WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanlorenzo S.p.A. v. Domains By Proxy, LLC / Lenka Jirsova
Case No. D2016-1555
1. The Parties
The Complainant is Sanlorenzo S.p.A. of Ameglia, Italy, represented by Musumeci, Altara, Desana e Associati - Studio Legale, Italy.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Lenka Jirsova, of Prague, Czechia.
2. The Domain Name and Registrar
The disputed domain name <mynewsanlorenzoyacht.com> (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 July 29, 2016. On July 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, 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 August 2, 2016 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 August 3, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 31, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 1, 2016.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on September 2, 2016. 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 builder of yachts, founded in 1958, with shipyards in various locations in Italy.
It is the exclusive licensee of the international trademark SANLORENZO, registered on November 21, 2000, for a number of countries, including Czechia and Slovakia (the "Trade Mark").
The Domain Name has been registered on July 8, 2015. The Domain Name resolves to a website which on the home page shows a pleasure yacht with the caption "My new San Lorenzo Yacht" and the words "Building a new boat: Trouble? Or pleasure?" across the picture.
The home page also contains the following text:
"We are pretty sure that when Mr. Giovanni Janetti was establishing foundations of the Sanlorenzo brand in 1958, he never imagined that one day his brand will become related to 'mediocre-quality' instead of 'elegance'!"
"My name is Vojtech. I am a 47-year-old IT specialist. I own and manage a communications company which maintains and services GSM operators' base stations in Slovakia."
"I have decided to put up this website in order to share our experiences and raise boating enthusiasts' awareness."
Under the tag "True facts" are several pages with alleged complaints about the building process and the yacht built by the Complainant for a friend of the author. The site further notes that "The matter finally moved to court" and lists a number of claims in this regard.
Under the tag "Gallery" is a number of pictures with a description of alleged deficiencies of the yacht in question.
5. Parties' Contentions
According to the Complainant, the Domain Name is confusingly similar to the Trade Mark, as it incorporates the Trade Mark in its entirety.
The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name since it has no right to use the Trade Mark, there is not a lawful use for noncommercial purposes, while the website under the Domain Name is used for the sole purpose of defaming the Complainant's activity and services.
The Complainant contends that there is bad faith registration and use since the Domain Name was registered and is being used in order to attract web users, through the similarity of the Domain Name and the Trade Mark, to the Respondent's website with the specific aim of harming the reputation and disrupting the business of the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has rights in the Trade Mark as the exclusive licensee of the Trade Mark, evidenced by a copy of the license agreement. The Domain Name is confusingly similar to the Trade Mark, which consists of the element "sanlorenzo", which is incorporated in its entirety in the Domain Name. The addition of the generic words "my new" and "yacht" does not avoid confusing similarity of the Domain Name and the Trade Mark (see also WIPO Overview of WIPO Panel views on selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.9). The generic Top-Level Domain ("gTLD") ".com" is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 2.0, paragraph 1.2).
The first element of the Policy is met.
B. Rights or Legitimate Interests
Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent is not commonly known by the Domain Name and has not acquired trademark rights to the Domain Name. The Complainant has not authorized, licensed or otherwise consented to the Respondent's registration and use of the Trade Mark as part of the Domain Name.
The website under the Domain Name contains critical statements on the building process and the quality of a yacht apparently built by the Complainant for a friend of the author of the statements. According to the Complainant, these statements are false and misrepresent the true nature of the finished product.
Under UDRP jurisprudence, the use of a domain name which is confusingly similar to a trademark for a genuine noncommercial free speech website which criticizes the products or services or business practices of the trade mark owner may constitute a legitimate interest in using that trademark as part of the domain name (WIPO Overview 2.0, paragraph 2.4 and cases referred to there). In applying this test here, it is not for the Panel to delve into questions of accuracy as such of the claims made on the website; such questions may rather be subject to expert determination in court proceedings or otherwise. That said, the Panel is troubled by the absence of a response, which is in marked contrast to the extent and specificity of the claims the Respondent makes on the website.
There are many scenarios conceivable which do not call for further explanation from a party to benefit from well-accepted free-speech protections under the Policy. However in the present case, which appears to concern a larger commercial dispute, the Complainant's unrebutted denial of various accusations on the website would in the Panel's view have warranted a certain reaction from the Respondent; the failure of either the Respondent or the apparent beneficial party to even present itself in this case makes it difficult for the Panel to find that the present circumstances fall within the scope of such protections. Indeed, the Panel is left to infer that the Respondent may be using the Domain Name in an unfair effort to exert pressure on the commercial dispute apparently ongoing between the parties.
The Panel notes that the Respondent was properly notified of this proceeding, even through the "contact us" form provided on the website at the Domain Name. While it is not for the Panel to speculate as to why the Respondent or the beneficial party elected not to step forward, on the face of these facts, the Panel does not find the Respondent's use of the Domain Name to be bona fide under the Policy.
The Panel concludes that the second element of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Complainant claims that the pictures on the website to which the Domain Name resolves reflect a product under construction and include misleading or false comments, indicative of the Respondent's intent to tarnish the Complainant's mark based on an incomplete picture of the dealings between the parties. The statements on the website appear to suggest that there is a wide-ranging commercial dispute between the parties. Under these circumstances and for the reasons elaborated above, the Panel would have expected the Respondent or the beneficial party to come forward to rebut the Complainant's bad-faith assertions.
While the Panel fully endorses free-speech protection under the Policy, based on the above considerations in this administrative proceeding (which does not preclude either party from submitting the dispute to a court of competent jurisdiction), the Panel concludes that the Complainant has satisfied the third element of the Policy.
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 <mynewsanlorenzoyacht.com> be transferred to the Complainant.
Wolter Wefers Bettink
Date: October 7, 2016