The Complainant is Gruppo Buffetti S.p.A. of Rome, Italy, represented by Interpatent Studio Tecnico Brevettuale, Italy.
The Respondent is Twenty Four Hours, LLC of Cayman Islands, Overseas territory of the United Kingdom of Great Britain and Northern Ireland, represented by ESQ Law Firm, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Signature Domains, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2010. On December 10, 2010, the Center transmitted by email to Signature Domains, LLC a request for registrar verification in connection with the disputed domain name. On December 13, 2010, Signature Domains, LLC 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2011. The Response was filed with the Center on January 5, 2011 (EST) / January 6, 2011 (CET).
The Center appointed Christopher J. Pibus, Luis Larramendi and The Hon Neil Brown QC as panelists in this matter on February 14, 2011. The Panel finds that it was properly constituted. Each member of 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 owns Community Trademark Registration No. 1439538 for FULLTIME for a variety of paper, cardboard goods, including stationery, typewriters and office requisites etc. The Complainant also owns an Italian Trademark Registration for FULLTIME (Registration No. 1364529) for precious metals and their alloys and goods made therefrom, including jewelry, furniture, mirrors and picture frames etc. The Complainant was founded in 1852 and is a leader in distribution of office products and services in Italy. The Complainant operates over 900 franchise locations in Italy and has more than 4 million clients. The Complainant markets and distributes many categories of products, including furniture, office automations, stationery, publishing, gift and leather, print, software to various markets in Italy. The Complainant’s Buffetti name is a guarantee of quality and is well-known in Italy.
The disputed domain name was registered on May 4, 2001. At the time the Complaint was filed, the Respondent’s domain name reverted to a “parking site” which provided automatic generated advertising controlled by Google and Yahoo. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar
The Complainant owns the trademark FULLTIME. The Respondent has registered the disputed domain name which is identical to the Complainant’s registered trademark, except for the addition of the “.com” designation, which the Complainant submits is not a substantial difference to the registered trademark. Rights or Legitimate Interests
The Complainant submits that the Respondent is not commonly known by the words “fulltime”. The Complainant further submits that the Respondent is not making a bona fide use of the disputed domain name, and has used the domain name in connection with a website which provides links to websites of other businesses, some of which are direct competitors of the Complainant. Further, the Complainant submits that it never licensed or authorized the Complainant to use its FULLTIME trademark. Registered and Used in Bad Faith
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith for the following reasons: (i) the Respondent is using the confusingly similar domain name in association with the operation of a website which provides links to websites of other businesses, of which some are direct competitors of the Complainant; (ii) the Respondent is thereby preventing the registered trademark owner from obtaining and using the disputed domain name; and (iii) the Respondent was a named Respondent in another case of cybersquatting before the National Arbitration Forum concerning another registered trademark. B. Respondent
The Respondent filed extensive arguments in these proceedings denying all of the claims put forward by the Complainant. The Respondent contends that it registered the disputed domain name after a previous third party owner had failed to renew it in 2001. At the time the Respondent registered the disputed domain name, May 4, 2001, the Complainant did not own a trademark registration for the mark FULLTIME. The Complainant filed its Community Trademark Application on December 24, 1999, for the mark FULLTIME, but the Complainant’s application did not register until 2005, four years after the registration of the disputed domain name.
The Respondent submits that it was not aware of the Complainant or of the Complainant’s trademark FULLTIME when it registered the disputed domain name. The Respondent further submits that the Complainant has not provided any evidence that the FULLTIME trademark was known outside of Italy prior to the domain name registration of May 4, 2001. The Respondent does not reside in Italy, and was not exposed to any of the Complainant’s marketing efforts. The Respondent states that it did not register the disputed domain name with the Complainant’s trademark in mind and had no knowledge of the Complainant at the relevant time.
The Respondent further contends that it did not register the disputed domain name with the intention to sell it to the Complainant for monetary gain. The Respondent submits that it registered the disputed domain name because it is a common descriptive term which refers to “devoting one’s full attention and energies to something”.
The Respondent states that the Complaint should be dismissed on the basis of laches because the disputed domain name had been registered for over 9 years before the Complainant initiated these proceedings, or raised any objection against the Respondent.
The Respondent submits that it has employed Google and Yahoo to post various advertisements and links on its website with respect to employment and employment related materials and claims that such posts are automatically generated by those entities. The Respondent submits that it does not control the content of those advertisements and links as posted by Google and/or Yahoo.
The Respondent submits that with respect to the previous domain name dispute raised by the Complainant, a whole different set of facts was in issue. The Respondent states that it registered the domain name on behalf of a film maker who was doing a documentary on Cecilia Cruz. The domain name was transferred to her estate. Therefore, the Respondent states that the previous decision in the dispute should not be construed as a pattern of bad faith.
The Respondent claims that it had a right and legitimate interest when it registered and used the disputed domain name, that it had no knowledge of the Complainant and the Complainant’s rights, and that it is using the domain name in good faith. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established trademark rights in the mark FULLTIME by virtue of Community Trademark Registration No. 1439538, registered on October 5, 2005. The disputed domain name is identical to the Complainant’s trademark FULLTIME, except for the “.com” designation. The url designation such as a “.com” does not serve to distinguish a domain name from a registered trademark.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The Complainant has therefore satisfied the requirements under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Upon review of the evidence filed by the Complainant and the submissions and sworn declaration filed by the Respondent, the Panel finds that the Complainant has failed to establish the absence of rights and legitimate interests on the part of the Respondent when it registered and used the disputed domain name.
As a threshold point, the Panel accepts, on the basis of the evidence filed, that the word “fulltime” can be properly understood as a generic term, when used as a domain name. The Respondent filed convincing evidence to this effect, in the form of Google search results which point to multiple websites and users where the word “fulltime” appears primarily in its descriptive sense, and do not act as a trademark. Where a domain name in question has an obvious descriptive meaning like , complainants typically need to file compelling evidence of secondary meaning and established reputation to support their complaint. In this matter, the Complainant has failed to do so. Accordingly, the Panel accepts the Respondent’s arguments on this threshold point.
The Respondent also maintains, in detailed submissions supported by a sworn declaration, that it had no knowledge of the Complainant’s use of the FULLTIME trademark when it registered the disputed domain name in May, 2001. The Panel has no reason to doubt these submissions. In fact, the countervailing evidence filed by the Complainant is weak. The mere fact that a trademark application was filed by the Complainant in May, 1999, in Italy, is not sufficient to prove knowledge, or an absence of legitimate interest on the part of the Respondent. No registered rights in the FULLTIME trademark existed until 2005, in the name of the Complainant, 4 years after the Respondent had registered the disputed domain name.
The Panel acknowledges the Respondent’s arguments with respect to laches, based on the delay on the part of the Complainant to raise any objection to the disputed domain name registration for a period of more than 9 years. For purposes of this analysis, the Panel agrees that this sort of unexplained delay is not consistent with arguments that the Respondent lacks a legitimate interest in the disputed domain name.
Finally, the Panel acknowledges the evidence filed by the Respondent in the form of screen shots showing representative pages from it website from 2001-2005, which chronicle the long history of use un-related to the Complainant’s business, all of which tends to support a finding of right or legitimate interest in the disputed domain name on the part of the Respondent.
In these circumstances, the Panel is prepared to find that the Complainant has failed to meet the requirement under paragraph 4(b) of the Policy. C. Registered and Used in Bad Faith
In view of the finding on rights and legitimate interests, the Panel need not find in respect of bad faith. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Presiding Panelist
Luis Larramendi
Panelist
The Hon Neil Brown QC
Panelist
Dated: February 28, 2011
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