WIPO Arbitration and Mediation Center


82 s.r.l. v. Chris Grivas

Case No. D2018-1918

1. The Parties

The Complainant is 82 s.r.l. of Venice, Italy, represented by Studio Rapisardi S.A., Italy.

The Respondent is Chris Grivas of Austin, Texas, United States of America (“United States”), self-represented.

2. The Domain Name and Registrar

The disputed domain name <piombo.com> (the “Domain Name”) is registered with pair Networks, Inc. d/b/a pair Domains (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2018. On August 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 27, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 3, 2018.

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 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2018. The Response was filed with the Center on September 23, 2018.

The Center appointed Mathias Lilleengen as the sole panelist in this matter on October 3, 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.

4. Factual Background

The Complainant is the exclusive licensee of the trademark of the Italian fashion designer Massimo Piombo. Massimo Piombo created the PIOMBO trademark for clothing and his first collection of jackets and ties was launched in 1989 in Varazze, Italy.

In 1991, the Complainant filed for the first time for the trademark PIOMBO in Italy. Subsequently the trademark PIOMBO has been registered abroad, such as International trademark PIOMBO No. 861148, registered March 30, 2005, and International trademark PIOMBO No. 759047, registered April 26, 2001.

The clothes are sold in many stores worldwide, including China. The collection has been a constant presence at the Florence Pitti’s worldwide known fashion show. Massimo Piombo and his trademark PIOMBO has been mentioned in several well-known newspapers and magazines such as the Il Giornale, the New York Times and Vogue America. Massimo Piombo has several famous clients, such as Lapo Elkann and Hugh Grant.

The Respondent is a professional airline pilot with an aircraft engineering background.

The Registrar has stated that the Domain Name was originally registered with another registrar on February 18, 1999. It was transferred to the Registrar on December 8, 2003. At the time of filing the Complaint, and at the time of drafting this decision, the Domain Name resolved to the Respondent’s web page providing the Respondent’s resume related to aviation and engineering.

5. Parties’ Contentions

A. Complainant

The Complainant provides trademark registrations and submits that the story of the Complainant’ s trademarks dates back several decades. The Complainant argues that the trademark PIOMBO has become well known in Italy and worldwide. It has reached a global diffusion, through use worldwide, and therefore international fame. The Complainant argues that the Domain Name is identical to the Complainant’s trademarks.

The Complainant argues that the Respondent has no rights or legitimate interests, as the Respondent does not own any rights in the wording “piombo”. The Respondent does not own any trademarks applications or registrations containing the word “piombo”, according to the Complainant’s researches of major databases. To the Complainant it is clear that the Respondent has no right in relation to the Domain Name.

As to bad faith, the Complainant argues that as the Respondent created the registration for the Domain Name on February 18, 1999, the Respondent must or should have known of the Complainant and its trademark as the Italian trademark PIOMBO (Italian registration no.609277) was filed by Massimo Piombo in April 1991. The Complainant states that the trademark was already famous and well-know at that time. Furthermore, the Complainant argues that there was the proven public awareness of the trademark PIOMBO when the Respondent registered the Domain Name in 1999. According to the Complainant, the Respondent has registered the Domain Name with the clear aim of taking advantage of the notoriety of the Complainant’s trademarks, as there “would be no reason otherwise for an American airline pilot and engineer to use an Italian word to identify an American website”. The Complainant support this statement with the fact that the Respondent “travels for work, probably also in Italy, in fact he knows Italian language; then it’s impossible that he did not know the Italian trademark ‘PIOMBO’ which was already well-known 1999”. Finally, the Complainant argues that the fact that the Respondent – indirectly through not responding – rejected the Complainant’s offer to buy the Domain Name for EUR 4,000, is further evidence of bad faith.

B. Respondent

The Respondent argues that the Complainant is not the trademark owner, but a licensee, and thus the Complainant has not proven rights to bring a UDRP, referring to NA PALI SAS v. BWI Domains, Domain Manager, WIPO Case No. D2008-1859.

The Respondent argues he has rights or legitimate interests in respect of the Domain Name. Pursuant to the Respondent, he registered the Domain Name without any knowledge of the Complainant. The Respondent worked with driving wheeled vehicles in 1988. By 1999 he asserts he was “beginning to become well known amongst my peers for my auto racing skills” and receiving the nickname “lead foot”. Being an engineer, the Respondent connected the nickname “lead foot” with the metal “lead.” The Respondent researched the symbol for lead (“Pb”) and learned it stood for the latin “plumbum”. He then looked up the modern Italian translation, which is “piombo”. For many years, the Respondent incorporated an image of the element lead (Pb) from the periodic table on his web site. The Respondent asserts that he “was identifying with the metal called lead - not any particular individual, and definitely not an Italian clothing brand named Piombo”. The Respondent has attached print outs from the Wayback Machine Archive of his website and a search from the United States Patent and Trademark Office search as of September 15, 2018 confirming no trademarks for PIOMBO in the United States.

In addition to the Respondent’s explanation of why he registered the Domain Name, the Respondent points out that “piombo” is the Italian word for “lead” and therefore not something the Complainant can have exclusive rights to. The Respondent refutes that he has any interest in attracting visitors who search for the trademark PIOMBO”. The Respondent argues that a “search via Google or Bing for ‘piombo’ does not return piombo.com anywhere within the first 400 results on Google or 20 pages of results on Bing”. The Respondent asserts that he since “the registration in 1999 and continuing to present day … ha[s] made a bona fide offering of [his] consulting services through [his] piombo.com web site”. The Respondent argues that he has “extensively used piombo.com for email messaging both professionally and personally for over 19 years”.

As to bad faith, the Respondent examines the examples of bad faith in the Policy, and concludes that none of these circumstances are present. The Respondent claims, inter alia, that he did not register <piombo.com> for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant, as he registered it “with the intent of having [his] own personal home on the Internet and to showcase [his] skills”, and even if the Respondent has been asked to sell the Domain Name “a few times over the years by various parties”, he has “never expressed a figure for which” he was willing to sell it. Moreover, the Respondent, according to his own admission, has never reached out to anyone with the intent to sell the Domain Name. The Respondent also stresses that he could not have registered the Domain Name primarily for the purpose of disrupting the business of a competitor, as the Respondent was not aware of the Complainant or its trademark before receiving the Complaint, and that the “Complainant was not a competitor in 1999….nor is the Complainant a competitor now”. With reference to panel decision AVN Media Network, Inc. v. Hossam Shaltout, WIPO Case No. D2007-1011, the Respondent points to the time passed since the registration of the Domain Name, and argues in line with the decision that “the longer the time a disputed domain name has been registered, the more difficult it is for a Complainant to prove bad faith registration”. The latter part of the Response focuses on arguments for why it is not likely that the Respondent had knowledge of the Complainant and its trademark when the Respondent registered the Domain Name. The Respondent quotes from the Esquire magazine article dated September 20, 2012: “It was a year ago, give or take, that Massimo Piombo finally landed in America”, and “Piombo wasn’t sold in America. Not even online”. The Respondent corrects the Complainant’s assertions that the Respondent knew of the Complainant because “he travels for work”. The Respondent points out that he “became an airline pilot only in 2012”, some 13 years after he registered the Domain Name. Moreover, the Respondent travels “primarily within the United States and wholly within North America”. The Respondent asserts that his limited knowledge of the Italian language stems from “a few adult courses in Italian … in the early 2000s, beginning two years after registering piombo.com”, and that he has no knowledge of Italian fashion.

Finally, the Respondent requests a finding of Reverse Domain Name Hijacking as, pursuant to the Respondent, the Complainant has provided no real evidence of bad faith, the Complainant has not established rights to the trademark and the Complainant has not translated all annexes to the Complaint.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established that it has rights in the trademark PIOMBO. It is not disputed that the Complainant has an exclusive license to the trademark. It follows from WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.4.1 that a “trademark owner’s affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint”.

The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name is identical to the Complainant’s trademark. For the purpose of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (gTLD) “.com”, see WIPO Overview 3.0, section 1.11.

The Panel finds that the Domain Name is identical to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

In light of the Panel’s finding under paragraph C below it is unnecessary for the Panel to address this issue.

C. Registered and Used in Bad Faith

The Respondent registered the Domain Name in 1999. The Complainant has not demonstrated that the Respondent had or should have had knowledge of the Complainant at that time. The Complainant has not managed to document widespread use of the trademark in 1999, and that the Respondent registered the Domain Name to take advantage of the Complainant’s trademark, in particular taking into account that the Domain Name means “lead” in Italian.

As to the Complaint’s further arguments for bad faith, the Panel does not find any of them convincing. Without having to decide on every element of the Respondent’s explanation, most of the Complainant’s arguments are rebutted by the Respondent in a credible manner by way of his explanation supported by documented evidence of use.

The Panel finds the Complainant’s arguments for why it was “impossible that he did not know the Italian trademark PIOMBO in 1999” unconvincing. The Complainant’s statement that the Respondent – indirectly through not responding – rejected the Complainant’s offer to buy the Domain Name for EUR 4,000 is further evidence of bad faith, is misconceived. The offer was made by the Complainant, and not solicited by the Respondent.

The Panel agrees with the Respondent that WIPO Overview 3.0, section 3.2.2 sums up the situation in the present case:

“….where the complainant’s mark is not inherently distinctive and it also corresponds to a dictionary term or is otherwise inherently attractive as a domain name (e.g., it is a short combination of letters), if a respondent can credibly show that the complainant’s mark has a limited reputation and is not known or accessible in the respondent’s location, panels may be reluctant to infer that a respondent knew or should have known that its registration would be identical or confusingly similar to the complainant’s mark.”

Finally, the fact that the Respondent has failed to respond to the Complainant’s cease and desist letter is not on its own sufficient to find bad faith.

For the reasons set out above, the Panel concludes that the Complaint does not prove that the Domain Name was registered in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.

D. Reverse Domain Name Hijacking

The Complaint may be labelled as lacking, in particular the fact that it does not mention that the trademark is also a common Italian word, and the fact that some of the annexes were not properly translated from Italian to English. However, the Respondent’s reverse domain name hijacking allegations are not made out. The Complainant has registered trademark rights which significantly predate the registration of the Domain Name, and many of the reasonable defenses provided by the Respondent in its Response were not evident without the Respondent’s explanations. Further, without suggesting that it will always be necessary for a party to respond to letters sent by potential complainant’s, the Panel observes that in this case the Respondent did not answer the Complainant’s cease and desist letter. Even if the Respondent explains it was due to a mistake that he did not receive the said letter, its failure to respond in the context of this case supports the Complainant’s view that the Respondent was acting in bad faith, even if ultimately this Panel disagrees with the Complainant’s contentions on the basis of the full record in front of it. This Panel finds therefore it is insufficient on the record to suggest that the Complainant’s conduct amounted to reverse domain name hijacking.

7. Decision

For the foregoing reasons, the Complaint is denied.

Mathias Lilleengen
Sole Panelist
Date: October 6, 2018