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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Diversified Gestao e Investimientos Lda. v. Krikor Doumanian

Case No. D2000-1749

 

1. The Parties

The Complainant is Diversified Gestao e Investimientos Lda., Rua das Murcas 68, 3° Funchal , Madeira, Portugal.

The Respondent is Krikor Doumanian, P.O. Box 80540, Las Vegas, NV 89180-0540, U.S.A.

 

2. The Domain Name and Registrar

The domain name at issue is <gilli.com> (Domain Name), which Domain Name is registered with Melbourne IT, Ltd. D/B/A Internet Names Worldwide, Level 2, 120 King Street, Melbourne, Victoria 3000, Australia (the Registrar).

 

3. Procedural History

A Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the Policy), to the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the Rules) and to the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules), was submitted electronically to the WIPO Arbitration and Mediation Center (the Center) on December 15, 2000. The signed original with attachments and four copies was received by the Center on December 19, 2000.

On December 27, 2000, the Center transmitted to the Registrar a request for Registrar Verification in connection with this case. On December 28, 2000, the Registrar confirmed that: (i) Melbourne IT, Ltd. d/b/a/ Internet Names Worldwide is the Registrar of the Domain Name <gilli.com>; (ii) the current registrant of the Domain Name is Krikor Doumanian , P.O. Box 80540, Las Vegas, NV 89180-054, U.S.A.; (iii) the administrative and billing contact is Krikor Doumanian; and, (iv) the current status of the Domain Name is "licensed" without any further details.

On December 28, 2000, the Center completed the Formal Requirements Compliance Checklist and, on the same date, transmitted to the Respondent a Notification of Complaint and Commencement of Administrative Proceedings (Commencement Notification) electronically and by courier. In the Commencement Notification, the Center, inter alia, advised the Respondent that a response was due on January 16, 2001. On the same date, the Commencement Notification was copied to the Complainant and to ICANN and the Registrar.

Having received no response from the Respondent, on January 17, 2001, the Center transmitted electronically to the Respondent a Notification of Respondent Default, copy to the Complainant.

On January 31, 2001, the Center notified the parties that Ms. Anna Carabelli had been appointed as the Panelist in this proceeding, indicating that, absent exceptional circumstances, the Panelist was required to send its decision to the Center by February 14, 2001.

The Panelist independently determined and agreed with the assessment of the Center that the Complaint formally complies with the requirements of the Policy, the Rules and the Supplemental Rules.

 

4. Factual Background

The Complaint is based on the European Community Trademark Registration N°679027 of June 17, 1999, for the word GILLI, owned by the Complainant by virtue of assignment recorded in the OHIM Register on May 3, 2000 (Attachment 3 to the Complaint).

The Domain Name was registered in March 2000 with Network Solutions, Inc. and thereafter (in December 2000) with the current Registrar.

On September 1, 2000, the Complainant sent a cease and desist letter (Attachment 4) advising the Respondent that the registration by the Respondent of the Domain Name <gilli.com> amounted to an infringement of the Complainant’s rights in the corresponding trademark and requesting that the Domain Name be immediately transferred to the Complainant. Since, at that time, the Domain Name was linked to a pornographic site, <miamigirls.com>, the Complainant also stressed that such use of the Domain Name was defamatory.

No reply was ever received by the Complainant, but a few weeks later the Complainant, while checking the web, noticed that the Domain Name was no longer linked to the <miamigirls.com> site.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- the trademark GILLI is used by the Complainant in connection with goods belonging to class 18 and 24 manufactured by the Italian company Negozi Richard Ginori Gilli;

- the Respondent has no rights or legitimate interests in the Domain Name;

- in particular, Respondent is not a licensee of the Complainant nor is he authorised to use the Complainant’s GILLI trademark nor is he commonly known by the Domain Name;

- the Domain Name is not, nor could it be contended to be, the nickname of the Respondent; nor does it in any other way identify a legitimate interest of the Respondent;

- GILLI is clearly and strongly associated with the Complainant and, being an arbitrary mark, there would be no reason for traders to choose it unless seeking to create an association with the Complainant;

- the Respondent has not developed a web site using the Domain Name or made any other good faith use of the Domain Name but just used the Domain name to redirect users to the pornographic web site <miamigirls.com>;

- evidence of bad faith registration and use can be drawn from the fact that (i) further to the Complainant’s cease and desist letter, the Respondent eliminated the link to <miamigirls.com>, which circumstance demonstrates that the Complainant’s claim was well founded; (ii) the Respondent has made no actual good faith use of the Domain Name; (iii) the Respondent has provided false address information (a second warning letter by the Complainant was not claimed by the Respondent whose address is a P.O. BOX) and failed to provide complete and accurate address information (his telephone and fax details are not available in the Registrar’s WhoIs database) in breach of paragraph 2(a) of the Policy.

Based on the above, the Complainant believes that the Respondent registered the Domain Name with the only goal being to obtain financial consideration from or to defamate the Complainant and consequently requests the transfer of the Domain Name to the Complainant.

B. Respondent

Respondent did not file any response and is in default.

 

6. Discussion and findings

1. Paragraph 15.a. of the Rules instructs the Administrative Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Under paragraph 14.b of the Rules, if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall draw such inferences therefrom at it considers appropriate. Since the Respondent has not filed any response and consequently has not contested any of the Complainant’s contentions, this case shall be decided based on the allegations and documents submitted by the Complainant.

Under paragraph 4.a of the Policy, the Complainant must prove each of the following:

(i) The domain name in issue is identical or confusingly similar to the Complainant’s trademark or service mark;

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and,

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

Paragraph 4.b of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4.a (iii) shall be evidence of the registration and use of a domain name in bad faith, as follows:

(i) circumstances indicating that respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct;

(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor;

(iv) by using the domain name respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s web site or location or of a product or service on the respondent’s web site or location.

Paragraph 4.c sets out in particular but without limitation three circumstances which, if proved by respondent, shall be evidence of the respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4.a(ii), namely:

(i) before any notice of the dispute to the respondent, the respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Identity or confusing similarity

The Domain Name is <gilli.com>. The Registrar’s verification response confirms that the Respondent is the current registrant of the Domain Name.

GILLI is a registered European Community trademark of the Complainant who has submitted a copy of the Certificate of Registration and of the "statement of registration of assignment" of such trademark in favor of the Complainant (Attachment 3 to the Complaint).

The Domain Name is identical to the Complainant’s trademark except that the Domain Name (i) employs lower case letters while the Complainant’s trademark is generally used in capital letters (Attachment 3 to the Complaint) and (ii) adds the generic TLD .com. None of the above factors has any legal significance in comparing the Domain Name to the Complainant’s trademark. In particular, the gTLDs clearly do not have any distinctive character, being meant solely to indicate, at least in principle, that the domain names are commercial (see Pharmacia &Upjohn Co v. People Revolutionary Suicide Jazz Band – WIPO Case No. D2000-0816).

Therefore, the Panelist finds that the Domain name is identical, and in any case undoubtfully confusingly similar, to the Complainant’s trademark GILLI.

Rights or legitimate interests

The Panelist finds that the Complainant has established a prima facie evidence that the Respondent has no rights or legitimate interests in the Domain Name.

The Complainant has not licensed or otherwise authorized the Respondent to use the Complainant’s trademark and there is no evidence in the record that Respondent is commonly known by the Domain Name or that he has made any actual or contemplated good faith use of the Domain Name.

On the other hand, the Panelist considers that by not submitting a response, Respondent has failed to invoke any circumstance under paragraph 4.c of the Policy, which can demonstrate any rights or legitimate interests in the Domain Name (Spadel S.A v. Peter Kisters WIPO Case No. D2000-0526 (July 19, 2000); Deutsche Bank AG v. Diego-Arturo Bruckner WIPO Case No. D2000-0277 (May 30, 2000); Talkcity Inc. v. Robertson WIPO Case No. D2000-0009) (February 29, 2000).

Based on the arguments and evidence brought by the Complainant, the Panelist finds that the Respondent has no rights or legitimate interests in the Domain Name.

Bad Faith

Under the Policy, the Complainant is required to prove also the third element provided for in paragraph 4.a(iii), namely that the domain name "has been registered and is being used in bad faith."

The Complainant contends that the Respondent has not developed a web site using the Domain Name nor made any good faith use of it. The Complainant indicates that the Respondent’s use of the Domain Name only consisted in a link to a pornographic web site, which was removed upon receipt of the Complainant’s cease and desist letter. In addition, the Complainant notes that the Respondent’s address is a P.O. Box and that the Respondent has provided false address information and has failed to indicate his fax and telephone details. According to the Complainant, this shows the Respondent’s bad faith for the purposes of paragraph 4.a(iii) of the Policy.

By not submitting a response, the Respondent has failed to address any of the Complainant’s contentions.

The circumstances indicated in paragraph 4.b of the Policy are expressly "without limitation" which means that evidence of bad faith registration and use of the domain name can be drawn also from other circumstances.

The Panelist finds that the Respondents’ activity amounts to bad faith registration and use of the Domain Name, based on the following circumstances:

(a) according to the contact details contained in the Registrar’s WhoIs database (a P.O. Box as address and no telephone or fax details), the Respondent does not seem to be actively involved in any business activity relating to the domain name;

(b) there is no evidence that the Respondent has made actual or contemplated good faith use of the Domain Name;

(c) the fact that the Respondent had linked the domain name to the pornography site <miamigirls.com>, even though this link was subsequently removed upon the Complainant’s warning, leads to the conclusion that the Respondent has no good faith intent to use it;

(d) the Respondent has no rights or legitimate interests in the Domain Name, as established under paragraph 6(b) above;

(e) in light of the above, the Respondent could not possibly make any plausible actual or contemplated active use of the Domain Name other than illegitimate use.

Therefore, the Panelist concludes that the Domain Name has been registered and is being used in bad faith.

 

7. Decision

The Panelist decides that: (a) the domain name <gilli.com> is identical or confusingly similar to the Complainant’s registered trademark; (b) the Respondent has no rights or legitimate interests in respect of the domain name <gilli.com>; and (c) the domain name <gilli.com> has been registered and is being used in bad faith by the Respondent.

Accordingly the Panelist orders that the domain name <gilli.com> be transferred to the Complainant.

 

 

Anna Carabelli
Sole Panelist

Dated: February 13, 2001