The Complainant is Vicini S.P.A. of Italy, represented by Franzosi Dal Negro Pensato Setti of Italy.
The Respondent is You Know, No one of United States of America, represented by Staff Legal, S.A. Law Firm of Dominican Republic.
The disputed domain name <vicini.com> is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2009. On March 5, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On March 5, 2009, Network Solutions, LLC 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 March 10, 2009 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 amendment to the Complaint on March 11, 2009. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2009. The Response was filed with the Center on March 31, 2009.
The Center appointed Christopher J. Pibus, David Perkins and Roberto Bianchi as panelists in this matter on April 29, 2009. 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.
The Complainant is an Italian company, which distributes and sells high fashion footwear and leather goods. The Complainant's business was founded on May 2, 1990, and the Complainant has since that time actively sold footwear and leather goods in association with the VICINI name and trademark. The Complainant's VICINI-branded products have been featured in magazines and newspaper articles, and the Complainant maintains over 30 dedicated VICINI retail stores in various countries. In total, the Complainant's VICINI-branded products are sold in approximately 300 shops internationally. The Complainant owns several trademark registrations for the trademark VICINI in connection with footwear and leather goods, namely International Registration Nos. 6440037, 677121, 769883, 774025, 883612 and 895913. The Complainant also owns various domain names, including <vicini.eu>, <vicini-fashion-sport.eu>, <vicinioutlet.com>, <vicinishoes.com>, <vicinishoes.eu> and <vicinishoes.co.uk>.
The Respondent is nominally “You Know, No One” but has disclosed that his actual identity is Jose Leopoldo Vicini Perez. Mr. Vicini Perez is a fourth generation member of the Vicini family, which can trace its origins back to Juan Bautista Vicini Canepa who arrived in the Dominican Republic from Italy in 1859. The Respondent is a Director of the family business named Grupo Vicini Ltd., a British Virgin Islands corporation. Grupo Vicini Ltd. acts as a holding company for various entrepreneurial ventures of the Vicini family including financing services, tourism, and food industry etc. The Respondent is also affiliated with a company under the name Porcella, Vicini & Co. (Inc.) incorporated in the United States of America. The Respondent's grandfather is a director of the Porcella, Vicini & Co. (Inc.), which operates an import and export business dealing in sugar, molasses, syrup, and related products.
The Respondent registered the domain name <vicini.com> on September 24, 1998. At the time the Complaint was filed, the domain name <vicini.com> reverted to a blank page.
The Complainant contends that the domain name <vicini.com> is confusingly similar to the Complainant's trademark VICINI.
The Complainant contends that it owns several International trademark registrations, registered on the following dates: 6440037 (September 22, 1995), 677121 (June 14, 1997), 769883 (October 11, 2001), 774025 (December 14, 2001), 883612 (January 30, 2006) and 895913 (July 12, 2006) for the trademark VICINI. The Complainant also relies on U.S. trademark Registration No. 2,177,736 (August 4, 1998) and European trademark No. 004337689 for the trademark VICINI & Design.
The Complainant contends that the domain name <vicini.com> contains as its dominant part the word “vicini” which is identical to the registered VICINI marks, which are owned by the Complainant. Accordingly, the Complainant contends that the domain name <vicini.com> is confusingly similar to the Complainant's registered trademarks.
The Complainant contends that the Respondent cannot demonstrate or establish any legitimate interest in the disputed domain name. The Complainant submits that the Respondent is not commonly known by the domain name, and that the Respondent has no rights in the trademark VICINI either at common law or by way of registration anywhere in the world. The Complainant also submits that it has not licensed or otherwise permitted the Respondent to use its trademark or business name and has not permitted the Respondent to register a domain name incorporating its trademark. The Complainant also contends that the Respondent is not making a legitimate or fair use of the domain name, or making any bona fide offering of goods and/or services.
The Complainant contends that the domain name <vicini.com> was registered and is being used in bad faith based on the following factors: (i) Respondent must have been aware of the Complainant's rights in the VICINI trademark; (ii) Respondent registered the confusingly similar domain name to prevent the Complainant as the owner of the trademark from registering the domain name; and (iii) the fact the domain name <vicini.com> reverts to a blank page.
The Respondent denies that the domain name <vicini.com> is identical or confusingly similar to the Complainant's trademark because the Complainant's VICINI trademark registrations only cover specific wares, namely footwear, clothing, accessories and leather goods. The Respondent contends that it is not in the footwear, clothing or leather goods business and accordingly the domain name and the Complainant's trademark are not confusing.
The Respondent contends that he is part of the Vicini family, tracing its origins back to 1859, and as such he has a right or legitimate interest to the domain name <vicini.com>. The Respondent submits that the Vicini family has operated businesses in the Dominican Republic for many generations in connection with the import and export of goods related to the sugar cane business.
The Respondent further contends that he did not adopt the Vicini mark as a domain name in an attempt to interfere with the Complainant's business, but rather chose to protect the Vicini name because it was the family name which had been used for many family businesses.
The Respondent submits that the mere fact that a domain name resembles a trademark, does not in and of itself establish bad faith. In this case, the Complainant and the Respondent have separate businesses that are not in competition with each other, and which have concurrent rights in the Vicini name. The Respondent is using the Vicini name in good faith in connection with its family ventures and has been doing so for many years.
According to paragraph 4(a) of the Policy, in order to succeed, the complainant must establish each of the following elements:
(i) the domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights;
(ii) the respondent have no rights or legitimate interest in respect of the Domain Name; and
(iii) the domain name has been registered and is being used in bad faith.
The Panel finds that the Complainant has established trademark rights in the mark VICINI, by virtue of International Trademark Registration Nos. Nos. 6440037, 677121, 769883, 774025, 883612 and 895913, U.S. Registration No. 2,177,736, and European Registration No. 004337689.
The Respondent argues that the trademark rights of the Complainant ought to be restricted to the wares for which the VICINI trademark was registered, namely footwear, clothing, accessories and leather goods and should not extend to a domain name linked to a non-competitive business. While this analysis may be relevant to traditional arguments for trademark infringement, the analysis is not relevant to the concept of confusing similarity under paragraph 4(a)(i) of the Policy.
The threshold question under the Policy is simply whether the trademarks in question and the disputed domain name are confusingly similar, whether the wares and business are connected or not. On these facts, it is obvious that the domain name is identical to the registered marks of the Complainant, except for the addition of the ending “.com”. Accordingly, the Panel finds that the domain name <vicini.com> is confusingly similar to the Complainant's trademark VICINI.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
Although the Complainant has alleged that the Respondent has no rights or legitimate interests in the VICINI trademark, the Respondent has brought forward substantial evidence that he and his family have used the Vicini names for a variety of businesses, primarily in the Dominican Republic, for many decades. In particular, the Panel notes the following documents, filed in evidence by the Respondent:
- Signage “J.B. Vicini” on the family residence at Isabel La Catolica Street No. 158, Colonial Zone of Santo Domingo City, Dominican Republic.
- Birth Certificates of a number of family members, namely Jose Leopoldo Vicini Perez, Jose Maria Vicini Cabral, Felipe A. Vicini and Juan Bautista Vicini Perdomo
- Dominican Identity Card of Jose Leopoldo Vicini Perez
- Dominican Passport of Jose Leopoldo Vicini Perez
- Resolution of October 15, 2007 of Grupo Vicini Ltd. appointing Jose Leopoldo Vicini Perez as a director.
- Articles of Incorporation of Porcella, Vicini & Co. (Inc.) showing Felipe A. Vicini and Juan Bautista Vicini Perdomo are directors of said company.
- Advertisements of the Grupo Vicini business
The Panel finds that the Respondent has submitted sufficient evidence in this proceeding to support the claim that he is a member of the Vicini family, tracing his origins to Mr. Juan Bautista Vicini Canepa's arrival to the Dominican Republic in 1859. The Panel is convinced that the Respondent is commonly known as part of the Vicini family, and that the Vicini family has owned and operated several long-standing businesses which use the Vicini family name. These Vicini family businesses range from the original sugar cane plantation located in the city of Santo Domingo, to the modern-day businesses of Grupo Vicini Ltd. and Porcella, Vicini & Co. (Inc.). The Panel is therefore not prepared to find that the Respondent has no right or legitimate interest in the domain name <vicini.com>.
The Panel finds that the Complainant has not satisfied the second requirement of paragraph 4(a) of the Policy.
In light of the Panel's finding under legitimate interests, there is no need to consider the issues under paragraph 4(a)(iii).
For all the foregoing reasons, the Complaint is denied.
Christopher J. Pibus | |
Robert Bianchi | David Perkins |
Dated: May 13, 2009