Complainant is SAN LORENZO S.p.A. of Ameglia, Italy, represented by Musumeci Altara Desana e Associati, Italy.
Respondent is Domain Admin, Privacy Protect, LLC of Burlington, Massachusetts, United States of America (“United States”) / Hitler Neosilil of the Netherlands.1 2. The Domain Name and Registrar
The disputed domain name is registered with Hostinger, UAB (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2017. On December 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 8, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 9, 2018.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on February 16, 2018. 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
Complainant is a company organized under the laws of Italy that is active in the shipyards building business.
Complainant has provided evidence that it is the exclusive licensee under a license agreement dated November 4, 2008 of numerous trademarks relating to the designation “Sanlorenzo”, e.g. the following with protection, inter alia, in the Czech Republic and in The Netherlands:
- Word-/device mark SANLORENZO, World Intellectual Property Organization (WIPO), Registration No.: 750437, Registration Date: November 21, 2000, Status: Active.
Moreover, Complainant has evidenced to be the owner of the domain name which redirects to Complainant’s official website at “www.” in order to promote Complainant’s business and products.
According to the WhoIs information for the disputed domain name, Respondent allegedly is domiciled by the same address in both the Czech Republic and The Netherlands, thus the provided WhoIs information are obviously false. As of the time of the rendering of this decision, the disputed domain name does not resolve to any content on the Internet. Complainant, however, has demonstrated that e.g. on December 6, 2017, the disputed domain name resolved to a website at “www.” which displayed the official SANLORENZO logo and other components taken from Complainant’s official website at “www.”, showing the term “sucks” in capital letters right below the SANLORENZO logo and providing for a variety of critical statements such as “Building a new boat: trouble or pleasure?”, “When it comes to Make-up, Scam Lorenzo steals the show…”, or “Made to measure yacht or made to fail owners?”. The contact information of said website displayed a named person under an address with no country information which apparently does not exist. The website, however, also contained the statement that the author to it was a 47 year old IT specialist and passionate sailor who set up the website to e.g. “raise boating enthusiasts’ awareness” about “the extremely unpleasant experience my best friend and his wife had to go through during the construction of their boat” and that “for privacy reasons, I decided to keep my friend’s identity anonymous throughout this website”.
When Complainant discovered the creation of the disputed domain name in late 2017, it contacted Respondent by means of a cease and desist letter of May 31, 2017, requesting to set aside the website at “www.” as well as to transfer the disputed domain name upon Complainant, to which Respondent did not reply.
Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties’ Contentions A. Complainant
Complainant contends to be a worldwide leading Italian shipbuilder with an experience in business of almost 60 years.
Complainant submits that the disputed domain name is at least confusingly similar to the SANLORENZO trademark, which is exclusively licensed to Complainant, as it fully contains the latter with the mere addition of the offensive term “sucks”.
Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) both the registered owner of the disputed domain name as well as the person indicated under the contact information on the website to which the disputed domain name resolves are obviously fake and not existing, (2) based on the language on the website’s landing page “Now, the litigation is handled by the Arbitration Tribunal”, Complainant supposes, with a high level of persuasion, that the real author of the website under the disputed domain name is a Mr. U. T. (name anonymized by the Center for privacy protection purposes), a Turkish citizen known to the Complainant, who is the beneficial owner and sole director of a Maltese limited company, that is involved in a pending International arbitration proceeding with Complainant, the subject matter of which is Complainant’s yacht Model SD 112 hull 45 displayed on the website under the disputed domain name, and (3) the disputed domain name is not used in the course of any commercial or business activity, but with the mere intent to disseminate untrue information on Complainant aimed at disparaging and damaging Complainant’s image on the web and on the marketplace and, thus, harming Complainant’s reputation.
Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since the unique and specific purpose of the hidden website author of “www.” is to disrupt Complainant’s business and its international high reputation as one of the best shipbuilders of luxury vessels in the world; the photos on the website under the disputed domain name show a boat that is under construction in the boatyard and so still unfinished and do not represent problems detached upon the boat’s delivery.
Complainant refers to the earlier registration and making use of the domain name by a third party which was found by the panel in Sanlorenzo S.p.A. v. Domains By Proxy, LLC / Lenka Jirsova,WIPO Case No. D2016-1555 to justify a domain name transfer upon the complainant to that case. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent’s failure to submit a Response. A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is confusingly similar to the SANLORENZO trademark in which Complainant has rights as an exclusive licensee, which is evidenced by a copy of a license agreement dated November 4, 2008.
The disputed domain name incorporates the SANLORENZO trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see, e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8), that the addition of a generic or descriptive term to a trademark in a domain name is normally insufficient, in and of itself, to avoid the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the suffix “sucks” together with a hyphen does not dispel the confusing similarity arising from the incorporation of the SANLORENZO trademark in the disputed domain name. The fact that the suffix “sucks” is a pejorative term may be set aside for the mere purpose of finding standing of Complainant under the UDRP (see WIPO Overview 3.0, section 1.13) and will be decided upon under the second element below.
Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests
Furthermore, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii). In this context, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, and so request that a complainant at least has to make out a prima facie that it is more likely than not that respondent lacks such rights or legitimate interests with the consequence of the burden of production on this element shifting to respondent to come forward with relevant evidence demonstrating the contrary (see WIPO Overview 3.0, section 2.1).
On the basis of Complainant’s undisputed contentions, the Panel is convinced that Respondent has not been authorized to use Complainant’s SANLORENZO trademark, either as domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the name “Sanlorenzo”. Finally, Complainant itself has confirmed that the disputed domain name is not used and has not been used in the past in the course of any commercial or business activity and there is no indication contained in the case file to find for the contrary.
Therefore, the question for this Panel is to decide whether or not Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s SANLORENZO trademark (see paragraph 4(c)(iii) of the Policy).
Complainant has evidenced that on December 6, 2017, the disputed domain name redirected to a website at “www.” which displayed the official SANLORENZO logo and other components taken from Complainant’s official website at “www.”. Such website prominently showed the term “sucks” in capital letters right below the SANLORENZO logo and provided for a variety of critical statements such as “Building a new boat: trouble or pleasure?”, “When it comes to Make-up, Scam Lorenzo steals the show…”, or “Made to measure yacht or made to fail owners?”.
It is a consensus view among UDRP panelists that the use of a domain name for fair use such as the exercise of noncommercial free speech would in principle support to find for a legitimate interest in respect of the disputed domain name under the Policy (WIPO Overview 3.0, section 2.6); in cases where a domain name comprises complainant’s trademark plus a derogatory term such as “sucks”, a respondent may still have a legitimate interest in using the trademark as part of the domain name of a criticism site, provided that such use is prima facie noncommercial, genuinely fair, and not misleading or false (see WIPO Overview 3.0, section 2.6.3). In particular, Respondent’s criticism must not be found to be primarily a pretext for cybersquatting, commercial activity, or tarnishment (WIPO Overview 3.0, section 2.6.1).
The Panel has noted that not only the disputed domain name contains the term “sucks”, but that the latter is prominently shown in capital letters at all times where the official Complainant’s SANLORENZO logo is displayed on the website under the disputed domain name. This leaves little, if no doubts to Internet users that the website under the disputed domain name has not been set up by Complainant, but to the contrary is a clear criticism site directly pointing to Complainant’s business and products and not for any other commercial activity exploiting e.g. Complainant’s SANLORENZO trademark for the purpose of making own profit thereunder (e.g., due to a likelihood of confusion between Complainant’s trademark and the disputed domain name); in this context, Complainant has itself confirmed that the disputed domain name is not used in the course of any commercial or business activity. The website under the disputed domain name, moreover, contains a reasonable number of clear criticism language such as, e.g., “trouble”, “Scam Lorenzo steals the show”, “made to fail owners” etc., all printed in bold and bigger size font. Again, this underlines the character of the website under the disputed domain name as a clear criticism site with little risk of any Internet consumer confusion as to the source of the content of said website not deriving from Complainant, but apparently from some third party that wishes to express criticism on Complainant’s business and products.
Complainant has argued that all contact information, both in the WhoIs for the disputed domain name as well as on the website thereunder, are obviously false, but that Complainant still supposes with a high level of persuasion to know who the real author behind that website is, which is due to a pending international arbitration relating to Complainant’s yacht Model SD 112 hull 45 that is the subject to said arbitration and is also displayed on the website photos. In this context, it is important to note that Complainant, thus, admits to be aware of a concrete dispute that has a direct connection to the criticism website under the disputed domain name, which, in turn, allows the finding that such website apparently derives from one of Complainant’s discontented clients and not, e.g., from some third party that either is a competitor or some independent entity that wishes to disrupt Complainant’s business. The website itself contains the reasoning that the author behind it decided to keep its identity anonymous throughout the website for privacy reasons. Such explanation does not justify in the eyes of the Panel the provision of false WhoIs contact information for purposes of registering and using a domain name, but still is in line with the overall nature of the website under the disputed domain name being a criticism website for purposes of the exercise of the freedom of speech.
Complainant has, moreover, recited that the sole purpose of the website under the disputed domain name is to disseminate untrue information on Complainant aiming at disparaging and damaging its image on the web and on the market place and thus, harming Complainant’s reputation. Certainly, any criticism in a business context that is made public, e.g., on an Internet website is likely to cause some type of damage. Complainant, however, has failed to provide any evidence as to why the criticism contained on the website was in fact untrue and to what extent the arguments contained thereon were simply meant to cause damage and were not covered by any reasonable exercise of a right of freedom of speech. Had Complainant e.g. provided evidence that the use of the website was pretextual or contained false information, this might have supported a finding that the criticism contained on the website was simply a pretext for some other motivation such as, e.g., the disruption of some competitor’s business. In fact, Complainant has failed to submit any such evidence and the Panel is not in a position to examine circumstances which are usually subject to expert determination in court proceedings or otherwise. To that extend, as far as Complainant refers the Panel to WIPO Case D2016-1555, supra, it must be noted that – apart from the fact that this case concerned a different respondent – the panel left the question as to the accuracy of any claims made on the criticism site expressly open which is why this case obviously has no relevancy for the dispute at hand.
While in an overall assessment of this dispute, the Panel certainly recognizes that the criticism site at “www.” is of a particular nature as it includes, e.g., Complainant’s official logo and other parts taken from Complainant’s official website, thereby hiding the true identity of the person behind the story responsible for setting up the criticism site, still on the basis of the facts brought before this Panel, there is no other way but to find that Respondent is making use of the disputed domain name for a critical, yet legitimate exercise of its right to freedom of speech and Complainant’s submissions do not contain sufficient evidence demonstrating the contrary, e.g., that the website under the disputed domain name was simply meant to harm Complainant’s business for no justifiable cause.
To sum up, given that the burden of proof of Respondent’s lack of rights or legitimate interests in respect of the disputed domain name rests with Complainant, and having found that Complainant has not proved Respondent’s lack of rights and legitimate interests, Complainant, thus, has not satisfied the second element of the Policy set forth by paragraph 4(a)(ii), which is why this Complaint must fail without addressing as to whether or not Respondent has registered and is making use of the disputed domain name in bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied.
Stephanie G. Hartung
Sole Panelist
Date: February 27, 2018
1 It is evident from the case file that Domain Admin, Privacy Protect, LLC is a privacy protection service and that Hitler Neosilil is the underlying registrant of the disputed domain name. Therefore, unless otherwise indicated, the term “Respondent” is used by the Panel to refer to the latter underlying registrant only
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