The Complainant is Cantarella Bros Pty Limited of Silverwater, New South Wales, Australia, internally represented.
The Respondents are PLB Trading Pty Ltd of Fortitude Valley, Queensland, Australia, and Shawna Bevins of Wagram, North Carolina, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2016. On December 5, 2016, the Center transmitted by email to PDR Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On December 6, 2016, PDR Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on December 12, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2017. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on January 3, 2017.
The Center appointed Andrew F. Christie as the sole panelist in this matter on January 17, 2017. 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, which trades as “Vittoria Food and Beverage”, is an Australian-based company, established in 1947. It is a major manufacturer, importer and distributor of a range of food and beverage products, including coffee, cheese, wine, gelato and gelato machines. It exports products to more than 22 countries.
The Complainant has been marketing and selling gelato products under the trademark GELATORIA to the food service industry since 2003. It owns trademark registrations for the GELATORIA trademark in Australia (registered January 23, 2003), New Zealand (registered January 24, 2003), Singapore (registered November 12, 2003), Malaysia (registered December 2, 2003) and China (registered February 18, 2005).
The Complainant operated a website promoting its GELATORIA gelato products using the disputed domain name from at least August 14, 2004, until around January 9, 2016, when its registration of the disputed domain name was inadvertently not renewed.
The disputed domain name was registered in the name of PLB Trading Pty Ltd on March 12, 2016, with Shawna Bevins of Wagram, North Carolina, United States of America listed as the Registrant, Admin, Technical and Billing Contact. The Complainant has provided a screen shot of the website resolving from the disputed domain name on October 15, 2016, showing that it was used to sell branded hats, clothing and shoes. Currently it appears that the disputed domain name does not resolve to a website.
Around July 25, 2016, the Complainant contacted the Registrar advising that it was the registered owner of the GELATORIA trademark and requesting to have the disputed domain name transferred to it. The Registrar advised that this is not possible without a court order or a transfer decision under the Policy. The Complainant sent a cease-and-desist letter to the first-named Respondent, PLB Trading Pty Ltd, on October 13, 2016. It received a response from Mr. Cutforth, the sole director and beneficial owner of the first-named Respondent, who stated that the disputed domain name had been registered in the name of his company without his consent or knowledge. Mr. Cutforth then sent a number of communications to the Registrar, seeking to have his company removed from the WhoIs database as the registrant of the disputed domain name and requesting information about how to transfer the disputed domain name to the Complainant. On October 26, 2016, the Registrar contacted Mr. Cutforth to inform him that the disputed domain name had been “suspended” but did not respond to his enquiries about how to transfer ownership of the disputed domain name to the Complainant. 5. Procedural Issue – Identity of the Registrant
From the response of Mr. Cutforth to the Complainant’s cease-and-desist letter, it is quite plausible that the disputed domain name was registered on March 12, 2016, by the second-named Respondent, using the contact details of the first-named Respondent, without the consent or knowledge of the first-named Respondent. For the purpose of this decision the Panel notes that, although listed as the registrant of record, it would appear that the first-named Respondent does not exert any practical control over the disputed domain name or the associated website. 6. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical and confusingly similar to a trademark in which the Complainant has rights, as it directly incorporates the GELATORIA trademark without change.
The Complainant contends that the Respondents have no rights or legitimate interests in respect of the disputed domain name because: (i) the Respondents are not affiliated with the Complainant in any way; (ii) the Complainant has not provided the Respondents with a licence or otherwise authorized the Respondents to use the GELATORIA trademark or to register any domain name incorporating the GELATORIA trademark; (iii) the Respondents have no other examples of use of the GELATORIA trademark outside the disputed domain name; (iv) the Complainant’s registrations of the GELATORIA trademark and use of the disputed domain name predates the Respondents’ registration of the disputed domain name; and (v) the GELATORIA trademark was used in the disputed domain name to attract customers to the website resolving from it in order to sell goods.
The Complainant contends that the disputed domain name was registered or is subsequently being used in bad faith because: (i) it has been used by an unidentified party in bad faith through attempting to harness the GELATORIA trademark to attract Internet traffic to a website to sell goods; and (ii) it is not obvious why PLB Trading Pty Ltd has been listed as the registrant of the disputed domain name, and such opaqueness of identity of the registrant has been found to reinforce a finding of bad faith in other decisions under the Policy. B. Respondents
The Respondents did not reply to the Complainant’s contentions. 7. Discussion and Findings A. Identical or Confusingly Similar
When the ccTLD identifier “.au” and the second-level identifier “.com” are ignored (as is appropriate in this case), the disputed domain name consists solely of the Complainant’s GELATORIA trademark. Accordingly, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondents are not a licensee of, or otherwise affiliated with, the Complainant, and have not been authorized by the Complainant to use its GELATORIA trademark. The Respondents have not provided any evidence that they have been commonly known by, or have made a bona fide use of, the disputed domain name, or that they have, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant supports the view that the disputed domain name was registered by the second-named Respondent making unauthorized use of the contact information of the first-named Respondent, and was subsequently used by the second-named Respondent to resolve to a website selling hats, clothing and shoes. The fact that the disputed domain name appears to have been registered with false contact details, together with the fact that no Response was filed to the Complaint, means the Panel is unable to conclude that the disputed domain name is being used in connection with a bona fide offering of goods or services, or for a legitimate non-commercial or fair use. Accordingly, the Panel finds that the Respondents have no rights or legitimate interests in the disputed domain name. C. Registered or Subsequently Used in Bad Faith
Soon after the Complainant inadvertently failed to renew its registration of the disputed domain name, it was registered in the name of the first-named Respondent, apparently by the second-named Respondent. This registration of the disputed domain name was 13 years after the Complainant first registered its GELATORIA trademark, and around 12 years after the Complainant began operating a website using the disputed domain name promoting its products under that trademark. The evidence on the record provided by the Complainant with respect to its use of the GELATORIA trademark, combined with the absence of any evidence provided by the Respondents to the contrary, is sufficient to satisfy the Panel that, at the time the disputed domain name was registered, the registrant knew of the Complainant’s GELATORIA trademark and knew that it had no rights or legitimate interests in the disputed domain name. Furthermore, the evidence on the record provided by the Complainant with respect to the use of the disputed domain name indicates that the registrant has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion with the Complainant’s GELATORIA trademark as to the affiliation of that website. For all these reasons, the Panel is satisfied that the disputed domain name both has been registered in bad faith and is being used in bad faith. 8. Decision
For all 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 be transferred to the Complainant.
Andrew F. Christie
Sole Panelist
Date: January 30, 2017
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