 2007 as the date of the incorporation meeting date (“fecha de asamblea constitutiva”) of such entity.

² See The Skin Store, Inc. v. eSkinStore.com, WIPO Case No. D2004-0661: “The Panel suspects ... that further evidence could have been produced, but it is not the job of the Panel to hunt it out”.

³ See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465: “[…]the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.

⁴ See 01059 GmbH v. VARTEX Media Marketing GmbH/Stefan Heisig, WIPO Case No. D2004-0541; Enmersan Granit Mermer ve Inşaat Taahhut Sanayi ve Ticaret A.S. v. Ibrahim Sahin, WIPO Case No. D2004-0439.

⁵ In The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, Prolife.net, and God.info, WIPO Case No. D2002-0184, the panel established: “Complainant has failed to show that his name, well known as it is, has been used in a trademark sense as a label of particular goods or services... That Complainant has acquired a certain fame in the United States is without question. However, this kind of fame is not cognizable under the Policy”. See also Planned Parenthood Federation of America, Inc. and Gloria Feldt v. Chris Hoffman, WIPO Case No. D2002-1073; David Pecker v. Mr. Ferris, WIPO Case No. D2006-1514; Gordon Sumner, p/k/a Sting v. Michael Urvan, WIPO Case No. D2000-0596.