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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cantiere Nautico Cranchi S.R.L. v. Rapier USA, Inc.
Case No. D2002-0060
1. The Parties
The Complainant in this administrative proceeding is Cantiere Nautico Cranchi S.R.L. ("Complainant"), a company incorporated under the laws of Italy, with its main business address at Via Nazionale, 45, I-23010 Piantedo (SO), Italy. Complainant's authorised representative is Frank Ferrante, Ferrante, PLLC, 425 Park Avenue, 27th Floor, New York, NY 10022, USA.
The Respondent in this administrative proceeding is Rapier USA, Inc. ("Respondent"), a corporation with its main business address at c/o David M. Bartle, 1855 SW 97 Place, Ocala, FL 34476, USA. Respondent’s authorised representative is Iain J. Richmond, firstname.lastname@example.org.
2. The Domain Names and Registrar
The domain name at issue is <cranchi.com> ("Domain Name"), registered with Network Solutions ("Registrar"), of 505 Huntmar Park Drive, Herndon, VA 20170, USA.
3. Procedural History
A complaint ("Complaint"), pursuant to the Uniform Domain Name Dispute Resolution Policy, implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy, implemented by ICANN on the same date ("Rules"), was submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on January 23, 2002, by e-mail and was received on January 28, 2002, in hardcopy.
The Acknowledgement of Receipt of Complaint was submitted to the Complainant by the WIPO Center on January 25, 2002.
On January 28, 2002, a Request for Registrar Verification was transmitted to the Registrar, which confirmed on January 30, 2002, with its Verification Response that the disputed Domain Names were registered with Network Solutions, and that Respondent, Rapier USA, Inc., was the current registrant of the disputed Domain Name.
The assigned WIPO Center Case Manager completed a Formal Requirements Compliance Checklist on January 30, 2002, without recording any formal deficiencies.
The Panel independently determines and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the applicable requirements.
A Notification of Complaint and Commencement of Administrative Proceeding ("Commencement Notification") was transmitted to the Respondent on January 30, 2002, setting a deadline of February 19, 2002, by which the Respondent could file a Response to the Complaint.
On February 18, 2002, the assigned Case Manager received the Response to the Complaint by e-mail and on February 21, 2002 in hardcopy. The Acknowledgement of Receipt of Response was submitted to the Respondent by the WIPO Center on February 18, 2002.
Both parties elected to have the dispute decided by a single member administrative panel. The WIPO Center invited the undersigned to serve as Sole Panelist in Case No. D2002-0060 and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence which was duly signed and returned to the WIPO Center on February 25, 2002.
The WIPO Center transmitted to the parties on February 26, 2002, a Notification of Appointment of Administrative Panel and Projected Decision Date as of March 12, 2002. The Administrative Panel finds that it was properly constituted and appointed in accordance with the Policy, the Rules and the WIPO Supplemental Rules.
4. Factual Background
The following facts and statements appear from the Complaint and its annexed documents as well as from the Response and its enclosed documents:
Complainant, Cantiere Nautico Cranchi S.R.L. is maintaining a business in the area of the industrial production and sale of pleasure boats in Piantedo, Italy, since 1970. Complainant operates internationally, and distributes its products to 28 countries all over the world. Complainant is the holder of a Trademark registration in the US. The Trademark, number 2231699, registered on March 16, 1999, by Complainant, consists of the word "Cranchi" and the design of a stylized crab which, in conjunction, form the registered trademark. In addition, Complainant claims to have common law trademark rights in the mark "Cranchi", reaching back prior to Respondent’s registration of the Domain Name.
Complainant plans to operate the Trademark on the Internet through its web sites and uses these sites as additional selling and marketing instruments. As a consequence, Cranchi attempted to register the disputed Domain Name <cranchi.com> but was unable to make a reservation due to the fact that Respondent is the registered owner of the Domain Name since November 6, 1996.
5. Parties’ Contentions
Complainant contends that:
- the domain name is identical to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the Domain Name; and
- the Domain Name was registered and is being used in bad faith; and
- the Domain Name <cranchi.com> should be transferred to the Complainant.
Additional contentions of the Complainant may be contained in the following discussions and findings.
Respondent disputes the above contentions. As a result, the Domain Name <cranchi.com> should remain with the Respondent.
Additional contentions of the Respondent may be contained in the following discussions and findings.
6. Discussion and Findings
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."
Identical or Confusingly Similar Domain Name: Policy 4(a)(i)
The Domain Name at issue is <cranchi.com>. Complainant is the holder of a registered trade mark which consists of the word "cranchi" and a design element, and claims to have additional common law trademark rights in the mark "cranchi". Design elements cannot be part of a domain name, which only consists of letters and numbers. Yet, the Domain Name at issue <cranchi.com> is confusingly similar if not even identical to the word part of the registered word-design trademark of Complainant, and is clearly identical to the alleged and non-disputed common law trade mark "cranchi" under which Complainant was internationally known before Respondent’s registration of the Domain Name at issue.
Complainant plans to market its products worldwide through its websites. For this commercial purpose, domain names of the gTLD ".com" are most commonly used and reach the highest degree of attention and recognition. Respondent’s assertion as to the fact that there are various other domain names available than <cranchi.com> for Complainant to use, such as <cranchi.net>, <cranchi.org> or <cranchi.biz> is irrelevant for this proceeding.
The Panel therefore holds that Complainant has sufficiently established element (i) of the Policy's paragraph 4(a).
Respondent's Rights or Legitimate Interests in the Domain Name: Policy 4(a)(ii)
It is first convenient to recall that, according to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
"(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trade mark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue."
Respondent maintains to have registered the Domain Name as part of a long term plan to market a "Cookie", called "Cranchi", but fails, even after five years of "planning", "development" and "research" to deliver any evidence whatsoever for such contention to be true. Therefore, this Panel fails to see demonstrable preparations for a use of the Domain Name in connection with a bona fide offering of goods or services as claimed by Respondent.
Also, there are no indications leading to a conclusion that Respondent has been commonly known by the Domain Name, nor that Respondent is making any form of a legitimate noncommercial or fair use of the Domain Name.
In the eyes of this Panel, Respondent, therefore, has not shown sufficient grounds to assume its legitimate rights or interests in the above sense, and has not shown any other circumstances reflecting rights or legitimate interests in the disputed Domain Name.
In the absence of any indications as to a legitimate interest of Respondent to use the Domain Name, the Panel finds that Complainant has fulfilled its burden of proof under paragraph 4(a)(ii) of the Policy.
Domain Name Registered and Used in Bad Faith: Policy 4(a)(iii)
The third element to be established by Complainant is that the Domain Name has been registered and used in bad faith.
Paragraph 4(b) states the following four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the Domain Name:
"(i) circumstances indicating that you [Respondent] have registered or you [Respondent] have acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark, or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Name; or
(ii) you [Respondent] have registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding Domain Name, provided that you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or your location."
Complainant alleges that Respondent registered and used the Domain Name in bad faith.
Evidence is delivered by the fact that Respondent has offered the Domain Name for sale to the Complainant for the price of USD 75’000.- which clearly exceeds the out-of-pocket costs directly related to the Domain Name. In Respondent’s letter to Complainant of July 18, 2001 (Annex 3 of Complaint), Respondent’s legal representative in a first part asserts that Respondent has legitimate rights with respect to the Domain Name, nevertheless, in the end he is offering the Domain Name for sale with the warning that "litigation can be expensive, may take years to conclude and there is never a guarantee to the outcome". In the eyes of the Panel, such conduct indicates bad faith on the part of the Respondent. Respondent’s contention that Complainant has been acting as "agent provocateur" by requesting to purchase the Domain Name at issue is not relevant and not suitable to destroy the Panel's impression of Respondent’s bad faith.
Additionally, in WIPO Case No. D2000-0003 (<telstra.org>), paragraphs 7.9 to 7.11, as well as in other WIPO decisions, it was ascertained that a passive holding of a domain name may on its own be sufficient to constitute bad faith, taking into consideration the overall context of Respondent's behavior. In the present case, the following circumstances seem relevant in this respect: Complainant's trademark is well known in its industry and throughout the world; Respondent provided no evidence of any good faith use of the disputed Domain Name, and does not seem to have associated the Domain Name with any serious activity or any genuine web site presence of its own in seven years.
In an overall assessment of the contentions and the facts mentioned above, the Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy have been sufficiently made out by the Complainant, and that Respondent's bad faith registration and use of the Domain Name have been established.
In view of the circumstances and facts discussed above, the Panelist decides that the disputed Domain Name is identical to the registered trade mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent's Domain Name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panelist requires that the disputed Domain Name, <cranchi.com>, shall be transferred to the Complainant.
Bernhard F. Meyer-Hauser
Dated: March 12, 2002