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Maglificio Gran Sasso spa v. Info [2004] GENDND 610 (12 May 2004)

1. The Parties

The Complainant is Maglificio Gran Sasso spa, Sant'Egidio alla Vibrata (TE), Italy, represented by Dr. Luca Calcagnoli, Italy.

The Respondent is Info, Seoul, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <gransasso.com> is registered with Tucows, Inc.

3. Procedural History

The Complainant filed a Complaint with the WIPO Arbitration and Mediation Center (the "Center") by email on January 12, 2004. The Center received a hardcopy version of this Complaint on January 21, 2004.

In accordance with this Complaint, the Respondent was "yamtech inc., Seoul, Republic of Korea".

The registrar of the disputed domain name was IARegistry.

On January 13, 2004, the Center transmitted by email to IARegistry a request for registrar verification in connection with the domain name at issue.

On January 13, 2004, IARegistry transmitted by email to the Center its verification response confirming that the Respondent has registered the domain name at issue with IARegistry, that the UDRP policy applies and that the disputed domain is at lock status. Furthermore, IARegistry provided the contact details for the administrative, billing, and technical contact.

On January 23, 2004, the Center informed the Complainant via email that the Complaint was administratively deficient since it did not provide any arguments and discussions under the elements (2) and (3) of the paragraph 3(b)(ix) of the rules. The same day the Complainant filed an amendment to the Complaint via email. The Center received a hardcopy version of this amendment on January 30, 2004.

Upon notice of the Complainant to the Center on February 3, 2004, and February 6, 2004, the Center informed the Complainant on February 12, 2004, that the domain name at issue had been transferred on January 31, 2004, to a new owner, "info, Seoul, Republic of Korea", and to a new registrar Tucows, Inc. while the case was with the Center.

On March 29, 2004, the Center informed via email the Complainant that the Center had been unsuccessful in getting the disputed domain name back from the new owner to the original respondent. Therefore, the Center asked the Complainant to amend the Complaint.

Also on March 29, 2004, the Center transmitted by email to Tucows, Inc. a request for registrar verification in connection with the disputed domain name and asked the registrar to keep this domain name on lock.

The same day Tucows, Inc. transmitted by email its registrar verification. In this email Tucows, Inc. especially confirmed that the Respondent is registrant of the domain name at issue, that UDRP applies and that the domain name is on registrar lock during the administrative proceeding. Furthermore, Tucows, Inc. provided the contact details for the administrative, billing, and technical contact.

On March 31, 2004, the Center received from Complainant the Complaint amendment via email and fax and on April 7, 2004, also a hardcopy version.

On April 1, 2004, the Center verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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"). The proceeding commenced the same day.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint via email to two email accounts of the Respondent and via courier to an address indicated with the administrative contact of the Respondent. In accordance with the Rules, paragraph 5(a), the due date for Response was April 21, 2004.

However, on April 1, 2004, the Center received two emails from the Respondent's email accounts. The first stated that it had permanent fatal errors, the second stated that the delivery had failed. On April 29, 2004, the Center became aware of the fact that the hardcopy sent by courier was "returned to shipper" since the address provided in registrar's WHOIS details did not exist. Having reviewed the communications records in the case file, the Panel finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent".

Having received no response from the Respondent within the specified time in the notification of the Complaint, the Center notified the Respondent's default on April 22, 2004, to both parties. The Panel establishes that the Respondent has also not responded to the Complaint after that date.

On April 29, 2004, the Center appointed Christian Schalk as the sole panelist in this matter. 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 paragraph 7 of the Rules.

On April 29, 2004, the parties were notified that Mr. Schalk had been appointed and that a decision was to be, save exceptional circumstances, to be forwarded to the Center by May 13, 2004.

The language of the proceeding is English.

The Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules. Payment was properly made. The Panel agrees with the Center's assessment concerning the Complaint's compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the Rules. No response was filed by the Respondent.

4. Factual Background

The Complainant is an Italian based knitwear factory. It is owner of registrations of the trademark GRAN SASSO in many countries over the world and in particular of the following registrations:

- European Community Trademark Registration No. 268284, dated March 29, 1999, for a number of goods in the Int. Classes 18 and 25;

- European Community Trademark Registration No. 2391837, dated February 3, 2003, for a number of goods in the Int. Classes 3, 9 and 18;

- United States Trademark Registration No. 2,665,872, dated December 24, 2002, for a number of goods in Intl. Class 25;

- Italian Trademark Registration No. 709068, dated June 5, 1997, for goods in International Class 25;

- International Trademark Registration No. 672940, dated June 5, 1997, for goods in International Class 25 which covers in particular a number of eastern European countries and also the Republic of Korea.

The ownership of the Complainant of these trademarks has been evidenced by copies of the registration certificates and extracts from trademark databases.

The domain name <gransasso.com> was registered by `yamtech inc' on June 29, 2001. This domain name registration has not been authorized by the Complainant.

On November 21, 2001, the Complainant contacted the administrative owner of the registrant via email asking for a "selling offer regarding <gransasso.com>". The Complainant received the following message from the administrative contact of `yamtech inc':

"How about US$ 3000 ?

Can you pay ?

Let me know your max. price.

I will help you.

Regards,

Lee"

On December 21, 2001, the same administrative contact forwarded an email to the Complainant in which a person asked for advice on stores in the New York area where she could purchase a "men's Gran Sasso sweater".

A printout of the website which is accessible under the domain name <gransasso.com>, dated January 8, 2004, indicates that the domain name is for sale.

On January 31, 2004, `yamtech inc' transferred the domain name at issue to `info', the Respondent.

5. Parties' Contentions

A. Complainant

The Complainant submits that the domain name is identical to a trademark in which the Complainant has rights.

Furthermore, the Complainant alleges that the Respondent has no interests or rights in respect of the disputed domain name. The reason is that the brand GRANSASSO is associated with the Complainant. In accordance with the Complainant this can be shown by an email which a potential customer sent to the registrant on December 21, 2001, assuming that he would reach the Complainant. `yamtech inc' was obviously aware of the fact that this person wanted to contact the Complainant and therefore, he forwarded the email to him.

Furthermore, the Complainant contends that the domain name was registered and is being used in bad faith since it was registered for the purpose of selling which could be shown by the email correspondence with `yamtech inc' in November 2001, and the printout of the "www.gransasso.com" - website of January 2004.

B. Respondent

The Respondent did not reply to the Complainant's contentions. It has therefore, not contested the allegations of the Complainant and the Panel shall decide on the basis of the Complainant's submissions, and all inferences that can reasonably be drawn there from (see: Bayerische Motorenwerke AG v. Dariusz Herman, Herman DOMCREATE et co. (WIPO Case No. DNAME2004-00001).

6. Discussion and Findings

The jurisdiction of the Panel is limited. National law is not determinative for the purpose of decisions under this policy. The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law it deems applicable (Paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, a domain name can be transferred only where the Complainant has proven that each of the following three elements is present:

A) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

B) The domain name holder has no "rights or legitimate interest in respect of the domain name"; and

C) The domain name "has been registered and is being used in bad faith."

A. Identical or Confusingly Similar

Ignoring, as the Panel is entitled to do, the generic ".com" Top Level Domain, the Domain Name is identical with the Complainant's trademark (see also: Deutsche Post AG v. MailMij LLC (WIPO Case No. D2003-0128). Even if the ".com" Top Level Domain would be regarded as a element which distincts the disputed domain name from the Complainant's trademark, the result would be the same since many cases under the Policy have held that "essential" or "virtual" identity is sufficient for the purposes of the policy (see also: Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp. (WIPO Case No. D2001-0936), Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan (WIPO Case No. D2001-0615) with further references). Therefore, the domain name <gransasso.com> is identical with Complainant's trademark GRAN SASSO.

A. Rights or Legitimate Interests

The Policy paragraph 4(c) provides that any of the following circumstances, in particular but without limitation, shall demonstrate rights or legitimate interests to the domain name for the purposes of paragraph 4(ii);

a) "before any notice to you of the dispute, your use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

b) you (as an individual or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

c) you are making a legitimate non-commercial 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 Respondent cannot demonstrate legitimate rights in the disputed domain name for the following reasons:

The Complainant has not authorized the Respondent to use its trademark nor to register the disputed domain name. Furthermore, the Respondent is not known by the domain name at issue and does not offer goods or services under the GRANSASSO trademark. It has not acquired trademark or service mark rights for GRANSASSO and is not making any legitimate noncommercial or fair use of the disputed domain name.

These circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent. The evidentiary burden, therefore, shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interest in that name. (see Köstrizer Schwarzbierbrauerei v. Macros-Telecom Corp. (WIPO Case No. D2001-0936), Do The Hustle, LLC v. Tropic Web (WIPO Case No. D2000-0624) with further references).

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and uses the domain name in bad faith in violation of the Policy paragraph 4(a)(iii). The Policy paragraph 4(b) sets forth four non-exclusive criteria for Complainant to show bad faith registration and use of domain names:

1) Circumstances indicating that you 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 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

2) 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

3) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

4) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location of a product.

According to the material before the Panel, the only use to which the disputed domain name has been put at time of filing the Complaint was, to connect it to a website where the disputed domain name was offered for sale. In the absence of a response, the Panel infers that the sale of the disputed domain name at profit was the primary purpose for which the disputed domain name was registered. Moreover, the Complainant had been asked by the administrative contact of `yamtech inc' in November 2001, for an amount of US$ 3000 as a price for getting the disputed domain name transferred. This amount is much higher than usual expenditures for registration and maintenance of the disputed domain name. Under paragraph 4(b)(i) of the Policy, this is sufficient evidence of both bad faith registration and bad faith use if "yamtech inc' would still be the Respondent of this case. However, since the domain name has been transferred to the Respondent on January 31, 2004, the question is whether the Respondent has registered and uses the disputed domain name in bad faith.

There are good reasons to believe that `info' is a sham and therewith identical or at least related with `yamtech inc' and that the only purpose of the transfer was to frustrate or at least to delay without any justification the Complainant's attempt to get transferred the disputed domain name which is identical to one of its trademarks. The transfer of the disputed domain name took place several days after the Complainant had sent the Complaint via email to `yamtech inc' who became aware of the challenge of "his" domain name and after the registrar replied to request for verification to the Center. Such a transfer constitutes a breach of paragraph 8 of the Policy since neither `yamtech inc' nor `info' have provided the Panel with any written evidence required in paragraph 8(a) of the Policy. The domain name transfer has delayed considerably the whole case and forced the Complainant to amend his Complaint. Furthermore, every attempt to deliver the Complaint to `info' has failed due to an incorrect address. These reasons are sufficient to recognize this behaviour as bad faith registration and bad faith use.

However, it could be that the Respondent is a different entity since his contact details differ from those of `yamtech inc'. If this is the case the Panel establishes that in accordance with the arguments outlined above the bad faith of the prior domain owner attaches to the domain name and passes with the transfer to the Respondent as a subsequent domain name owner since "one cannot pass good title to a domain name where one does not have good title" (see also: Mucos Emulsions, GmbH and Marlyn Nutraceuticals, Inc. v. Esex.org and Kim Taeho (WIPO Case No. D2000-1513)). This is the case here since `yamtech inc' in clear breach of paragraph 8(a) of the Policy obviously tried to frustrate or at least to delay the Complainant's efforts to get transferred the disputed domain name which is identical with its trademark. This taint clings to the domain name unless the Respondent shows evidence that he has rights and legitimate interests in this domain name and is not owning the domain name in bad faith and acting in bad faith. The Panel concludes that the Respondent has not shown any rights and legitimate interests in the disputed domain name. Furthermore, the passive holding of the domain name by the Respondent amounts to the Respondent acting in bad faith for the following reasons: the Complainant's trademark is protected in many countries of the world. The email request of a US citizen seeking to purchase the Complainant's Gransasso - sweater in the US shows that the Complainant's trademark is also internationally known. Furthermore, the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name. Moreover, the Respondent has actively provided and failed to correct false contact details in breach of its registration agreement (see also: Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003)) in order to frustrate or at least to delay any attempts of transferring the disputed domain name to the Complainant.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <gransasso.com> be transferred to the Complainant.

Christian Schalk
Sole Panelist

Dated: May 12, 2004