The Complainant is Cinzia Meneghin, Eligenda, France, self-represented.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Daniele Buzzurro, DW DreamyourMind Srl, Italy, self-represented. 2. The Domain Name and Registrar
The Disputed Domain Name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2020. On February 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 4, 2020, 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. On February 5, 2020, and on February 10, 2020 the Respondent sent email communications to the Center. On February 27, 2020, the Complainant filed an amended Complaint. On February 27, 2020, the Center received an email communication from a third party and from the Respondent. 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 the Respondent of the Complaint, and the proceedings commenced on February 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2020. On March 4, 2020, the response due date was exrended to March 24, 2020. The Response was filed with the Center on March 24, 2020. The Center appointed Nick J. Gardner as the sole panelist in this matter on April 27, 2020. 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 evidence which has been presented by both Parties is verbose and difficult to follow. There are also excessively lengthy accounts of facts which are of marginal relevance (see below). The Panel has done its best to summarise what seems to be the essential factual background, as follows. The Complainant is an individual, Cinzia Meneghin, who is a Canadian citizen and who trades under the name “Eligenda”. Her business is what she describes as a “personal assistant and lifestyle management” business. This business appears to be based in Paris, France. The Complainant owns European Union Trade Mark No. 018020312 registered on June 5, 2019 for ELIGENDA. The Respondent was commissioned during 2018 by the Complainant to develop a logo for her and to build a website and register the Disputed Domain Name. The Disputed Domain Name was registered on October 18, 2018 by the Respondent. It would appear that the work the Respondent was to do for the Complainant took much longer to complete than had originally been contemplated and eventually the Parties ended up falling out, probably in about October 2019. The reasons for this are disputed. On November 4, 2019, lawyers acting for the Complainant wrote to the Respondent demanding transfer of the Disputed Domain Name. The Respondent replied in effect saying it had not been paid and it looked forward to a legal hearing. It did not set out any basis as to why the Disputed Domain Name had been registered in its name. It is convenient to mention that it would appear that the Complainant also contracted with the Respondent for it to register on her behalf a large number of country code domain names comprising the term “eligenda”. Much of the material that has been presented in evidence deals with issues surrounding these country code domain names and what did or did not occur. It is not the function of this Panel to resolve issues concerning these domain names and the Panel will only consider them insofar as they have any relevance to its determination concerning the Disputed Domain Name. It is also convenient to say that much of the material placed in evidence concerns the business dealings between the Complainant and the Respondent and what evidently became a breakdown in relations. The Complainant accuses the Respondent of not doing what it was required to do and the Respondent accuses the Complainant and her husband of being slow and difficult to deal with, not making their minds up about what they wanted, and not paying sums that were due. Material relating to these events is set out in copious detail but is of at best peripheral relevance to the issue the Panel has to determine. The Panel only intends to refer to it so far as it is relevant to that issue. The Disputed Domain Name resolves to a website containing the message “ELIGENDA the lifestyle reference Coming Soon”. 5. Parties’ Contentions A. Complainant Ignoring irrelevant material the Complainant’s case is actually straightforward. The Complainant says she owns the ELIGENDA trademark. She says the Respondent has no rights or interest in the term “Eligenda”. She says the Respondent has acted in bad faith because the Respondent was contracted to register the Disputed Domain Name in the Complainant’s own name and failed to do so. The Respondent has also failed to transfer the Disputed Domain Name to the Complainant when asked to do so by her lawyers. The relevant written material the Complainant relies upon in support of her case is discussed below. B. Respondent The Response is written in English by someone who is possibly a native Italian speaker. Whilst the sense of what is said is generally clear it is not always easy to follow the point which is being made. It sets out at great length a litany of complaints the Respondent has about how the Complainant has behaved and the difficulties it says it has had in dealing with her. It is however difficult to discern what the Respondent’s case is in relation to the central claims the Complainant makes. So far as the Panel can determine the main points the Respondent makes of any relevance to this decision are as follows. The Complainant did not contract with Daniele Buzzurro but with a company called DW – DreamyourMind Srl. Mr. Buzzurro is said to be the “admin” of that company. At the time of the contract the Complainant’s Eligenda trademark was not registered. The Complainant was late in paying monies that were due and payment was made not by the Complainant but a third party (possibly the Complainant’s husband). The Complainant postponed for many months the work she wanted done and was very difficult to deal with. Monies that are still said to be due have not been paid. The heart of the Respondent’s case seems to be encapsulated in the following passage: “About the topic of the ELIGENDA logo, for what is our knowledge, Mrs. Cinzia Meneghin registered the ELIGENDA logo and the trademark on the 5th of June 2019. At the moment in which Mrs. Cinzia Meneghin registered her logo and her name, and still now, the 70% of the logo was not still paid by Cinzia Meneghin to DW DreamyourMind Srl. Then, for what it is our knowledge, Mrs Cinzia Meneghin registered the ELIGENDA name and logo that was not still her propriety [sic], the ELIGENDA name and logo made by DW DreamyourMind Srl, the ELIGENDA name and logo that Mrs Cinzia Meneghin was not authorized to register because she did not still pay it except the 30% in advance.” The Response also appears to suggest the Respondent may have started a legal action in Italy apparently for non-payment of fees – however, the details provided are rather vague. It says in relation to this action “At the same, the website eligenda.com has to remain as it is until the court will not make a definitive decision” although the Panel is not entirely clear what this is intended to mean. 6. Discussion and Findings Procedural Matters – Respondent Identity The Panel notes this is a case where one Respondent (“Registration Private, Domains By Proxy, LLC”) appears to be a privacy or proxy service. The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows: “Panel discretion In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed. Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.” In the present case, the Panel considers the substantive Respondent to be Daniele Buzzurro, DW DreamyourMind Srl and references to the Respondent are to that person/company. The Respondent appears to take a point that he Complainant’s contract was with DW Dreamyourmind Srl rather than Mr. Buzzurro personally – the Panel does not consider anything turns on this. It is quite clear that the Complainant dealt with Mr. Buzzurro in person and regards him and his company as interchangeable. The details provided by the Registrar show that the Registrant Name is Daniele Buzzurro and the Registrant Organization: DW DreamyourMind Srl. Substantive Matters To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that: (i) the Disputed Domain Name is identical with 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; (iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has rights in the ELIGENDA trademark – she is clearly the proprietor of a European Union trademark for that term. The Respondent seems to take issue with this but the Panel does not understand its reasoning. The Panel finds the Disputed Domain Name is identical to this trademark. It is well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429. The Respondent appears to suggest that the fact the Complainant did not register her trademark until some time after the contract between the Parties is in some way relevant. The Panel does not really understand the point the Respondent is making but does not agree. The arrangement between the parties was clearly intended to assist the Complainant in developing her business and involved a choice of name as part of that process. Clearly a trademark could not be applied for until the name had been chosen. Accordingly the Panel finds that the Disputed Domain Name is identical to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests In the present case the term “eligenda” is a coined term (even if it has the appearance it may be a word in Latin) and its only relevant meaning is as to the Complainant and her business. The Respondent does not have any independent rights or interest in that name nor does it suggest otherwise. The Respondent was retained by the Complainant to help in establishing her business (see above). It could be the case that the Respondent derived some right or interest in the term as a result of the dealings between the parties. However, for the reasons discussed below in relation to bad faith the Panel concludes that it was always intended the Disputed Domain Name should be registered in the Complainant’s name. So far as the Panel can see the only real point the Respondent advances to justify its retention of the Disputed Domain Name is that it says it is owed fees. There is no contractual provision entitling the Respondent to retain the Disputed Domain Name in these circumstances (see analysis below). The Panel agrees in this regard with the approach of the panel in Grace From Fire, LLC v. ConnectDomain.com Worldwidedomains, Inc,WIPO Case No. D2010-0143, as follows –“Consequently, the Panel agrees with the conclusions of a previous UDRP panel in a similar case, Ecoyoga Ltd v. siteleader.com, Siteleader Hosting,WIPO Case No. D2009-1327 finding that ‘non-payment of fees by the Complainant to the Respondent does not establish rights or legitimate interests in the disputed domain name in the Respondent’.” That being so the Panel concludes that the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith The Complainant’s case is based on the allegation that the Respondent was contracted to register the Disputed Domain Name on behalf of, and in the name of, the Complainant. It is necessary to consider the material in evidence which supports this allegation as follows: A written offer made in Italian on October 1, 2018 on the notepaper of DW – Dreamyourmind SRL. A translation of that offer has been provided and is not challenged by the Respondent so the Panel accepts it as accurate. The same is true of all other translations that the Complainant relies upon. This offer details work including creation of a logo, development of a website and obtaining a domain name. The document is not particularly precise as to ownership of that domain name. It specifies that the work will take 21 days from when the domain name is registered and total fees of 4,000 Euros are listed (plus a further 1,000 euros for logo design). A deposit of 30% was to be paid. 1. An email from Mr. Buzzurro dated October 15, 2018 to the Complainant. This records what was said in a telephone conversation and confirms the chosen name is “Eligenda”. It is clear that discussions are ongoing as to exactly which “generic” and country code domains are to be obtained. The email records that “the providers of the hosting will invoice us the cost of the domain names that we will buy in your name and we will invoice you. The domain names will be your exclusive property from the time that you will want to renew them”. On the same day, the Complainant replied confirming the choice of name and that a “.com” version of this name was amongst the list of specified domain names which were to be obtained. The Complainant agreed with the Respondent’s proposals as to invoicing for the domain names. 2. An invoice from the Respondent dated October 19, 2018 for the 30% deposit and fees for registering various domain names. It refers to the “purchase of www.eligenda.com” for one year. This invoice was paid. 3. An invoice from the Respondent dated August 12, 2019 for the “expense renewal of Eligenda for 1 year” which lists various “eligenda” domain names including the Disputed Domain Name. This invoice was paid. 4. In an email from the Respondent to the Complaint on October 21, 2019, the Respondent provided some information about problems that had been experienced with the registration of 5. An invoice from the Respondent dated October 24, 2019 for the balance of the work. This invoice has not been paid as by this date the parties were in dispute. Taking this evidence as whole it seems clear the intention and agreement was that the Respondent should register a range of “eligenda” domain names including the Disputed Domain Name on behalf of and in the name of the Complainant who would be their “owner”. It appears from the Response that the Respondent is aggrieved that the entire project took much longer than it had anticipated, and that what was supposed to be 21 days work commencing in or around October 2018 was still dragging on almost a year later. The Respondent appears to allege this was primarily because the Complainant was unable to make her mind up about various issues. Be that as it may it seems clear to the Panel that the agreement was that all of the domain names, including the Disputed Domain Name, were to be registered in the Complainant’s own name. The Respondent says as much when he recorded that “the providers of the hosting will invoice us the cost of the domain names that we will buy in your name and we will invoice you. The domain names will be your exclusive property from the time that you will want to renew them”. It is true that the statement that these names “will be your exclusive property from the time that you will want to renew them” is not entirely clear – however as appears above the time did arrive when the names were to be renewed, the Respondent invoiced the relevant fee, and the Complainant paid that invoice. Furthermore, any doubt as to what was intended and agreed is in the Panel’s opinion resolved by the discussion about the eligenda.nl and eligenda.fr domain names (above). All of the domain names were subject to the same arrangement and the Respondent clearly recorded that the various problems with these names would be resolved and they would be recorded in the ownership of the Complainant. It seems clear that the same was applicable to the Disputed Domain Name. Given this correspondence, and the fact that this issue is central to the Complainant’s case the Panel has sought to understand what the Respondent’s counter argument is. The Panel has found this extremely difficult to discern. The Respondent does not dispute the documentation relied upon by the Complainant and does not so far as the Panel can see suggest that anything different as to ownership was agreed. It has not proffered any explanation as to why the Disputed Domain Name was registered in its own name rather than that of the Complainant. Instead, it has set out at great length how badly it says it was treated, how difficult the Complainant was to deal with, and how it says it is still owed money. These factors may well be relevant to the legal action that the Respondent says it has started in Italy but they are not so far as the Panel can see relevant to the central issue of why the Disputed Domain Name was registered in the Respondent’s name. Nothing the Respondent has said provides any explanation for why it did not do what was agreed. Accordingly, the Panel concludes that the agreement was that the Disputed Domain Name was to be registered in the Complainant’s name. Once that is established the Panel concludes that the registration was in bad faith – see in this regard Profilink Ltd. v. Ianko Pavlov Dingozov,WIPO Case No. D2013-1241 for a helpful discussion of relevant cases and principles as follows: “As mentioned in the factual description, the Panel is of the opinion that when the Respondent registered the Domain Name, he clearly was doing so for the Complainant. In other cases arising out of similar facts, Panels have refused to find bad faith registration because the registration was made with the consent or at the request of the trademark owner. See e.g. ITMetrixx, Inc. v. Kuzma Productions,WIPO Case No. D2001-0668; The Thread.com, LLC v. Jeffrey S. Poploff,WIPO Case No. D2000-1470. In those cases, though, the respondent was expected to register the domain name under its own name. However, in the present case, the Complainant suggests that the Respondent was expected to register the Domain Name on behalf of the Complainant. The Respondent’s assertions according to which he had registered the Disputed Domain Name for its own purpose and use and only allowed the Complainant to use it until it finished building the directory service now found on the landing site is not substantiated by any element of evidence whatsoever. Had the trademark owner known, at the time of registration, that the Respondent was intending to use the disputed domain name itself, it would never have asked it to help it with the mere technical issues of registration. Such situations have arisen in other UDRP cases, in which the bad faith registration was found to be realized by panels. See e.g., Champion Innovations, Ltd v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Robilant & Associati Srl v. Powerlab snc,WIPO Case No. D2006-0991.” See also The Bell Policy Center v. Ken Hess and Graphis, Inc.WIPO Case No. D2010-1072 to similar effect. The Panel concludes that the same analysis applies to the present case. The Respondent’s retention of the Disputed Domain Name that was supposed to have been in the Complainant’s name, and its refusal to transfer it when requested by lawyers acting for the Complainant amount to use in bad faith, given the agreement was that the Disputed Domain Name was to be registered in the Complainant’s name. Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled. 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 Nick J. Gardner
Sole Panelist
Date: May 11, 2020
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