WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SanLorenzo S.p.A. v. Dzhek V Sparro, Hitler Neosilil, Hujuskin Pushkin, Petr Frankenstein
Case No. D2018-2946
1. The Parties
The Complainant is SanLorenzo S.p.A. of Ameglia, Italy, represented by WebLegal Law Firm, Italy.
The Respondent is Dzhek V Sparro of Bogota, Colombia, Hitler Neosilil of the Netherlands, Hujuskin Pushkin of Hong Kong, China, and Petr Frankenstein of Prague, Czech Republic.
2. The Domain Names and Registrars
The disputed domain name <sanlorenzo-italy-yachts-sucks.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (“PDR”).
The disputed domain name <sanlorenzo-sucks.com> is registered with Hostinger, UAB
The disputed domain name <sanlorenzo-yachts-sucks.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com (“OnlineNic”).
The disputed domain name <sanlorenzoyacht-sucks.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com (“Joker.com”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2018. In response to a Request for Amendment, the Center received a first amended Complaint on December 27, 2018. On December 28, 2018, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. Between December 28, 2018, and January 2, 2019, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 9, 2019, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed a second amended Complaint on January 14, 2019.
The Center verified that the Complaint together with the first and second amended Complaints 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 January 16, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 6, 2019.
The Center appointed Ian Lowe, John Swinson, and Nathalie Dreyfus as panelists in this matter on February 25, 2019. The Panel finds that it was properly constituted. Each member of 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.
The disputed domain name <sanlorenzo-sucks.com> was previously the subject of an unsuccessful complaint by the Complainant (SAN LORENZO S.p.A. v. Domain Admin, Privacy Protect, LLC / Hitler Neosilil, WIPO Case No. D2017-2426). For the reasons set out below, the Panel finds i) that this is an appropriate case for re-filing in respect of that disputed domain name; and (ii) that consolidation should be accepted for this Complaint involving four different named Respondents.
4. Factual Background
The Complainant is an Italian shipbuilder founded in 1959. It has two shipyards in Viareggio and La Spezia, Italy, with a workforce of around 1,300 employees. The Complainant generates annual revenues of over EUR 320 million, principally through the sale of motoryachts and superyachts between 24 and 70 metres in length.
By virtue of an exclusive licence agreement with the registered proprietor MPS Leasing & Factoring, the Complainant has exclusive rights in respect of a number of registered trademarks comprising SANLORENZO, including International Trademark number 750437 SANLORENZO registered on November 21, 2000 designating some 44 territories including the Czech Republic and Slovakia. The Complainant is also the registered proprietor of Italy trademark number 754048 SANLORENZO registered on August 20, 1998. The Complainant is the registrant of a substantial number of domain names comprising “sanlorenzo” including <sanlorenzoyacht.com> registered on June 7, 2005 that the Complainant uses for a website promoting its products and services.
The disputed domain names <sanlorenzo-sucks.com>, <sanlorenzo-yachts-sucks.com> and <sanlorenzoyacht-sucks.com> (the “2017 Domain Names”) were registered in January 2017. The disputed domain name <sanlorenzo-italy-yachts-sucks.com> (the “2018 Domain Name”) was registered in January 2018.
The registrant details of all four disputed domain names are on the face of it false. The registrant names comprise historical figures (Hitler and Pushkin) or fictional figures (Dzhek Sparro – an apparent allusion to Jack Sparrow the main character in the Pirates of the Caribbean films – and Frankenstein). The registrant addresses given are variously in “United States, Uganda, Netherlands”, China, Czech Republic and Colombia.
None of the 2017 Domain Names resolves to an active website. The 2018 Domain Name resolves to a website (the “2018 Website”) displaying a three-page account of the background to a dispute, between a friend of the author and the Complainant, as to the quality of a yacht built by the Complainant. Below the heading: “When it comes to Make-up, Scam Lorenzo steals the show…” the author states that “My name is Vojtech, I am 47 years old and I am an IT specialist. I own and manage as well a communications company which handles and provides service for the base stations of the Slovakian GSM operators”. The statement says that the “boat took incredible two years to be completed” and that “as soon as the project started, my friend and his inspectors began to discover the first alarming defects…”. It says that witnessing the troubles “moved me to set up this website to let boat lovers know what was the quality of the San Lorenzo custom‑made boat”. No details of any defects are given on the website. The friend referred to is expressly kept anonymous.
Although none of the 2017 Domain Names presently resolves to an active website, it appears that at the time of preparation of the Complaint in December 2018, they all resolved to websites comprising variously:
- on all three websites, a personal statement by “Vojtech” in substantially identical terms to that appearing on the 2018 Website;
- a “Gallery” of up to 111 photographs of a yacht said to illustrate defects or poor workmanship accompanied by derogatory captions;
- a nine page “True Facts” document headed “MADE TO MEASURE YACHTS OR MADE TO FAIL OWNERS” purporting to describe the Complainant’s approach to building yachts and its attitude to customers, with sub-headings including “get used to stuff-ups”, “get used to unkept promises”, “get used to delays”, “get used to opportunism”, “get used to gobbledegook”;
- a seven page “Q & A” document with disparaging commentary on questions such as “Will there be a quality control team in charge of my project?”, “How long will it take the shipyard to build my boat?” and “Does the shipyard have strict confidentiality rules?”;
- offers to deliver, free of charge, merchandising such as tee-shirts and baseball caps with the legend “When it comes to makeup, SCAMLORENZO Yachts steals the show!”
- photographs of large electronic advertising billboards in Moscow with the same legend;
- advertising links to third party websites: Mahindra cars, Gazprom, and Ferretti Yachts a competitor of the Complainant.
An Internet search appears to disclose images of a number of large advertising billboards displaying advertisements in the name of “sanlorenzo-sucks.com” in Mexico City, Miami and Moscow and in the name of “sanlorenzoyacht-sucks.com” in Mexico City and Miami.
The Complainant has produced an email from a yacht broker in Hong Kong indicating that a potential customer for a San Lorenzo yacht had been shocked by a website at “www.mynewsanlorenzoyacht.com”, which had apparently contained similar content to that listed above in respect of the 2017 Domain Names, and as a result had cancelled his order. The <mynewsanlorenzoyacht.com> domain name was the subject of a successful domain name complaint by the Complainant.
The Complainant relies on positive reviews of its yacht design and construction in Yachting Magazine in March 2011 and on the 26 North Yachts website in 2014. The Complainant also relies on a Preliminary Compliance Survey Report dated September 17, 2015 in respect of a 33.6 metre yacht. This has been produced by the Complainant in an arbitration that the Panel understands to relate to a dispute between the Complainant and the anonymous friend of the author of the various websites referred to. Following inspections over seven days in August 2015 and sea trials on September 1, 2015, the report states that the vessel was found to comply with the Sale/Technical Specification, that the quality of build was equal to or above the standards of other vessels built by the Complainant and that the vessel was seaworthy and fit for private use.
5. Parties’ Contentions
1. Refiling of complaint in relation to <sanlorenzo-sucks.com>
The Complainant previously filed a complaint in respect of one of the disputed domain names, namely <sanlorenzo-sucks.com>. In its decision in WIPO Case No. D2017-2426, the panel considered that “Complainant … has failed to provide any evidence as to why the criticism contained on the website was in fact untrue and to what extent the arguments contained thereon were simply meant to cause damage and were not covered by any reasonable exercise of a right of freedom of speech”. The panel held that “given that the burden of proof of Respondent’s lack of rights or legitimate interests in respect of the disputed domain name rests with Complainant, and having found that Complainant has not proved Respondent’s lack of rights and legitimate interests” the Complaint should be denied.
The Complainant makes the following arguments and submissions relating to the refiling:
1. New facts and evidences will demonstrate the unfounded nature of the “legitimate criticism” use of the websites, only conceived and aimed at disparaging and damaging the Complainant’s image on the web.
2. Each and all of the arguments used and relied on the websites are false and misleading.
The Complainant submits that the above factors justify the re-filing of a complaint.
2. Consolidation of complaints
The Complainant submits that the disputed domain names are subject to common control and the consolidation of the dispute would be fair and equitable to safeguard procedural efficiency and avoid diverging decisions.
The disputed domain names are subject to common control because:
- all of the websites refer to the same author, Mr. Vojtech;
- each of the contact details appears to be deliberately false and misleading; and
- the content or layout of websites corresponding to the disputed domain names are similar.
Paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. The Complainant submits that the above factors demonstrate that the domain names are under the same ownership and control.
The Complainant contends that the disputed domain names are confusingly similar to the Complainant’s SANLORENZO trademarks, that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the Respondent registered and is using the disputed domain names in bad faith within the meaning of paragraph 4(b) of the Policy.
In particular, the Complainant contends that although the disputed domain names all comprise the Complainant’s trademark plus a derogatory term, namely “sucks”, the use the Respondent has made of the disputed domain names is such that it cannot be justified as “noncommercial, genuinely fair, and not misleading or false” as discussed in Section 2.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Complainant argues that the disputed domain names are used by the author for the sole and specific purpose of disseminating untruthful information aimed at disparaging and damaging the Complainant’s image on the Internet and in the marketplace. It states that the information published on the offending websites, disparaging for example the approach of the Complainant to charging, its use of sub-contractors and the quality of its design and build are all false. The use of photographs of a yacht in fact under construction falsely suggests that yachts are delivered in a poor state and require frequent repair and intervention.
The Complainant also claims that the nature of the unfair and misleading campaign waged by the Respondent is apparent from its provision of merchandise such as basketball caps and tee-shirts carrying defamatory slogans and its posting of prominent advertisements on billboards in Mexico City, Moscow and Miami.
Finally, the Complainant points to the Survey Report on the yacht the subject of the dispute supposedly giving rise to the campaign by the Respondent that confirmed the quality of the build of the yacht at the time of preliminary handover to the purchaser.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Refiling of complaint in relation to <sanlorenzo-sucks.com>
A refiled complaint for the purposes of the Policy is a complaint concerning a domain name, involving the same complainant and respondent, that was the subject of a previous UDRP complaint denied by the prior panel. See The Trustees of the University of Pennsylvania v. Moniker Privacy Services, Motherboards.com, WIPO Case No. D2007-0757 (and cases cited therein).
Prior panels’ decisions have set principles for allowing refiled complaints including Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703, and Creo Products, Inc. v. Website In Development, WIPO Case No. D2000-1490: “Panels have accepted refiled complaints only in highly limited circumstances such as (i) when the complainant establishes that legally relevant developments have occurred since the original UDRP decision, (ii) a breach of natural justice or of due process has objectively occurred, (iii) where serious misconduct in the original case (such as perjured evidence) that influenced the outcome is subsequently identified, (iv) where new material evidence that was reasonably unavailable to the complainant during the original case is presented, or (v) where the case has previously been decided (including termination orders) expressly on a ‘without prejudice’ basis” (WIPO Overview 3.0, section 4.18).
If a complainant wants to refile a complaint, it must prove that “the refiled complaint constitutes a ‘truly new action’ under the Policy, and not just an application for readjudication of the previous complaint” (see The Trustees of the University of Pennsylvania v. Moniker Privacy Services, Motherboards.com, WIPO Case No. D2007-0757).
Although the Complainant does not expressly say so in terms, the inference is that, at the time of the filing of the original complaint in WIPO Case No. D2017-2426, the Complainant was unaware that the disputed domain names <sanlorenzo-yachts-sucks.com> and <sanlorenzoyacht-sucks.com> had been registered in the same month as <sanlorenzo-sucks.com> (January 2017). It appears that the cease and desist letter sent on behalf of the Complainant in relation to <sanlorenzo-sucks.com> prior to the original complaint made no mention of the other two disputed domain names and no action was taken at that time in relation to them. The Panel can only speculate as to how readily investigations at that time might have disclosed the registration of the other two 2017 Domain Names.
Accordingly, it appears to the Panel that, since the original complaint was denied, the Complainant has discovered:
a) the registration of the 2018 Domain Name and the registration of the other two 2017 Domain Names;
b) the use (as at the time of the preparation of this Complaint) of all four domain names for websites as described above;
c) the registration of all four disputed domain names in false names comprising historical or fictional figures; and
d) evidence as described below that all four disputed domain names are under common control.
The Panel considers that these factors, in particular the registration of the 2018 Domain Name (registered after the filing of the first case), do together constitute a sufficient change of circumstances justifying the refiling of a new complaint in respect of the disputed domain name <sanlorenzo-sucks.com> and that the new facts and circumstances outlined in the present Complaint are relevant to the issue of the Respondent’s absence of rights or legitimate interests as well as bad faith registration and use of the disputed domain name <sanlorenzo-sucks.com>. Moreover, the Respondent has chosen not to respond to the Complaint or to make any submissions that this Complaint should not be accepted. This is also a factor that this Panel considers to be relevant to this issue.
For the foregoing reasons, the Panel accepts the refiled Complaint in respect of <sanlorenzo-sucks.com>.
B. Consolidation of complaints
The Complaint has been filed against multiple Respondents and relates to multiple domain names. Paragraph 3(c) of the Rules states that “the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”. Paragraph 10(e) of the Rules gives the Panel discretion to decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and the Rules.
In considering whether to consolidate a complaint, panels look at whether:
- the domain names or corresponding websites are subject to common control; and
In assessing common control, panels have considered a range of factors to determine whether such consolidation is appropriate. These include similarities in or other relevant aspects of the registrants’ identities, the nature of the marks at issue and naming patterns in the disputed domain names.
In this case, each of the disputed domain names includes the Complainant’s trademark with the word “sucks”. The registrant details associated with all four disputed domain names appear to be false as they comprise historical figures and fictional figures. Whilst the registrant name and location are different for each disputed domain name, the Panel finds that is more than likely that the disputed domain names are under the control of the same registrant. Previous panels have found that common control or ownership can been found in circumstances indicating that a single person or entity has registered multiple domain names using fictitious names (see Yahoo! Inc. v. Yahoosexy.com, Yahoo-sexy.com, Yahoosexy.net, Yahousexy.com and Benjamin Benhamou, WIPO Case No. D2001-1188).
None of the 2017 Domain Names resolves to an active website. However, as stated above, at the time the Complaint was filed, the websites at each of the 2017 Domain Names had similar content and included a personal statement by Vojtech, a gallery made up of images of the yacht, a page of “True Facts”, offers to supply merchandise and advertising links to third parties. The 2018 Domain Name resolves to a website about the quality of a yacht built by the Complainant and contains the same personal statement by Vojtech as on the websites associated with the 2017 Domain Names. There are clearly common elements between the content, or former content, on the website at the disputed domain names.
Accordingly, this Panel, having regard to all relevant circumstances, concludes that the consolidation of the multiple domain name disputes asserted by the Complainant against the Respondents is consistent with the Policy and Rules.
C. Burden of proof
For this Complaint to succeed in relation to the disputed domain names the Complainant must prove that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
D. Identical or Confusingly Similar
The Complainant has uncontested rights in its SANLORENZO trademarks (the “Marks”), both by virtue of its exclusive licence of trademark registrations and its own trademark registration and as a result of the goodwill and reputation acquired through its use of the Marks over many years. The disputed domain names all comprise the entirety of the SANLORENZO mark together variously with the words “yacht” or “yachts”, “italy” and “sucks”. In the view of the Panel, the addition of these words does not detract from the confusing similarity of the disputed domain names to the Marks. Accordingly, the Panel finds that each of the disputed domain names is confusingly similar to a trademark in which the Complainant has rights.
E. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that, absent any justification for using the disputed domain names for protest or criticism sites, the Respondent could have no rights or legitimate interests in respect of the disputed domain names. To the extent that the 2017 Domain Names do not resolve to an active website, the Panel cannot see that the Respondent could argue that it does have any rights or legitimate interests in respect of them. The issue for the Panel is whether given the prior use made of the 2017 Domain Names and the current material on the website associated with the 2018 Domain Name, it could be said that the Respondent does have such rights or legitimate interests.
As the WIPO Overview 3.0 discusses, to justify the registration of a domain name comprising a trademark of the complainant for a criticism site, it is necessary for the use of the domain name to be prima facie noncommercial, genuinely fair, and not misleading or false. In view of the commonality and obvious connection between all the disputed domain names, the Panel is entitled to look at the material put forward by the Complainant in the round and make a common finding in respect of all of them. The Respondent has chosen not to respond to the Complaint or to take any steps to counter the prima facie case established by the Complainant or to counter the strong assertions on the part of the Complainant as to the false, misleading and defamatory nature of the allegations made by the Respondent in the available materials.
On balance, the Panel considers that the use made of the disputed domain names cannot be justified, taking into account: the nature and scale of the campaign waged by the Respondent on the various websites in the past; the billboard advertising; the supply of derogatory merchandise; the anonymity of the underlying critic; the false contact details provided for the registrants of the disputed domain names; the advertising links on the websites including to a competitor of the Complainant, Ferretti Yachts, and other well-known brands, Mahindra and Gazprom; and the absence of any response to the Complaint by the Respondent. Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the disputed domain names.
F. Registered and Used in Bad Faith
It is axiomatic that the Respondent had the Complainant and its rights in the Marks in mind when the disputed domain names were registered. It follows from the Panel’s reasoning above that the use of the disputed domain names, clearly with a view to disrupting and damaging the Complainant’s business, rather than to simply air the Respondent’s grievance, amounts to bad faith use. The inclusion of advertising links on the websites of the disputed domain names, including to a competitor of the Complainant, Ferretti Yachts, and other well-known brands, Mahindra and Gazprom, further supports a finding of bad faith use. The Panel therefore also finds that the disputed domain names were each registered and are being used 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 names, <sanlorenzo-italy-yachts-sucks.com>, <sanlorenzo-sucks.com>, <sanlorenzo-yachts-sucks.com>, and <sanlorenzoyacht-sucks.com>, be transferred to the Complainant.
Date: March 22, 2019