The Complainant is Pier Giorgio Andretta of Charlotte, North Carolina, United States of America (USA), represented by Dr. Michele Provera, Convey SRL, Italy.
The Respondent is (as designated in the Complaint) Federico Zecchetto of Bigarello, Mantua, Italy, represented by Matteo Maccagnan, Studio Torta, Italy.
The disputed domain name (the “Domain Name”) <giordana.com> is registered with Tucows Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2014. On December 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 22, 2014, the Registrar transmitted by email to the Center its verification response stating that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 7, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2015. The Response was filed with the Center on January 13, 2015.
On December 24, 2014, the Center received informal communications from the Respondent by email.
On January 21, 2015, the Complainant filed the Supplemental Filing by email to the Center.
On January 26, 2015, the Respondent filed the Supplemental Filing by email to the Center.
The Center appointed Michael A.R. Bernasconi as the Sole Panelist in this matter on January 28, 2015. 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.
On March 9, 2015, the Complainant filed the additional Supplemental Filing by email to the Center.
On March 10, 2015, the Respondent filed the additional Supplemental Filing by email to the Center.
The following facts appear from the Complaint and its Annexes, which have not been contested by the Respondent.
The Complainant is Pier Giorgio Andretta of Charlotte, North Carolina, USA. The Complainant is acting, inter alia, in the field of technical cycling clothing.
The Complainant owns (directly or through its company) numerous registered trademarks for “Giordana”, including the following:
- International trademark registration GIORDANA (Registration no. 529214), dated September 20, 1988;
- International trademark registration GIORDANA (Registration no. 1144934), dated November 13, 2012;
- US trademark registration GIORDANA (Registration no. 1573521), dated December 26, 1989;
- US trademark registration GIORDANA (Registration no. 1435739), dated April 7, 1987;
(together, the “trademark”).
The Domain Name was created on December 30, 1999 by the company A.P.G. SRL. The Domain Name is currently on Registrar Lock. Prior to this, the Domain Name redirected visitors to the website “www.apgcycling.com”.
The Complainant contends that he started in 1980 the production of technical cycling clothing bearing the GIORDANA trademark, which was named after his daughter. The Complainant states that he owns numerous national and international GIORDANA trademarks. Besides, the Complainant argues that the trademark has been extensively advertised and has been widely used on numerous media. According to the Complainant, he owns several domain names either consisting of or containing the “Giordana” denomination, such as <giordana.us>, <giordanacycling.com>, <mygiordana.com>, etc. Finally, the Complainant states that his intellectual property (“IP”) assets are of critical importance to his core business.
The Domain Name is Identical and/or Confusingly Similar to the GIORDANA Trademark
The Complainant argues that the Domain Name is identical or confusingly similar to the Complainant’s registered trademarks, denomination and domain names, in which the Complainant has rights. Besides, the Complainant states that the sole addition of the generic Top-Level Domain (“gTLD”) “.com” is without legal significance, since the use of a gTLD is required by domain name registrants and does not serve to identify a specific service provider as a source of goods or services.
The Respondent has no Rights or Legitimate Interests in the Domain Name
The Complainant states that he is the owner of the trademark, has been the joining link between the company A.P.G. SRL and the Domain Name and granted A.P.G. SRL use of his IP rights upon payment of a royalty fee. This co-operation ended on September 7, 2013, when the Complainant decided to withdraw from A.P.G. SRL and signed his termination agreement. According to the Complainant, this agreement thus ended the co-operation between him and A.P.G. SRL and therefore ended all ties with the latter.
The Complainant argues that, in particular, it was agreed between the parties that all “Giordana”-related IP assets shall return to the full control of the original owner, i.e. the Complainant. However, the Complainant states that the obligations under the termination agreement were not fulfilled. On the contrary, the Complainant contends that the Respondent took personal and direct possession of the Domain Name through immediate change of the WhoIs information of the Domain Name and thus indicated himself as “Registrant Name”. According to the Complainant, the Respondent concurrently removed all the contents relating to “Giordana” products and set up an automatic redirect, which transferred users visiting the Domain Name to a new website created by the Respondent and named “www.apgcycling.com”, which advertises and sells cycling apparel and clothing under a new brand named “Alé”.
In the light of the above, the Complainant argues that pursuant to the Policy, paragraph 4(c)(i) – (c)(iii), the Respondent does not have rights or legitimate interests arising from a bona fide offering of goods or services, or from legitimate noncommercial or fair use of the Domain Name. In particular, the Complainant contends that the Respondent has entirely incorporated and is using Complainant’s trademark as a Domain Name to attract Internet users looking for “Giordana” products and automatically redirect them to a new website, where any reference to Complainant’s brand has been deleted and replaced with a competing brand “Alé”. This brand has been intentionally registered and owned by the Respondent, advertising products in direct competition with Complainant’s. According to the Complainant, the website “www.apgcycling.com” was not only never authorized by Complainant, it is also dangerously deceptive and has caused, and keeps causing, serious damage to the fame and reputation that the GIORDANA trademark has earned throughout the last three decades. In addition, the Complainant states that the Respondent creates and exploits a likelihood of confusion with the trademark as to the source, sponsorship, affiliation, or endorsement of his website. Thus, capitalizing on the value of Complainant’s trademark, and such use of the Domain Name constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. For further evidence, the Complainant refers to various discussions in cycling forums, emphasizing the confusion of potential trademark costumers.
Accordingly and following the termination agreement between the parties, the Complainant states that he could neither find any evidence of Respondent’s use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services, nor observe any legitimate noncommercial or fair use of the Domain Name.
Besides, the Complainant states that pursuant to the Policy, paragraph 4(c)(ii), the Respondent has not been commonly known by the Domain Name, and holds no trademark or service marks rights in the trademark. In this respect, the Complainant wishes to highlight that the Respondent has never been associated to the trademark, which was solely conceived, registered, owned and developed as a brand by the Complainant. Hence, the Complainant alleges that the actual Respondent, Mr. Federico Zecchetto, is not known by the Domain Name, which is instead strictly related both to the professional and private life of the Complainant. Finally, according to the Complainant, the fraudulent use of the Domain Name constitutes corroborative evidence of lack of rights or legitimate interests of the Respondent in respect of the trademark.
The Registrant Registered and is Using the Domain Name in Bad Faith
The Complainant contends that, according to evidence provided, the Domain Name was formally transferred between November 5, 2013 and November 20, 2013 to a new entity, i.e. the Respondent. According to the Complainant, the change of ownership of the Domain Name results both from WhoIs records provided and from the substantial change in the company assets of A.P.G. SRL. In other words, on the one hand, the formal registrant of the Domain Name, listed as “Registrant”, appears to be A.P.G. SRL, Via Castelbelforte, 3/A, Bigarello, 46030 IT until November 5, 2013. Until this date, the actual Respondent was solely reported as “Administrative Contact”. Henceforth, the Complainant states that a formal change of the WhoIs records is displayed on the next available record of November 20, 2013, meaning that the Respondent was suddenly directly displayed as “Registrant Name”, whereas A.P.G. SRL was moved to the entry “Registrant Organization”. On the other hand, the Complainant argues that since he withdrew from A.P.G. SRL on September 7, 2013, the company faced a substantial change in its assets. Most importantly, the Complainant claims that since he brought the IP assets related to the trademark GIORDANA into A.P.G. SRL, the company lost these rights in particular.
Furthermore, referring to evidence submitted, the Complainant argues that the Respondent failed to perform his duties in context of the withdrawal of Complainant from A.P.G. SRL, meaning that the Respondent decided to secure the Domain Name, among other digital assets of Giordana, to himself, instead of fully transferring them to the legitimate owner.
Concerning the question as to whether the Domain Name was registered in bad faith, the Complainant claims that the relevant point in time should be either when the above-mentioned changes in the WhoIs record as well as the company occurred, or alternatively, at the time when the renewal of the Domain Name took place. As for the first option, the Complainant argues that the transfer of a domain name to a third party amounts to a new registration. Therefore, the Complainant states that in the case at hand, such transfer can be determined both from a formal point of view, i.e. the change in the WhoIs registrant data, as well as from a substantial point of view, i.e. the de facto alteration of the company A.P.G. SRL. As to the second option, the Complainant argues that the current registrant took possession of the Domain Name shortly before it was renewed. By referring to previous UDRP decisions, the Complainant states that a renewal may be regarded as a new registration, should the circumstances show that the registrant changed its use of the domain name prior to renewal. Such use amounts to textbook cybersquatting. According to the Complainant, the provided evidence shows that in the present case, the renewal of the Domain Name, which occurred at the latest on December 28, 2013, should be regarded as a new registration for the purposes of determining bad faith registration.
With regards to bad faith in particular, the Complainant states that according to previous UDRP decisions, the benefit of an original good faith registration should not be perpetual to the point where it can cloak successors in title and successors in “possession” long after the original registration would have expired. In addition, the Complainant submits that the Respondent did not continue to do what he has always legitimately done, but rather changed the contents of the Domain Name to the extent that customers visiting the Domain Name are redirected to “www.apgcycling.com”, which displays and promotes the Respondent’s newly created brand “Alé”. By doing so, the Respondent seeks to associate his new, competing brand with the well-known trademark in order to exploit the brand Giordana to reach a much larger number of customers. Finally, the Complainant submits that the Respondent that he has registered the Domain Name primarily for disrupting the business of a competitor.
Concerning the use of the Domain Name in bad faith, the Complainant argues that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website “www.apgcycling.com” through an automatic redirect of potential costumers visiting the Domain Name by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
In addition, the Complainant contends that the Domain Name was registered and is being used in order to prevent the legitimate owner of the trademark from reflecting his own trademarks in a corresponding domain name. In this regard, it should again be noted that the Respondent targeted not only the Domain Name, but rather is acting in the same way at other domains, such as “www.giordana.it” and “www.teamgiordana.it”, which, according to the Complainant, also currently redirect to “www.apgcycling.com” and “www.aleteam.it” respectively, thus preventing the Complainant from reflecting the GIORDANA trademark in the corresponding domain names.
Remedies Requested
In accordance with paragraph 4(i) of the Policy, the Complainant requests that the Domain Name <giordana.com> be transferred to the Complainant.
In his Response, the Respondent requests the Panel to deny the remedies claimed by the Complainant.
The Respondent argues that he has been wrongly indicated as the Respondent. In other words, the Respondent argues that in case at hand, he has been wrongly considered as the registrant of the Domain Name, but rather that he is only the contact person of A.P.G. SRL. According to the Respondent, as clearly indicated by the WhoIs Lookup, the registrant of the Domain Name is A.P.G. SRL (i.e. the “Registrant Organization”). The Respondent supports his submission by referring to several other companies such as Apple Inc., Microsoft Corporation or the Registrar in case at hand, Tucows.com Co, stating that all these companies have in common, that the registrant of the respective domain name is indicated in the field “Registrant Organization” and not by the field “Registrant Name” (where the names "Domain Administrator" and “DNS Administrator” are displayed).
To support his statements, the Respondent further refers to the registrant’s address and phone-number, added on the WhoIs Lookup of the Domain Name. According to the Respondent, the following address “Via Castelbelforte, 3/A, 46030 Bigarello” as well as the registrant’s phone-number both belong to a branch office of A.P.G. SRL. Accordingly, the Respondent argues that the registrant of the Domain Name is A.P.G. SRL (a company incorporated in Italy) and not Mr. Federico Zecchetto as wrongly stated in the Complaint. Therefore, the Respondent states that he is convinced that the Complaint is inadmissible, because it is directed at the wrong Respondent.
Finally, the Respondent contends that the Complainant compared two different WhoIs Lookup formats, i.e. a “full” and a “short” Lookup, and thus incorrectly believes that a modification of ownership of the Domain Name (i.e. registrant) occurred. On the contrary, the Respondent claims that the ownership of the Domain Name has never changed from its first registration in 1999 and the current owner (registrant) of the Domain Name is still the company A.P.G. SRL.
The Domain Name is Identical and/or Confusingly Similar to the GIORDANA trademark
In his Response, the Respondent recognizes that the Domain Name is substantially identical to the trademark registered by the Complainant.
The Respondent has Rights or Legitimate Interests in the Domain Name
According to the Respondent, the current registrant (A.P.G. SRL) of the Domain Name has full rights in respect of the GIORDANA trademark in virtue of a license agreement signed on September 19, 1994 between the company Gita Sporting Goods Ltd. undisputedly owned by the Complainant and the current registrant (i.e. A.P.G. SRL).
Whilst admitting that the Complainant withdrew from A.P.G. SRL on September 7, 2013, the Respondent objects to the Complainant’s statement that at that time all ties between A.P.G. SRL and the trademark had been removed. On the contrary, referring to the commercial agreement signed on September 7, 2013 between the Complainant and Mr. Federico Zecchetto (as director of A.P.G. SRL), the distribution of the Giordana apparel was assigned to the company A.P.G. SRL until December 31, 2014 and the production of Giordana apparel is assigned to the company A.P.G. SRL until December 31, 2015. Thus, the Respondent states that the bonds between A.P.G. SRL and the trademark are to date still in force. In addition, the Respondent refers to the commercial agreement of September 7, 2013 and notes that the agreement is completely silent about the Domain Name and only affirms that the company A.P.G. SRL cannot use the trademark FRC, which has, according to the Respondent, nothing to do with the trademark GIORDANA.
To conclude, the Respondent argues that the license agreement has not been completely annulled by the commercial agreement. Thus, the current registrant (A.P.G. SRL) of the Domain Name still has full rights in respect of the trademark. Besides, the Respondent repeats his statement that the Complaint is based on false assumptions. In other words, the registrant of the Domain Name has never been changed from the company A.P.G. SRL to Mr. Federico Zecchetto. Therefore, the current owner (registrant) of the Domain Name is still the company A.P.G. SRL as from the first registration.
The Registrant has not Registered and is not Using the Domain Name in Bad Faith
The Respondent claims that the current registrant (A.P.G. SRL) of the Domain Name has not registered and used the Domain Name in bad faith, since the aforementioned license agreement signed on September 19, 1994 between the company Gita Sporting Goods Ltd. (owned by the Complainant) and the current registrant (A.P.G. SRL) is still valid.
The Respondent argues that the current registrant (A.P.G. SRL) has registered and used the Domain Name since December 30, 1999. Besides, the Respondent states that the Complainant was not only aware of such registration from the beginning, but also agreed upon it, as stated by the Complainant himself.
Finally, the Respondent contends that the current registrant has a license of the trademark and thus still owns the full right of using the Domain Name as it pleases. According to the Respondent, in case the Complainant were not happy with the past and present use of the Domain Name, he should have regulated it in a different way in the license agreement signed on September 19, 1994 and above all in the commercial agreement signed on September 7, 2013.
On January 21, 2015, the Complainant filed an unsolicited Supplemental Filing to the Center. The Supplemental Filing can be summarized as follows.
First, the Complainant brings forward the argument that there is no such notion of “full” or “short” WhoIs record, but rather it exists only one type of WhoIs records provided by “www.domaintools.com”. To support his view, the Complainant files records from another website (i.e. “www.who.is”) and contends that these WhoIs records state the same information, in other words, clearly displaying Mr. Federico Zecchetto as actual “Registrant Name”. In addition, the Complainant refers to several companies such as Ferrari, Ferrero or Nestlé, which display both as “Registrant Name” and “Registrant Organization” the company name itself. Besides, the Complainant argues that using the generic term Domain Administrator is a widely used praxis among multinational companies. Furthermore, the Complainant contends that Domain Administrator is a valid Respondent, since there are plenty of domain name disputes addressed against Respondents called Domain Administrator.
Second, the Complainant argues that the Respondent provided the name Federico Zecchetto as “Registrant Name”, which clearly shows Respondent’s intention to bond the Domain Name to his personal name. The Complainant further states that Mr. Federico Zecchetto is also the CEO and Sole Administrator of the company A.P.G. SRL and that his name and signature appears in every relevant document as well as agreement mentioned.
On a final note, the Complainant refers to a definition of “Registrant Name” and states that “Registrant Name” means “the person, company or entity who owns or holds a domain name”. Thus, according to the above evidences, the Complainant does not find any inaccuracy in the identification of Mr. Federico Zecchetto as the Respondent.
Concerning the accusation of bad faith, the Complainant states that following the receipt of the Complaint, the Respondent disabled the automatic redirection from the Domain Name to the Respondent’s official website “www.apgcycling.com”. According to the Complainant, this raises the question as to the reasons behind such a sudden and unexpected change, since the Respondent firmly declared that he has legitimate interests in the Domain Name in connection with an offering of goods and services in good faith. To conclude, the Complainant believes that such action constitutes a further indication of bad faith on Respondent’s side.
The Complainant further argues that he was informed by the Respondent via email from January 8, 2015, that the Respondent would stop every kind of use and exploitation of the trademark, including its online usage. According to the Complainant, such conduct is inconsistent with the renewal of the Domain Name by the Respondent for the year 2015.
With regards to the statements made by the Respondent concerning the use of the Domain Name in line with the license agreement, the Complainant contends that such statement is mendacious and aims at biasing the Panel’s opinion. The Complainant emphasizes that the filing date of his Complaint was not random at all, but a mere reaction on the renewal of the Domain Name by the Respondent, which was contrary to the assured wilful transfer of the Domain Name to the Complainant.
Finally, the Complainant refers to the distribution agreement mentioned by the Respondent, which, according to the Complainant, does not contain any statement regarding the use of the Domain Name or any other Giordana digital IP rights. According to the Complainant, the Respondent does not fulfil the conditions set out according to the so-called “Oki Data Test”, which means that Respondent has no rights or legitimate interest in the Domain Name. In addition, the Complainant states that the intent of bad faith of the Respondent is clearly shown.
In his second Response dated January 26, 2015, the Respondent puts forward the argument that filing of additional submissions by the Complainant is completely contrary to the Rules and cannot be accepted at all. In other words, the Complainant argues that the Rules clearly establish that the Complainant cannot file on his motion any further submission after the filing of the Complaint, thus the unsolicited additional submissions of the Complainant cannot be accepted by the Panel.
On the merits, the Respondent repeats his statement regarding the comparison of two different WhoIs Lookups done by the Complainant. Besides, the Complainant argues that the fact that some renowned companies decided to repeat in the field “Registrant Name” the content of the field “Registrant Organization” does not change the fact that the owner of the Domain Name is indicated in the field “Registrant Organization” and not in the field “Registrant Name”. Furthermore, the Respondent states that in decisions, were “Domain Administrator” was the Respondent, the “Domain Administrator” was the “Registrant Organization”, but not the “Registrant Name”. In other words, according to the Respondent, the “Domain Administrator” is a valid Respondent when the owner of the domain name indicated in the field “Registrant Organization” is named “Domain Administrator”. Besides, the fact that Mr. Federico Zecchetto is the CEO of the company A.P.G. SRL does not authorize the Complainant to address the Complaint to Mr. Federico Zecchetto instead of A.P.G. SRL. The official owner of the Domain Name is still the company A.P.G. SRL and not the CEO of the company.
With regards to the termination of the automatic redirection of visitors from the Domain Name to the Respondent’s official website “www.apgcycling.com”, the Respondent argues that this action has been decided well before the filing of the Complaint and that such conduct is part of the Respondent’s legitimate commercial strategy to focus only on its brand “Alé”.
Finally, the Respondent claims that the UDRP is an administrative procedure that has been created to deal with cases of evident abuse (i.e. clear lack of legitimate interests and prima facie evident bad faith). Therefore, the proceeding cannot be used to solve disputes concerning valid contracts duly signed by the parties. Thus, the Respondent does not think that it is proper in the present procedure to deeply discuss the details of the contracts signed between the Complainant and the Respondent. According to the Respondent, in the case at hand, there is no lack of legitimate interests or any bad faith, thus the UDRP is simply not the right legal instrument to settle the present controversy regarding the interpretation of the license agreement as well as the termination agreement. Furthermore, the Respondent argues that the Domain Name has been registered on December 30, 1999 with the authorization of the Complainant and in virtue of a valid license agreement signed on September 19, 1994. Thus, the Respondent finds it very hard to retain any indicia of an “abusive registration” (i.e.clear lack of legitimate interests and prima facie evident bad faith).
On March 9, 2015, the Center received an additional Supplemental Filing from the Complainant. Therein, the Complainant argues that the Respondent sent new and relevant communication to a mailing list containing all his customers and various other contacts. According to the Complainant, such communication was not at Complainant’s disposal, neither at the time the Complaint was filed, nor when Complainant’s additional submissions to the Complaint were lodged. The Complainant declares that the message, which was sent on February 25, 2015, states that the Domain Name and the email address […]@giordana.com have been disabled and have been respectively replaced by the website “www.apgcycling.com” and […]@apgcycling.com.
The Complainant contends that such behavior is fully inconsistent with the communication at issue. In other words, the Complainant argues that while on the one hand, the Respondent openly declares to cease the uses of the Domain Name – both as a website and as email addresses, but on the other hand keeps active control over the Domain Name, i.e. renewed the registration for the Domain Name for another year, thus preventing the Complainant from making any use of it and concurrently jeopardizing the Complainant’s legitimate business in connection with the GIORDANA trademark and its products.
On March 10, 2015, the Respondent replied to the Complainant’s additional Supplemental Filing. In his statement, the Respondent states that according to the UDRP, only the Panel, in its sole discretion, may request additional submissions from the parties. Thus, the Respondent argues that the Complainant’s additional Supplemental Filing cannot be accepted at all. In other words, the Respondent states that the Complainant cannot file in its discretion further submissions after the filing of the Complaint, thus the unsolicited additional Supplemental Filing of the Complainant must be rejected.
Besides, the Respondent argues that the Complainant’s additional Supplemental Filing is neither new nor relevant. In particular, the Respondent states that fact that the Domain Name and the email address […]@giordana.com are not anymore active was already mentioned in the Complainant’s first Supplemental Filing. Concerning the renewal of the Domain Name registration, the Respondent contends that (i) this fact was also already mentioned in the Complainant's first Supplemental Filing and (ii) such behavior does not constitute a proof of bad faith, but rather should be seen as a proof of common sense. In this respect, the Respondent argues that maintaining the registration for the Domain Name until the dispute regarding the ownership of the Domain Name has been settled is justified and logical from every point of view. In essence, this is due to the reason that if APG S.R.L. released the Domain Name (for example by not paying the renewal fees) everyone could then be able to register the Domain Name, which is something that would, according to the Respondent, very well be possible and thus make a possible settlement more complex.
Before proceeding with the examination of the three substantive elements of the UDRP, attention is given to the following issues.
According to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Based on the evidence provided, the language of the Registration Agreement is English. Therefore, English shall be the language of the proceeding. In addition, the Panel accepts the documents filed in Italian as part of the evidence. This is because both parties referred to such documents and both parties as well as the Panel are able to speak Italian. By accepting the relevant submissions in Italian, the Panel exercises his discretion in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see Biotechnology and Biological Sciences Research Council v. Kim Jung Hak, WIPO Case No. D2009-1583; Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
Paragraph 12 of the Rules allows a Panel in its discretion to request Supplemental Filings from either party, and although the Rules do not provide expressly for unsolicited submissions, under paragraph 10(a) the Panel enjoys a broad power to conduct the administrative proceeding in the manner it considers appropriate under the Policy and Rules, provided the parties are treated fairly and the proceeding is conducted expeditiously. Previous UDRP panels have accepted unsolicited supplemental submissions under this rule (see, NB Trademarks, Inc. v. Domain Privacy LTD and Abadaba S.A., WIPO Case No. D2008-1984; AutoNation Holding Corp. v. Rabea Alawneh, WIPO Case No. D2002-0058).
A Supplemental Filing naturally has the potential to delay and complicate proceedings. Consequently, whether it is appropriate to admit an unsolicited Supplemental Filing will depend inter alia on its relevance to the issues in the case, whether the Panel considers the content of the submission essential to reaching a fair decision on the facts, and whether the submission could have been made earlier and, if so, why it was not (see NB Trademarks, Inc. v. Domain Privacy LTD and Abadaba S.A., WIPO Case No. D2008-1984).
In the light of the above, the Panel admits all unsolicited Supplemental Filings from both parties, since the submissions are either essential to reaching a fair decision and/or were not available at the time of the first filing of the parties.
The present Complaint was filed against Federico Zecchetto, Via Castelbelforte, 3/A, 46030 Bigarello (MN), Italia. However, according to the Respondent, the Complaint should have been filed against A.P.G. SRL, since such company is the registrant of the Domain Name, and Mr. Federico Zecchetto is only the contact person of A.P.G. SRL. Thus, it is disputed between the parties, whether the Complaint was filed against the correct Respondent. In other words, some doubts arise as to the information contained in the WhoIs records concerning the Domain Name.
In the view of the Panel, this issue cannot be determined in an abstract manner, but rather, it has to be examined based on the relevant circumstances of the present dispute. In the case at hand, the Panel makes the following considerations.
First, the Panel refers to the email communication dated December 22, 2014 between the Center and the Registrar and notes that in its message, the Registrar stated that Mr. Federico Zecchetto is the current registrant of the Domain Name. This means that the Registrar would enforce a UDRP decision against Mr. Federico Zecchetto.
Furthermore, taking in consideration the confirmation of the Registrar as well as the undisputed controlling position of Mr. Zecchetto within A.P.G. SRL, not admitting and substantively assessing the Complaint at hand just based on the differentiation between “Registrant Name” and “Registrant Organization” could be considered as an act of excessive formalism and thus be in violation of the principle of good faith. Finally, as a side note, the Panel wishes to highlight that according to the Policy, the domain name holder bears the responsibility to insert and maintain proper registration information in the Whois database.
Second, the Panel takes into consideration that the question of the identification of the “correct” Respondent was addressed at length in the decision Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886. In this decision, the panel concluded that even if in the view of a panel the “wrong” respondent is identified in the heading of the complaint, it does not necessarily follow that the proceedings should be rejected as invalid as having been brought against the “wrong” person. Of course, the respective panel noted, if a complainant has misidentified whom it considers the person who in reality has control of the domain name, it may be that its arguments as to abuse are ill founded and will not prevail (see Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886; for further references, see Body Accounting, Inc. v. Affinity Domains, Energy First, WIPO Case No. D2009-1419; RapidShare AG, Christian Schmid v. PrivacyAnywhere Software, LLC, Mikhail Berdnikov (Protected Domain Services Customer ID: DSR-2262893, Protected Domain Services Customer ID: DSR-2092987) and RapidShare AG, Christian Schmid v. Winsoul, Inc., Aleksey Atushev; (Protected Domain Services Customer ID: DSR-2239262), WIPO Case No. D2010-0894).
Furthermore, the Panel notes that a very common way to determine the correct holder of the Domain Name is to check up the person or entity, which is recorded in the Registrar’s register as revealed by a WhoIs search (see Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886).
Based on the evidence submitted by the parties, the relevant WhoIs search provides the following information:
- Registrant Name: Federico Zecchetto
- Registrant Organization: A.P.G. SRL
- Registrant Street: Via Castelbelforte, 3/A
- Registrant City: Bigarello
- Registrant State/Province:
- Registrant Postal Code: 46030
- Registrant Country: IT
Considering all the above, the Panel finds that it thus appears that both entities “Registrant Name”, Federico Zecchetto, and the “Registrant Organization”, A.P.G. SRL, can be identified as relevant entities for the Domain Name registration, as confirmed by the Registrar. To put it differently, since the Registrar stated that Mr. Federico Zecchetto is the current registrant of the Domain Name and considering previous UDRP decisions, where it is stated that it does not necessarily follow that the proceedings should be rejected as invalid as having been brought against the “wrong” person (see Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886), the Panel is of the view that the Complaint is admissible.
The Panel has thoroughly considered all of the evidence and arguments submitted by the parties, even if no specific or detailed reference has been made to those arguments in the following discussion on the merits.
As mentioned above, if a panel is of the view that a complainant has misidentified who it considers to be the person who in reality has control of the domain name, it may be that its arguments as to abuse are ill founded and will not prevail (see Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886; for further references, see Body Accounting, Inc. v. Affinity Domains, Energy First, WIPO Case No. D2009-1419; RapidShare AG, Christian Schmid v. PrivacyAnywhere Software, LLC, Mikhail Berdnikov (Protected Domain Services Customer ID: DSR-2262893, Protected Domain Services Customer ID: DSR-2092987) and RapidShare AG, Christian Schmid v. Winsoul, Inc., Aleksey Atushev; (Protected Domain Services Customer ID: DSR-2239262), WIPO Case No. D2010-0894).
Against this background, and taking in consideration on one side the confirmation of the Registrar and on the other side the undisputed controlling role of Mr. Zecchetto in A.P.G. SRL, it would amount to excessive formalism to strictly differentiate between the person mentioned under the “Registrant Name” and the one indicated as the “Registrant Organization”. What is relevant is if in relation to a holder of a disputed domain name the requirements for a transfer under the Policy are fulfilled or not. This is what the Panel will now analyze, referring, for sake of good reading, to Respondent and A.P.G. SRL as the “Domain Name Holder”.
If the Complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
(i) The Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
In its Response, the Domain Name Holder recognizes that the Domain Name is identical to the Trademark. In fact, the Panel acknowledges that the Domain Name is identical with the Complainant’s trademarks.
Thus, the Panel finds that the Domain Name is identical or confusingly similar to the Complainant’s trademarks pursuant to paragraph 4(a)(i) of the Policy.
From the evidence in front of the Panel, the Domain Name Holder’s name is not Giordana. However, the Domain Name Holder has rights in respect of the GIORDANA trademark in virtue of a license agreement signed on September 19, 1994 between the company Gita Sporting Goods Ltd. (owned by the Complainant) and the company A.P.G. SRL. Contrary to the Complainant’s line of argumentation, the Panel is of the view that the agreement signed on September 7, 2013 did not remove all ties between A.P.G. SRL and the trademark. In particular, the agreement states that the distribution of the Giordana apparel was assigned to the company A.P.G. SRL until December 31, 2014 and the production of Giordana apparel is assigned to the company A.P.G. SRL until December 31, 2015.
At the time of the last renewal (i.e. December 2014), the Domain Name Holder was still assigned with a right to distribute the Giordana apparel. However, the use of the Domain Name at that time failed to meet the requirements set out in Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903, according to which a distributor can make a bona fide offering of goods and services and thus have legitimate interests in the Domain Name. To be bona fide, the offering must meet several requirements. In the case at hand, the Domain Name did not offer the goods bearing the GIORDANA trademark, nor did the Domain Name Holder use the site to sell only the trademarked goods. In addition, the Domain Name did not accurately disclose the registrant’s relationship with the trademark owner. Since none of the above criteria are met, the Panel finds that the Domain Name Holder fails to pass the so-called Oki Data-test and thus the Domain Name Holder cannot claim rights or legitimate interests in the Domain Name deriving from a bona fide offering of goods and services.
Up to date, the Domain Name Holder is assigned only the right to produce Giordana apparel. Moreover, by email dated January 8, 2015, the Domain Name Holder informed the Complainant that it would stop every kind of use and exploitation of the trademark, including its online usage. Based on these circumstances, the Panel cannot find any rights or legitimate interests in the Domain Name likewise.
The Panel notes that a reseller may have rights and legitimate interests in a domain name. However, the use of the Domain Name in this particular case fails to meet the requirements under the Oki Data-test and thus no rights or legitimate interests may be derived from a potential bona fide offering of goods and services. To the contrary, the Panel notes that the Domain Name Holder renewed the Domain Name registration in December 2013, which was shortly after it signed the agreement, according to which the Complainant withdrew from the company A.P.G. SRL. Soon afterwards, an automatic redirection was set up, redirecting Internet visitors from the Domain Name to the Domain Name Holder’s competitive website “www.apgcycling.com”. This in the Panel’s view is not a good faith use of the Disputed Domain Name. In particular, this becomes evident after the Domain Name Holder informed the Complainant by email dated January 8, 2015 that it would stop every kind of use and exploitation of the trademark, including its online usage. Therefore, the Complainant succeeds in establishing the second requirement of paragraph 4(a) of the Policy (see Amoena Medizin-Orthopädie-Technik GmbH v. Amoena de Mexico, S.A. de C.V., a/k/a Ortopedia Ortiz, a/k/a 3wLeon, Guadalupe De La Luz Garcia Bravo, WIPO Case No. D2012-1144).
The Policy requires a complainant to prove both registration and use in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances, which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) Circumstances indicating that [the Domain Name Holder has] registered or acquired the domain name primarily for 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 Domain Name Holder's] documented out-of-pocket costs directly to the domain name; or
(ii) [the Domain Name Holder has] registered the domain name in order to prevent the owner of the trademark or service from reflecting the mark in a corresponding domain name, provided that [the Domain Name Holder has] engaged in a pattern of such conduct; or
(iii) [the Domain Name Holder has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the Domain Name Holder has] intentionally attempted to attract, for commercial gain, Internet users to [the Domain Name Holder’s] website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Domain Name Holder’s] website or location or of a product or service on [the Domain Name Holder’s] website or location.
The Panel notes that the Domain Name has been registered on December 30, 1999 with the authorization of the Complainant and in virtue of a valid license agreement signed on September 19, 1994. In addition, the Panel is of the view that since 1999, no change of ownership of the Domain Name took place.
In the view of the Panel, registration and use of the Domain Name must each be proven (see Validas, LLC v. SMVS Consultancy Private Limited, WIPOCase No. D2009-1413; Camon S.p.A. v. Intelli-Pet, LLC, WIPO Case No. D2009-1716; Atlas Productions, LLC v. Oneandone Private Registrant / Phil McCarty, WIPO Case No. D2011-0519). In other words, the plain literal meaning of the third element of the Policy is that both registration and use in bad faith must be found individually before the requirements of that element are fulfilled (see Guru Denim Inc. v. Ibrahim Ali Ibrahim Abu-Harb, WIPO Case No. D2013-1324).
Both parties agree that the Domain Name was not registered in bad faith in 1999. Thus, according to the evidence submitted, the Panel finds that the Domain Name was originally registered in good faith.
The question, however, remains whether the renewal of the Domain Name in 2013 and 2014, respectively, may be considered as a (new) registration in bad faith.
Paragraph 3.7 of the WIPO Overview 2.0 makes clear that a mere renewal of a domain name has not generally been treated as a new registration for the purpose of assessing bad faith. Registration in bad faith must normally occur at the time the current registrant took possession of the domain name. Panels have tended to the view that formal changes in registration data are not necessarily deemed to constitute a new registration where evidence clearly establishes an unbroken chain of underlying ownership by a single entity or within a genuine conglomerate, and it is clear that any change in WhoIs registrant data is not being made to conceal an underlying owner’s identity for the purpose of frustrating assessment of liability in relation to registration or use of the domain name.
This Panel is of the view that the construction of “registration” as a continuous process would negate the distinction between “registration” and “use” within the Policy. The objective of the Policy was basically to combat the undue and abusive registration of domain names in “cybersquatting” cases (see Poundland Limited v. Dealz.com, WIPO Case No. D2012-0918; see also Xbridge Limited v. Marchex Sales, Inc, WIPO Case No. D2010-2069; Side by Side, Inc. /dba/ Sidetrack v. Alexander Lerman, WIPO Case No. D2012-0771). Thus, the Panel concludes that according to the evidence provided, the Domain Name was not registered in bad faith in 1999 and additionally, the renewal of the Domain Name in 2013 and 2014 cannot be considered as a registration under paragraph 4(a)(iii) of the Policy. Therefore, the Complainant has failed to meet his burden of demonstrating that the Respondent registered the Domain Name in bad faith.
Accordingly, the Panel finds that the Complainant has failed to satisfy the requirements of paragraph 4(a)(iii) of the Policy and, therefore, the Complaint must be denied.
The fact that the Complaint is denied shall not be interpreted as an entitlement of the Respondent to use the Domain Name in bad faith. However, whether the Complainant has any right, of contractual or other nature, to compel the Respondent to the transfer of the Doman Name or to limit its use, is not a matter that can be decided by the Panel within the framework of this procedure.
For the foregoing reasons, the Complaint is denied.
Michael A.R. Bernasconi
Sole Panelist
Date: March 18, 2015