WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société civile G.A.R. v. Domains by Proxy, LLC / Mauro Repossi
Case No. D2014-0676
1. The Parties
The Complainant is Société civile G.A.R. of Monaco, represented by SCP August & Debouzy, France.
The Respondent is Domains by Proxy, LLC / Mauro Repossi, of Scottsdale, Arizona, United States of America / Casorate Primo, Italy.
2. The Domain Name and Registrar
The disputed domain name <repossi.org> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 24, 2014. On April 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. The Complaint was initially filed against Domains by Proxy, LLC, a privacy registration service. On April 25, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 29, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint against the underlying registrant, the Respondent, on May 2, 2014.
The Center verified that the Complaint together with the amended 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 5, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2014. The Response was filed with the Center on May 23, 2014.
The Center appointed Karen Fong as the sole panelist in this matter on June 11, 2014. 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 designs, produces and markets high end jewelry under the brand REPOSSI. The Complainant owns trade mark registrations for the marks REPOSSI together with various devices ("the Trade Marks"). The earliest International trade mark registration covering Austria, Benelux, Switzerland, Germany, Spain, France, Italy, Korea, Portugal and San Marino dates back to 1988. The Complainant operates its website under the domain name <repossi.com>.
The Respondent is an individual bearing the surname REPOSSI. The Domain Name is used to reflect the Respondent's family name in email addresses. The Domain Name was registered on May 11, 2010.
5. Parties' Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the Trade Marks, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent contends that the Domain Name is not confusingly similar to the Trade Marks as the Trade Marks contain additional elements and logos apart from the word REPOSSI. Further there would be no confusion because the website connected to the Domain Name does not have any misleading content. The Respondent has rights and legitimate interests in the name as the Domain Name is identical to his surname. The Respondent denies that the registration and use of the Domain Name is in bad faith. It was registered to reflect the Respondent's surname and is used as private email addresses of the Respondent and members of his family.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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 was registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Marks.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine a likelihood of Internet user confusion, e.g, where the trade mark would generally be recognizable within the domain name. Although the Trade Marks have additional elements to them – "R Logo and Joailliers", "R Logo, Joailliers and Monte- Carlo", "R Logo" and "R by and Logo", the word REPOSSI forms a dominant part of the Trade Marks. For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic domain suffix. The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides, without limitation, several circumstances any of which, when proved, demonstrates Respondent's rights or legitimate interest in the Domain Name. Notably, paragraphs 4(c)(ii) and (iii) require the Respondent to submit evidence that:
- as an individual he has been commonly known by the domain name, even if he has not acquired trademark or service mark rights; or
- he is making a legitimate non-commercial 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.
The Respondent has submitted evidence that his surname is "Repossi" and that the Domain Name is being used as an email address which reflects his family name for him and members of his family – "[...]@repossi.org", "[...]@repossi.org", "[...]@repossi.org" and "[...]@repossi.org".
The Panel finds that this falls within the circumstances in the Policy which establishes that the Respondent has rights or legitimate interests in the Domain Name.
D. Registered and Used in Bad Faith
In view of the finding above, strictly there is no need for the Panel to make any finding in relation to bad faith. However for completeness, the Panel will also consider this element. The Complainant has not provided any evidence that the Respondent registered or used the Domain Name in bad faith. Just because a party uses a privacy registration service is not by itself proof of bad faith use or registration. The Respondent's use of the Domain Name as a private email address that reflects his family name was in good faith. The website connected to the Domain Name is a holding page. There is no evidence that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the website or email addresses connected to the Domain Name are somehow authorised or endorsed by the Complainant.
Therefore, the Panel finds that the Respondent did not register and has not used the Domain Name in bad faith.
For the foregoing reasons, the Complaint is denied.
Date: June 30, 2014