WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F.lli Codognotto di Codognotto Gianfranco & c. - s.n.c. v. Domains By Proxy, LLC / La-Fame Corporation
Case No. D2014-1088
1. The Parties
The Complainant is F.lli Codognotto di Codognotto Gianfranco & c. - s.n.c. of Salgareda, Italy, represented by Studio legale Fogliani, Switzerland.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / La-Fame Corporation of Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <codognotto.com> 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 June 23, 2014. On June 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 24, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 27, 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 on June 30, 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 July 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 28, 2014.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on July 31, 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 is a company established under the law of Italy in 1975 which offers national and international carriage services. The Complainant states that it is a leader in the European market of transport and logistics. The Complainant is the owner of a variety of trademarks which feature the word "codognotto", both figurative and word marks, in multiple jurisdictions worldwide. The earliest such trademark is Italian registered trademark no. TV1995C000305 for a figurative mark representing two oblique and overlapping letters "C", one in red and the other in black, centred above the word "codognotto" in red stylized letters, registered on August 3, 1995 in Nice class 39.
Little is known about the Respondent in this case. The courier appointed by the Center to deliver written notice of the administrative proceeding reported on July 9, 2014 that the Respondent was unknown at the given address in Hong Kong, China and that the given telephone number was also incorrect. The disputed domain name was created on March 12, 2010 and currently points to a website with a home page entitled "coDogNotTo.com". The said site states inter alia "CODOGNOTTO.com is a site about 'Coaching, Communicating, Correcting, and Controlling dog's 'Not-To' mis-behaviors.as well as 'CODOGNOTTO' Toys & Products which could help to co-ordinate Dog's 'Not-To' misbehave." The said site also contains a disclaimer which states "Please note that Codognotto.com is NOT related to Codognotto Group: codognotto.eu or codognotto.it or codognotto.uk which provide Logistics & Transportation Services".
The Complainant produces a screenshot dated May 7, 2012 from the "Wayback Machine" at "www.archive.org" showing a slightly different variant of the disclaimer on the Respondent's said website which stated "Please be noted that this website is unrelated to the International Freight Forwarding Company – CODOGNOTTO Group".
In April 2014, the Complainant engaged a domain name broker to attempt to purchase the disputed domain name. On April 9, 2014, the domain name broker reported to the Complainant that it had offered the registrant of the disputed domain name USD 250 therefor and that the registrant had responded with a counter-offer of USD 45,000. The broker went on to report that it submitted a counter-offer to the registrant of USD 1,000 but had not received any further response to this.
5. Parties' Contentions
The Complainant contends that the disputed domain name is identical to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant submits that there is no evidence of the Respondent's use of the disputed domain name or a name corresponding thereto in connection with a bona fide offering of goods or services; that the Respondent has not been commonly known by the disputed domain name since the Respondent's name was withheld from the WhoIs by virtue of the use of a proxy service; and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant asserts that its CODOGNOTTO mark is well-known on the Internet and that the Complainant registered the domain names <codognotto.it> on January 20, 1997, <codognotto.fr> on February 3, 2005 and <codognotto.eu> on July 20, 2006. The Complainant submits that a simple search in 2010, when the disputed domain name was registered, would have led the Respondent to the Complainant's websites.
The Complainant asserts that the disputed domain name was registered primarily for the purpose of selling or otherwise transferring it to the Complainant for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the disputed domain name and cites the Respondent's counter-offer of USD 45,000 in support of such contention. The Complainant also submits that the disputed domain name was registered in order to prevent the Complainant from reflecting its trademark in a corresponding domain name.
The Complainant asserts that the Respondent was aware that the disputed domain name was identical to the name and trademark of the Complainant and cites the disclaimer on the website associated with the disputed domain name in support of this contention, noting with reference to the supporting screenshot dated May 7, 2012 that the said disclaimer appeared on the said website long before the Complainant requested the Respondent to transfer the disputed domain name to the Complainant. The Complainant submits that the Respondent's choice of the disputed domain name cannot be a coincidence and asserts that the "co-dog-not-to" motif of the associated website is not credible. The Complainant adds that there is no credible reason why a Chinese corporation should offer "advice to coach dog not to misbehave" to English-speaking people.
The Complainant states that the Respondent's website is badly built, with content taken from other sites, purely to justify the "co-dog-not-to" name. The Complainant notes that the "about us" page does not indicate who the registrant is; in the "products" page the only product shown is a $40 dog bowl; the few videos present on the site are copied from "www.youtube.com"; and the "store" page shows items sold by "www.amazon.com" with the shopping cart located on that site.
The Complainant notes that having originally been hidden by a privacy service, the Respondent has been revealed as a Chinese entity established in Hong Kong. The Complainant asserts that the revealed Respondent has nothing to do with the activity which is pretended to be carried out by the website associated with the disputed domain name and notes that the home page of the domain name <la-fame.net>, which is used for the e-mail address of the revealed Respondent, is merely a parking page offered by the Registrar.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the 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
There are two parts to the inquiry under this element of the Policy. The Complainant must first show that it has rights in a trademark and secondly that the disputed domain name is identical or confusingly similar to such mark. Although the Complainant provides a list of multiple trademarks which it has registered in various jurisdictions in recent times, it places the greatest emphasis on its earliest registered mark, being Italian registered trademark no. TV1995C000305, which is more fully described in the factual background section above. The Panel accepts that the Complainant has rights in this mark and therefore turns to the question of identity or confusing similarity.
The mark on which the Complainant relies is figurative in nature. The Panel is therefore required to consider how to deal with the design elements of this mark in comparing it to the disputed domain name. Paragraph 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") addresses this topic by posing the question "Are disclaimed or design elements of a trademark considered in assessing identity or confusing similarity?" The consensus view is stated as follows:
"[…] as figurative, stylized or design elements in a trademark are generally incapable of representation in a domain name, such elements are typically disregarded for the purpose of assessing identity or confusing similarity, with such assessment generally being between the alpha-numeric components of the domain name, and the dominant textual components of the relevant mark. However, design elements in a trademark may be relevant to the decision in certain circumstances - such as where, for example, they form an especially prominent or distinctive part of the trademark overall. Some panels have found it to be a matter of impression in the circumstances of each case. Where the entire textual component of a complainant's relevant trademark has been disclaimed, or the only protectable component of such mark is comprised of design elements which generally cannot be represented in the alpha-numeric string of a domain name, then (absent a showing of acquired distinctiveness through use of the relevant mark) the complainant may lack any relevant rights under the UDRP on the basis of such mark, rendering moot any assessment of the disputed domain name's identity or confusing similarity with it."
The Panel respectfully adopts the consensus view. In the present case, the Panel is satisfied that the stylized and design elements of the Complainant's mark, including the two letter "C"s which appear at opposing 45 degree angles above the main text, are capable of being disregarded, leaving the dominant text "CODOGNOTTO". There is no disclaimer of any textual component. Accordingly, disregarding the generic top level domain ".com" in the disputed domain name, the Panel finds that the Complainant's trademark is identical to the disputed domain name.
In these circumstances, the Panel finds that the first element under the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are 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 trade mark or service mark at issue".
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainant has made out such a prima facie case by reference to its submissions (1) that there is no evidence of the Respondent's use of the disputed domain name or a name corresponding thereto in connection with a bona fide offering of goods or services; (2) that the Respondent has not been commonly known by the disputed domain name; and (3) that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. In these circumstances, the burden of production shifts to the Respondent to bring forward evidence of rights or legitimate interests in respect of the disputed domain name.
Despite being provided with the opportunity to do so under the Policy and Rules, the Respondent has failed to file any response to the Complainant's allegations. The Respondent has offered no explanation or details of any alleged rights or legitimate interests which it might have claimed in the disputed domain name. The Panel finds no evidence on the available record that the Respondent has been commonly known by the disputed domain name, nor that it is making any legitimate noncommercial or fair use thereof. The Panel has had regard to the Complainant's submissions and evidence relative to the website associated with the disputed domain name, which is discussed in greater detail in the section on bad faith below. For present purposes, however, the Panel is presented with an apparently live commercial website which operates under a "co-dog-not-to" motif, expanded on the site itself to "advice to coach dog not to misbehave". The Panel considers that this site represents a wholly unconvincing attempt by the Respondent to create the appearance of a bona fide offering of goods or services, under a name corresponding to the domain name, as a cover for the Respondent's true motivation of targeting the Complainant's trademark.
In all of these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly that the second element under the Policy has been established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location".
There is widespread consensus among UDRP panels that this element of the Policy requires a demonstration by the complainant that the respondent is targeting the complainant's rights in some manner through the registration and use of the domain name at issue. Such targeting might arise from an intent to damage or extract money from the complainant or to derive some unfair benefit on the back of the complainant's goodwill. In any event, the complainant typically needs to show that the respondent had knowledge of the complainant's mark at the point of registration, given that it is very unlikely that a respondent ignorant of the existence of the complainant and its trademark could be said to have registered the domain name in question in bad faith (Kalahari, A Division Of Nasboek Ltd. (Sa) -V- Host Start Internet Services, Inc., WIPO Case No. D2001-0992).
Did the Respondent have knowledge of the Complainant's trademark in the present case? The Panel answers this question in the affirmative. As the Complainant notes, before it made contact with the Respondent the website associated with the disputed domain name featured a disclaimer which expressly referenced the Complainant's name and trademark. This is corroborated by the historic screenshot of the website produced by the Complainant. The Panel therefore finds on the balance of probabilities that the Respondent registered the disputed domain name with actual knowledge of the Complainant and its CODOGNOTTO trademark.
In some cases, panels have found that the existence of such a disclaimer can support other factors indicating good faith or legitimate interest (see paragraph 3.5 of the WIPO Overview 2.0). However, in the present case such other circumstances as the Panel can identify, in the absence of any response from the Respondent, appear to point in the direction of an intent to target the Complainant's rights in its CODOGNOTTO trademark. In particular, the Panel notes the curious acronym on the Respondent's website, represented alternatively as "co-dog-not-to" or "CoDogNotTo" and allegedly standing for the expression "coach, communicate, control dog not to misbehave". This is not a natural or common phrase or a recognized acronym in English, the language of the site, and as such it appears to the Panel to be contrived to match the Complainant's trademark. The Panel's impression of a deliberate, if unconvincing, contrivance is fortified by the paucity of original content on the Respondent's website, which, as the Complainant contends, appears to be a collection of third party resources, namely pet products for sale by an established online retailer and dog training videos created by unrelated parties and embedded from a popular online video hosting service. Furthermore, the Panel notes that the "about us" page does not provide any details regarding the identity of the business operator, in contrast to that of the typical established and genuinely trading organization.
Finally, the Panel has considered the evidence of the Parties' negotiations regarding the sale of the disputed domain name, in which the Respondent set an asking price of USD 45,000, being far in excess of its out-of-pocket costs. When this is taken together with the other circumstances noted above, a clear picture emerges in the Panel's mind of the Respondent having registered the disputed domain name primarily for the purpose of selling it to the Complainant, in line with the circumstances described in paragraph 4(b)(i) of the Policy. The Panel considers it reasonable to infer from the Respondent's website that as part of this plan the Respondent contrived the "co-dog-not-to" motif, collected the related content and published the disclaimer, all of which was a mere smokescreen intended to obscure its bad faith and lack of rights or legitimate interests in the disputed domain name.
In all of these circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith and accordingly that the third element under the Policy has been established
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <codognotto.com> be transferred to the Complainant.
Andrew D. S. Lothian
Date: August 14, 2014