The Complainant is Gromart S.r.l.of Turin, Italy, represented by SILKA Law AB, Sweden.
The Respondent is Dream Internet of Qormi, Malta.
The disputed domain name <gromgelato.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2018. On February 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 22, 2018, the Registrar transmitted by email to the Center its verification response confirming 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 23, 2018.
The Center appointed Knud Wallberg as the sole panelist in this matter on March 27, 2018. 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.
The Center received a letter on March 29, 2018, from PricewaterhouseCoopers (“PwC”), Malta, in which PwC stated that the Center’s letter to the Respondent, Dream Internet, (which was addressed to the physical address of the Respondent as provided in the WhoIs for the disputed domain name) was received at the address of PwC’s Maltese office. However, PwC informed the Center, that Dream Internet is not a client of PwC and is not authorized by PwC to make use their address or telephone number.
The Complainant opened its first ice cream store in Turin, Italy, in 2003 and has since then expanded to other countries including the United States of America, France, Indonesia, Japan and the United Arab Emirates.
The Complainant is the owner of several trademark registrations for the term GROM, including the European Union Trademark registration No. 004899415, registered on January 24, 2007, word mark, classes, 30, 35 and 43.
The Complainant further owns several domain names containing the trademark such as <grom.it>, <grom-gelato.at>, <gromgelato.at>, <gromgelato.de> and <grom-gelato.de>.
The disputed domain name was registered on July 10, 2017, and resolves to a parking page.
The Complainant contends:
(i) that the disputed domain name is confusingly similar to the GROM trademark in which it has rights. The disputed domain name incorporates the GROM trademark in its entirety and differs from the trademark only by the addition of the generic term “gelato”;
(ii) that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not a licensee of the Complainant nor has the Respondent been authorized or allowed by the Complainant to make any use of its GROM trademark;
(iii) that the disputed domain name was registered and used in bad faith. It is thus inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant’s trademark. The fact that the disputed domain name is not used actively by the Respondent does not dispel a finding of bad faith inter alia because the Respondent’s holding of the disputed domain name prevents the Complainant from reflecting its mark in the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel finds that the disputed domain name <gromgelato.com> is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark GROM because it contains the mark in its entirety with the addition of the dictionary term “gelato”. The generic Top-Level Domain “.com” does not dispel a finding of confusing similarity in the present case.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark and given the circumstances of this case, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has not produced, and indeed there is no other evidence of the types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain name on the part of the Respondent in these proceedings.
Consequently, the Panel finds that the condition in paragraph 4(a)(ii) of the Policy is also fulfilled.
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the 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 respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case, including the evidence on record of the use of the Complainant’s trademark for ice cream (“gelato”), and the distinctive nature of the mark GROM, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose a domain name which could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain name was registered in bad faith.
The disputed domain name is used for what appears to be a standard parking site provided by the Respondent’s host. However, as first stated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and repeated in many subsequent decisions under the UDRP: “the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by Respondent to amount to the domain name being used in bad faith.”
Given the reputation of the Complainant’s GROM mark for ice cream, it is immediately inconceivable to the Panel that the Respondent will be able to use the disputed domain name, for any purpose that would not be infringing the Complainant’s rights. The Panel further finds that the Respondent’s lack of bona fide use of this disputed domain name is likely to disrupt the business of the Complainant since it prevents the Complainant from registering and using the disputed domain name for their business.
Moreover, providing false contact details when registering a domain name, as the Respondent has done in this case, further confirms a finding of bad faith. See, e.g., Pfizer Inc. v. Ubrokerage inc, WIPO Case No. D2015-1927, and PwC Business Trust v. CulitoSa, WIPO Case No. D2001-1109 (providing false name for registration “is evidence of bad faith”).
Noting that the disputed domain name incorporates the particular trademark GROM, together with the descriptive term “gelato” and the gTLD “.com”, that no Response has been filed and that it appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name, and considering all the facts and evidence, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <gromgelato.com> be transferred to the Complainant.
Date: April 13, 2018
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