The Complainant is CSP International Fashion Group S.p.A. of Ceresara, Mantova, Italy, represented by Rödl & Partner, Italy.
The Respondent is Mitch Longley, Capitol Appraisal Group, LLC of Austin, Texas, United States of America, (“United States”), represented by DuBois, Bryant & Campbell, LLP, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2018. On February 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 23, 2018, 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 February 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2018. The Response was filed with the Center on March 19, 2018.
The Center appointed Dawn Osborne as the sole panelist in this matter on March 29, 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
The Complainant is the owner of the mark CAGI for hosiery and related goods with an international registration dating back to September 30, 1969 (international trade mark no. 361690), and the domain name with a registration date of August 13, 2006. Advertisements were provided back to 1950.
The Domain Name was registered on December 26, 1995, and resolves to a website providing appraisal services. The Respondent has provided evidence of rights and its use of the Domain Name in the field of appraisal services relating to property taxation going back to time of registration of the Domain Name. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarised as follows:
The Complainant is the owner of the mark CAGI for hosiery and related goods with an international registration dating back to September 30, 1969 (international trade mark no. 361690), and the domain name with a registration date of August 13, 2006. Advertisements were provided back to 1950.
The Domain Name is identical to the Complainant’s mark for the purposes of the Policy.
Respondent has no rights or legitimate interests with regard to the Domain Name as it has not been commonly known by it and does not have any registered mark in relation to it.
The Domain Name has only been partially used and the Respondent did not respond to the Complainant. The Domain Name has been registered and used in bad faith since it was registered after the Complainant established right in the CAGI mark. B. Respondent
The Respondent’s contentions can be summarised as follows:
The Respondent does not dispute that the Domain Name is identical for the purposes of the Policy to a trade mark in which the Complainant has rights.
However, the Respondent registered the Domain Name in 1995 over twenty years ago and has used the Domain Name continuously since 1995 including for its corporate web site. As a result the Respondent clearly developed rights and a legitimate interest in the Domain Name through its continuous bona fide offering of its appraisal services over an extended period during which the Respondent has become commonly known by the Domain Name. Even though the Respondent’s name changed after restructuring it continued to use the Domain Name in good faith from the time in which CAGI was its initials.
The Respondent provides appraisal and other services to governmental entities primarily for the purposes of property taxation. The Respondent’s registration and use of the Domain Name does not infringe the Complainant’s trade mark which extends to the Complainant’s products. The Respondent was not aware of the Complainant’s registration of the CAGI trade mark in Europe or of the Complainant’s business at the time of registration of the Domain Name and was unaware of the Complainant until receipt of this Complaint. Respondent is not passing off, cybersquatting, or involved in selling domain names, and did not register the Domain Name to block the Complainant, disrupt the Complainant’s business or confuse Internet Users by offering competing goods or otherwise. Respondent simply registered the Domain Name for the sole purpose of using it in connection with its property appraisal business. The Respondent has had at the time of registration of the Domain Name to date a bona fide right to use the CAGI initials and neither the registration nor the use of the Domain Name was in bad faith. The Respondent has no interest in selling the Domain Name which would be extremely disruptive to its business.
The Complaint discloses no reasonable basis for showing that the Respondent has no rights or legitimate interests in the Domain Name and is reverse domain name hijacking. The Complaint was filed in bad faith in an attempt to deprive the Respondent of a name to which it is entitled. 6. Discussion and Findings A. Identical or Confusingly Similar
The Domain Name consists of CAGI and the generic Top-Level Domain (“gTLD”) “.com”.
The gTLD “.com” does not serve to distinguish the Domain Name from the CAGI mark, which is the distinctive component of the Domain Name. Indeed the Respondent does not deny that the Domain Name is identical to the Complainant’s trade mark for the purposes of the Policy,
Accordingly, the Panel holds that the Domain Name is identical for the purposes of the Policy to a mark in which the Complainant has rights.
As such the Panel holds that paragraph 4 (a) (i) of the Policy has been satisfied. B. Rights or Legitimate Interest
However the Respondent has produced extensive evidence that it has been using the Domain Name for a bona fide offering of appraisal services relating to property taxation over an extended period of time back to registration of the Domain Name. It has also explained how its former name was represented by the initials CAGI and has given a reasonable explanation as to why the Domain Name was registered and it was commonly known by the Domain Name. In contrast the Complainant has not produced evidence that the Respondent targeted or was aware of the Complainant at the time of registration of the Domain Name over twenty years ago. As such the Panel holds that the Respondent has rights or legitimate interests in the Domain Name. C. Registration and Use in Bad Faith
In the light of the above finding it is not necessary for the Panel to go on to consider registration and use in bad faith, but the Panel will record the fact that the Complainant did not produce any evidence that the Respondent was aware of its rights or registered the Domain Name in bad faith. D. Reverse Domain Name Hijacking
Nevertheless, a finding of reverse domain name hijacking involves some notion of wrongdoing or bad faith on the part of the Complainant. The panelist is not prepared to go this far as the extent of the Respondent’s rights and legitimate interests were not known to the Complainant who may have brought the Complaint in good faith. Therefore the Panel declines to make a finding of reverse domain name hijacking. 7. Decision
For the foregoing reasons, the Complaint is denied.
Dawn Osborne
Sole Panelist
Date: March 29, 2018
Full & Egal Universal Law Academy