DECISION

 

Gualtiero Marchesi Trademark s.r.l. v. Ivano Labruna

Claim Number: FA0105000097194

 

PARTIES

The Complainant is Gualtiero Marchesi Trademark s.r.l., Milan, Italy (“Complainant”) represented by Enrico Dandolo.  The Respondent is Ivano Labruna, Italy (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <gualtieromarchesi.com>, registered with Network Solutions, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on May 14, 2001; the Forum received a hard copy of the Complaint on May 30, 2001.

 

On May 15, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <gualtieromarchesi.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On May 31, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 20, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@gualtieromarchesi.com by e-mail.

 

A timely response was received and determined to be complete on June 13, 2001.

 

On June 19, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.)  as Panelist.

 

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

The Complainant contends that the domain name at issue is identical to the trademarks registered in the name of the Complainant; that the Respondent has no rights or legitimate interests in the domain name; and registered the domain name in bad faith.

 

B. Respondent

The Respondent contends that the domain name is not identical to the Complainant’s trademark. The Respondent also contends that the domain name is not active it was not registered in bad faith.

 

C. Additional Submissions

The Complainant filed an additional response on June 20, 2001, which was received in a timely manner according to the Forum’s Supplemental Rule #7.

 

The Respondent filed an additional response on June 22, 2001, which was not timely filed.  However, this additional submission was reviewed and considered by this Panelist.

 

FINDINGS

The Complainant trademark is representative of the famous Italian cook and gourmet, Gualtiero Marchesi, and holds a European trademark and two Italian trademarks in his name.  These trademarks are used in connecting with the offering of fine foods to include high-cuisine restaurants, sale of gourmet foods, catering and the advertising and e-commerce business associated with its business.

 

The Respondent, an employee of PNL International, states that the Complainant engaged their services to create an e-commerce and Internet site for the Complainant.  He states that the Complainant then transferred the site to another server.

 

The Complainant holds two Italian trademarks for the name "Gualtiero Marchesi", the oldest dating back to 1983, and one European trademark as of this writing.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

 

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

Even though the Complainant’s registered mark is reflected as "Gvaltieromarchesi" and the Respondent registered "Gualtieromarchesi" as the domain name, the substitution of the "v" for the "u" in the trademark is merely for aesthetics.  In essence, the domain name at issue is identical or confusingly similar to the Complainant’s trademark.  The Respondent registered a personal name as the domain name at issue, which is not his name, he does not have a license to use the name, or otherwise acquired the rights to the name.  See Victoria’s Secret et al. v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that misspelling words and adding letters on to words does not create a distinct mark but is nevertheless confusingly similar with the Complainant’s marks); see also See Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark).

 

Rights or Legitimate Interests

The Respondent, by his own admission, is not using the domain name in connection with a bona fide offering of goods and services, but is diverting Internet traffic to its own website via the domain name at issue.  See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites); see also Vapor Blast Mfg Co. v. R & S Technologies, Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).

 

Further, it appears that the Respondent has linked the domain name to its own website. See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).

 

Registration and Use in Bad Faith

When the Complainant attempted to register the domain name at issue, it learned that it was already registered by the Respondent.  The Complainant then contacted the Respondent and requested the return of the domain name, the Respondent proposed that they become partners in the e-commerce project of the Complainant.  They attempted to negotiate a contract;  however it eventually became clear that the Respondent was not willing to transfer the domain name and the Respondent was convinced that he had acquired exclusive and good title to the domain name and would transfer the domain name only for valuable consideration, consisting of a favorable contract for his employer.

 

The Panel may find that Respondent registered the disputed domain name in bad faith as it acquired the <gualtieromarchesi.com> domain name primarily for the purpose of selling or renting the domain name to Complainant in exchange for valuable consideration in excess of its out of pocket expenses directly related to the domain name when Respondent offered to enter into negotiations with Complainant.  See American Anti-Vivisection Soc’y v. “Infa dot Net” Web Services, FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).

 

In addition, the Respondent created a likelihood of confusion with Complainant’s mark as to the source and/or sponsorship of Respondent’s website.  See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on the Complainant’s good will and attract Internet users to Respondent’s website).

 

DECISION

As all three elements required by the ICANN Policy Rule 4(a) have been satisfied, it is the decision of this panelist that the requested relief be granted.   Accordingly, for all of the foregoing reasons, it is ordered that the domain name "GUALTIEROMARCHESI.COM" be transferred from the Respondent to the Complainant.

 

 

Honorable Paul A. Dorf (Retired) Panelist

 

Dated:  July 2, 2001