WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pier Giorgio Andretta v. Corrado Giubertoni
Case No. D2016-2496
1. The Parties
Complainant is Pier Giorgio Andretta of Charlotte, North Carolina, United States of America, represented by Convey Srl, Italy.
Respondent is Corrado Giubertoni of San Giorgio di Mantova, Italy, self-represented.
2. The Domain Name and Registrar
The disputed domain name <giordana.com> is registered with Register.IT SPA (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2016. On December 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 12, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceedings commenced on December 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2017. The Response was filed with the Center on January 9, 2017.
The Center appointed Roberto Bianchi as the sole panelist in this matter on January 20, 2017. 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
Since 1980, Complainant Pier Giorgio Andretta produces clothing and apparel for cycling, including jerseys, pants, leg warmers, arm warmers, caps and gloves under the GIORDANA trademark, named after Complainant’s daughter, Ms. Giordana Andretta.
Complainant owns, inter alia, the following trademark registrations for GIORDANA:
- International Trademark: GIORDANA Registration No. 529214. Registration Date: September 20, 1988. (Basic application Italy, May 23, 1988. Basic registration Italy, September 20, 1988, Registration No. 496632), covering cycling apparel in International Class 25.
- Italy: GIORDANA, Registration No. 835150, Registration Date: January 31, 2001, filed on November 19, 1998, renewal registered on September 28, 2010, covering goods in International Class 25.
- International Trademark: GIORDANA, Registration No. 1144934, Registration Date: November 13, 2012, Basic application Italy PD2012C000762 filed on July 9, 2012, covering cyclists’ clothing, etcetera, in International Class 25.
Gita Sports, Ltd., a company incorporated in North Carolina, United States, whose President is Complainant Pier Giorgio Andretta, owns the following marks:
- United States: GIORDANA, Registration No. 1435739, Registration Date: April 7, 1987, filed on September 10, 1986, covering sportswear, etcetera, in International Class 25.
- United States: GIORDANA, Registration No.1573521, Registration Date: December 26, 1989, filed on May 4, 1989, covering sportswear, etcetera, in International Class 25. First Use / First Use in Commerce: January 1, 1981. Registered and renewed on November 28, 2009.
The disputed domain name was registered on December 30, 1999. The disputed domain name resolved to a website dedicated to a dog.
Respondent is an amateur cyclist, and a member of the Alè Cycling Team. This team is sponsored by A.P.G. SRL, an Italian company that markets cycling clothing and apparel identified by the ALÈ mark.
The disputed domain name was the object of a UDRP proceeding between Complainant and the previous registrant of the disputed domain name (Pier Giorgio Andretta v. Federico Zecchetto, WIPO Case No. D2014-2244).
5. Parties’ Contentions
A. Complainant
Complainant contends as follows:
Respondent Mr. Corrado Giubertoni is an enthusiast cyclist, and is in strict and direct relation with the company A.P.G. SRL, the former owner of the disputed domain name. Mr. Giubertoni, as of June 9, 2015, was listed on the official website of A.P.G. SRL, “www.aleteam.it”, as member of the Alè Cycling Team. His profile as a cyclist of the Alè team was online and accessible via the said website of A.P.G. SRL sponsored team (Complaint, Annex 9 – (p. 2)), and he still appears on the Facebook page of the Alè Cycling Team as one of its members (Complaint, Annex 9 – (p. 3, 4)). Further, Complainant claims that Respondent’s wife and sister-in-law are employed by A.P.G. SRL. The disputed domain name hosts a website apparently dedicated to Respondent’s dog, named “Giordana”. The website contains metadata reflecting the law firm representing the respondent in the prior UDRP proceeding.
The disputed domain name is identical or confusingly similar to Complainant’s registered trademark GIORDANA, denomination and domain names in which Complainant has rights. Respondent lacks any rights or legitimate interests in the disputed domain name since. Even assuming Respondent’s dog actually is named “Giordana”, which Complainant finds quite unlikely, in his position Respondent certainly knew or could not be unaware that GIORDANA is a brand of cycling apparel, well known all over the world. ALÈ is a brand competing with the GIORDANA mark, which is well known to all cycling enthusiasts and professionals, as Mr. Giubertoni appears to be. ALÈ is a brand created in May 2013 by Mr. Federico Zecchetto of A.P.G. SRL, the former distributor of GIORDANA apparel, and former owner of the disputed domain name.
Respondent is not offering goods or services on the disputed domain name. Rather, the resolving website shows a few images and information about Respondent’s alleged domestic animal copied entirely from Wikipedia, including even the footnote numbers. Respondent has acquired no trademark or service mark rights in the denomination “Giordana”, and has not been commonly known by the disputed domain name. Respondent, either as an individual, corporation or as other organization has never become known as “Giordana”. As stated on the resolving website of the disputed domain name, “Giordana” is the alleged name of Mr. Giubertoni’s domestic animal.
Respondent is making an illegitimate use of the disputed domain name. The content uploaded on the resolving website constitutes a mere gimmick that Respondent has put in place in the attempt to pretend he has a legitimate interest. He is concealing his real purpose: misleadingly diverting consumers looking for GIORDANA apparel to a website that formerly was the official website of the GIORDANA brand and a milestone for worldwide cycling enthusiasts and that has nothing to do with cycling apparel anymore. This is a blatant case of purposeful diversion of potential consumers as well as deliberate tarnishment of the GIORDANA trademark. In sum, Respondent’s close relationship with Complainant’s competitor A.P.G. SRL as well as with its brand “Alè”, and related cycling team along with the contents uploaded by Respondent on the “www.giordana.com” website, do not persuade Complainant that Respondent acquired the disputed domain name in order to upload sentences from Wikipedia interspersed among pictures of a domestic animal. The website has never been updated since June 9, 2015, and rather shows Respondent’s precise purpose of keeping the disputed domain name in his possession to prevent the GIORDANA brand owner to use it for commercial purposes, while causing confusion in the potential customers of GIORDANA as well as damaging Complainant’s mark, goodwill and reputation.
Respondent both registered and is using the disputed domain in bad faith. The disputed domain name was registered primarily for disrupting the business of a competitor, and in order to prevent Complainant from reflecting his mark in a corresponding domain name.
B. Respondent
Respondent contends the following:
The protection of Complainant’s five figurative trademarks protecting a representation of the wording “giordana” in stylized characters is limited to such particular graphic representation, and does not cover the wording per se. In order to have protection for the wording “giordana” per se, the applicant would have to file word trademarks instead of, or in addition to, figurative trademarks. On the website “www.giordana.com” Respondent is using the wording “giordana” with characters completely different from the fancy characters protected by Complainant’s figurative trademarks. Also, Complainant’s figurative trademarks listed are limited to sport (cycling) clothing in Class 25. Thus, the protection conferred by such trademarks is valid in such field only. Respondent uses the wording “giordana” in a field completely different from cycling clothing.
Respondent is using the disputed domain name to celebrate a dog having the name “Giordana”. “Giordana” is a real dog and, even if quite old, is still alive. The name “Giordana” has been derived from the family name of the famous basketball player Michael Jordan and is an Italianization of the American family name “Jordan” (“Giordano” for males and “Giordana” for females). In other words, the dog has been named “Giordana” after the famous basketball player Michael Jordan as a tribute to “his airness” (one of the nicknames of “Michael Jordan”). The dog is commonly known by the disputed domain name even if no trademark or service mark rights have been acquired because there is not any intention of any commercial use of the dog.
Respondent is making a legitimate noncommercial and fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademarks at issue: first of all the domain name <giordana.com> is used in a field far from the products protected by the trademarks at issue (celebrating a dog versus sporting clothes). Furthermore, the use of the disputed domain name does not include any of the stylized characters protected by the trademarks at issue. Finally, using the disputed domain name for celebrating a dog cannot tarnish a trademark for sporting clothes in any way. No one would associate the dog to a company selling sporting clothes. In addition, a dog undisputedly transmits a “nice feeling”.
The current use of the disputed domain name cannot “misleadingly divert consumers looking for GIORDANA apparel”. A customer looking for such apparel in a search engine like Google is correctly directed to Complainant’s official website at “www.giordanacycling.com” without any real possibility of wrongly being misdirected to the website of Respondent. Even in the very remote case that a customer looking for GIORDANA apparel would look at the website at the disputed domain name <giordana.com>, such customer would immediately realize that the dog “Giordana” does not sell cycling apparel and does not have anything to with Complainant. In this very unlikely situation, Respondent cannot see how some pictures of a cute dog could tarnish in any way the brand GIORDANA. The dog gives a clear positive feeling and does not have any reasonable connection with the clothing brand GIORDANA.
There is no connection between the use of the disputed domain name (i.e., the website “www.giordana.com”) and the ALÈ clothing brand. A customer wrongly looking at the website “www.giordana.com” cannot find any, even remote, connection to the ALÈ clothing brand.
Respondent does not act in opposition to Complainant. Respondent is making a legitimate noncommercial and fair use of the disputed domain name, without intent for commercial gain. Respondent clearly is not creating any confusion in the customers of Complainant, is not criticizing or even mentioning in any way Complainant, its brand or other brands, is not making any reference to the sport (cycling) clothing, is not using at all any trademark of Complainant, and is not weakening Complainant, who owns 39 other domain names.
Complainant alleges the presence of bad faith in the fact that Respondent is the owner of two domain names, <giordana.com> and <giordana.it> (both domain names direct to the same website). First, it is quite common, at least in Italy, to have the same domain name with the country-code Top Level (“ccTLD”) “.it” and with the Top-Level Domain (“TLD”) “.com”. Thus, Respondent is making a legitimate noncommercial and fair use of such domain names. Furthermore, Harcourt, Inc. v. Jeff Fadness, NAF Claim No. 95247 requires “several infringing domain names” to establish a pattern of conduct, while in this case there are just two (not “several”) domain names. Respondent does not prevent Complainant from reflecting the mark in a corresponding domain name. Respondent has not engaged in a pattern of such conduct.
Respondent is not in competition with Complainant. Respondent has never attempted to use or actually used the domain name for any sort of commercial purpose. Respondent has never tried to sell to anybody the disputed domain name. Respondent has never offered to sell the disputed domain name. Respondent has never contacted Complainant in any way. There was not any form of contact between Respondent and Complainant.
The use of the disputed domain name <giordana.com> cannot disrupt Complainant’s business. When searching with Google the name “Giordana”, the first result is the website at “www.giordanacycling.com” as shown in the Google search reproduced in Annex 8 to the Response. It is clear beyond any reasonable doubt that a customer looking for GIORDANA clothing, even by searching the word “Giordana”, is immediately directed to the website at “www.giordanacycling.com” without any real possibility of wrongly being misdirected to the website of Respondent. Therefore, it is clear beyond any reasonable doubt that the use of the disputed domain name for celebrating a dog does not prevent Complainant from reflecting the mark in a corresponding domain name, does not disrupt Complainant’s business, and does not attract for commercial gain, Internet users to Respondent’s website.
In 1999, the Italian company APG S.r.l. registered the disputed domain name, when APG S.r.l. had a license from Complainant for the exploitation of the clothing brand GIORDANA. Such license ended at the end of 2014. After such date, APG S.r.l. ceased any use of the name “Giordana”. Under the contracts signed between APG S.r.l. and Complainant, APG S.r.l. had no obligation to transfer the ownership of the disputed domain name to Complainant. Thus, APG S.r.l. decided to give the ownership of the disputed domain name to Respondent, who was interested in using such domain name for celebrating the dog “Giordana”. As correctly stated in the Complaint, Respondent is a cyclist and knows APG S.r.l. and for this reason, Respondent asked and obtained the disputed domain name from APG S.r.l.
The key evidence of Complainant is a weak and noncommercial relationship between Respondent and APG S.r.l. Such evidence cannot establish beyond any reasonable doubt bad faith of Respondent. Giving a dog the name “Giordana” cannot be per se illegal or forbidden, even if the same name is used for a brand of cycling apparel. The brand GIORDANA clearly is not a famous and well-known trademark having a wider protection, but is clearly confined in the specified field of cycling clothing. Even if Respondent knew the brand, he did not anything wrong in celebrating a dog with the same name.
Complainant alleges that Respondent “is in strict and direct relation with the company A.P.G. SRL”. This statement is completely misleading: Respondent is a member of an amateur cycling team sponsored by APG S.r.l., and does not have any managing position in such amateur cycling team. Thus, Respondent does not have any commercial or business relationship with APG S.r.l.
No tarnishment of the brand GIORDANA can reasonably be found. The website “www.giordana.com” does not link pornographic images, does not refer to unrelated trademarks and, does not contain any criticism or other comment about the brand GIORDANA.
6. Discussion and Findings
A. Refiling
The disputed domain name was previously the subject of Pier Giorgio Andretta v. Federico Zecchetto, supra. Paragraph 4.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that a refiled case concerns the complainant submitting a second complaint involving the same domain name(s) and the same respondent(s) as in an earlier complaint that had been denied.
While, as described below in greater detail, there are many connections between Respondent in the present case and A.P.G. SRL, the company affiliated with the respondent in the prior case, the disputed domain name registration has been registered by a different individual and Respondent affirms that it requested and obtained the disputed domain name from the prior registrant for the purpose of a website celebrating a dog allegedly named “Giordana”.
Under the circumstances, the Panel is satisfied that the present case concerns a new Respondent and that these proceedings do not constitute a refiled case.
B. Identical or Confusingly Similar
Complainant has evidenced to the satisfaction of the Panel that he both as an individual, and also through Gita Sports Ltd., a company incorporated in North Carolina, United States of America, owns several trademark registrations the GIORDANA mark, covering clothing and apparel in International Class 25. See section 4 above.
The Panel notes that the disputed domain name contains Complainant’s mark in its entirety, just adding the Top-Level Domain “.com”. Accordingly, the Panel finds that the disputed domain name is identical to Complainant’s mark. The first requirement of the Policy is met.
C. Rights or Legitimate Interests
Complainant denies that any of the circumstances listed under Policy paragraph 4(c) be present in this case.
Policy paragraph 4(c)(i) appears to be inapplicable, because on the “www.giordana.it” website, to which the disputed domain name redirects, there is no offering of any goods or services but just some pictures of a dog allegedly called “Giordana” and some text about this dog, and about the dog’s breed.
The question here rather is whether this use of the disputed domain name does qualify, as contended by Respondent, as a fair, noncommercial use under Policy paragraph 4(c)(iii). Respondent contends that it does, since the corresponding website contains pictures of his dog named “Giordana”, a text explaining Respondent’s purpose, as well some general information about the Alano breed. Together with its Response, Respondent also submits several photos showing a dog lying next to several pages of the Complaint.
In the opinion of the Panel, the photos on the website at the disputed domain name do show that the photographed dog existed when Respondent received the Complaint, but do not demonstrate that Respondent owned this (or any other) dog at the time of registering the disputed domain name, or that the name of the dog is “Giordana”.
In this regard, the Panel believes that Respondent is the party in the best position to show any such circumstances. See WIPO Overview 2.0, paragraph 2.1 (“Is the complainant required to prove that the respondent lacks rights or legitimate interests in the disputed domain name?” Consensus view: “… A complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”)
In addition, the Panel notes that according to Rules paragraph 5(b)(i) a respondent “shall respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name” and “(ix) annex any documentary or other evidence upon which the Respondent relies, together with a schedule indexing such documents.”
In other words, Respondent should support with appropriate evidence his allegation that he owns a pet with a name identical to a third-party mark. In the view of the Panel, “appropriate evidence” in this context includes vaccination certificates and/or other documents from the local authorities, kennel clubs or cynological associations, veterinarian records, affidavits by Respondent’s neighbors, etcetera, showing that the name of Respondent’s dog is “Giordana” and allowing to determine the date when Respondent acquired the dog.1 This Panel would not like this decision to encourage future respondents to conveniently acquire and/or rename animals - of any kind in the animal kingdom – just to improve their position in domain name disputes, i.e.,giving their pets names ex post, to use them as evidence of rights or legitimate interests.2
In any case, the mere allegation that a dog’s name is “Giordana” does not confer in and by itself any rights or legitimate interests in the disputed domain name. (It should be noted that the Panel is not addressing Respondent’s right to give his pet any name of his choice, including “Giordana”. As a prior panel said, “the right to keep the name of his dog is not at issue in the present proceedings”. See Finter Bank Zurich v. Gianluca Olivieri, WIPO Case No. D2000-0091.)
Respondent also contends that his dog is commonly known by the disputed domain name, but as stated he does not support this contention with any evidence.
Respondent failed to submit any evidence to prove the only circumstance upon which that party relies to prove rights or legitimate interests. Accordingly, the Panel finds that the second requirement of the Policy is met.
D. Registered and Used in Bad Faith
In the opinion of the Panel, Respondent’s contention that he is using the disputed domain name in a corresponding website for “celebrating” a dog allegedly named “Giordana”, i.e., in good faith, deserves no credibility since Respondent failed to submit any concrete evidence that he owns a dog, and that the dog’s name is “Giordana”. See section 6(B) above. Moreover, the Panel notes that on the “www.giordana.it” website, to which the disputed domain name redirects, it is stated that Respondent’s pet dog was born in August 2005. The Panel notes that Complainant owns at least two registrations in his own name for the mark GIORDANA that predate the alleged date of birth of the dog by several years: International Trademark Registration No. 529214, with Registration Date September 20, 1988, and Italian Registration No. 0000835150, with Registration Date January 31, 2001. In addition, Gita Sports, Ltd., a company incorporated in North Carolina, United States, whose President is Complainant, owns the US trademarks GIORDANA, Registration No. 1435739, with Registration Date April 7, 1987, and GIORDANA, Reg. No.1573521, with Registration Date December 26, 1989, indicating January 1, 1981 as date of first use in commerce. See section 4 above. These US registrations also predate the alleged date of birth of Respondent’s pet dog (August 2005) by two decades. Given the links between Respondent and cycling, the Panel concludes that Respondent was aware of Complainant’s mark at the time of registration of the disputed domain name.
Complainant contends that Respondent, in registering the disputed domain name and keeping the corresponding website with contents entirely unrelated to the GIORDANA brand, is confusing potential customers of GIORDANA, and disrupting Complainant’s business.
In the view of the Panel, a number of facts and circumstances show that Respondent’s true purpose in registering and using the disputed domain name was in fact disrupting Complainant’s business. First, Respondent is a cyclist belonging to the Alè Cycling Team, a team sponsored by ALÈ, a brand of cycling clothing and apparel competing with Complainant’s GIORDANA brand. Second, Respondent admits that he knows the GIORDANA mark. Third, Respondent acquired the disputed domain name and the <giordana.it> domain name from Mr. Zecchetto/A.P.G. SRL, the former licensee or distributor of the GIORDANA mark in Italy, and presently the manufacturer, marketer and sponsor of the ALÈ products competing with GIORDANA apparel. Fourth, Complainant has asserted that Respondent’s wife holds a working position in A.P.G. SRL, and that Respondent’s sister-in-law is the current general manager of A.P.G. SRL., while Respondent does not deny his spouse and sister-in-law’s relationship to A.P.G. SRL.
In view of these facts, Respondent’s argument that he, being an amateur cyclist, is not a competitor of Complainant is unconvincing. Respondent is a member of a team sponsored by Complainant’s competitor. Thus, it is reasonable to infer that he, more likely than not, is interested in helping and favoring the sponsor that supports his team economically and/or in other ways. GIORDANA is a competitor of ALÈ and - through ALÈ - of Respondent. Further, the fact that Respondent’s wife and sister-in-law work for A.P.G. SRL, the company marketing ALÈ cycling apparel, adds an economic and affective dimension to motivations purely based on sport competition. As stated in Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279, a competitor “is one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”.
Lastly, Respondent failed to prove that he owns a dog named “Giordana”, and since when. Thus, Respondent’s alleged purpose for using the disputed domain name in the website to “celebrate” a family pet does not weight much vis-à-vis the evidence suggesting that he used the disputed domain name to create an obstacle to Complainant’s business.
In sum, the Panel concludes that Respondent registered and is using the disputed domain name primarily for the purpose of disrupting the business of a competitor, which is a circumstance of registration and use in bad faith under Policy paragraph 4(b)(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, <giordana.com>, be transferred to Complainant.
Roberto Bianchi
Sole Panelist
Date: February 6, 2017
1 The Panel notes for instance that respondent in Finter Bank Zurich v. Gianluca Olivieri, WIPO Case No. D2000-0091 submitted vaccination certificates as evidence that the name of his household dog was "Finter", while respondent in Billy Connolly v. Anthony Stewart, WIPO Case No. D2000-1549, stated in his response that his dog’s name was registered with the Kennel Club of Great Britain.
2 The panel in YUM! Brands Inc. and KFC Corporation v. Ether Graphics a/k/a Andrew Gruner, NAF Claim Number 212651, stated, “Needless to say, Respondent cannot acquire rights to the Colonel Sanders domain name simply by naming (or possibly even re-naming) his pet guinea pig after (or in honor of) Colonel Sanders. First of all, a pet guinea pig is not a party to this proceeding so Policy paragraph 4(c)(ii) does not apply (it applies only to respondents and animals cannot be respondents). Second, allowing this defense would simply promote a plethora of pet guinea pig websites (whether the pet guinea pig has died or not), all with rather esoteric names that just happened to be famous trademarks. This Panel declines to walk down that road.”