The Complainant is Cantarella Bros Pty Limited of Silverwater, New South Wales, Australia, internally represented.
The Respondent is Petar Karanovic, Syrah Corporation of Las Vegas, Nevada, United States of America ("United States"). 2. The Domain Name and Registrar
The disputed domain name is registered with TPP Wholesale Pty Ltd (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 15, 2016. On December 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 6, 2017, 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 January 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 1, 2017.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on February 6, 2017. 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 Panel briefly notes as a preliminary matter that the remedy requested by the Complainant according to paragraph 3(b)(x) of the Rules seeks transfer of a different domain name, namely , from the disputed domain name as specified elsewhere in the Complaint, namely . In all other respects the Complaint and associated annexes are clear and consistent regarding the disputed domain name. It appears to the Panel that when requesting the remedy the Complainant has inadvertently added its local country code Top-Level Domain ("ccTLD") ".au" on to the end of the disputed domain name. No objection or comment has been raised by the Respondent regarding this matter. In these circumstances, the Panel is content to treat the Complainant's inclusion of the ccTLD as a typographical error and to proceed as though the correct disputed domain name had been stated in the relevant section of the Complaint, in accordance with the general powers granted to the Panel under paragraph 10(a) of the Rules. 4. Factual Background
The Complainant, which trades as "Vittoria Food and Beverage" is an Australian-based company established in 1947. It is a major manufacturer, importer and distributor supplying a range of food and beverage products including coffee and gelato machines and exporting to more than 22 countries. The Complainant has been marketing and selling gelato products under the GELATORIA mark to the food service industry since 2003.
The Complainant owns a variety of registered trademarks around the world for the GELATORIA word mark including, for example, Australian registered trademark no. 940960, filed and registered with effect from January 23, 2003 and entered on the register on October 16, 2003, in international class 30 (ice cream and ice confections).
The Respondent is a Nevada, United States corporation with a registered address in Las Vegas, Nevada, United States. According to an undated business search record produced by the Complainant, the Respondent's status was listed as "Revoked". The same search also indicates that the Respondent's business license expired on or about July 31, 2015 and that the Respondent's officers are Mr. Buac, who is the Respondent's director, secretary and treasurer and Mr. Karanovic, who is the Respondent's President. Mr. Karanovic's name is listed as a registrant contact on the WhoIs for the disputed domain name.
According to the current WhoIs record, the disputed domain name was created on November 23, 2012. As at that date, historic WhoIs records produced by the Complainant show that the registrant organization was listed as "Hosting etc." of Concord West, New South Wales, Australia with a registrant name of "Petar Karanovic". According to a company enquiry report produced by the Complainant, the registrant organization apparently referred to in that WhoIs record is an Australian limited company named Hosting etc. Pty Limited of which Mr. Buac is a director and of which Mr. Karanovic was a director between October 8, 2007 and March 25, 2015. The reference to "Hosting etc." in the historic WhoIs for the disputed domain name will be treated as synonymous with that company in the remainder of this Decision.
Historic WhoIs records also show that the disputed domain name was transferred from Hosting etc. to the present Respondent, Syrah Corporation, at some point between November 25, 2015 and September 25, 2016. Hosting etc. and Mr. Karanovic continue to be listed on the WhoIs as administrative and technical contacts. Earlier historic WhoIs records dating back to 2003 show that a domain name corresponding to the disputed domain name existed prior to November 23, 2012 but was in the hands of third parties apparently unrelated to the Respondent. Such third parties presumably allowed this original incarnation of the disputed domain name to lapse, thus giving rise to its current creation date. The present dispute is not concerned with such original incarnation.
In a cease-and-desist letter issued by the Complainant to Mr. Karanovic at both the Respondent corporation's address and the address of Hosting etc. Pty Limited dated November 21, 2016, the Complainant notes that its Systems and Network Administrator, a Mr. Gaffey, contacted the Respondent on or about November 19, 2016 and spoke to Mr. Buac regarding the disputed domain name. The Complainant goes on to state that during this conversation, Mr. Buac said that he would be prepared to transfer the disputed domain name in return for the provision of a Gelatoria gelato machine. The Complainant avers that the recommended retail price of such a machine can range "from $25,200 to $47,500", although it is not clear to which currency these figures refer. The Panel assumes either AUD or USD is most likely as being the most relevant currencies to the original conversation. The Complainant notes that it has not received a response to its said cease-and-desist letter.
The disputed domain name does not resolve to an active web page. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant submits that the disputed domain name is identical and confusingly similar to the GELATORIA mark in which the Complainant has rights as it directly incorporates this without change. The Complainant states that the Respondent is not affiliated with the Complainant in any way, that the Complainant's GELATORIA registered trademark predates the Respondent's registration of the disputed domain name and that the Complainant has not provided the Respondent with a license or otherwise authorized the Respondent to use its GELATORIA registered trademark or to register any domain name incorporating the same. The Complainant also submits that the Respondent has no other examples of use of the GELATORIA mark outside the disputed domain name, that there is no evidence of the disputed domain name displaying or generating content for any legitimate purpose since being registered by Hosting etc. Pty Limited in 2012 and that the Respondent has held the disputed domain name under the name of an entity with a revoked corporate status whose address on the WhoIs record for the disputed domain name shows a mail forwarding service to an address which conducts no real business activity.
The Complainant asserts that the transfer of the disputed domain name to a legal entity with a revoked corporate status with an "illegitimate mail forwarding address" demonstrates registration and use in bad faith. The Complainant also submits that the Respondent's request for a gelato machine to secure the transfer of the disputed domain name to the Complainant and the lack of content and evidence of use suggests that the disputed domain name was acquired primarily for the purpose of selling or otherwise transferring the disputed domain name to the Complainant for greater consideration than the costs directly related thereto. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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. A. Identical or Confusingly Similar
On this topic, the Complainant is required to show first that it has UDRP-relevant rights in a trademark and secondly that such trademark is identical or confusingly similar to the disputed domain name.
The Complainant relies upon rights in its GELATORIA trademark which is registered in a variety of jurisdictions including in Australia as noted in the factual background section above. This mark is alphanumerically identical to the second level of the disputed domain name. The generic Top-Level Domain ("gTLD") ".com" may be disregarded for the purposes of comparison as is customary in cases under the Policy.
In these circumstances, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant's trademark and accordingly that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed 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 a 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 consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in the disputed domain name. In the present case, the Panel finds that the Complainant has established the requisite prima facie case. This is based upon the Complainant's submissions that the Respondent is not affiliated with it, that the Complainant has given no permission to the Respondent to use the GELATORIA mark whether in a domain name or otherwise, and that the disputed domain name has not been used to display or generate content for any legitimate purpose since its creation date.
The Respondent has failed to reply to the Complaint and there is no material available to the Panel which appears to rebut the Complainant's prima facie case. In these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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 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 web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location".
The Complainant conflates the Respondent and the previous registrant of the disputed domain name in its submissions on this topic, arguing in part that the actions of the previous registrant in transferring the disputed domain name to the Respondent, which it states is a legal entity with a revoked corporate status, constitute registration and use in bad faith. However, for the reasons outlined below, the Panel does not consider that it can necessarily conflate the two corporate entities, nor does the Panel believe that it requires to do so in order to make a finding of registration and use in bad faith in the present case. Likewise, the Complainant has not provided any submission describing the legal effect of the "Revoked" corporate status of the Respondent, for example as regards the Respondent's entitlement or otherwise to hold or receive a transfer of a domain name, nor does the Complainant specify how this might translate to registration and use in bad faith in terms of the Policy. In the absence of any such submission, the Panel declines to make any finding in that respect.
The relevant date for assessment of registration in bad faith is typically the creation date of the domain name under consideration or, if it has been transferred since its creation, the date of transfer to the current registrant (see paragraph 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")). Exceptions have been made to the typical approach if an unbroken chain of underlying ownership by a single entity has been identified across the period when transfers took place prior to transfer to the current registrant (see the discussion in Akris Prêt-à-Porter AG v. Fresh Enterprise Limited and Andrew Kris,WIPO Case No. D2011-0366).
In the present case, the Respondent and the previous registrant are separate legal entities based in different jurisdictions. Corporate register searches produced by the Complainant demonstrate that both such entities appear to share the same past or present officers, namely Messrs. Buac and Karanovic. However, in the Panel's mind, this fact alone falls well short of establishing an unbroken chain of underlying ownership. Accordingly, the Panel considers that the date of assessment for registration in bad faith in the present case is the date of transfer of the disputed domain name from the previous registrant to the present Respondent, being an unknown date falling some time between November 25, 2015 and September 25, 2016 and not November 23, 2012 when the disputed domain name was acquired or registered by the previous registrant.
The Complainant asserts that it made contact with Mr. Buac, who was then acting in his capacity as a representative of the Respondent, on or about November 19, 2016, this date being shortly after the latest date on which the previous registrant had transferred the disputed domain name to the Respondent. The Complainant notes that during this communication, Mr. Buac requested the Complainant to provide one of its Gelatoria gelato machines in return for a transfer of the disputed domain name. The Panel considers that there are several features to the interaction described by the Complainant which strongly indicate the Respondent's registration and use of the disputed domain name in bad faith, consistent with paragraph 4(b)(i) of the Policy.
First, the Respondent's choice of a gelato machine as consideration for the transfer of the disputed domain name is of significance. To the Panel, that proposal is too specific and targeted to be above suspicion. It refers to a product which the Complainant manufactures and supplies under a mark identical to the second level of the disputed domain name. In the absence of evidence to the contrary, the Panel considers that this indicates on the balance of probabilities the Respondent's prior knowledge of, and intent to target, the Complainant. Secondly, it is significant that the product chosen by the Respondent has a substantial value. The unchallenged statement from the Complainant as to the range of prices applicable to its Gelatoria gelato machines places the amount of the proposed valuable consideration as far in excess of the Respondent's likely out of pocket costs directly related to the disputed domain name. Finally, it is of significance that despite the Complainant having twice set out its account of the interaction between the Parties' representatives, both in the original cease-and-desist letter of November 21, 2016 and in the present Complaint, the Respondent has chosen to remain silent and has not attempted to challenge such account, to provide any explanation or to place an alternative construction upon the circumstances described by the Complainant.
Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith and therefore that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied. 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 be transferred to the Complainant.
Andrew D. S. Lothian
Sole Panelist
Date: February 14, 2017
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