The Complainant is Giochi Preziosi S.P.A. of Milan, Italy, represented by Pietro Massarotto, Italy.
The Respondent is VGMD NetWeb S.L. of Lleida, Spain.
2. The Domain Name and Registrar
The disputed domain name, <gormiti.mobi> (the “Domain Name”) is registered with GoDaddy.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2009. On April 27, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 28, 2009, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 14, 2009. The Center verified that the Complaint together with the amendment to 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”).
Mr. Marc Rue, who is the administrative and technical contact for the Domain Name sent an email to the Center on May 5, 2009. The message contained an attachment, setting forth an explanation for the Respondent's registration of the disputed domain name. A second message was received from Mr. Rue on May 9, 2009, requesting information concerning the UDRP process. The Center acknowledged these communications on May 11, 2009 indicating, inter alia, that if no formal response was received from the Respondent the referenced messages would be transmitted to the administrative Panel on appointment.
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 May 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of the expiry of the response period on June 8, 2009.
The Center appointed Tony Willoughby as the sole panelist in this matter on June 19, 2009. 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.
In the absence of any other communication from the Respondent the Panel proposes to treat the document attached to Mr. Rue's email message of May 5, 2009 as the Response.
In that Response the Respondent referred to another ‘Gormiti' fan site, but did not disclose its whereabouts. Accordingly, on June 23, 2009 the Panel issued a procedural order requesting information in respect of that site. The Respondent responded the same day identifying the site. On June 24, 2009 the Panel issued a further procedural order inviting the Complainant to file a submission in relation to that site, if it wished to do so. The Complainant duly filed a further submission on June 26, 2009.
4. Factual Background
The Complainant is a leading Italian toy maker. One of the Complainant's games features a number of characters known as Gormiti. The unchallenged evidence of the Complainant is that since it introduced Gormiti to the market in 2005 it has sold 100 million Gormiti action figures.
The Complainant is the proprietor of numerous trade mark registrations of or including as a principal element the name GORMITI including, by way of example, International Registration No. 893216 dated May 5, 2006 GORMITI (word) in class 28 for inter alia games and playthings.
The Respondent operates a fan site, which is said to be in course of development at “www.gormiti.tv”.
The Domain Name was registered on April 9, 2008.
The Domain Name is not in active use and there is no evidence before the Panel to suggest that it ever has been in active use.
5. Parties' Contentions
A. Complainant
The Complainant contends that the Domain Name is identical to its GORMITI registered trade mark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Finally, the Complainant contends that, notwithstanding that the Respondent does not appear to have made any active use of the Domain Name, it was registered and is being used in bad faith
B. Respondent
The Respondent, by way of the communication from Mr. Marc Rue to the Center on May 5, 2009, acknowledges the fame of the Complainant's trade mark, but says that the Respondent's sole objective in registering the Domain Name was to “[b]uild a second site for our main Gormiti fan site ([which] has still a long way to be complete, but it's online). This second site will be mobile only, and may be accessed via any phone supporting web browsing”.
The site, which will “talk about Gormitis and it [sic] fans” is in course of development.
In order to demonstrate what it has been planning to do with the Domain Name, the Respondent produces drafts and mock ups of what the site will look like. The Respondent claims to have “lots of work”, meaning that websites which it categorises as “non-commercial” websites have to wait their turn in a queue. The Respondent puts the website being developed for the Domain Name in that category.
The Respondent contends that it is motivated entirely by good faith intentions. It admires the Complainant's Gormiti product and has no desire to cause the Complainant or Gormiti any harm. The Domain Name is not for sale.
In response to the Panel's Procedural Order No. 1 the Respondent disclosed that its main Gormiti fan site is connected to its domain name <gormiti.tv>.
C. Complainant's submission in respect of <gormiti.tv>
Having had the Respondent's site at “www.gormiti.tv” brought to its attention, the Complainant proposes to seek transfer of that domain name as well. The Complainant contends that it did not authorise either site and questions why the Respondent needs a second Gormiti fan site when it already has one such site.
The Complainant contends that the Respondent selected these domain names in order to attract visitors to its site “trading on the goodwill of the Complainant's trademark”. The Complainant contends that the Gormiti domain names have significant appeal value.
The Complainant cites UDRP decisions to support the proposition that where a respondent “knew or should have known” of the registration and use of the trade mark prior to registering the domain name in issue, a bad faith finding should follow. The Complainant points out that in this case there can be no question that the Respondent knew of the Complainant and its trade mark before registering either the Domain Name or <gormiti.tv>, its predecessor.
The Complainant contends that its rights in respect of its trade mark includes the right to use the mark to set up its own fan sites.
Finally, the Complainant cites two cases (dealt with below) to show that there have been cases where panels have found bad faith in relation to sites which purport to be noncommercial fansites.
6. Discussion and Findings
A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
B. Identical or Confusingly Similar
There is no dispute between the parties that the Complainant owns trade mark rights in respect of the name GORMITI.
The Panel finds that absent the generic domain suffix, which may be ignored for this purpose, the Domain Name is identical to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. It states that it has never given the Respondent any permission to use its GORMITI trade mark for this or any other purpose. It contends that none of the examples of what shall constitute rights or legitimate interests as set out in paragraph 4(c) of the Policy is applicable.
The Panel agrees that on the face of the Whois database, there is no obvious good faith reason why the Respondent should have selected the name. “GORMITI” is distinctive, yet the Respondent is not known by the name and there is no active use being made of the name to indicate why the Respondent might reasonably be said to have rights or legitimate interests in respect of it.
The Respondent acknowledges that it adopted the Domain Name precisely because it features a trade mark of the Complainant. However, it contends that its purpose is to develop a second fan site to accompany its “main Gormiti fan site” devoted to the Complainant's product, a site to be accessible via mobile telephones.
In support of that contention it has produced drafts and mock-ups of webpages illustrating its plans. They are all undated and there is no accompanying correspondence or other documentation to show that the work is genuine and not simply produced to defeat this complaint. Nor, originally, did the Respondent identify where its “main Gormiti fan site” was to be found, so the Panel had no means of assessing the truth of the Respondent's assertions. However, in response to the Panel's procedural order the Respondent's site connected to the domain name, <gormiti.tv>, was disclosed, which does indeed appear to the Panel to be a genuine fan site devoted to the Complainant's product.
Whether use of a domain name comprising a trade mark owner's trade mark (and nothing else) for a fan site devoted to that trade mark owner's product can suffice to give a respondent a right or legitimate interest in respect of the domain name in issue is a moot point. However, in light of the Panel's finding under the next head it is unnecessary for the Panel to seek to decide it.
D. Registered and Used in Bad Faith
The Respondent contends that it registered the Domain Name to “[b]uild a second site for our main Gormiti fan site ([which] has still a long way to be complete, but it's online). This second site will be mobile only, and may be accessed via any phone supporting web browsing”.
The Complainant evidently does not accept the reason given, stating in its response to the Panel's Second Procedural Order that “It's absolutely not clear why [the Respondent] needs a new fan site since it has already gots a Gormiti fan site”.
However, the Panel can see that if one has one fan site operating and one wants to have another one accessible via mobile telephones, the “.mobi” domain must be an attractive location for that purpose.
The issue for the Panel is whether this desire on the part of the Respondent to use the Complainant's trade mark for the Domain Name was a genuine desire to use it for a non-commercial fan site devoted to the Complainant's Gormiti product or whether it was actuated by a bad faith motive to exploit the Complainant's trade mark unfairly or to cause damage to the Complainant or its trade mark.
The resources available on the Center's website include the First WIPO Internet Domain Name Process and a transcript of the evidence of Dr. Gurry to a United States Congressional Committee in 1999 prior to the launch of the Policy. Both these documents make it clear that the purpose of the Policy is to deal with a very narrow category of abuse, namely the registration of domain names featuring another's trade mark for the express purpose of profiting unfairly from that trade mark or causing damage to that trade mark or to the business of the trade mark owner.
Paragraph 4(b) of the Policy sets out examples of what shall constitute bad faith registration and use for the purposes of paragraph 4(a)(iii) of the Policy, and each of those examples incorporates an intention on the part of a respondent to profit unfairly from use from the complainant's trade mark or to obstruct the complainant or to disrupt the complainant's business. Those examples are expressed to be non-exhaustive, but this Panel would have difficulty condemning a domain name registration which did not fit broadly within those parameters.
The Complainant contends that the Respondent's purpose falls fairly and squarely within those parameters. The Complainant contends that the Respondent registered the Domain Name with knowledge of the Complainant's trade mark and with a view to attracting Internet users to its website by way of the Complainant's trade mark. Thus far there is no dispute between the parties.
The Complainant then goes on to allege that the Respondent's purpose in attracting Internet users to its website was commercial:
“It's obvious that the Respondent […] tried to gain money from the commercial use of the famous trade mark GORMITI registered by the Complainant. After all, must be repeated that the Domain Name, <gormiti.mobi> was registered and used in bad faith and therefore its use is indeed commercial and any possibility of a non-commercial fair use is excluded.”
The Panel would have no difficulty in concluding that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy if there was anything before the Panel to suggest that the Respondent's purpose was indeed commercial.
In the Complainant's response to the Panel's Second Procedural Order the Complainant cites two WIPO decisions where domain names, which were claimed by respondents to have been registered for use for fan sites, were found nonetheless to have been registered for commercial purposes.
The first of those cases was David Gilmour, David Gilmour Music Limited and David Gilmour Music Overseas Limited v. Ermanno Cenicolla,
WIPO Case No. D2000-1459. In that case the Respondent admitted that he intended to use the fan site to sell merchandise relating to the complainant. In the second case, (1) Galatasaray Spor Kulubu Dernegi (2) Galatasaray Pazarlama A.S. (3) Galatasaray Sportif Sinai Ve Ticari Yatirimlar A.S. v. Maksimum Iletisim A.S.,
WIPO Case No. D2002-0726, the three member panel (of which the Panel was a member) found that the respondent's purpose in setting up the fan site was to gain business from the Complainant.
In this case, there is nothing before the Panel to demonstrate any commercial purpose on the part of the Respondent. The Respondent has produced some evidence (albeit not very satisfactory evidence) to demonstrate its plans for the Domain Name, namely a Gormiti fan site accessible by way of mobile telephones to complement its main Gormiti fan site, which is connected to its <gormiti.tv> domain name. This latter site appears to be a noncommercial enterprise. On visiting it the Panel could find no sign of any commercial endeavour. The Panel sought by way of the Second Procedural Order a submission from the Complainant dealing with this latter site. The Panel is entitled to assume that the Complainant will have conducted an investigation of the site, but the submission provides no details of any commercial activity on the site.
In the absence of any evidence of a commercial intent behind the Respondent's registration and use of the Domain Name it seems probable to the Panel that the Respondent will use the Domain Name for its claimed purpose. The Panel is unable to conclude that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
If new evidence subsequently comes to light to suggest that the Respondent's intent behind registration of the Domain Name was not as the Respondent claims, it may be that a re-filed complaint will be accepted.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Tony Willoughby Sole Panelist
Dated: July 2, 2009
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