WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fratelli Guzzini S.p.A. v. Kim Misung

Case No. D2019-0039

1. The Parties

The Complainant is Fratelli Guzzini S.p.A. of Recanati, Italy, represented by Barzanò & Zanardo Milano S.p.A., Italy.

The Respondent is Kim Misung of Incheon, Republic of Korea, self-represented.

2. The Domain Name and Registrar

The disputed domain name <guzzini.com> is registered with Gabia, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2019. On January 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 9, 2019, 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.

On January 10, 2019, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name is Korean. On January 11, 2019, the Complainant requested for English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding.

The Center verified that the 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 in English and Korean of the Complaint, and the proceedings commenced on January 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 5, 2019. The Response was filed with the Center on February 5, 2019.

The Complainant submitted a request for suspension on February 18, 2019. On February 19, 2019, the Center notified the Parties that the proceeding was suspended until March 20, 2019.

On March 8, 2019, the Complainant submitted a request to reinstitute this proceeding. On March 9, 2019, the Center informed the Parties that the proceeding was reinstituted and the Center would proceed to panel appointment.

The Center appointed Andrew J. Park as the sole panelist in this matter on March 19, 2019. 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, Fratelli Guzzini S.p.A., is an Italian based company active in the industrial design field. The Company was founded in 1912 by Mr. Enrico Guzzini and, over the years, has become a worldwide leader in its field. The Complainant’s collections are composed of a wide range of everyday products for the table, kitchen, and home designed by some of the most important minds in the design industry.

The Complainant owns a high number of national and international trademarks, consisting of the GUZZINI word mark, which cover more than 100 jurisdictions, including the Republic of Korea. Due to longstanding use, and the significant promotional and advertising investments, the GUZZINI trademark is well known throughout the world.

The disputed domain name <guzzini.com> was registered on June 9, 2001 by the Respondent and it was never actively used. According to the results from a web archive search, the website which the disputed domain name resolves to is linked to an “under processing” page since its registration.

The Complainant contacted the Respondent in order to purchase the disputed domain name and offered to pay EUR 1,500. However, the Respondent replied with a counterproposal of EUR 100,000. After lengthy negotiations between the Complainant and the Respondent, both Parties agreed on a price of USD 7,000, but the negotiations eventually broke down due to a disagreement on the payment method.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name should be transferred to the Complainant because:

1) the disputed domain name <guzzini.com> is identical and confusingly similar to the Complainant’s trademarks in which the Complainant has rights. The Respondent’s disputed domain name used the Complainant’s trademark GUZZINI in its entirely and the mere addition of the “.com”, generic Top-Level Domain (“gTLD”) may be disregarded when assessing whether a domain name is identical or confusingly similar to the trademark because it is just technically required for a domain name.

2) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant insists that the Respondent is not commonly known by the disputed domain name nor does the Respondent operate a business or other organization under the Complainant’s trademark and does not own any trademark rights in the term that makes up the disputed domain name. The Respondent is not an authorized dealer, agent, distributor, wholesaler or retailer of the Complainant. In addition, GUZZINI has never authorized the Respondent to include its well-known trademark in the disputed domain name nor to make any kind of use of its trademark. The disputed domain name does not resolve to any substantive website content and only displays the message “under processing” which obviously shows that the disputed domain name was never used in connection with a bona fide offering of goods and services nor the Respondent is using it in legitimate noncommercial or fair manners.

3) the disputed domain name was registered and is being used in bad faith. GUZZINI is a fanciful word which is the surname of the Complainant’s founder, and a well-known trademark all over the world including the Republic of Korea. It is deliberately associated with the Complainant, thus, the Respondent could not ignore the Complainant’s rights on the GUZZINI trademark. Also, the disputed domain name was registered long after the filing/registration date of the Complainant’s trademark. It is very probable that the Respondent registered the disputed domain name to prevent the Complainant from reflecting its trademark in a corresponding domain name.

4) the Complainant also argues that the Respondent has no active website affiliated with the disputed domain name and has merely passively held the disputed domain name. In addition, when the Complainant offered to purchase the disputed domain name on a very urgent basis offering EUR 1,500, the Respondent replied asking EUR 100,000 for the price of disputed domain name. These two facts definitely show the Respondent’s bad faith that it is holding the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name and has an intention to sell the disputed domain name for a price in excess of the registration cost for a profit.

B. Respondent

1) The Respondent claims that it acquired the disputed domain name in order to sell GUZZINI products on a website that aims to do business under the name “Korean Pacific”. However, the Respondent was unable to engage in the business, and thus, it has not used the disputed domain name and has just been maintaining it. The Complainant recently showed an intention to purchase the disputed domain name. After several negotiations, the two Parties were in the process of signing a contract, but the negotiations were temporarily suspended because a mutual agreement on the payment method could not be reached. The Complainant subsequently filed this Complaint with the Center.

2) When the Respondent registered the disputed domain name in 2001, the GUZZINI company and its products were not so well known in the Republic of Korea. The Respondent registered the disputed domain name in order to create a website and homepage, and did not have any intention to infringe or damage the trademark of the Complainant. The Respondent also insists that the Complainant does not have authority to exercise all of its rights and to forcefully take away the disputed domain name simply because the Complainant has rights to the GUZZINI trademark.

3) The Respondent has never used the disputed domain name in bad faith and did not obtain it for financial gain. The Respondent is ready to transfer the disputed domain name to the Complainant. The Complainant intentionally created a dispute just prior to the conclusion of a contract for the transfer of the disputed domain name in order to forcibly take it away from the Respondent.

6. Discussion and Findings

A. Language of Proceeding

The registration agreement for the disputed domain name is in Korean. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the proceeding shall be the language of the registration agreement, i.e., Korean.

Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraph 10 of the Rules. In coming to this decision, the Panel has taken the following into account:

1) The Complaint has been submitted in English and it would cause undue delay and expense if the Complainant were required to translate the Complaint and other documents into Korean;

2) During the negotiations between the Parties, the Respondent informed that it had no problems in signing an English contract for the transfer of the disputed domain name, which supports that the Respondent understands the English language.

3) The Response has been submitted in Korean;

4) The Panel is proficient in both English and Korean, capable of reviewing all the documents and materials in both languages and able to give full consideration to the Parties’ respective arguments.

5) The Complainant and the Respondent use different languages, and neither of them understands the language of the other party. The Complainant is Italian and the Respondent is Korean. Therefore English would be the fair language for both Parties.

In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English; (2) accept the Response in Korean; and (3) issue a decision in English.

B. Identical or Confusingly Similar

This element consists of two parts; first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.

The Panel finds that the Complainant has established registered rights in the mark, GUZZINI and that the disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety, and the addition of the gTLD extension “.com” may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182).

For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is identical to the Complainant’s trademarks.

C. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.

Here, the Panel finds that the Complainant has made out a prima facie case.

The Panel finds that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. The disputed domain name does not resolve to any substantive website content and only displays the message “Under Processing”, thus indicating that it is being held passively by the Respondent with no real intention or ability to make a legitimate use of the disputed domain name. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name. Also, there is no evidence that the Respondent has an intention to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel’s view is that these facts may be taken as true in the circumstances of this case and in view of the use of the disputed domain name.

In addition, domain names identical to a complainant’s trademark carry a high risk of implied affiliation, section 2.5.1 of the WIPO Overview 3.0.

Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:

(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

The Complainant claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent violated the Policy, paragraphs 4(b)(i) and (ii), by using the disputed domain name for the purpose of selling or transferring the disputed domain name registration to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name, and by preventing the Complainant, the owner of the trademark or service mark, from reflecting the mark in a corresponding domain name. The Complainant also argues that the Respondent created the disputed domain name which is confusingly identical to the Complainant’s trademark, GUZZINI, with the knowledge of the Complainant’s famous trademarks and its business. In fact, Complainant’s commencement of its business and its first use of the GUZZINI trademark since 1912, far pre-date the registration date of the disputed domain name.

The Respondent raised several unpersuasive, unsubstantiated, and/or immaterial claims that it did not register nor use the disputed domain name in bad faith. The Respondent suggested that it did not know of the existence of the Complainant’s trademarks at the time it registered the disputed domain name, and did not intend to infringe or damage the Complainant’s trademarks. The Panel, however, recognizes the fact that the Complainant’s trademark registrations of the GUZZINI marks are significantly prior to the registration date of the Respondent’s disputed domain name, and the Complainant’s trademarks are well known and have been used since at least 1912. Further, the disputed domain name is identical to the Complainant’s trademarks. In fact, the Respondent acknowledges in its Response to the Complaint that it acquired the disputed domain name in order to sell GUZZINI products, thus, showing that it clearly knew of the GUZZINI trademark and the Complainant’s products.

The Respondent’s assertion that when the Respondent registered the disputed domain name, the Complainant’s GUZZINI trademarks were not well known in the Republic of Korea and that the Respondent did not have any intention to infringe or to damage the trademark of the Complainant is not a valid argument since the Panel finds that the disputed domain name is identical to the Complainant’s GUZZINI trademark. In addition, the Panel notes that the Complainant registered the GUZZINI trademarks in the Republic of Korea (among other jurisdictions) much before the disputed domain name was registered; and the use of a third party’s famous trademark alone and in its entirety in a domain name carries an inherent risk of affiliation with the Complainant’s trademark.

The Panel also confirms that there is no evidence whatsoever that the Respondent is currently using the disputed domain name with a bona fide purpose or that it is commonly known by, has used or has been commonly known under, or has a bona fide intent to use or be commonly known under the disputed domain name or the name. Thus, it is clear that the Respondent registered the disputed domain name with the knowledge of the Complainant’s famous trademarks and its business.

Accordingly, the evidence shows that the Respondent knew of and had sought to take unfair advantage of the identity between the disputed domain name and the Complainant’s trademarks and prevented the Complainant from reflecting the mark in a corresponding domain name in order to resell the disputed domain name to the Complainant for commercial gain. The fact that the Respondent initially sought to sell the disputed domain name to the Complainant for the amount of EUR 100,000 – which is significantly more than the actual cost that was related to register the disputed domain name – further shows the Respondent’s bad faith.

As the conduct described above falls squarely within paragraphs 4(b)(i) and (ii) of the Policy, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii).

7. Decision

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 <guzzini.com> be transferred to the Complainant.

Andrew J. Park
Sole Panelist
Date: April 1, 2019