Complainant is GAMBERO ROSSO S.p.A. of Rome, Italy, represented by Crea Avvocati Associati, Italy.
Respondent is Mr. Michele Dinoia, Macrosten LTD of Nicosia, Cyprus, 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 March 23, 2018. On March 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 28, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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, Complainant filed an amendment to the Complaint on April 23, 2018.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 14, 2018. The Response was filed with the Center on May 14, 2018. An unsolicited supplemental filing was filed by Complainant on May 22, 2018.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on June 3, 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, Gambero Rosso S.p.A., is an international food and wine magazine publishing group. Complainant is the owner of several registered trademarks for the mark GAMBERO ROSSO in a number of jurisdictions in connection with its publication and related services, including registrations in the European Union (registered in 2000), Italy (registered in 1999) and the United States of America (registered in 1997). Complainant is also the owner of a number of domain names based on “gambero rosso”, including inter alia (registered in 1997), (registered in 2000), and (registered in 2002).
The disputed domain name was registered by Respondent on March 28, 2002. In 2014, Complainant initiated a UDRP proceeding against the disputed domain name, Gamberoso Rosso Holding S.p.A. v. CDN Properties Incorporated,WIPO Case No. D2014-1349 (the “Prior Case”). Complainant was unsuccessful in that proceeding.
The disputed domain name currently resolves to a pay-per-click website. 5. Parties’ Contentions A. Complainant
Complainant asserts that it should be permitted to refile a complaint against the disputed domain name notwithstanding the decision in the Prior Case. First, Complainant argues that because the current Respondent is different from Respondent in the Prior Case, Complainant is not refiling a new complaint, but filing a new complaint against a new respondent. Second, Complainant maintains that the disputed domain name has never been used by Respondent for a genuine purpose and is currently on sale, thereby revealing that Respondent’s assertions about its legitimate basis for registering and using the disputed domain name in the Prior Case were essentially a sham meant to mislead the Panel in that case. Third, Complainant alleges that Respondent is a known cybersquatter who has been the subject of almost 70 unfavorable UDRP decisions, and who has an established pattern of registering domain names that ostensibly relate to common words but which typically correspond to well-known trademarks.
Complainant asserts that it has established all three elements required under the Policy for a transfer of the disputed domain name. B. Respondent
Respondent argues that this is the second time that Complainant has filed a UDRP complaint to obtain the disputed domain name. Respondent maintains that because there is nothing fundamentally new since the Prior Case was decided, Complainant is simply seeking to relitigate the matter to overturn the decision in the Prior Case.
Respondent contends that it is not a serial cybersquatter as Complainant asserts, given that Respondent and his companies have successfully defended a number of UDRP cases in the past. Respondent also contends that Complainant’s claim that the parties in the current proceeding are different is baseless, since Complainant has been well aware for some time that Mr. Dinoia is the true party in interest for the disputed domain name, particularly as Respondent’s attorney advised Complainant and its representative almost three years ago that Mr. Dinoia was modifying the disputed domain name ownership information to move the disputed domain name to another entity owned by Mr. Dinoia. Lastly, Respondent asserts that the use of the disputed domain name has not changed since the Prior Case and, in fact, mirrors the pay−per−click website use that existed at the time of the Prior Case. Respondent also rejects Complainant’s contention that Respondent is seeking to sell the disputed domain name. Respondent maintains that it has never actively sought to sell the disputed domain and that its refusal to sell the disputed domain name for a small amount to parties who secretly worked for Complainant is not proof of a bad faith attempt by Respondent to take advantage of Complainant’s trademark rights in the disputed domain name. Lastly, Respondent argues that most of Complainant’s contentions are essentially the same contentions that Complainant raised in the Prior Case and which were rejected by the Panel in that proceeding.
Based on the foregoing Respondent asks the Panel to deny the Complaint and make a finding that Complainant is guilty of Reverse Domain Name Hijacking. 6. Discussion and Findings A. Complainant’s Refiled Complaint
There is no provision in the Policy that deals expressly with the issue of refiling a complaint. The UDRP itself does not contain an appeal mechanism and there is no express right to refile a Complaint. The refiling of a Complaint has thus been deemed to be exceptional because, in part, there is a potential for abusing the UDRP process by allowing complainants to harass potential respondents by making repeated filings following an unsuccessful complaint. UDRP panels have accordingly exercised their powers under the Policy to reject complaints over the same disputed domain name against the same respondent in the interests of finality and certainty, keeping in mind that no decision under the Policy prevents a party from pursuing its claims in a court action in the appropriate forum. See section 4.18 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Given this construct, Panels have accepted refiled complaints only in highly limited circumstances such as (i) when the complainant establishes that legally relevant developments have occurred since the original UDRP decision, (ii) a breach of natural justice or of due process has objectively occurred, (iii) where serious misconduct in the original case (such as perjured evidence) that influenced the outcome is subsequently identified, (iv) where new material evidence that was reasonably unavailable to the complainant during the original case is presented, or (v) where the case has previously been decided (including termination orders) expressly on a “without prejudice” basis. In view of the limited grounds on which a refiled complaint has been accepted, it is incumbent on a complainant who seeks to refile a complaint to establish and prove a bona fide reason why it should be allowed to go forward.
In the present case, Complainant primarily relies on the argument that it is filing a new complaint against a new respondent. In the Prior Case the respondent was identified as “CDN Properties Incorporated”, whereas in this proceeding Respondent is identified as “Michele Dinoia, c.o. Macrosten Ltd”. While on its face it would appear that different legal entities and individuals are involved, a fact that would support Complainant’s refiling of its complaint, the evidence before the Panel shows that Michele Dinoia has been the party behind the disputed domain name since 2002. Complainant does not dispute that Mr. Dinoia was the legal representative of CDN Properties Incorporated and that Mr. Dinoia with his company Macrosten LTD is now the current registrant and Respondent of the disputed domain name. Indeed, Complainant concedes that “the current Respondent (Mr. Dinoia) is different from the previous Respondent (CDN Properties Incorporated of Panama) and they seem to be two different subjects, but the person behind is always the same.”
To be sure, Complainant’s argument that the parties in the refiled complaint are not the same, while perhaps technically true, is a very narrow reading of the identity of the term “party” for UDRP purposes. To construe the meaning of “party” in such a technical way to mean the exact named “party” who appeared in the prior proceeding, is not how UDRP panelists have tended to view the meaning of “party” or “parties.” Panelists have typically gone beyond the mere names of the parties to consider who, in fact, controls the domain name(s) at issue. For example, in consolidation scenarios UDRP panelists have allowed a single UDRP complaint to proceed against multiple domain names that are registered under different names, where the evidence shows that the domain names and/or claimed registrants are all controlled by the same underlying party. See WIPO Overview 3.0 at section 4.11.2. Moreover, in cases involving what are essentially refiled cases, panelists have similarly looked at who the parties are in relation to the prior dispute and their relationship to the disputed domain name and claimed rights. In GBI Prosperities Pty Ltd., Dr Grow It All Sales Pty Ltd. v. Private Registration / Dave Lovegrove, Real Estate Educational Programmes,WIPO Case No. D2016-0879, for example, the panel rejected an argument that the complainants in a prior UDRP and a subsequently refiled case where different parties given that in the prior case the complaint was brought in the name of an individual and the subsequent proceeding the complaint was brought in the name of companies in which the same individual was the principal director and a major shareholder. Here, the result should be no different. There is no dispute that Mr. Dinoia has been behind the disputed domain name since 2002 and has controlled all of the companies that have been identified as the listed registrant of the disputed domain name. Consequently, Complainant’s argument that the parties are different in name does not provide a sufficient basis for what is in effect a refiling involving the same parties in interest as in the Prior Case.
Complainant also urges that its refiled complaint should be accepted because there is new evidence showing that Respondent misled the Panel in the Prior Case. Complainant’s alleged new evidence, however, consists of evidence showing that (i) Mr. Dinoia and his companies have been the subject of about 70 unfavorable UDRP proceedings, (ii) Respondent has made no genuine use of the disputed domain since the Prior Case and has only used the disputed domain name in connection with a pay-per-click website, and (iii) Respondent has attempted to sell the disputed domain name at a profit. A review of the decision in the Prior Case, however, shows that much of what Complainant is now claiming as new evidence is evidence that either existed at the time of the Prior Case and which was considered by the Panel and/or which was available and could have been developed by Complainant.
Complainant’s claim that Respondent has not made any genuine use of the disputed domain name since the Prior Case, does not present anything new. Respondent’s use of the disputed domain name has not changed in any meaningful way since the Prior Case was initiated by Complainant. In the Prior Case, the panel noted that Respondent had been using the disputed domain name in connection with a pay-per-click website and rejected Complainant’s arguments regarding this use as proof of bad faith. That use did not change after the Prior Case and it is thus hard to understand how the continued use of the disputed domain with a pay-per-click website is somehow new evidence. To the extent that Complainant is somehow claiming that Respondent’s use of the disputed domain name since the Prior Case with a pay-per-click website establishes that Respondent misled the Panel in the Prior Case, such argument is misplaced. In the Prior Case, the panel not only considered the fact that Respondent had used the disputed domain name with a pay-per-click website for many years, but also considered Respondent’s claim that it had registered the disputed domain name because “gambero rosso” in Italian means “red shrimp,” which is a popular ingredient in cooking, and that the name “Gambero Rosso” is not only used in the names of many restaurants but is a famous venue in the 1883 novel “Pinnochio” by Carlo Collodi. Four years after the Prior Case, neither the use of the disputed domain name nor the assertions made by Respondent in support of its registration and use of the disputed domain name are different or have been shown by Complainant to somehow be false.
In attempt to show otherwise, Complainant asserts that because Respondent is a known cybersquatter, Respondent’s assertions regarding his registration and use of the disputed domain name were essentially pretextual and that Respondent’s true intent has been to profit from the disputed domain name and its association with Complainant. All of these arguments were either made before the panel in the Prior Case or could have easily been raised at that time. Notably, as of the time of the Prior Case, the panel noted that CDN Properties Incorporated had already been found by some prior UDRP panels to have registered and used disputed domain names based on the marks or name of others in bad faith. Moreover, a simple search of public records, or other UDRP proceedings involving CDN Properties Incorporated, would have revealed the connection of Mr. Dinoia to CDN Properties Incorporated and/or the disputed domain name. Indeed, Complainant does not argue that it was not aware of that connection in 2014 and, in fact, expressly notes in its Complaint that Mr. Dinoia has been the party behind the disputed domain name since 2002. Thus, the fact that there have been multiple prior proceedings against Mr. Dinoia and his companies is not new evidence and certainly does not prove that the panel in the Prior Case was somehow misled.
As to Complainant’s claim that Respondent has attempted to sell the disputed domain name for profit, the evidence provided does not show an active attempt by Respondent to market and sell the disputed domain name per se. What it shows is that Complainant engaged parties to anonymously contact Respondent in 2018 to try and purchase the disputed domain name, and that Respondent rejected two offers that had been made for less than USD 3,500 While such evidence in the right context could possibly be seen as an attempt to profit, the fact that Respondent rejected such offers, and requested a higher offer be made, does not in and of itself prove bad faith, particularly as Respondent prevailed in the Prior Case which confirmed Respondent’s rights in the disputed domain name. To be sure, these offers which were made in early 2018 are not proof that Respondent registered the disputed domain name in bad faith in 2002.
In sum, Complainant’s arguments that there is new evidence or parties essentially amounts to an attempt to re-litigate the Prior Case. Complainant has not provided a sufficient basis for allowing the refiling of the earlier complaint regarding the disputed domain name. For the foregoing reasons, the Panel will not exercise its discretion to allow Complainant’s refiled complaint. B. Reverse Domain Name Hijacking
Respondent contends that Complaint has been brought in bad faith and, accordingly, Complainant should be sanctioned by a finding of reverse domain name hijacking.
Paragraph 15(e) of the Rules provides, in part:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
Paragraph 1 of the Rules defines “Reverse Domain Name Hijacking” to be “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
Respondent argues that bad faith should be inferred because Complainant should have known that there was no basis for Complainant to succeed on its refiled complaint based on Complainant’s alleged new evidence.
In the present case, it is evident that Complainant may have reasonably believed that it could refile its Complaint given the arguments concerning a claimed change of registrant for the disputed domain name and the additional evidence that Complainant had developed regarding Respondent’s refusal to sell the disputed domain name for a price that had been offered. Balanced against this is the fact that Respondent has been put to the trouble and expense of defending a second complaint over what appears to be some of the same allegations in the Prior Case. While Complainant should have appreciated the difficulty in its position when refiling its Complaint, this was not a situation where the Complainant clearly knew it could not succeed under any fair interpretation of the facts reasonably available prior to the refiling of its complaint. Complainant may have been mistaken about its ability to refile its Complaint, or the strength of its arguments to justify such a refiling, but that does not amount to filing an objectively unreasonable complaint, particularly given that Complainant has some rights in the mark GAMBERO ROSSO in connection with its publications and given that there is evidence that Respondent has been found to have acted in bad faith in a number of prior UDRP proceedings and at least one court case.
In these circumstances, the Panel declines to find that that the Complainant has engaged in reverse domain name hijacking. 6. Decision
For the foregoing reasons, the Complaint is denied.
Georges Nahitchevansky
Sole Panelist
Date: June 13, 2018
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