The Complainant is Starks s.r.l.s. of Catanzaro, Italy, represented by Weblegal, Italy.
The Respondent is Super Privacy Service LTD c/o Dynadot of San Mateo, California, United States of America (“United States”) / Ishak Moulay of Metlili, Algeria .
The disputed domain names <giardiniblog.com> and <giardiniblog.net> (hereinafter together referred to as the “Domain Names”) are registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2018. On October 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 11, 2018, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2018.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on November 16, 2018. 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 November 30, 2018, the Panel issued a procedural panel order and granted the Complainant five calender days, i.e. until December 5, 2018, to submit such evidence further to the contentions/content of its Complaint and annexes to the Complaint. On December 5, 2018, the Complainant submitted additional contentions and annexes. The Respondent was granted the right to reply to this additional submission until December 10, 2018. The Respondent did not submit any reply.
The following facts are undisputed.
The Complainant is a company based in Italy. The Complainant is holder of the domain name <giardiniblog.it>, on which a website is active with learning and informative content on IT devices and related matters (the “Blog”).
Since the start of the Blog until now, more than 1,400 articles were published.
The Respondent is holder of the Domain Names. The Domain Name <giardiniblog.com> was first registered on February 11, 2009 and was last updated on October 11, 2018. The Domain Name <giardiniblog.net> was registered on June 26, 2018. The Domain Names do not resolve to an active website.
On June 26, 2018, the Respondent contacted the Complainant, per email, as follows: “hi bro … If you want back your domainname giardiniblog.com + I bought you a new domain giardiniblog.net. For payment 1.7 bitcoin […]. I’m here … I do not want to change index to hacked by … because I’m not like it.” The Respondent contacted the Complainant again over the days after.
On July 20, 2018, a legal representative of the Complainant filed a complaint with the Postal Police Office in Rome, for, in short, fraudulent activities concerning the hijacking of the Domain Names.
Insofar as relevant, the Complainant contends the following.
The Complainant is holder of (unregistered) rights in the service mark GIARDINIBLOG (the “Mark”), as the Complainant, or its predecessors, are (extensively) using the Mark since 2007 for the Blog. Furthermore the Complainant hosts a YouTube channel named “Giardiniblog” and a Facebook page named “Giardiniblog”, which has circa 100,000 followers.
The Domain Names are identical to the Mark. The Domain Names reproduce the Mark in its entirety.
The Respondent lacks rights or legitimate interests in respect to the Domain Names. The Respondent possesses no trademark rights in “giardiniblog” or in similar signs, and is not commonly known to operate under that name. The Respondent is not using the Domain Names for bona fide offering of goods or services. Furthermore, there is no relationship between the Complainant and the Respondent and the Complainant has not given any license, permission or other right under which the Respondent would be authorized to use the Mark.
The Domain Names were registered and are being used in bath faith. The Complainant contends that this is a case of so-called domain name theft. The Complainant stated that the Complainant was holder of the Domain Name <giardiniblog.com> from February 11, 2009 until June 26, 2018. After hacking the Domain Name the Respondent has transferred the Domain Name <giardiniblog.com> from the Complainant to the Respondent and changed the Registrar of the Domain Name <giardiniblog.com>, whilst pretending to be the Complainant and using false information and contact details. After the transfer of ownership of the Domain Name <giardiniblog.com>, the Respondent contacted the Complainant and offered the Domain Names for sale, for the amount of, converted, about USD 10,000. Therefore, the Respondent is holding Domain Names with the sole purpose of reselling them for high profits. The change of the holder of the Domain Name <giardiniblog.com> and the change of the Registrar occurred without the knowledge or consent of the Complainant. Unauthorized transfer of Registrar and Registrant constitutes evidence of registration and use in bad faith.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(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
The Complainant must demonstrate that it has rights in a trademark or a service mark and, if so, the domain name must be shown to be identical or confusingly similar to that mark.
The Complainant has made a prima facie case that it has unregistered rights in the Mark since 2007 and has provided evidence hereof (social network presences, company name, publicity, event). The Respondent failed to submit a response and has thus not rebutted these unregistered trademark rights. Therefore, the Panel finds that the Complainant has unregistered rights in the Mark for the purpose of the Policy.
The Domain Names incorporate the Mark in its entirety.
The additions of the generic Top-Level Domains (“gTLD”) “.com” and “.net” are in this matter irrelevant in the determination of the confusing similarity between the Trademark and the Domain Names. See cases Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. See also, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903: “[T]he fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”
Thus, the Panel finds that the Domain Names are identical to the Mark.
For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.
The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might have concluded that the Respondent has rights or legitimate interests in the Domain Names, such as:
(i) use or preparation to use the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Names (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate noncommercial or fair use of the Domain Names, 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 case file that the Respondent has any rights or legitimate interests in the Domain Names.
The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that “Giardiniblog” is the Respondent’s name or that the Respondent is commonly known as “Giardiniblog”. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the Complainant’s Mark, or to apply for or use any domain name incorporating the Mark.
Furthermore, the use of the Domain Names cannot be considered a bona fide offering of goods or services. In particular, the Respondent did not demonstrate any use or demonstrable preparation to use the Domain Names in connection with a bona fide offering of goods or services. It is also clear that the Respondent is not making any legitimate noncommercial or fair use of the Domain Names.
Finally, given the circumstances of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the Domain Names may also be inferred by the fact that no response was filed by the Respondent. According to earlier UDRP panels, “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No.D2005-0090; and Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493).
Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met.
The Panel holds that the relevant date of registration for the Domain Names under this element of the Policy is June 26, 2018, as the Complainant sufficiently demonstrated that on June 26, 2018 the Respondent has transferred the Domain Name <giardiniblog.com> at that date without the knowledge or consent of the Complainant from Complainant to Respondent. The mere fact that the Respondent transferred the Domain Name <giardiniblog.com> without the knowledge or consent is a strong indication of registering and using the Domain Names in bad faith. The Domain Name <giardiniblog.net> was registered by the Respondent on the same day. In light of the earlier transfer, the registration of the Domain Name <giardiniblog.net> will follow the same assessment as the Domain Name <giardiniblog.com>.
In light of the evidence filed by the Complainant and the absence of a reply, the Panel finds that the Domain Names were registered in bad faith.
With respect to bad faith use, the Complainant sufficiently showed that the Respondent has used false information when acquiring the Domain Names and that the Respondent offered the Domain Names for sale to the Complainant directly after the registration of the Domain Names, for an exorbitant amount. Therefore, the Panel finds that the Respondent acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant.
Finally, although the lack of a reply by the Respondent as such cannot by itself lead to the conclusion that there is use in bad faith, the cumulative circumstances as outlined in the decision are sufficient for the Panel to find that the use of the Domain Names by the Respondent is in bad faith.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Names were registered and is being used in bad faith
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <giardiniblog.com> and <giardiniblog.net>, be transferred to the Complainant.
Willem J. H. Leppink
Date: December 20, 2018