The Complainant is Arnoldo Mondadori Editore S.P.A. of Milano, Italy, represented by Dragotti & Associati, Italy.
The Respondent is Grazia Style of Emerald Hills, California, United States of America (“US”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2012. On March 22, 2012 the Complainant submitted an amended Complaint. On March 28, 2012, the Center transmitted by email to GoD, LLC. a request for registrar verification in connection with the Domain Name. On April 3, 2012, GoD, 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 together with the amended 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 April 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 24, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2012.
The Center appointed Nicholas Smith as the sole panelist in this matter on May 11, 2012. 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 is a publishing company incorporated in Italy, with its head office located in Milan. It publishes a wide variety of books and magazines throughout the world. In particular, the Complainant publishes the Italian lifestyle magazine GRAZIA which is targeted at women and contains articles on subjects such as fashion, health and politics. GRAZIA has been distributed in Italy since 1938.
The Complainant has held a trade mark registration for GRAZIA (the “GRAZIA Mark”) since 1963. In 2006 the Complainant registered the GRAZIA Mark as a trade mark in the US, where the named Respondent is based.
The Domain Name was created on July 15, 2011. It resolves to a pay-per-click Internet site. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s GRAZIA Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the GRAZIA Mark. It holds several registrations for the GRAZIA Mark around the world, including in the US. GRAZIA Magazine was first published in 1938 and the GRAZIA Mark was first registered in 1963. The GRAZIA Mark is used by the Complainant for its GRAZIA Magazine and also to promote the Grazia Style Awards, a series of fashion awards associated with GRAZIA Magazine. The Complainant has also registered a number of domain names that incorporate the GRAZIA Mark, including , and .
The Domain Name consists of the GRAZIA Mark in its entirety with the addition of the suffix “style”. As such there is a high risk of confusion in the market resulting from the registration of the Domain Name.
The Domain Name was created on July 15, 2011 and consists of words which are identical to the Complainant’s GRAZIA Mark and constitute a clear infringement of the Complainant’s prior rights. There does not appear to be any company registered in the US called “Grazia Style” and the recent creation of the Domain Name precludes the possibility that the Respondent has any other rights in the Domain Name.
The administrative and technical contact for the Domain Name is Candace Cicogna, a fashion blogger who works for Glam Media, an advertising company. Given Ms. Cicogna’s background in fashion, advertising and online publishing, it is unlikely that she was unaware of GRAZIA Magazine at the time the Domain Name was registered. Furthermore in correspondence with the Complainant, Ms. Cicogna, made the offer to sell the Domain Name and twitter account GraziaStyle to the Complainant for EUR 10,000. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the GRAZIA Mark, having registrations for GRAZIA as a trade mark throughout the world, including in the US, where the Respondent is based.
Past UDRP decisions have found that a domain name that consists of a complainant’s mark and a generic term is confusingly similar to the complainant’s trade mark, see Hilton Worldwide, Hilton Hotels Corporation, HLT Domestic IP LLC and HLT International IP LLC v. mga enterprises limited/Domains by Proxy, Inc.,WIPO Case No. D2010-1064. This is especially the case when the descriptive term is a good or service provided by or associated with the Complainant.
The Domain Name consists of the GRAZIA Mark and the suffix “style”. This suffix “style” does not operate to distinguish the Domain Name from the GRAZIA Mark in any significant way. Rather, the possibility of confusion is strengthened considering that GRAZIA Magazine covers aspects of fashion and style, and the Complainant promotes the Grazia Style Awards. The Panel finds that the Domain Name is confusingly similar to the Complainant’s GRAZIA Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“ Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the GRAZIA Mark or a mark similar to the GRAZIA Mark. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Rather, the Respondent has offered to sell the Domain Name (and the related graziastyle twitter name) to the Complainant for EUR 10,000.
The Respondent is apparently known as “Grazia Style”. In some cases, this would amount to a legitimate interest pursuant to Paragraph 4(c)(ii) of the Policy. However, under the Policy, the mere fact that a respondent has an identical name to that of the disputed domain name does not automatically result in rights or legitimate interests in the domain name, see The Chancellor, Masters and Scholars of the University of Oxford v. DR Seagle,WIPO Case No. D2000-0308; Westpac Banking Corporation v. Sir Oxford University aka David Seagle Doc Seagle and Mr Oxford University,WIPO Case No. Case No. D2003-0250; The Chancellor, Masters and Scholars of the University of Oxford v DR Seagle t/a Mr. Oxford- University,WIPO Case No. D2001-0746; University of Melbourne v. union melb,WIPO Case No. DAU2004-0004.
In this case there has been no evidence put forward that any such entity known as “Grazia Style” exists. There is no evidence that a company has been registered known as “Grazia Style”, nor is there any evidence that a business is operating under that name. Rather, it appears from correspondence annexed to the Complaint that “Grazia Style” (the Respondent) is simply a pseudonym for Candace Cicogna, the administrative and technical contact for the Domain Name. The mere fact that Ms. Cicogna has chosen to use the pseudonym “Grazia Style” as the name of the registrant of the Domain Name does not grant her rights or legitimate interests in the Domain Name.
The Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Name. The Respondent has had the opportunity to rebut the presumption and has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name 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 owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its 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 trade mark 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 web site 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 the Respondent’s web site or location or of a product or service on the Respondent’s web site or location”.
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the GRAZIA Mark at the time the Domain Name was registered. It bases its conclusion on the reputation that the Complainant had in GRAZIA in the fashion and publishing industry at the time the Domain Name was registered, given that the Respondent is employed in that very industry. Furthermore, the Respondent has provided no alternative explanation, either in this proceeding or in correspondence with the Complainant, for her registration of the Domain Name.
Following correspondence between the parties, the Respondent offered to sell the Domain Name to the Complainant for the sum of EUR 10,000. By reason of the offer for sale, the failure to demonstrate any use of the Domain Name, and the Respondent’s likely awareness of the Complainant at the time of registration, the Panel finds that there are circumstances indicating that the Respondent has registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name’s registration to the Complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under 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 Domain Name be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Dated: May 14, 2012
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