WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gaggia S.p.A. v. Yokngshen Kliang
Case No. D2003-0982
1. The Parties
The Complainant is Gaggia S.p.A., Robecco sul Naviglio (MI), Italy, represented by Buzzi, Notaro & Antonielli d�Oulx, Italy.
The Respondent is Yokngshen Kliang, Nanning, Guangxi, Republic of China.
2. The Domain Name and Registrar
The disputed domain name is , registered with Tucows (hereafter "the disputed domain name").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 11, 2003. On December 12, 2003, the Center transmitted by email to Tucows a request for registrar verification in connection with the disputed domain name. On the same day, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On December 17, 2003, the Complainant filed, sua sponte, supplemental information to its Complaint, with e-mail copy to the Respondent. The Center verified that the Complaint and the additional information filed by the Complainant 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 the Respondent of the Complaint, and the proceedings commenced on December 29, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on January 20, 2004.
The Center appointed Pierre Olivier Kobel as the sole Panelist in this matter on January 26, 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
The Complainant holds the following trademarks:
- an Italian trademark "GAGGIA" No 882923, registered in 1949, under classes 7, 11 and 21, for coffee machines, roasting machines milling machines and dosing machines;
- an International trademark "GAGGIA" No 2R177211, registered in 1976 under classes 7, 9 and 11 for coffee milling machines and coffee dosing machines;
- a Chinese trademark "GAGGIA" No 75468, registered in 1976, under class 11
for which certificates were produced.
It appears that Complainant actually registered its GAGGIA trademark in approximately 38 countries and as a European trademark.
The Complainant also registered the domain name on July 21, 1997.
The disputed domain name was registered by Respondent on September 29, 1999.
5. Parties� Contentions
A. Complainant
The Complainant contends that the disputed domain name is identical and confusingly similar to its trademark GAGGIA.
The Complainant explains that on December 24, 2002, its legal counsel sent to the Respondent, by e-mail and regular mail, a letter informing about the Complainant�s rights in the trademark GAGGIA and inquiring very politely about the possible interests of the Respondent in the disputed domain name. The Complainant alleges that it did not receive any reply from the Respondent.
In the absence of delivery failure notice, the Complainant assumes that the Respondent received its letter in electronic format. However, the letter, sent by regular mail to the address mentioned in the Registrar�s Whois database was returned to the Complainant bearing a notice "insufficient address." The Complainant therefore concludes that the Respondent provided an incorrect address, in breach of its obligations under paragraph 2(a) of the Policy. According to the Complainant, this is an indication of the Respondent�s bad faith.
The Complainant explains further that it never licensed or otherwise authorized the Respondent to use its trademark to register and use the disputed domain name and that as far as it is aware, the Respondent is not commonly known by the name "gaggia." The Complainant submits that since the registration of the disputed domain name, the Respondent has made no use or demonstrable preparation to use the disputed domain name for any bona fide offering of goods or services or any other legitimate non-commercial purpose.
The Complainant further alleges that at the time the disputed domain name was registered, there were numerous sites referring to its trademark "GAGGIA." A domain name was registered on July 21, 1997, and a domain was registered on December 30, 1998. As a result, the Respondent could not ignore the famous trademark. According to the Complainant, the fact that under the notice "www. is under construction" various search boxes are proposed including one for "gambling" activities, is another indication of the Respondent�s bad faith.
The Complainant seeks the transfer of the disputed domain name.
B. Respondent
The Respondent did not respond to the Complaint.
6. Discussion and Findings
Default does not relieve the Complainant from proving that the disputed domain name is identical or confusingly similar with the trademark or service mark in which it has rights, that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the disputed domain name has been registered in bad faith (paragraph 4(a) of the Policy). However, paragraph 14(b) of the Rules somewhat alleviate such burden of evidence, as it allows the panel to draw such inferences from Respondent�s default, as the panel considers appropriate.
A. Identical or Confusingly Similar
The Complainant has proven that it holds valid trademarks in the name "GAGGIA." Since the disputed domain name is identical to the trademark of the Complainant, the Panel considers that the Complainant has proven identity in the meaning of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant contends that it has never licensed its trademark to the Respondent or otherwise authorized the Respondent to use its trademark as a domain name. It also contends that the Respondent is not commonly known by the name "Gaggia" and therefore has no legitimate interest in the disputed domain name.
In the absence of Response to the Complaint, the Panel is satisfied that the Complainant has prima facie proven the absence of legitimate interest of the Respondent in the meaning of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The real issue in the present case is to determine whether the Complainant has proven bad faith or not. The requirement of bad faith is distinct from the requirement that the Respondent lacks any right or legitimate interests in the disputed domain name. As expressed by another panel, something more is required because the Policy is not only designed to combat trademark infringement on the Internet or even questionable cases of cybersquatting, but rather abusive, bad faith cybersquatting (Edward Van Halen v. Deborah Morgan, WIPO Case No D2000-1313). Paragraph 4(b) of the Policy sets forth four criteria that are to be considered as evidence of the registration and use of a domain name in bad faith:
"(i) 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 the 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
"(ii) 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
"(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
"(iv) 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 or of a product."
However, these criteria are not exclusive and the panel may conclude that the Respondent acted in bad faith where other circumstances reveal the bad faith nature of the registration and use of the disputed domain name. It is now well settled that even inaction in itself may under certain circumstances be considered as evidence of bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; CBS Broadcasting Inc. v. EdwardEnterprises, WIPO Case No. D2000-0242 and all the decisions quoted in that award). As expressed in the Telstra case (see above), "it can be seen that the requirement in paragraph 4(a)(iii) that the domain name "has been registered and is being used in bad faith" will be satisfied only if the Complainant proves that the registration was undertaken in bad faith and that the circumstances of the case are such that Respondent is continuing to act in bad faith."
The Panel notes that the Complainant does not allege, and the fact of the present matter do not demonstrate, that the Respondent engaged in a pattern of conduct consisting in preventing owners of trademarks from reflecting their mark in corresponding domain names, in the meaning of lit (ii) above. One of the characteristics of the present case is that the disputed domain name remained inactive, thereby excluding application of lit (iv) above. Indeed, exhibits produced by the Complainant show that in December 2002, on February 17 and April 17, 2003, there was no site or anything to be found on the Web under the disputed domain name, and that on November 14, 2003, and on December 9, 2003, that is two days before the Complaint was filed, the service provider used by the Respondent was indicating that the site corresponding to the disputed domain name was under construction.
The Complainant mainly argues that the non delivery of its letter dated December 24, 2002 (because the address was "incomplete"), is an indication of bad faith because the Respondent is allegedly concealing its identity. The Panel notes in this respect, that the Complainant did not try to resend its letter and does not allege to have taken any other action to have its suspicions confirmed or denied. Apparently, the Complainant did not try to call the telephone number indicated by the Registrar and did not take any action to verify the Respondent�s address one way or another. The Complainant does not allege that the said telephone number is incorrect. The Panel also notes that the file does not indicate that the Complaint couriered to the Respondent, had not been delivered. The Panel therefore concludes that there is no real element in support of the Complainant�s argument that the Respondent attempted to conceal his identity.
The other argument set forth by Complainant, is that the "gambling" search box appearing on the page pointed to by the disputed domain name is an evidence of the Respondent�s attempt to attract Internet users for commercial gain, and therefore an indication of the Respondent�s bad faith. The Panel believes this to be a moot point. Basically, the Respondent is using his service provider to indicate that the site is under construction. The various search boxes appearing below the notice look like a regular feature of the registry�s services, and not a device intentionally set up by the Respondent to lure Internet users to its website. These search boxes may be commercial in nature, but they are related to the registry�s services and not the Respondent�s.
The Panel, however, believes that the evidence provided by the Complainant reveals other elements that are indicative of bad faith. First, the evidence shows that GAGGIA is an international trademark registered in a large number of countries in the world, including China since 1976. It also shows that GAGGIA has been used on Complainant�s web since at least 1997, two years before the Respondent registered the disputed domain name. Gaggia�s official site reveals that it is not a fantasy name, but the personal name of the founder of the company. Surprisingly, the Respondent who identifies himself as "yokngshen kliang" with address at "nanning, guangxi," registered a ".com" domain name which precisely matches the trademark of the Complainant. Notwithstanding the absence of explanation by the Respondent, the Panel believes that it is very unlikely that the transcription and even less the transliteration of a Mandarin word (or another Chinese idiom) in which the Respondent might claim to have legitimate interests, may end up into a Roman alphabet term which precisely matches the specific spelling of the Complainant�s trademark. In other terms, the Panel is satisfied that the disputed domain name was registered in bad faith by the Respondent in the meaning of paragraph 4(a)(iii) of the Policy.
After it registered the disputed domain name in bad faith, the Respondent, who does not have any apparent legitimate interest in the disputed domain name, failed to use it for more than four years. The Panel believes that such a complete inactivity was due to the fact that, sooner or later, the Complainant would be compelled to enquire about the disputed domain name. This is actually what happened at the end of 2002, leading the Complainant to write to the Respondent to inform about its rights in the trademark and to invite the Respondent to explain the reasons for the registration of the disputed domain name.
When receiving such notice, good faith requires a response. Instead, the Respondent did nothing. Although it had actual knowledge of the Complainant�s rights in the corresponding trademark, it did not reply and did not bother transferring or canceling the disputed domain name.
In the Panel�s eye, these circumstances are indications of bad faith inactive use. Instead of investing time and money on the disputed domain name, that is "actively using" a domain name which would unmistakably go noticed sooner or later by its legitimate rights holder, the Respondent was satisfied to hold the disputed domain name, thereby preventing the Complainant from legitimately reflecting its trademark and its corresponding commercial activities on the Internet.
For all these reasons, the Panel believes that the Respondent�s inaction in the present case equates to bad faith registration and use of the disputed domain name in the meaning of paragraph 4(a)(iii) of the Policy.
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 be transferred to the Complainant.
Pierre Olivier Kobel
Sole Panelist
Dated: February 8, 2004
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