Marchesi Lucifero family v. Gorygda

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Marchesi Lucifero Family and Azienda Agricola Poggio agli Ulivi

v. Gorygda

Case No. D2001-0714

1. The Parties

The Complainants in this administrative proceeding are Marchesi Lucifero family

and Azienda Agricola Poggio agli Ulivi, Via di Piazza Calda 3, 50125 Firenze,

Italy.

The Respondent is Gorygda, Gorokhovaya 128, St. Petersburg 190031, Russia.

2. The Domain Name and Registrar

The domain name in dispute is <lucifero.com>.

The Registrar with which the domain name is registered is Tucows.com, Inc.

3. Procedural History

The WIPO Arbitration and Mediation Center ("the Center") received

the Complaint on May 30, 2001, by e-mail and hardcopy. The Center acknowledged

receipt thereof on June 1, 2001.

On June 5, 2001, the Center sent the corresponding Request for Registrar Verification

in connection with this case to Tucows.com, Inc. On June 11, 2001, the Registrar’s

verification response confirmed that the Registrant was Gorygda and that the

domain name <lucifero.com> was "on hold" status.

On June 11, 2001, after having verified whether the Complaint was satisfying

the formal requirements, the Center notified by e-mail and courier the Commencement

of Administrative Proceeding to the Parties, in accordance with Paragraph 4

of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules").

On July 3, 2001, the Center issued by e-mail the Notification of Default to

the Respondent for having failed to submit a response to the Complaint within

the deadline granted.

On July 13, 2001, the Center proceeded with the appointment of the Administrative

Panel pursuant to Paragraph 6 of the Rules and advised the Parties of the appointment

of the undersigned as sole panelist in accordance with Paragraph 6(f) of said

Rules, after the latter had signed and forwarded to the Center on that same

date a statement of acceptance and declared his impartiality and independence

in this matter.

Transmission of the file to the Sole Panelist was made on July 13, 2001, by

e-mail and registered post, hard copy of which was received by the undersigned

a few days later.

The Sole Panelist forwarded his decision to the Center within the time limit

fixed (July 26, 2001).

4. Factual Background

The Complaint is based on the names "LUCIFERO" and/or "MARCHESI LUCIFERO" (Complainants'

Annex 3).

In addition, "LUCIFERO" is the family name of one of the Complainants, an ancient

Calabrian family (see Complainants' Annex 3).

Moreover, the Complainants do business on internet under the domain name <marchesilucifero.com>

while selling, among others, olive oil, honey and other biological related products

(Complainants' Annex 5).

5. Parties’ Contentions

A. Complainants

The Complainants submit the following :

(i) the domain name <lucifero.com> is identical to a trademark or service

mark in which the Complainants have rights; "LUCIFERO" is clearly and strongly

associated with the Complainants and provided that the word "LUCIFERO" is invented,

it is not a designation that traders would legitimately choose unless seeking

to create an impression of an association with the Complainants;

(ii) the Respondent has no rights or legitimate interests in respect of the

domain name that is the subject of the Complaint; the Respondent is not a licensee

of the Complainants nor is authorized to use their mark, and, on information

and belief, is not the owner of any registered trademark or common law right

containing the term "LUCIFERO"; furthermore the Respondent, on information and

belief, is not commonly known under the domain name in dispute, nor could it

be contended to be the nickname of "GORYGDA" or other member of his family,

nor in any other way identifies a legitimate interest of Respondent;

(iii) the domain name was registered and is being used in bad faith, because

- the Respondent uses the domain in dispute, together with the domain name

<marchesilucifero.com>, in connection with porn web sites (Complainants'

Annexes 4 and 5) which could be defamatory and create the false idea that the

Complainants are connected with such an activity;

- false information in connection to the domain name registration have been

provided by the Respondent to the Complainants, in particular as to the Respondent's

mail and e-mail address, telephone number, in breach of Paragraph 2(a) of the

Policy;

- the domain name <lucifero.com> is not properly used since the domain

name automatically redirect to another web site; this is a clear intent to use

the denomination LUCIFERO to attract the net surfer and then to redirect them

to another web site;

- the pornographic web site is in different languages and mainly in Italian

and therefore it could be clearly associated with the Complainants.

The Complainants conclude that the domain name at stake was registered and

maintained with the only goal to recover a substantial financial consideration

from the Complainants or, at least to defamate them.

B. Respondent

The Respondent has not submitted any response to the Complaint.

6. Discussion and Findings

Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy ("the

Policy") sets forth three requirements, which have to be met for the Administrative

Panel to order the transfer of the disputed domain name to the Complainants.

Those requirements are that:

(i) Respondent’s domain name is identical or confusingly similar to a trademark

or service mark in which the Complainants have rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain

name; and

(iii) Respondent’s domain name has been registered and is being used in bad

faith.

The Complainants must prove in the administrative proceeding that each of the

aforesaid three elements is present so as to warrant relief, according to Paragraph

4(a) of the Policy.

The Administrative Panel has 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, pursuant to Paragraph

15(a) of said Rules.

A. Identity or Confusing Similarity

There is, at least, confusing similarity between "LUCIFERO" and/or "MARCHESI

LUCIFERO" and the domain name <lucifero.com>.

It is unclear from the file submitted whether the Complainants have registered

rights in respect of the name(s) under which they trade. In any case the Policy

does not call for registered rights; unregistered or common law rights will

suffice (cf. e.g. WIPO Case No. D2001-0467).

From the evidence filed in this administrative proceedings (see Complainant’s

Annex 3) and submissions made by the Complainants in this respect - which

have not been disputed by the Respondent - the Sole Panelist considers that

the first requirement of Paragraph 4(a) of the Policy is met in the instant

case.

B. Rights or Legitimate Interests of the Respondent

The Respondent, in not responding to the Complaint, has failed to invoke any

of the circumstances, which could demonstrate, pursuant to Paragraph 4 (c) of

the Policy, any rights to and/or legitimate interests in the domain name in

dispute. This entitles the Administrative Panel to draw any such inferences

from such default as it considers appropriate pursuant to Paragraph 14 (b) of

the Rules (see e.g. WIPO Cases Nos. D2000-0009,

p. 6 or D2000-0867, p. 6).

As pointed out by the Complainants and absent evidence to the contrary, the

Complainants have not granted any license or otherwise permitted the Respondent

to use the Complainants' trade marks or to apply for any domain name incorporating

said trade marks; moreover, the Respondent does not seem to be the owner of

any registered trademark or common law right containing the term "LUCIFERO";

neither does it seem to be commonly know under the domain name in dispute.

Under those particular circumstances, the Sole Panelist is unable to find any

evidence that could establish that the Respondent has rights or legitimate interests

in respect of the domain name at stake.

C. Registration and Use in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list

of circumstances that evidence registration and use of a domain name in bad

faith. Any one of the following behaviors is sufficient to support a finding

of bad faith:

(i) circumstances indicating that you have registered or you 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 trademark 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 have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting

the business of a competitor; or

(iv) by using the domain name, you 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 location.

As already pointed out, the Respondent did not file any response to the Complaint,

failing thereby to invoke any circumstance, which could demonstrate his good

faith in the registration or use of the domain name in issue.

In addition, the Respondent has not disputed the Complainants' contention that

it has registered and is using the <lucifero.com> domain name in bad faith.

The Respondent's behavior, as summarily described above, no doubt amounts to

bad faith within the general meaning of Paragraph 4(b) of the Policy in the

Sole Panelist's view; in particular, the Sole Panelist wishes to point out that

the Respondent could not ignore the Complainants' activities since it had also

chosen to register another domain name quasi-similar (<marchesi.lucifero.com>)

to one of of the Complainants (<marchesilucifero.com>) (see Complainants'

Annexes 3 and 4).

7. Decision

In light of the foregoing, the Sole Panelist decides that the domain name registered

by the Respondent is identical or confusingly similar to the trade name of the

Complainants, that the Respondent has no rights or legitimate interests in respect

of the domain name and that the domain name in issue has been registered and

is being used in bad faith by the Respondent.

Accordingly, pursuant to Paragraph 4 (i) of the Rules, the Sole Panelist requires

that the registration of the domain name <lucifero.com> shall be transferred

to the Complainants.

Christophe Imhoos

Sole Panelist

Dated: July 25, 2001