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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Piaggio & C.S.p.A. and Piaggio USA, Inc. v. Schieffelin & Company, LLC, Zachary Schieffelin

Case No. D2008-1896

1. The Parties

The Complainants are Piaggio & C.S.p.A., of Italy, and Piaggio USA, Inc., of United States of America, represented by Paul, Hastings, Janofsky & Walker, LLP, United States of America.

The Respondent is Schieffelin & Company, LLC, Zachary Schieffelin, of United States of America.

2. The Domain Name and Registrar

The disputed domain name <vespabrooklyn.com> is registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2008. On December 11, 2008, the Center transmitted by email to Register.com a request for registrar verification in connection with the disputed domain name. On December 11, 2008, Register.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on December 17, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on December 22, 2008. 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 December 30, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 19, 2009. The Response was filed with the Center on January 19, 2009.

The Center appointed William R. Towns as the sole panelist in this matter on January 27, 2009. 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.

The Complainants forwarded to the Center on January 29, 2009 an unsolicited Supplemental Submission, which was forwarded to the Panel by the Center on the same day.

4. Factual Background

The Complainant Piaggio & C.S.p.A owns valid and subsisting United States (or “U.S”) trademark registrations for the mark VESPA in connection with motor scooters, motorcycles, and related parts and accessories. The Complainant Piaggio USA, Inc., a subsidiary of Piaggio & C.S.p.A., is the exclusive importer of VESPA products in the United States, and the U.S. licensee of the parent company regarding the VESPA mark and related intellectual property rights.

Since November 2002, the Respondent has operated an authorized VESPA dealership in the Soho neighborhood of Manhattan in New York City under the name Vespa Soho (“Vespa Soho Dealership”). The Parties entered into a non-exclusive Authorized Dealer and Sales Agreement (“First Vespa Soho Agreement”) on November 1, 2002,¹for a period of five (5) years, which subsequently was extended through August 14, 2009 by a second Authorized Dealer and Sales Agreement (“Second Vespa Soho Agreement”) executed on August 15, 2006.

The Respondent on May 14, 2002, registered the domain name <vespasoho.com>. The Respondent has used this domain name since that time to direct Internet traffic to its website at “www.vespasoho.com” (“Vespa Soho website”). In addition, on May 14, 2002, the Respondent registered a second domain name, <vespabrooklyn.com>, which is the subject of this domain name dispute. Both Manhattan and Brooklyn are boroughs in New York City.

The Respondent has never operated a VESPA dealership in Brooklyn. The Parties appear to have had discussions off and on over several years about the possibility of the Respondent acquiring a second VESPA dealership in the Brooklyn borough, but as of early February 2008, those discussions appeared to have stalled without any agreement being reached. Subsequently, on February 25, 2008, the Complainants granted another entity, Hadjiminas & Company LLC (“Hadjiminas”), the non-exclusive right to operate a VESPA dealership in Brooklyn for a three-year period.

While the Respondent registered the disputed domain name on May 14, 2002, the Respondent maintains that it never used the disputed domain name to redirect Internet users to the Vespa Soho website until September 15, 2007. The Complainants do not dispute this. The record further reflects that the Respondent discontinued such use on February 27, 2008, a few days after the Complainants granted the right to Hadjiminas to open a VESPA dealership in Brooklyn.² However, in March 2008 the Respondent filed a lawsuit against Hadjiminas in a New York state court seeking to invalidate the business relationship between this entity and the Complainants, which is pending. Schieffelin & Company, LLC v. Andrew Hadjiminas, et. Al, Case No. 0104451/2008 (N.Y Supp. Ct.).

The Respondent denies having made any use of the disputed domain name between May 14, 2002, the date of registration, and September 15, 2007.³ Since February 27, 2008, the disputed domain name has been parked at a website provided by Register.com (“Vespabrooklyn.com website”). The website contains advertising links and sponsored searches that, among others, direct Internet visitors to other sites offering products and services that compete directly with those of the Complainants.

The Complainants sent a cease and desist letter to the Respondent on August 18, 2008, demanding that the Respondent discontinue all use of the disputed domain name and transfer the domain name to the Complainants. This was followed by an exchange of letters between the respective attorneys for the Parties. By letter dated October 6, 2008, Complainants’ counsel reiterated the Complainants’ demands, and asserted that the Respondent had acted to prevent the Complainants’ authorized dealer in Brooklyn from registering the domain name. Respondent’s counsel replied on October 14, 2008, that the Respondent was not using the disputed domain name and had acquired the domain name “at a time when [the Respondent was] promised the exclusive territory for Brooklyn and at a time when [the Respondent] contemplated the maintenance of facilities in Brooklyn for the long term”.

At some point after receiving the Complainants’ notice letter of August 18, 2008, the Respondent caused the registrant information in the WhoIs record for the disputed domain name to be changed to list Domain Discreet, an entity from Madeira, Portugal, as the registrant. Upon becoming aware of this change in registrant information, the Complainants’ sent a cease and desist letter to Domain Discreet on October 29, 2008. The Complainants also demanded that Domain Discreet disclose any other entities and individuals having any ownership interest or right to control the disputed domain name.

After receiving no response from Domain Discreet to its demand letter, the Complainants on December 11, 2008 filed their original Complaint in this matter against Domain Discreet, based upon the registrant information in the pertinent WhoIs record. In response to the Center’s request for verification of such registrant information, Register.com disclosed the Respondent as the registrant, and revised the WhoIs registrant information accordingly. The Complainants, at the invitation of the Center, then filed an Amended Complaint on December 22, 2008, for the purpose of naming the Respondent as a party. It is evident from the face of the original Complaint that the Complainants were aware that Domain Discreet was a privacy protection service.

5. Parties’ Contentions

A. Complainant

The Complainants assert exclusive rights under United States trademark law to use the VESPA mark in connection with motor scooters and other vehicles, as well as a variety of personal goods. Such rights are predicated on common law usage of the VESPA mark as well as registrations for the mark issued by the United States Patent and Trademark Office. According to the Complainants, the VESPA mark has become a valuable asset symbolizing Complainants, their quality products and services, and their goodwill.

The Complainants contend that the disputed domain name is confusingly similar to their VESPA mark, in that it incorporates the mark in its entirety. The Complainants assert that “Vespa” is the dominant portion of the disputed domain name, and argue from prior decisions of UDRP panels that the appending of a geographically descriptive term such as “Brooklyn” does not dispel the confusing similarity between the domain name and the Complainants’ mark.

The Complainants assert that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons. The Complainants argue that the mere registration of a domain name does not establish rights in the domain name. Second, the Complainants further argue that, while they granted the Respondent a limited non-exclusive license to use the VESPA mark in connection with the Soho VESPA dealership, the Respondent was not authorized to use the VESPA mark in domain names. The Complainants maintain that paragraph 5.20 and 8.2 of the Interim Vespa Soho Agreement⁴ prohibited the Respondent from creating an Internet presence relating to Brooklyn that referred to VESPA products without the Complainants prior written approval.

In addition, according to the Complainants, the Respondent has not been commonly known by the disputed domain name. The Complainants maintain that only the Complainants’ actual authorized VESPA dealership in Brooklyn, and not the Respondent, is known as Vespa Brooklyn. Finally, the Complainants contend that the Respondent could not and has not used the domain name in connection with a bona fide offering of goods or services because the Respondent did not obtain the requisite prior written approval from the Complainants.

The Complainants assert that the Respondent registered the disputed domain name in bad faith. The Complainants contend that the Respondent did not have the right under the applicable Dealer Agreements to create an unauthorized Internet presence which referred to VESPA products, i.e., the disputed domain name. According to the Complainants, the Respondent’s primary purpose in registering the disputed domain name was to disrupt the Complainants’ business by ensuring that the Complainants’ authorized VESPA dealer(s) in Brooklyn (or others interested in competing with the Respondent for the Brooklyn dealership) could not use the domain name.

The Complainants further contend that the Respondent has used the disputed domain name in a bad faith attempt to profit from the Complainants’ VESPA mark by using the disputed domain name to attract Internet visitors to a pay-per-click portal website, and that bad faith is evidenced by the Respondent’s use of a privacy protection service after receiving the Complainants demand letter of August 18, 2008.

B. Respondent

The Respondent notes that is has been a VESPA dealer since 2002. The Respondent acknowledges that the disputed domain name incorporates the Complainants’ VESPA mark, and agrees that the VESPA mark is the dominant portion of the domain name. However, the Respondent disputes that its registration of the disputed domain name violates the terms of the applicable Dealership Agreements by virtue of incorporating the VESPA mark. The Respondent asserts that it is unaware of any claim by the Complainants that the content of the Vespa Soho website violates the provisions of the applicable Dealer Agreements.

The Respondent argues that its registration of the disputed domain name was made prior to the existence of any contractual relationship between the Parties. Further, according to the Respondent, it registered and began making a bona fide use the disputed domain name before receiving any notice of this dispute, with a view to eventually maintaining VESPA dealerships in both the Manhattan and Brooklyn boroughs of New York. The Respondent observes that its Vespa Soho establishment is located less than a mile away from the bridges that connect the Manhattan and Brooklyn boroughs.

The Respondent asserts that it has rights and legitimate interests in the disputed domain name for the following reasons. The Respondent contends that no prior written approval was required for an authorized VESPA dealer to secure necessary and relevant domain names. The Respondent maintains that the provisions of the applicable Dealership Agreements relied on by the Complainants for this proposition do not expressly address the registration and use by VESPA dealers of domain names incorporating the VESPA mark.

The Respondent claims that when it began using the disputed domain name on September 15, 2007, to direct Internet traffic to the Vespa Soho website, the Parties were engaged in serious discussions regarding a prospective agreement under which the Respondent would acquire a VESPA dealership in Brooklyn. According to the Respondent, the Vespa Soho website would eventually have been used as a website promoting both the Manhattan and Brooklyn dealerships operated by the Respondent.

The Respondent notes that the Complainants never objected to the Respondent’s registration and use of <vespasoho.com>.

The Respondent further asserts that the Complainant has routinely permitted other authorized VESPA dealers to register domain names incorporating the VESPA mark, including use with geographical terms that do not necessarily coincide with the territory covered by a specific dealer. The Respondent points to a situation involving two other VESPA dealers one in San Francisco, California and a second in Walnut Creek, California, in an area commonly referred to as the “Bay Area”. According to the Respondent, the Walnut Creek dealer has registered the domain name <vespabayarea.com>, even though its dealership is only in Walnut Creek, does not include San Francisco, and under the Complainants’ position arguably would violate the San Francisco VESPA dealer’s rights.

The Respondent disputes that no response was provided to the Complainants’ August 18, 2008 demand letter. The Respondent notes that the Parties and their respective counsel met on September 25, 2008, at which time, according to the Respondent, the Complainants were informed that the Respondent had legitimate rights in the disputed domain name and would not be complying with the Complainants’ August 18, 2008 demands. (The September 25, 2008 meeting is referred to in the October 6, 2008 letter of Complainants’ counsel).

The Respondent maintains that is had a legitimate right in May 2002 to register the disputed domain name for use with a prospective Brooklyn VESPA dealership, or to promote the VESPA goods and services sold at the Vespa Soho store. The Respondent asserts that it has never offered to sell the disputed domain name, the May 2002 registration of which the Respondent contends has not prevented Complainants or other authorized VESPA dealers including Hadjiminas from registering domain names incorporating the VESPA mark. The Respondent observes that Hadjiminas presently operates a website for the Vespa Brooklyn dealership at “www.vespabk.com”.

The Respondent further argues that its use of the disputed domain name has created no likelihood of confusion. Between September 15, 2007 and February 27, 2008, when the disputed domain name resolved to the Respondent’s Vespa Soho website, the Respondent maintains that the content on that website would easily dispel any possible confusion that the Respondent was anything other than an authorized VESPA dealer.

The Respondent denies any responsibility for the content appearing on the parking website to which the disputed domain name has resolved since February 27, 2008, claiming that the determination of such content is solely within the discretion of Register.com. The Respondent argues that a finding of bad faith should not be inferred from the actions of Register.com, over which the Respondent claims it has no control. The Respondent claims to have no idea what content would have been observed by Internet visitors prior to September 15, 2007.

The Respondent also maintains that no inference of bad faith should be drawn from the Respondent’s acknowledged use of a privacy protection service following receipt of the Complainants’ demand letter of August 18, 2008. The Respondent states that it realized after receiving that demand letter that its “personal information could be accessed by anyone wishing to harass or otherwise direct unsolicited communications to the Respondent”, and therefore chose to subscribe to the proxy service made available by the registrar though Domain Discreet.

The Respondent further contends that the Complainants have acted in bad faith and filed their Complaint primarily to harass the Respondent. The Respondent argues that the Complainants were well aware that Domain Discreet was a privacy protection service and that the Respondent was the true domain name owner when the Complaint was filed, and maintains that the Complainant deliberately omitted these facts from the Complaint.

The Respondent alleges that the Complainant deliberately omitted from both the original Complaint and the Amended Complaint any reference to the Respondent’s pending litigation against Hadjiminas, in which the central issue is the right to a VESPA dealership in Brooklyn, and in which the Complainants are siding with Hadjiminas. Meanwhile, according to the Respondent, the Complainants have made no effort to pursue any other domain names in the United States incorporating the VESPA mark, with the exception of a single 2004 UDRP proceeding against an entity that had no colorable claim of legitimate rights or interests in the disputed domain names (<vespacleveland.com> and <clevelandvespa.com>). See, Piaggio & C.S.p.A, Piaggio USA, Inc. v. Phillip K. Waters, Jr, WIPO Case No. D2004-0959.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as cybersquatting. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

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

(i) 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) the respondent has no rights or legitimate interests with respect to the domain name; and

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

Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name <vespabrooklyn.com> is confusingly similar to the Complainants VESPA mark, in which the Complainants have demonstrated rights in for purposes of paragraph 4(a)(i) of the Policy. The critical inquiry under the first element of the Policy is whether the mark and domain name, when directly compared, are identical or confusingly similar. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. See also Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson Sr., WIPO Case No. D2000-1525. That is the case here. The disputed domain name incorporates the Complainant’s VESPA mark in its entirety, and the Respondent concedes that the Complainants’ mark is the dominant portion of the domain name.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The Respondent registered the disputed domain name prior to the time the Parties had entered into a formal agreement creating the VESPA Soho dealership, with no near term prospects for a second VESPA dealership in Brooklyn. After passively holding the domain name for more than five years, the Respondent began using the domain name to attract Internet visitors to its Vespa Soho website at a time when the Complainants had entered into discussions with several parties regarding a prospective VESPA dealership in Brooklyn. After the Brooklyn dealership was awarded to a competitor, the Respondent permitted the disputed domain name to be used with a pay-per-click website with advertising links to the Complainants competitors, a use that Respondent has allowed to continue.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial 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.

There is nothing in the record to indicate that the Respondent has ever been commonly known by the disputed domain name, nor any evidence of the Respondent’s use of the domain name for any noncommercial purpose. Nor, in the Panel’s opinion, has the Respondent met its burden of proof under paragraph 4(c)(i) of the Policy to show that, before any notice to it of this dispute, the Respondent was using or had made demonstrable preparations to use the domain name in connection with a bona fide offering of good or service.

The mere registration of a domain name in and of itself is not sufficient to establish rights or legitimate interests in the domain name. While the Respondent has suggested that it had a right to register the domain name for use with its Vespa Soho dealership, the facts are that the Respondent, after registering the disputed domain name in May 2002, passively held the domain name for more than five years, without ever using the domain name with its Soho business. The Panel finds in the record no convincing business reason why the Respondent would have waited for more than five years to begin using the disputed domain name to promote its existing Soho dealership. If anything, the Panel would infer from the Respondent’s passive holding of the disputed domain name that the Respondent had no intention of so using the disputed domain name when it registered the name.

It was not until the fall of 2007, when it is evident from the record that the Complainants were committed to establishing a VESPA dealership in the neighboring Brooklyn borough, and also evident that this dealership would not automatically be awarded to the Respondent, that the Respondent first began using the disputed domain name in connection with its Soho dealership. Rather than the sudden realization after five years that the disputed domain name could be use to promote the existing Soho dealership, the circumstances more readily suggest that the Respondent were seeking to create leverage for purposes of negotiations with the Complainants, or at the very least anticipating that the use of the domain name would place any other entity awarded the Brooklyn dealership at a competitive disadvantage. That the Respondent sought to obtain a covenant not to compete from Hadjiminas indicates an awareness there were competitors for the new dealership the Complainants had decided to open within miles of the Respondent’s Soho establishment.

The record in the Panel’s judgment does not reflect any legitimate commercial or noncommercial use of the disputed domain name by the Respondent under paragraph 4(c) of the Policy. The record instead reflects the Respondent’s passive holding of the disputed domain name for five years, followed by the brief use of the domain name under the questionable circumstances described above, and culminating with instructions issued by the Respondent to Register.com, which resulted in the use of the domain name with a pay-per-click website containing advertising links to product and services that compete directly with those of the Complainants. Whether the Respondent has received any advertising revenues is immaterial. Ultimately, the Respondent is responsible for the content on its website. See, e.g., Grundos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448; Grisoft, s.r.o. v. Original Web Ventures Inc., WIPO Case No. D2006-1381.

Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

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

(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

The Respondent obviously was aware of the Complainants’ rights in the VESPA mark at the time it registered the disputed domain name. The Panel entertains some doubt whether the Respondent’s registration of multiple domain names appropriating the Complainant’s mark for use with its Soho dealership comports with the fair use concepts underlying Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. See Magnum Piering, Inc. v. Mudjackers, supra (“a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark”). Regardless, the Respondent’s failure to use the disputed domain name for more than five years in connection with its Soho dealership belies the claim that the disputed domain name was registered for this purpose. Indeed, the Respondent’s eventual use of the disputed domain name points instead to a bad faith intention to preclude any competitor awarded a VESPA dealership in the neighboring Brooklyn borough from registering and using the disputed domain name. As such, the record on the whole reflects an intent on the part of the Respondent to exploit and profit from the Complainants’ mark.

The Panel considers that the Respondent’s bad faith intent is further manifested by the subsequent and continuing use of the disputed domain name with a pay-per-click website containing advertising links to products and services that compete with those of the Complainants. That the Respondent claims not to be responsible for the selection of the content on the website or to have profited from the advertising links is of no consequence. As noted earlier, the Respondent is responsible for the content on its website. See Grundos A/S v. Texas International Property Associates, supra; Grisoft, s.r.o. v. Original Web Ventures Inc., supra.

The Panel also believes it is appropriate to draw a further inference of bad faith from the Respondent’s use of a privacy protection service to conceal its identity. While the Panel generally does not consider a registrant’s use of a privacy service in and of itself to constitute bad faith under the Policy,⁵ the Panel has observed in prior decisions that privacy services are subject to manipulation by a registrant seeking to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced under the Policy or elsewhere. See HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062. In this case, the Respondent decided to use a privacy service only after receiving the Complainants’ demand letter of August 18, 2008. Under the attendant circumstances, the Respondent’s resort to a privacy service is evocative of cyberflight, and appears to have been calculated to obstruct or delay a proceeding against it under the Policy.⁶ See HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, supra. See also The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], WIPO Case No. D2007-1438.⁷

For all the foregoing reasons, the Panel finds the Respondent’s registration and use of the disputed domain name to be in bad faith, and concludes that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

E. Reverse Domain Name Hijacking

Paragraph 1 of the Rules defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. To prevail on such a claim, a respondent must show that the complainant knew of the respondent’s strong rights or legitimate interests in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the complaint in bad faith. Sydney Opera House Trust v. Trilynx Pty. Limited., WIPO Case No. D2000-1224; Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151. The Respondent has not established reverse domain name hijacking under the circumstances of this case.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <vespabrooklyn.com> be transferred to the Complainants.

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William R. Towns
Sole Panelist

Dated: February 10, 2009

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¹ In a letter agreement dated May 10, 2002, the Complainants agreed not to award any more than two (2) VESPA dealerships in the Manhattan borough of New York for a period of five (5) years. The Parties also entered into an Interim Dealer Commitment Agreement (“Interim Vespa Soho Agreement”) on or about May 31, 2002.

² The record indicates that Registrar.com changed the name server associations for the disputed domain name on September 15, 2007 at the request of the Respondent, and then reset the name server associations to the to the previous “default” servers on February 27, 2008, again at the request of the Respondent. The Respondent, however, has provided no webpage screenshots documenting such use, and the Panel found no indication of such use upon visiting the Internet Archive at “www.archive.org”.

³ As noted in note 2, supra, the Panel visited “www.archive.org”, more commonly referred to as Internet Archive. The Panel found indications that the disputed domain name had been used with an active website between April 2004 and February 2005, but records of such use were not accessible, possibly as a result of the employment of robots.txt.

⁴ Refer to note 1, supra.

⁵ Privacy services generally are recognized to perform a legitimate function by shielding registrants from “spam” as a result of their contact details being made publicly available on the WhoIs database.

⁶ The Panel finds the Respondent’s proffered explanation that it was concerned about spam unpersuasive. The Respondent’s contact information as registrant of the <vespasoho.com> and <vespabrooklyn.com> domain names has been publicly available for almost six years. Nonetheless, after receiving the Complainants’ demand letter, the Respondent chose to employ a privacy service only with respect to the disputed domain name, but not with the <vespasoho.com> domain name.

⁷ In addition, as noted earlier, the Panel upon visiting the Internet Archive was confronted with indications of the employment of robot.txt preventing the public generally, and this Panel, from reviewing the history of the use of the disputed domain name. See The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], WIPO Case No. D2007-1438.