DECISION

Soleluna S.r.l. v. G4C

Claim Number: FA0208000123885

PARTIES

Complainant is Soleluna s.r.l., Milano, ITALY (“Complainant”) represented by Marco Marcellini.  Respondent is G4C, Cangzhou, CHINA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <soleluna.com>, registered with Dotster.com, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 28, 2002; the Forum received a hard copy of the Complaint on September 7, 2002.

On October 2, 2002, Dotster.com, Inc. confirmed by e-mail to the Forum that the domain name <soleluna.com> is registered with Dotster.com, Inc. and that Respondent is the current registrant of the name.  Dotster.com, Inc. has verified that Respondent is bound by the Dotster.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On October 2, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 22, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@soleluna.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On November 12, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The  <soleluna.com> domain name is identical to Complainant's SOLELUNA mark.

Respondent has no rights or legitimate interests in the disputed domain name.

Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Complainant holds an Italian Trademark Registration for SOLELUNA.  Complainant is Jovanotti, an Italian singer who is known throughout Italy, Europe and South America.  SOLELUNA is the name of Complainant’s music label.  Respondent has used the SOLELUNA mark since 1993.  Complainant has used the <soleluna.com> domain name since 1995, but due to a technical error the registration expired in July of this year.  Under the registration of Complainant <soleluna.com> was the most visited Italian website of 2001.  The domain name is used in all official merchandising material for Complainant.  Complainant has had various hits on the Italian music charts since 1992, including “Serenata Rap,” which was the most highly broadcast video on Latin MTV.  Complainant performed at the MTV European Music Awards in Rotterdam in 1998, and has also written a best-selling book Feltrinelli that is a collection of his original writings.  Complainant combined the release of his book with a presentational tour that gathered together some of Italian literature’s most noted writers.  Complainant used the <soleluna.com> domain name as a hub for his multimedia projects and several interactive projects.  It is a valuable asset to his entertainment and artistic career and its popularity has resulted from the goodwill associated with Complainant’s name as an artist, entertainer and social activist.

Respondent registered the disputed domain name on July 24, 2002.  Respondent is a Chinese company that does not have a license from Complainant to use the SOLELUNA mark.  Respondent has not established a website at the disputed domain name, instead, the domain name is parked and displays a standard Dotster page.  Respondent’s email, address and phone information are all incorrect or canceled, thereby frustrating any attempts by Complainant to negotiate for the return of the <soleluna.com> domain name.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical to and/or Confusingly Similar

Complainant has established in this proceeding that it has rights in the SOLELUNA mark through continuous and extensive use in Italy, Europe and Latin America, as well as through its Italian trademark registration. 

The domain name registered by Respondent, <soleluna.com>, is identical to Complainant’s mark because it incorporates Complainant’s entire mark and merely adds the generic top-level domain “.com.”  The addition of a top-level domain does not create a distinct mark because it is a required element of all domain names.  Therefore, its addition to a domain name is irrelevant when determining whether the disputed domain name is identical or confusingly similar to Complainant’s mark.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Visit Am., Inc. v. Visit Am., FA 95093 (Nat. Arb. Forum Aug. 14, 2000) (finding that the “.com” is part of the Internet address and does not add source identity significance).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights to or Legitimate Interests

Respondent did not respond to Complainant’s allegations and the Panel may therefore assume that Respondent lacks rights and legitimate interests in the disputed domain name.  When Complainant makes a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate rights or legitimate interests in the domain name).

Furthermore, because Respondent has not submitted a Response, the Panel may accept all reasonable allegations and inferences in the Complaint as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Respondent registered the disputed domain name within days of the expiration of Complainant’s registration.  Respondent then proceeded to park the disputed domain name by displaying a Dotster webpage.  Respondent’s behavior suggests that it registered the disputed domain name with the intention of disrupting Complainant’s business or selling the domain name registration back to Complainant.  Neither of these two uses would be considered to be in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor would they be legitimate noncommercial or fair uses pursuant to Policy ¶ 4(c)(iii).  See Kinko’s Inc. v. eToll, Inc., FA 94447 (Nat. Arb. Forum May 27, 2000) (finding that Respondent has no rights or legitimate interests in the domain name where it appeared that the domain name was registered for ultimate use by Complainant); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that Complainant’s prior registration of the same domain name is a factor in considering Respondent’s rights or legitimate interest in the domain name).

Respondent has not come forward to offer any evidence that it is commonly known by any other name than “G4C.”  Furthermore, all of Complainant’s attempts to contact Respondent have been thwarted because Respondent’s WHOIS information does not lead to a working phone number, email address, or mailing address.  As a result, no evidence on this record suggests that Respondent is commonly known as SOLELUNA or <soleluna.com> and therefore, Respondent has failed to establish that it has rights or legitimate interests in the disputed domain name.  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Situations that give rise to bad faith that are listed in Policy paragraph 4(b) are not exclusive.  The Policy recognizes that many circumstances may evidence bad faith registration and use.  See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).

A presumption of bad faith on the part of Respondent exists when Respondent registers the disputed domain name after Complainant’s registration expires.  Therefore, absent evidence to the contrary, it is assumed that Respondent registered and used the disputed domain name in bad faith.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name has been previously used by Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary); see also BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where Respondent took advantage of Complainant’s failure to renew a domain name).

It can be inferred that Respondent registered the domain name primarily for the purpose of selling the subject registration back to Complainant because Respondent registered the domain name immediately after Complainant’s registration expired and subsequently has made no independent use of the domain name.  The registration of a domain name primarily for the purpose of renting, selling or transferring the registration is considered to be evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby GRANTED.

Accordingly, it is Ordered that the domain name <soleluna.com> be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

               Dated: November 26, 2002.

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