The Complainants are Graftex Prodcom SRL and Graffitti - 94 R.B.I. Prodcom S.R.L. of Bucharest, Romania, represented by Ratza & Ratza, Romania.
The Respondent is Piazza Affari srl, Michele Dinoia of Pineto, Teramo, Italy, represented by WEBLEGAL, Italy. 2. The Domain Name and Registrar
The disputed domain name is registered with Epik, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2017. On January 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 1, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 3, 2017.
The Center verified that the Complaint together with the amendment to the Complaint (hereinafter the Complaint and the amendment to the Complaint referred together as 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 February 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 26, 2017. The Response was filed with the Center on February 25, 2017.
The Center appointed George R. F. Souter as the sole panelist in this matter on March 8, 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. Language of the proceeding
Although, to the best of the Complainants’ knowledge, the registration agreement is in Italian, the Complainants filed the Complaint in English and requested that the language of the proceeding should be English. The Respondent, who took part in the proceeding, did not object, and filed its Response in English. The Panel considers that the balance of convenience clearly indicates that the language of the proceeding should be English, and so finds. 4. Factual Background
The Complainants are co-proprietors of a number of trademark registrations including the trademark BIGOTTI, and have provided details of these to the Panel. The earliest of these registrations are Romanian trademark registrations No 046541 for BIGOTTI, dated December 10, 2001 and No 052870 for ARTIGIANI BIGOTTI, dated March 25, 2003, covering clothing products in Class 25.
The Complainants operate a fashion clothing business in Romania under the trademark BIGOTTI, with stores in the leading 28 cities in Romania.
The Respondent is in the business of registering domain names incorporating generic words, for onward sale.
The disputed domain name was registered on April 3, 2003. According to the evidence submitted by the Complainant the disputed domain name resolved to a parking page with pay-per-click links regarding costumes, dating and games. 5. Parties’ Contentions A. Complainant
The Complainants allege that the disputed domain name is identical with or confusingly similar to a trademark in which they have rights, as the disputed domain name contains the trademark BIGOTTI in its entirety, with no addition other than the generic Top-Level Domain (gTLD) indicator “.com”.
The Complainants allege that the Respondent lacks rights or legitimate interests in the disputed domain name, and points out that the Respondent is the owner of over 17,000 domain names, and alleges that the Respondent can hardly be expected to legitimately use all of these domain names in commerce. The Complainants also allege that, so far as they have been able to establish, there is no connection between the Respondent and the name BIGOTTI.
The Complainants allege that the disputed domain name was registered in bad faith, and is being used in bad faith, and points out that the Respondent’s representative before the registry has been linked with over 60 prior cases under the UDRP. B. Respondent
The Respondent states that it is in the business of registering domain names incorporating generic words, for onward sale, and has pointed out to the Panel a number of prior cases under the UDRP, in which this has been regarded as a legitimate commercial activity. These prior cases include Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110. The Respondent argues that “bigotti” is a very common and characterized word in Italian (“bigots” in English). The Respondent argues that, consequently, it has rights and legitimate interests in the disputed domain name, and that the disputed domain name was neither registered in bad faith, nor is it being used in bad faith. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(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. Identical or Confusingly Similar
The Complainants have satisfied the Panel that they have trademark rights in their BIGOTTI trademark for the purposes of these proceedings.
It is well-established in prior decisions under the UDRP that gTLD indicators (e.g., “.com”, “.org” and “.net”) may typically be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name. The Panel agrees with this view, and considers the gTLD indicator to be irrelevant in the present case.
Self-evidently, the resulting comparison of “bigotti” against BIGOTTI leads to the conclusion that the disputed domain name in the circumstances of the present case is identical to the trademark in which the Complainants have rights, and the Panel so finds.
Consequently, the Panel finds that the Complainants have satisfied the requirement of paragraph 4(a)(i) of the Policy. Rights or Legitimate Interests and Registered and Used in Bad Faith
The Panel agrees with the panels in the prior cases cited above, and considers the business of registering domain names including dictionary words to be, in itself, a legitimate commercial activity. It is readily apparent that a dictionary word in one language may function as a protectable trademark in another language, and examples of this are legion. The Panel also considers it unsurprising that a practice of registering domain names with dictionary words can, unwittingly, lead to disputes with the owners of these words as protectable trademarks.
Although the Complainants have satisfied the Panel that they have trademark rights in their BIGOTTI trademark, they have not submitted any evidence to substantiate the fame of such mark, either in Romania or in Italy, where the Respondent is located. In the circumstances of the present case, where no evidence of the fame of the Complainants’ trademark at the date of the registration of the disputed domain name was presented to the Panel, the Panel finds that the Complainants’ allegations are insufficient for the Panel to find that the Respondent has registered the disputed domain name in bad faith. Even if the Panel accepts as true the Complainants’ assertions regarding the fame of their mark, the Panel finds it more likely than not that the Respondent did not target the Complainants’ trademark at the time it registered the disputed domain name. The Panel notes that here the disputed domain name is comprised of a dictionary term common in the Respondent’s country, and the Respondent is in the business of registering domain names (including dictionary words).
Consequently, the Panel finds that the Complainants have failed to satisfy the requirements of paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.
Under the circumstances of this case, particularly in light of the Complainants’ established trademark rights, the Panel declines to make a finding of Reverse Domain Name Hijacking. 7. Decision
For the foregoing reasons, the Complaint is denied.
George R. F. Souter
Sole Panelist
Date: March 22, 2017
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