WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vestopazzo s.r.l. v. This domain name is for sale, Shanshan Huang
Case No. D2019-3176
1. The Parties
The Complainant is Vestopazzo s.r.l., Italy, represented by Studio Legale Belardini - Bellinzoni, Italy.
The Respondent is This domain name is for sale, Shanshan Huang, China.
2. The Domain Name and Registrar
The disputed domain name <vestopazzo.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2019. On December 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 24, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 27, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 30, 2019.
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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2020.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on February 5, 2020. 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.
On February 26, 2020, the Panel issued its Procedural Order no. 1 requests the Complainant to comment and submit relevant evidence on some specific points. On February 27, 2020, the Complainant submitted further explanations and evidence. Furthermore, the Respondent was given a term until March 7, 2020 to submit his reply to the Center. No reply by the Respondent was received within this term.
4. Factual Background
The Complainant is an Italian company incorporated in 1994 who manufactures and offers for sale jewelry, scarfs, bags and clothing under the brand VESTOPAZZO.
According to the Registrar’s verification response, the Respondent registered the disputed domain name on December 9, 2014. The language of the registration agreement is English.
The Complaint is based on two verbal trademarks, applied for on or before the date of registration of the disputed domain name and consisting of the term VESTOPAZZO, i.e. Italian Trademark Registration No. 0001083803 (application date: May 5, 2004, registered on December 13, 2007, renewed under No. 0001603944) for goods in classes 18 and 25, and European Union Trademark No. 013542931 (application date: December 9, 2014, registered on April 6, 2015,), registered for goods in classes 14, 18, 25. It results from the registration certificates that the registered owner of these two trademarks is ESOTICA S.r.l., Rome, Italy.
It further results from the undisputed evidence provided by the Complainant that the disputed domain name resolves to a parking website showing pay-per-click links to different third party websites. In addition, it results from that parking page that the disputed domain name is actually for sale at a price of USD 7,500.
5. Parties’ Contentions
A. Complainant
The Complainant contends to be the licensee of the numerous registered trademarks in Italy and Europe. Amongst these trademarks it names the two verbal trademarks presented above under Section 4. The Complainant further contends that it is the licensee of the above trademarks based on a license agreement dated March 22, 2016. In the Complainant’s view the disputed domain name is confusingly similar to the Complainant’s licensed trademarks VESTOPAZZO. In fact, the comparison between the trademarks and the disputed domain name shows that the latter consists of the former.
Secondly, the Complainant points out that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Respondent is not commonly known under the disputed domain name. Furthermore, there is no evidence that a website or other online presence is in the process of being established under the disputed domain name. Finally, the Respondent does not conduct any own business activity under the disputed domain name but is using it for pay-per-click links and for the purpose of selling it.
Finally, the Respondent’s registration and use of the disputed domain name constitutes – in the Complainant’s view – bad faith under several aspects: First of all, the disputed domain name was registered primarily for the purpose of selling, or otherwise transferring it to the owner of the trademark or to a competitor of that the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name, i.e. USD 7,500. Furthermore, the disputed domain name was registered just a few hours after European Union Trademark Application no. 013542931 has been lodged on December 9, 2014. In addition, the Complainant contends that the disputed domain name was registered in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name under the important generic Top-Level Domain “.com”.
B. Respondent
The Respondent did not reply to the Complainant’s contentions contained in the Complaint and the response to the Procedural Order no. 1.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “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 that it deems applicable”.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant claimed to be the licensee of several trademark registrations consisting of the verbal element VESTOPAZZO registered amongst others for goods in classes 18 and 25, in particular Italian Trademark Registration No. 0001083803 (application date: May 5, 2004, registered on December 13, 2007, renewed under No. 0001603944) for goods in classes 18 and 25, and European Union Trademark No. 013542931 (application date: December 9, 2014, registered on April 6, 2015,), registered for goods in classes 14, 18, 25. It results from the registration certificates that the registered owner of both marks is ESOTICA S.r.l., Rome, Italy.
Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Elliot Elliot,
WIPO Case No. D2018-0213; F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,
WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola,
WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,
WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,
WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainSource.com, Inc.,
WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates,
WIPO Case No. D2007-0464). This Panel shares this view and notes that registered trademark VESTOPAZZO is fully included in the disputed domain name. Consequently, there is identity or at least confusing similarity between the trademarks VESTOPAZZO and the disputed domain name.
Furthermore, the Complainant provided – following to the Panel’s Procedural Order No. 1 – a declaration signed by ESOTICA S.r.l., dated November 27, 2019. It results from this declaration that ESOTICA S.r.l. entitled the Complainant to enforce the above marks in any proceedings aiming to recover the disputed domain name and to register said disputed domain name in its own name should the Complainant prevail in such proceeding. In the absence of any comments by the Respondent to this declaration, the Panel has no doubt that this declaration is accurate and sufficient as prima facie evidence that the Complainant has indeed rights in a trademark under the UDRP for purposes of standing to file a Complaint.
In the light of the above, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to a disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
First, it results from the Complainant’s uncontested evidence that the disputed domain name resolves to a parking page containing pay-per-click advertising links. Such use cannot – in this Panel’s view – be qualified as a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy, since such links compete with or capitalize on the reputation and goodwill of the Complainant’s mark and are therefore likely to mislead Internet users (cf. section 2.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In addition, the Respondent did not submit any evidence of bona fide pre-Complaint preparations to use the disputed domain name.
Furthermore, the Panel notes that there is no evidence in the record or WhoIs information showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.
Finally, the Panel notes that there is no evidence in the record either showing that the Respondent might target a noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue pursuant to paragraph 4(c)(iii) of the Policy. In particular, the disputed domain name is used for a parking page and for an offer to sell the disputed domain name. That use is per se commercial, so that a noncommercial use is excluded from the outset.
It is acknowledged that once the Panel finds a prima facie case has been established, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, in particular, but without limitation, be evidence of the disputed domain name’s registration and use in bad faith. One of these circumstances is that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name (paragraph 4(b)(i) of the Policy).
It is the view of this Panel that the Respondent has actually registered the disputed domain name primarily for the purpose of selling it either to the Complainant or to third persons, in particular to one of the Complainant’s competitors, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name. It results from the Complainant’s uncontested evidence that the Respondent has offered the disputed domain name for sale to the public for a price of USD 7,500. This Panel finds that this sum is largely in excess of any out-of-pocket costs directly related to the disputed domain name (see T. Rowe Price Group, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,
WIPO Case No. D2019-1955).
In addition, this finding of bad faith registration and use is further supported by the further circumstances resulting from the case at hand, which are the following:
(i) the Respondent’s failure to submit a Response to the Complaint and to the Procedural Order No. 1 or to provide any evidence of actual or contemplated good faith use;
(ii) the implausibility of any good faith use to which the disputed domain name may be put;
(iii) the disputed domain name resolving to a parking page with pay-per-click links (see section 3.5 of WIPO Overview 3.0); and
(iv) the Respondent concealing its identity behind a privacy shield.
In the light of the above the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
7. Decision
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 <vestopazzo.com> be transferred to the Complainant.
Tobias Malte Müller
Sole Panelist
Date: March 12, 2020
