Decisión del Panel Administrativo nº D2014-2244 of WIPO Arbitration and Mediation Center, March 18, 2015 (case Pier Giorgio Andretta v. Federico Zecchetto)
| Resolution Date | March 18, 2015 |
| Issuing Organization | WIPO Arbitration and Mediation Center |
| Decision | Complaint denied |
| Dominio | Generic Domains |
The Complainant is Pier Giorgio Andretta of Charlotte, North Carolina, United States of America (USA), represented by Dr. Michele Provera, Convey SRL, Italy.
The Respondent is (as designated in the Complaint) Federico Zecchetto of Bigarello, Mantua, Italy, represented by Matteo Maccagnan, Studio Torta, Italy.
The disputed domain name (the “Domain Name”) [giordana.com] is registered with Tucows Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2014. On December 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 22, 2014, the Registrar transmitted by email to the Center its verification response stating that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 7, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2015. The Response was filed with the Center on January 13, 2015.
On December 24, 2014, the Center received informal communications from the Respondent by email.
On January 21, 2015, the Complainant filed the Supplemental Filing by email to the Center.
On January 26, 2015, the Respondent filed the Supplemental Filing by email to the Center.
The Center appointed Michael A.R. Bernasconi as the Sole Panelist in this matter on January 28, 2015. 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.
On March 9, 2015, the Complainant filed the additional Supplemental Filing by email to the Center.
On March 10, 2015, the Respondent filed the additional Supplemental Filing by email to the Center.
The following facts appear from the Complaint and its Annexes, which have not been contested by the Respondent.
The Complainant is Pier Giorgio Andretta of Charlotte, North Carolina, USA. The Complainant is acting, inter alia, in the field of technical cycling clothing.
The Complainant owns (directly or through its company) numerous registered trademarks for “Giordana”, including the following:
- International trademark registration GIORDANA (Registration no. 529214), dated September 20, 1988;
- International trademark registration GIORDANA (Registration no. 1144934), dated November 13, 2012;
- US trademark registration GIORDANA (Registration no. 1573521), dated December 26, 1989;
- US trademark registration GIORDANA (Registration no. 1435739), dated April 7, 1987;
(together, the “trademark”).
The Domain Name was created on December 30, 1999 by the company A.P.G. SRL. The Domain Name is currently on Registrar Lock. Prior to this, the Domain Name redirected visitors to the website “www.apgcycling.com”.
The Complainant contends that he started in 1980 the production of technical cycling clothing bearing the GIORDANA trademark, which was named after his daughter. The Complainant states that he owns numerous national and international GIORDANA trademarks. Besides, the Complainant argues that the trademark has been extensively advertised and has been widely used on numerous media. According to the Complainant, he owns several domain names either consisting of or containing the “Giordana” denomination, such as [giordana.us], [giordanacycling.com], [mygiordana.com], etc. Finally, the Complainant states that his intellectual property (“IP”) assets are of critical importance to his core business.
The Domain Name is Identical and/or Confusingly Similar to the GIORDANA Trademark
The Complainant argues that the Domain Name is identical or confusingly similar to the Complainant’s registered trademarks, denomination and domain names, in which the Complainant has rights. Besides, the Complainant states that the sole addition of the generic Top-Level Domain (“gTLD”) “.com” is without legal significance, since the use of a gTLD is required by domain name registrants and does not serve to identify a specific service provider as a source of goods or services.
The Respondent has no Rights or Legitimate Interests in the Domain Name
The Complainant states that he is the owner of the trademark, has been the joining link between the company A.P.G. SRL and the Domain Name and granted A.P.G. SRL use of his IP rights upon payment of a royalty fee. This co-operation ended on September 7, 2013, when the Complainant decided to withdraw from A.P.G. SRL and signed his termination agreement. According to the Complainant, this agreement thus ended the co-operation between him and A.P.G. SRL and therefore ended all ties with the latter.
The Complainant argues that, in particular, it was agreed between the parties that all “Giordana”-related IP assets shall return to the full control of the original owner, i.e. the Complainant. However, the Complainant states that the obligations under the termination agreement were not fulfilled. On the contrary, the Complainant contends that the Respondent took personal and direct possession of the Domain Name through immediate change of the WhoIs information of the Domain Name and thus indicated himself as “Registrant Name”. According to the Complainant, the Respondent concurrently removed all the contents relating to “Giordana” products and set up an automatic redirect, which transferred users visiting the Domain Name to a new website created by the Respondent and named “www.apgcycling.com”, which advertises and sells cycling apparel and clothing under a new brand named “Alé”.
In the light of the above, the Complainant argues that pursuant to the Policy, paragraph 4(c)(i) – (c)(iii), the Respondent does not have rights or legitimate interests arising from a bona fide offering of goods or services, or from legitimate noncommercial or fair use of the Domain Name. In particular, the Complainant contends that the Respondent has entirely incorporated and is using Complainant’s trademark as a Domain Name to attract Internet users looking for “Giordana” products and automatically redirect them to a new website, where any reference to Complainant’s brand has been deleted and replaced with a competing brand “Alé”. This brand has been intentionally registered and owned by the Respondent, advertising products in direct competition with Complainant’s. According to the Complainant, the website “www.apgcycling.com” was not only never authorized by Complainant, it is also dangerously deceptive and has caused, and keeps causing, serious damage to the fame and reputation that the GIORDANA trademark has earned throughout the last three decades. In addition, the Complainant states that the Respondent creates and exploits a likelihood of confusion with the trademark as to the source, sponsorship, affiliation, or endorsement of his website. Thus, capitalizing on the value of Complainant’s trademark, and such use of the Domain Name constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. For further evidence, the Complainant refers to various discussions in cycling forums, emphasizing the confusion of potential trademark costumers.
Accordingly and following the termination agreement between the parties, the Complainant states that he could neither find any evidence of Respondent’s use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services, nor observe any legitimate noncommercial or fair use of the Domain Name.
Besides, the Complainant states that pursuant to the Policy, paragraph 4(c)(ii), the Respondent has not been commonly known by the Domain Name, and holds no trademark or service marks rights in the trademark. In this respect, the Complainant wishes to highlight that the Respondent has never been associated to the trademark, which was solely conceived, registered, owned and developed as a brand by the Complainant. Hence, the Complainant alleges that the actual Respondent, Mr. Federico Zecchetto, is not known by the Domain Name, which is instead strictly related both to the professional and private life of the Complainant. Finally, according to the Complainant, the fraudulent use of the Domain Name constitutes corroborative evidence of lack of rights or legitimate interests of the Respondent in respect of the trademark.
The Registrant Registered and is Using the Domain Name in Bad Faith
The Complainant contends that, according to evidence provided, the Domain Name was formally transferred between November 5, 2013 and November 20, 2013 to a new entity, i.e. the Respondent. According to the Complainant, the change of ownership of the Domain Name results both from WhoIs records provided and from the substantial change in the company assets of A.P.G. SRL. In other words, on the one hand, the formal registrant of the Domain Name, listed as “Registrant”, appears to be A.P.G. SRL, Via Castelbelforte, 3/A, Bigarello, 46030 IT until November 5, 2013. Until this date, the actual Respondent was solely reported as “Administrative Contact”. Henceforth, the Complainant states that a formal change of the WhoIs records is...
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