The Complainants are Gasparucci Factory Societa Reponsibilita Limitata / Gasparucci Contract Company Societa Reponsibilita Limitata of Fossombrone, Italy, represented by Veronika V. Kazakevich.
The Respondent is Viktor N Ratiani of Moscow, Russian Federation.
The disputed domain name <gasparucci.com> is registered with Regional Network Information Center, JSC dba RU-CENTER (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2013. On September 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 23, 2013, 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.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2013.
The Center appointed Ladislav Jakl as the sole panelist in this matter on October 31, 2013. 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 First Complainant is the owner of the CTM trademark GASPARUCCI ITALIO GI, No. 002186419 of January 9, 2003 in Class 20 for furniture, parts and components thereof (Annex 3 to the Complaint).
Moreover, the Second Complaint is the owner of the domain name <gasparucci.it>.
The disputed domain name <gasparucci.com> was registered on October 30, 2009.
The Complainants requests the Panel, appointed in this administrative proceeding, that the disputed domain name be transferred to the Complainant.
The Complainants contend that the disputed domain name is identical or confusingly similar to its trademark GASPARUCCI ITALIO GI and its domain name <gasparucci.it>.
As to the rights or legitimate interests in respect of the disputed domain name, the Complainants contend that the Respondent is making a legitimate noncommercial use of the disputed domain name to divert consumers or to tarnish the trademark or service mark at issue. As the Complainants introduce, the website to which resolves the disputed domain name contains such unpleasant information about the Complainants that restrains their business reputation. And this information provides negative reputation about the Complainants isn’t true. And moreover it is important, that locations of the owner of the disputed domain name corresponds to the address of the author of the information specified on the website to which resolves the disputed domain name. It once again confirms that the purpose of registration of the disputed domain name was to discredit of the Complainant.
Furthermore, the Complainants argue that the disputed domain name was also registered and is being used in bad faith, as by using this disputed domain name the Respondent tried to affect commercial benefit of the Complainants and that it proves by the negative information about the Complainants on the website “www.gasparucci.com”.
The Respondent did not reply to the Complainant’s contentions.
In accordance with paragraph 4(a) of the Policy, the Complainants must prove that each of the three following elements is satisfied:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainants.
On the question of the language of the proceedings, the Registrar confirmed that the language of registration agreement is Russian. The Complainant submitted its Complaint both in Russian and in English. The Respondent did not provide any comments in this regard. According to paragraph 11(a) of the Rules the Panel has the authority to determine a different language other than the one in the registration agreement, having regard to the circumstances of the administrative proceeding. The Panel, taking into account the circumstances of this case, especially the fact that the Respondent appears to be familiar with the English language, and a number of recent UDRP proceedings (Mammut Sports Group AG v. Deminzheng, WIPO Case No. D2011-0475; BrandStrategy, Inc. v. BusinessService Ltd., WIPO Case No. D2007 0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd., WIPO Case No. D2007 1836) decides that the language of the administrative proceedings be English.
There is no doubt that the disputed domain name incorporates the dominant part “gasparucci” of the Complainants’ trademark GASPARUCCI ITALIO GI and that to omit of the terms “italo gi” does not sufficiently distinguish the disputed domain name from the Complainants’ trademark (Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694). The Complainants’ registration and use of their trademark predates the Respondent‘s registration of the disputed domain name. As well the inclusion of the generic Top-Level Domain (“gTLD”) suffix “.com” does not avoid confusing similarity of the disputed domain name with the Complainants’ trademark (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-Aventis v. Brad Hedlund, WIPO Case No. D2007-1310). For all the above cited reasons, the Panel concludes that disputed domain name is confusingly similar to the Complainants’ trademark, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.
Under paragraph 4(a)(ii) of the Policy, the Complainants must prove that the Respondent has no rights and legitimate interests in the disputed domain name. Any of the following circumstances, in particular without limitation shall demonstrate:
(i) before the Respondent obtained the notice of the dispute, had not used of, or had not made demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as individual, business, or other organization) has not been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) the Respondent was not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that the Respondent is making use of the disputed domain name to divert consumers or to tarnish the trademark or service mark at issue. The main page of the website “www.gasparucci.com” contains negative information about the Complainants that restrains business reputation of the Complainants. According to the Complainants this information provides negative reputation about the Complainants information isn’t true. Moreover, the location of the Respondent corresponds to the address of the author of the information specified on a website. It once again confirms that the purpose of registration of the disputed domain name was to discredit the Complainant.
In this connection, the Panel takes the view that “the right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant's trademark. That is especially the case if the respondent is using the trademark alone as the domain name (i.e., <trademark.tld>) as that may be understood by Internet users as impersonating the trademark owner”, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.4.
For the above-cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.
Under paragraph 4(a)(iii) of the Policy, the Complainants must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both:
“(i) circumstances indicating that you [the Respondent] have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
As indicated above, the Panel has found that the use of the disputed domain name does not grant the Respondent any rights or legitimate interests in the disputed domain name. The right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant's trademark.
The Panel therefore finds that it is necessary to accept the argument of the Complainants in this case that the disputed domain name was registered and is being used in bad faith, as by using the disputed domain name to provide negative information about the Complainants on the website to which resolves the disputed domain name, the Respondent tried to affect commercial benefit of the Complainants.
For the above cited reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith. Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 <gasparucci.com> be transferred to the Complainant.
Ladislav Jakl
Sole Panelist
Date: November 5, 2013