The Complainants are S.F.P. Emporia Endymaton S.A. and Cristore I.K.E., Greece (hereinafter, “Complainants”), represented by Aphrodite Agorogianni, Greece.
The Respondent is Consorzio Celestiniano S. Coop. A.R.L.P.A., Italy (hereinafter, “Respondent”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2020. On December 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 2020, 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 Registrar also disclosed that the registration agreement for the disputed domain name was in Italian. Pursuant to paragraph 11 of Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), the Center sent an email communication to the Parties in English and Italian on December 4, 2020, disclosing that the registration agreement for the disputed domain name was Italian. Complainants were invited to submit satisfactory evidence of an agreement between Complainants and Respondent to the effect that the proceedings should be in English; or, submit the Complaint translated into Italian; or, submit a request for English to be the language of the administrative proceedings. Respondent was similarly invited to submit any comments on the Complainant’s submission regarding the language of the proceeding. Complainants emailed the Center on December 6, 2020, requesting that English be the language of the Proceedings and providing arguments thereto. Respondent did not respond by the deadline of December 9, 2020. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 in English and Italian, and the proceedings commenced on December 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 4, 2021, in English and Italian. The Center appointed M. Scott Donahey as the sole panelist in this matter on January 18, 2021. 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 Complainants are two related companies engaged in the design and marketing of clothing. Originally, the First Complainant company was located in Greece and focused on luxury brand clothing marketed in boutiques on the most expensive shopping streets, aimed at women who could afford and who demanded unique design. First Complainant was very successful and well known for its fine design and workmanship. Then the market began to change. A new generation had caused a revolution in the fashion industry. At an unspecified date in 1999, First Complainant registered the domain name First Complainant is the registrant and owner of the trademarks for CELESTINO, the first of which was registered in Greece on November 19, 2001, and the second of which was registered with the European Union on February 17, 2015 (See Greek Registration No. D148662 and European Union Registration No. 012615332). Moving into the 2000s, younger women began to demand fast fashion, rather than luxury items. To meet the demands of younger women, in 2007 the First Complainant broadened both the types of stores and the variety of the merchandise to meet the needs of the new generation of customers for fast fashion. First Complainant set up a web site in November 2013 and later partnered with Internet marketing professionals in the presentation of its designs and goods on the Internet. First Complainant is one of the suppliers of Second Complainant, which is an experienced online marketer. Second Complainant manages the sale of First Complainant’s goods on the Internet. Beginning in 2015, Complainants felt a need to acquire the disputed domain name. The disputed domain name had been registered by Respondent, the Consorzio Celestiano S. Coop. a.r.l.p.a., on December 2, 1997. Respondent is a religious organization. Respondent also has a registered trademark, showing a bearded monk carrying an unusual cross with what appears to be a stylized “S” or a snake below the crossbar on the cross. Complaint, Annex 19. The monk seems to be feeding a dove that is flying behind him as he walks. The trademark was registered in Italy on December 6, 2012. Using the contact details from the publicly-available WhoIs, Complainants attempted to contact Respondent and were unsuccessful. Attempts to reach Respondent at the telephone number listed in the WhoIs proved unsuccessful. Complainants then wrote to Respondent and sent by registered mail to the address listed in the WhoIs, but that also was returned as undeliverable. Next, Complainants hired the domain name broker, SEDO.com, who agreed to act as their agent. Complainants asked SEDO “to contact the owner of celestino.com and negotiate a sale”. Complaint, Annex 10. When SEDO was unable to locate the domain name owner at the address and phone number in the WhoIs, on October 14, 2019, Complainants responded to SEDO that Complainants had found “some new information about the owner of the domain”. Complainants then conveyed to SEDO the information on Consorzio Celestiano’s Facebook page and information from the registration contact’s Facebook profile, Respondent’s current telephone number and email address, as well as the email address of the registration contact person. As of March 25, 2020, SEDO had indicated that it had not had a response yet from Respondent. It appears from the Annex 10, there may be at least one additional page to the three pages attached as Annex 10, and this may contain references to the conversation that Complainant’s allege took place between SEDO and Respondent. Complainants allege that SEDO established a telephone communication with someone unidentified at Respondent. In that telephone conversation, SEDO “tried to explain to the Respondent that SFP SA has strong intellectual property rights on CELESTINO trademark which has become a highly recognizable and a reputable brand-name, and that the domain name [ Complainants assert that the disputed domain name is identical to the Complainants’ registered trademarks. Complainants further allege that Respondent has no rights or legitimate interests in respect of the disputed domain name. Finally, Complainants allege that the passive holding or non-use of the disputed domain name by Respondent, and seemingly false contact details used in the WhoIs, are evidence of bad faith registration and use. B. Respondent Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the complainant must prove each of the following: (i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and, (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and, (iii) that the domain name has been registered and is being used in bad faith. Regarding the language of the proceedings, the Panel notes that Rules, paragraph 11(a), indicate that: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. In this case the registration agreement is in Italian, and Respondent is located in Italy. The Respondent did not reply to the Center’s communication regarding the language of the proceeding, and has not submitted any communications in the present proceeding. Furthermore, the Panel notes that all of the Center’s communications were sent to Respondent in Italian and English. The Complainants have requested that the language of the proceedings in this case should be English, arguing, inter alia, that Complainants are legal entities based in Greece, their language of communication is not in Italian and submitting all the documents in Italian would entail significant translation expenses and time extensions; that the English language is a popular language commonly used in international proceedings and communications; and, that the representatives of Complainant communicated with Respondent in English via phone. In the absence of any claims or evidence from the Respondent, the Panel accepts the Complainant’s arguments as summarized above as sufficient to justify a finding that the language of the proceedings should be English, and so finds. A. Identical or Confusingly Similar The disputed domain name consists of the word “celestino” appended to the generic Top-Level Domain (“gTLD”) “.com”. Complainants have provided evidence of rights in the trademark CELESTINO. Accordingly, the Panel finds that the disputed domain name is identical to Complainants’ trademark. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, 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”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. However, this case appears to be an anomaly. Complainants have come forward with evidence regarding both the registration and the possible use of the disputed domain name by Respondent. Complainants produce WhoIs information that Respondent registered the disputed domain name on December 2, 1997. Complaint, Annex 8. This corresponds to a time when Complainants’ business was conducted primarily, if not entirely, in Greece and did not have an active Internet presence. The Complainant has not provided any specific evidence of registered or unregistered trademark rights from this time. It is possible, if not probable, that Respondent, had not heard of Complainants or Complainants’ business, since at that time Complainants’ goods were sold almost entirely in Greece and in luxury stores. Respondent is a religious organization, which at that time was located in a small town in central Italy. While there is no evidence that Respondent used the disputed domain name, there is evidence that Respondent was active as a religious organization, since in 2012 Respondent registered a trademark for its use. Complaint, Annex 19. The round symbol features an encircling caption with the Italian words, roughly translated as “On the road to forgiveness”. In the center there is a walking bearded monk, apparently feeding a dove with his right hand as it flies along behind him, holding in his left hand a cross, with a strange attachment to the long bar extending beneath the short horizontal bar. The trademark application contains the description, again roughly translated from the Italian, “The logo represents a walking monk, who has in his left hand the Cross of Celestino, symbol of the movement Celestiniano”. The Panel notes a respondent in a UDRP proceeding is typically in the best position to assert rights or legitimate interests in a domain name; however, here Respondent has not responded to the Complaint. Nonetheless, the evidence regarding Respondent’s alleged activities, as well as the timing of the registration of the disputed domain name, tend to suggest Respondent may have rights or legitimate interests in the disputed domain name. Given the Panel’s conclusions on the third element of the Complaint, however, it is not necessary to determine whether this the circumstances of this case are sufficient to establish rights or legitimate interests within the meaning of the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith The evidence from the case file shows that the disputed domain name has never been connected to an active web page. While the non-use of a domain name may not prevent a finding of bad faith, the circumstances in this instance do not support such a finding. It is the Complainants’ burden to establish that the disputed domain name was registered and used in bad faith. The disputed domain name was registered almost four years prior to Complainants’ registration of its first trademark, and more than 16 years before Complainants determined that they would like to use that particular domain name in their business, having operated their online business with the domain name Accordingly, the Panel finds that Complainants have not established the third element of the Complaint for the purposes of the Policy, paragraph 4(a)(iii). 7. Decision For the foregoing reasons, the Complaint is denied. M. Scott Donahey
Sole Panelist
Date: January 29, 2021
Full & Egal Universal Law Academy