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Microsoft Corporation v. coco lee [2005] GENDND 70 (26 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Piaggio & C. S.p.A., Piaggio USA, Inc. v. Phillip K. Waters, Jr.

Case No. D2004-0959

1. The Parties

Complainants are Piaggio & C. S.p.A., an Italian corporation (“Piaggio Italy”), and Piaggio USA, Inc., a Delaware corporation with a principal place of business in, California, United States of America (“Piaggio USA” and, together with Piaggio Italy, “Complainants”). Complainants are represented by Paul, Hastings, Janofsky & Walker LLP of Los Angeles, California, United States of America.

Respondent is Philip K. Waters, Jr., of Ohio, United States of America.

2. The Domain Names and Registrar

The disputed domain names <vespacleveland.com> and <clevelandvespa.com> (collectively, “the Disputed Domain Names”) are registered with Register.Com (“Register”).

3. Procedural History

The Complaint was received by e-mail on November 13, 2004, and in hardcopy on November 15, 2004, by the WIPO Arbitration and Mediation Center (the “Center”). On November 15, 2004, the Center transmitted by email to Register.com a request for registrar verification in connection with the Disputed Domain Names. Also on November 15, 2004, Register.com transmitted to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied 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”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 16, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was December 6, 2004. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on December 10, 2004.

The Center appointed Steven Auvil as the Sole Panelist in this matter on December 29, 2004. 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.

4. Factual Background

Piaggio Italy is well known as a producer of, among other things, motor scooters. Over the course of the last 60 years, Piaggio Italy has produced and sold millions of motor scooters throughout the world under the VESPA name. In the United States, Complainants sell various motor scooter models in connection with the VESPA name through the North American affiliate, Piaggio USA. Complainants have an authorized dealer in Akron, Ohio. Piaggio Italy owns, and Piaggio USA is the exclusive United States licensee of, the following U.S. Federal Registrations for trademarks consisting of the word VESPA: Reg. No. 1,929,118 (October 24, 1995) for the mark VESPA for scooters, motorcycles, bicycles, automobiles, small trucks, vans, boats, and structural parts thereof; and Reg. No. 2,038,301 (February 18, 1997) for the mark VESPA for various goods including posters, postcards, stickers and decals, patches and die-cast toy vehicles. Complainants are related corporations which have sufficient interest in the Disputed Domain Name for them to be joined in this action. See, e.g., Gannett Co., Inc. v. Henry Chan, WIPO Case No. D2004-0117 (April 8, 2004) (permitting related companies to appear as Complainants); NFL Properties, Inc. et al. v. Rusty Rahe, WIPO Case No. D2000-0128 (April 26, 2000) (permitting related companies to appear as Complainants). Complainants own e-commerce sites using the VESPA name located on the website at “www.vespa.com” and “www.vespausa.com”.

In addition to <vespacleveland.com> and <clevelandvespa.com>, i.e., the Disputed Domain Names, Respondent owns e-commerce sites located on the website at “www.clevelandscooters.com” and “www.prideofcleveland.com”, which identify themselves as promoting a motor scooter sales and servicing business called “Pride of Cleveland Scooters”, a motor scooter sales and service outlet located in Cleveland, Ohio. As of the date of this Decision, “Pride of Cleveland Scooters” advertised itself as being “Ohio’s LARGEST scooter shop!” and having “the widest range of scooters in the Midwest”. Complainants contend that Respondent not only operates this Ohio scooter sales and servicing business, but in the last two years initiated communications with Complainants in the hopes of becoming the authorized VESPA dealer for Cleveland, Ohio. Complainants state that they declined Respondent’s solicitations to become their authorized Cleveland, Ohio dealer, in part because they already had a business relationship with their Akron, Ohio dealer respecting the Cleveland, Ohio market. Complainants contend that in his communications with Complainants, Respondent expressed his displeasure that a “newcomer” would be competing with him in the Cleveland, Ohio market.

On April 22, 2003, Respondent registered the Disputed Domain Names. Complainants contend that Respondent registered them in retaliation for being denied the opportunity to become a VESPA authorized dealer in Cleveland. Complainants submitted copies of the front pages of the two e-commerce sites to which the Disputed Domain Names resolved evidencing that, as of September 22, 2003, both e-commerce sites identified themselves as promoting a motor scooter sales and servicing business called “Pride of Cleveland Scooters”. A July 20, 2004 e-mail from Respondent to Piaggio USA’s National Sales Director (the “July e-mail”) confirms that Respondent is affiliated with this business. Complainants acknowledge that as of November 11, 2004 (and, the Panel independently confirmed, as of the date of this Decision) the Disputed Domain Names instead respectively resolved to “Pride of Cleveland Scooters Club” and “Vespa Club of Cleveland” websites. However, Complainants contend that Respondent’s modifications of the Disputed Domain Names’ websites to purported “fan” websites or “club” websites are merely “thinly-veiled attempts to create the impression that they are run by bona fide fan clubs of Complainants’ products, when they are in fact operated by Respondent, who is Complainants’ local competitor [for selling and servicing motor scooters] in the Cleveland, Ohio market”.

Complainants contend that in July 2004 one of Piaggio USA’s employees contacted Respondent by telephone on two different occasions to request that he relinquish the Disputed Domain Names. Complainants contend that Respondent stated that Complainants chose the “wrong guy” to be their authorized Cleveland, Ohio dealer, that Complainants should have chosen Respondent, and that Respondent had no intention of relinquishing the Disputed Domain Names. A series of written communications followed, copies of which were submitted by Complainants with the Complaint in this proceeding. In the July e-mail, Respondent stated that “[t]he word Vespa is the Italian word for Wasp and it pertains to the Vintage Vespa model scooters many of the people in our scooter club ride. It also identifies the model of vintage scooters we service at our shop”. On August 25, 2004, Complainants, through counsel, sent a demand letter via certified mail to Respondent reiterating the demand that Respondent transfer the Disputed Domain Names to Complainants. Respondent purportedly never replied to that communication.

As a result, Complainants brought this proceeding seeking to gain control of the Disputed Domain Names.

5. Parties’ Contentions

A. Complainants

Complainants contend that the Disputed Domain Names are confusingly similar to their VESPA mark, that Respondent has no rights or legitimate interests in the Disputed Domain Names, and that the Disputed Domain Names were registered and are being used in bad faith. Complainants request that the Disputed Domain Names be transferred to Piaggio USA.

B. Respondent

Respondent did not respond to Complainants’ contentions. Accordingly, Respondent did not deny those contentions.

6. Discussion and Findings

To obtain relief, Paragraph 4(a) of the Policy requires Complainants to prove each of the following:

(1) that the domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainants have rights; and

(2) that Respondent has no rights or legitimate interest in the domain names registered by Respondent; and

(3) that the domain names registered by Respondent have been registered and used in bad faith.

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

A. Identical or Confusingly Similar

Complainants own the federally-registered VESPA mark, providing them with federal rights under the Lanham Act. The Disputed Domain Names literally incorporate the VESPA mark and were registered several years after Complainants began using and obtained a federal trademark registration for the VESPA mark. The only differences between the VESPA mark and the Disputed Domain Names are the Disputed Domain Names’ references to the city of Cleveland and the functional “.com” top level domain suffix. “It has previously been held in very many other proceedings before WIPO Panelists that a domain name created by appending a geographic term to another’s trademark or service mark does not change the domain name from being confusing[ly] similar to the trademark.” Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Administrative Panel Decision D2003-0601 § 6(A) (October 9, 2003) (ordering transfer of <volvopolska.com>). Moreover, the term “Vespa” is the dominant portion of each Disputed Domain Name, considering that the term “Cleveland” is geographically descriptive of Respondent’s location.

In all cases, the Panel concludes that both Disputed Domain Names are confusingly similar to Complainants’ registered trademark VESPA.

B. Rights or Legitimate Interests

Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, the respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) the respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy 4(c).

Complainants contend that Respondent has no rights or legitimate interest in either of the Disputed Domain Names. Complainants contend that Respondent was not licensed by Complainants to use the mark VESPA. Respondent has not presented any arguments in rebuttal. In this instance, the Panel is free to infer and does infer that Respondent has no such rights or a legitimate interest in either of the Disputed Domain Names. See, e.g., Pavillion Agency, Inc. v. Greenhouse Agency Ltd., WIPO Case No. D2000-1221 (December 4, 2000).

Moreover, nothing in the record suggests that Respondent has at any time used the Disputed Domain Names in connection with a bona fide offering of goods or services, or that Respondent is commonly known by either of the Disputed Domain Names. Respondent has not presented any arguments or evidence that he is making a legitimate noncommercial or fair use of one or both of the Disputed Domain Names, and it does not appear that he could make such a showing. Cf. DaimlerChrysler Corp. v. Bargman, WIPO Administrative Panel Decision D2000-0222 § 6 (May 29, 2000) (ordering transfer of <dodgeviper.com> despite claimed use as fan site); see also General Elec. Co. v. Japan, Inc., WIPO Case No. D2001-0410 §§ 6(A), (B) (June 14, 2001) (ordering transfer of <japan-ge.com> despite respondent’s claimed sales of GE parts).

For these reasons, the Panel concludes that the Respondent has no rights or legitimate interest in either of the Disputed Domain Names.

C. Registered and Used in Bad Faith

Finally, Complainants persuasively argue that Respondent has registered and used both of the Disputed Domain Names in bad faith. Specifically, Complainants essentially argue that Respondent’s bad faith is reflected in the fact that, with both constructive and actual knowledge of Complainants’ trademark rights, Respondent (1) attempted to redirect web traffic from one or both of the Disputed Domain Names to websites that were affiliated with a motor scooter retail outlet, namely Respondent’s, that sold and serviced the motor scooters of Complainants’ chief competitors; (2) did so in retaliation for being denied the opportunity to become Complainants’ authorized dealer in the Cleveland area; and (3) nothing in the record suggests that Respondent has a bona fide reason for Respondent’s choice of domain names that are confusingly similar to Complainants’ trademarks.

The Panel is persuaded that Respondent knew of Complainants’ rights in the mark VESPA when Respondent registered the Disputed Domain Names. The notice to Respondent was both constructive and actual. As to constructive notice, the record indicates that Complainants’ word mark VESPA was registered with the USPTO in 1995. Because Piaggio USA and Respondent reside in the United States, it is appropriate to apply the principle of constructive notice of Complainants’ trademark registrations established by 17 U.S.C. § 1072. See Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (March 10, 2000) (“Since both parties are domiciled in the United States . . . the Panel shall look to the principles of law in the United States.”). In addition, the Panel is also persuaded that Respondent had actual notice of Complainants’ rights before registering the Disputed Domain Names. Complainants began doing business under the name VESPA approximately 60 years ago and the VESPA scooter is widely known. There is evidence in the record demonstrating that Respondent operates a motor scooter sales and servicing business in Cleveland, Ohio. The Disputed Domain Names’ websites themselves evidence familiarity with the VESPA scooter inasmuch as they purport to be associated with a “Vespa Club of Cleveland” or with a “Pride of Cleveland Scooters Club”. Considering (1) Respondent’s failure to submit a Response in this proceeding (which permits the Panel to draw appropriate inferences pursuant to Paragraph 14(b) of the Rules), (2) the fact that the VESPA name is widely known and that Respondent is engaged in a business through which he presumably encounters it (confirmed by the July e-mail), (3) the fact that there is and Respondent is aware of an authorized VESPA dealer in Akron, Ohio, which is in the same federal district as Respondent’s business, and (4) prior WIPO decisions considering this issue, the Panel is persuaded that Respondent knew or should have known of Complainants’ rights at the time Respondent registered the Disputed Domain Name. See, e.g., Jupiters Ltd. v. Aaron Hall, WIPO Case No. D2000-0574 (August 3, 2000) (finding bad faith: “[T]he fact that Complainant’s name and trademark is so well and widely known, coupled with the fact that Respondent’s mailing address is in the same district as Complainant’s business, makes it inevitable that Respondent registered the Domain Name in full knowledge of Complainant’s rights and interests.”); See, e.g., eBay Inc. v. SGR Enterprises, WIPO Case No. D2001-0259 (April 11, 2001) (“Actual or constructive notice knowledge of the Complainant’s rights in its trademark is a factor supporting bad faith.”); Kate Spade LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 (January 3, 2002) (applying principle of constructive notice in finding bad faith).

There is no evidence in the record suggesting Respondent has ever made a bona fide commercial or noncommercial use of either of the Disputed Domain Names. Considering that (1) Respondent never filed a Response submitting any evidence that Respondent has ever made any bona fide use of the Disputed Domain Names, (2) the VESPA name is widely known and is known to Respondent, and (3) the Disputed Domain Names incorporate Complainants’ trademark, the Panel finds it highly unlikely that there could be any legitimate reason for Respondent’s choice of the Disputed Domain Names. See, e.g., eBay, Inc. v. SGR Enterprises, WIPO Case No. D2001-0259 (April 11, 2001) (“[I]t is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would be legitimate.”); Telstra Co. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) (the fact that the complainant was “widely known” by its trademarked name contributed to the panel’s conclusion that “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would be legitimate”).

All of these factors demonstrate Respondent’s bad faith in registering the Disputed Domain Names.

For these reasons, the Panel concludes that the bad faith element of the Policy is satisfied.

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 names <vespacleveland.com> and <clevelandvespa.com> be transferred to Complainant Piaggio USA, Inc.

Steven Auvil
Sole Panelist

Dated: January 12, 2005