WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cereria Terenzi Evelino S.r.l. v. Perfect Privacy, LLC / Milen Radumilo
Case No. D2016-1755
1. The Parties
The Complainant is Cereria Terenzi Evelino S.r.l. of San Giovanni in Marignano, Italy.
The Respondents are Perfect Privacy, LLC of Jacksonville, Florida, United States of America ("United States") / Milen Radumilo of Bucharest, Romania.
2. The Domain Name and Registrar
The disputed domain name <tizianaterenzi.com> (the "Domain Name") is registered with EuropeanConnectiononline.com LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 26, 2016. On August 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 29, 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 September 1, 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 September 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 26, 2016.
The Center appointed Gareth Dickson as the sole panelist in this matter on September 28, 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 has been producing candles for over 40 years and is the proprietor of a large number of trade mark registrations around the world in Classes 3 and/or 4 of the Nice Classification, including for perfumery, essences and fragrance products. The majority of these registrations are for device marks that incorporate the words "TIZIANA TERENZI" together with other distinguishing elements. A smaller number of registrations include the words "TIZIANA TERENZI" with only minimal ornamentation. Each of the trade marks referred to in the Complaint was registered before April 5, 2016. In that context, the Complainant owns inter alia the European Union Trade Mark ("EUTM") registration no. 011200961 for TIZIANA TERENZI, registered on February 19, 2013.
An Internet search for the words "TIZIANA TERENZI" returns results, annexed to the Complaint, for a variety of products within the classes of goods for which the Complainant's mark is registered, which bear the TIZIANA TERENZI mark. None of the results refers to the Respondent.
The Complaint was the registrant of the Domain Name before its registration lapsed in early 2016.
The Domain Name was registered on April 5, 2016. The Domain Name resolves to a website displaying
pay-per-click links some of which relate to goods within the specifications for which the Complainant's marks are registered and which the Complainant also sells under its TIZIANA TERENZI marks.
5. Parties' Contentions
Identical or confusingly similar
The Complainant contends that the Domain Name is identical or confusingly similar to its trade mark registrations and that it uses those marks to sell goods both online and in brick-and-mortar shops all around the world.
The Complainant also submits that "Tiziana Terenzi" is the personal name of one of its two owners, although it does not specifically assert that that fact gives it any rights in any particular trade mark.
Rights or Legitimate Interests
The Complainant says there is no evidence that the Respondents are using, or are preparing to use, the Domain Name in connection with the bona fide offering of goods or services. Instead, its evidence shows that the Domain Name is being used to point to portal pages that list advertisements for and links to other commercial websites, some of which relate to goods within the specifications for which the Complainant's marks are registered and which the Complainant also sells under its TIZIANA TERENZI marks. Other links on these pages advertise and direct visitors to e.g., dating sites.
The Complainant alleges that the Domain Name is not making a legitimate noncommercial use of the Domain Name, since the links and advertisements on the website to which the Domain Name points appear to be commercial i.e., for profit.
The Complainant says it is "evident" that the use of the Domain Name is not a fair use and asserts that only it is known in the market through its mark comprising the Domain Name.
Finally, although the Domain Name is advertised for sale through "www.sedo.com", the Complainant has provided copies of correspondence in which it tried to contact the Respondents in order to purchase the Domain Name, but to which the Complainant states it received no response.
Registered and Used in Bad Faith
The Complainant asserts that the Domain Name "has to be considered as having been registered and used in bad faith".
It elaborates on its contention that the Domain Name has been "used" in bad faith stating that the Respondents intentionally attempt to attract Internet users to their online presences by creating a likelihood of confusion with the Complainant's TIZIANA TERENZI mark, and that they do so for commercial gain.
The Panel takes this to also support an argument by the Complainant that the Domain Name was "registered" in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under Paragraph 4(a) of the Policy, the Complainant bears the burden of proving 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 Respondents have 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.
These criteria are cumulative. The failure of the Complainant to prove any one of them means the Complaint must be denied.
A. Identical or Confusingly Similar
It is not necessary for the Panel to find that the Domain Name is identical or confusingly similar to every mark submitted by the Complainant in support of its Complaint. Certainly, some of the marks submitted by the Complainant are highly decorative and include distinctive textual elements beyond the words "Tiziana Terenzi". Nonetheless, it is sufficient that the Domain Name is confusingly similar, for the purposes of the UDRP, to the textual elements of such marks; moreover it is plainly identical to the Complainant's EUTM word mark registration no. 011200961 for TIZIANA TERENZI, registered on February 19, 2013, in Classes 3 and 4.
The Complainant's evidence of its use of the TIZIANA TERENZI mark around the world suggests that it may also have unregistered rights in the TIZIANA TERENZI mark. However, the Panel does not need to determine that issue.
The Panel finds that the Domain Name is confusingly similar to the Complainant's TIZIANA TERENZI trade mark, in which the Complainant has registered rights inter alia by virtue of EUTM registration no. 011200961.
B. Rights or Legitimate Interests
Certain uses of a domain name by a respondent may not contravene the UDRP if they are made in relation to a domain name comprised exclusively of dictionary terms, even if those elements correspond to a trade mark. Those same uses, however, may demonstrate a lack of rights or legitimate interests in respect of a domain name where the domain name is comprised exclusively of a trade mark in which the Respondent has no rights or legitimate interests. Such uses include monetizing the domain name through pay-per-click links or offering it for sale (whether or not the registrant entertains a complainant's offer to purchase the domain name).
The Domain Name is not comprised of dictionary terms. Conceivably, it could be used to refer to a personal name, but there is no evidence before the Panel that the Domain Name is being used for someone with the name "Tiziana Terenzi" nor is there any evidence that the Respondents are known by that name.
Rather, the Complainant's evidence demonstrates that the Respondents are using a domain name comprised solely of a third party's trade mark, without that third party's authorization, for sponsored advertising of goods similar to the goods for which that trade mark is registered, and are offering that domain name for sale to third parties.
There is no evidence that the Respondents intend the Domain Name to be understood in a manner unassociated with the Complainant. On the contrary, the evidence before the Panel is that the Domain Name is intended to be, and is, understood as a reference to the Complainant and the goods it supplies by reference to the TIZIANA TERENZI mark.
The Respondents have not advanced any argument that they have a right or legitimate interest in engaging in such use of the Complainant's mark nor is any such a right or legitimate interest otherwise apparent from the facts and circumstances of the case.
The Panel finds that the Domain Name is comprised exclusively of and exploits a trade mark in which the Respondents have no rights or legitimate interests. In the absence of any evidence that the Respondents have an independent right or legitimate interest in that exploitation, this Panel concludes that the Respondents have no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Respondents' use of the Domain Name makes an unauthorized use of the Complainant's trade mark TIZIANA TERENZI in relation to goods for which that trade mark is registered and used all around the world. The failure of the Respondents to acknowledge the Complainant's rights, or to amend their use of the Domain Name to take account of those rights once they had been made aware of them, is prima facie evidence that the Respondents are using the Domain Name in bad faith. The Respondents have not rebutted this evidence.
Regarding registration in bad faith, the unchallenged evidence before the Panel is that: the Respondents registered the Domain Name shortly after the Complaint lost control of it; the Domain Name refers exclusively to the Complainant and has been used in such a manner by the Respondents from the outset, at all times without the Complainant's authorization and without any independent right or legitimate interest in such use; and the Respondents did not change their use of the Domain Name despite having been aware of the Complainant's rights in its trade mark and its objection to the Respondents' use of the Domain Name. The clear inference is that the Respondents registered the Domain Name for the purposes of exploiting it in the manner found by this Panel to amount to a bad faith use of the Domain Name.
The Panel finds that the Respondents' unauthorized use of the Complainant's trade mark in the Domain Name, in relation to goods for which that trade mark is registered and used all around the world, amounts to use of the Domain Name in bad faith. The Respondents' registration of the Domain Name in order to use it in bad faith amounts to a registration of the Domain Name 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 disputed domain name <tizianaterenzi.com> be transferred to the Complainant.
Date: October 7, 2016