{
    "case_number": "CAC-UDRP-101331",
    "time_of_filling": "2016-12-30 08:54:24",
    "domain_names": [
        "gabs.com"
    ],
    "case_administrator": "Aneta Jelenová (Case admin)",
    "complainant": [
        "Gabs S.r.l."
    ],
    "complainant_representative": "Barzanò & Zanardo Roma S.p.A.",
    "respondent": [
        "DOMAIN ADMINISTRATOR - NAME ADMINISTRATION INC. (BVI)"
    ],
    "respondent_representative": "Dr. John Berryhill (John B. Berryhill LLC)",
    "factual_background": "The Complainant is an Italian company working in the design and production of high quality leather bags and accessories. It was incorporated on 23 February 2000. The Complainant is the registered owner of a large number of trademarks in Italy, the European Union and other international jurisdictions including parts of Asia and Africa.\r\n\r\nThe Complainant uses its website at www.gabs.it to promote its business. \r\n\r\nThe Respondent is a company that trades in domain names. It registered the Disputed domain name on June 1, 2001. According to the WHOIS record relating to the Disputed domain name, the Respondent is the registrant and the administrative contact of the Disputed domain name <gabs.com>.\r\n\r\nWhen the Complainant became aware of the registration of the Disputed domain name, it tried to buy it, but the Complainant and the Respondent were unable to reach agreement on the price. As a result the Complainant initiated the present proceeding.",
    "other_legal_proceedings": "None of which the Panel is aware.",
    "no_response_filed": "PARTIES' CONTENTIONS:\r\n\r\nTHE COMPLAINANT:\r\n\r\n1.\tThe Complainant is a company incorporated in Italy on 23 February 2000. It specialises in the design and production of high quality leather bags and accessories.\r\n2.\tThe Complainant has registered many trademarks in Italy and around the world.\r\n3.\tThe Respondent registered the disputed domain name on 1 June, 2001, a year after the incorporation of the Complainant.\r\n\r\n        IDENTICAL OR CONFUSINGLY SIMILAR\r\n4.\tThe disputed domain name is identical or confusingly similar to the Complainant’s GABS trademark and the GABS Company name. \r\n5.\tThe Complainant has always used the Company name and various forms of the trademark GABS, but always including its distinctive portion, i.e. GABS as a de facto trademark and later as a registered trademark in many countries.\r\n6.\tWhen the Complainant became aware of this abusive registration of the disputed domain name, it instructed its trademark attorneys to contact the disputed domain name holder to recover the ownership of the domain name. \r\n7.\tThe Complainant’s attorneys initiated a negotiation process that failed due to the Respondent’s demand for a disproportionate price, whereupon the Complainant initiated the present proceeding. \r\n8.\tAt the present time, the domain name resolves to a pay-per-click page and is still for sale.\r\n\r\n        RIGHTS OR LEGITIMATE INTERESTS\r\n9.\tThe Respondent has no rights or legitimate interest in the disputed domain name. In that regard, a world-wide trademark search reveals that the Respondent has no trademark for GABS or application to register any such trademark. \r\n10.\t The intention of the Respondent when registering the domain name was to sell it. \r\n11.\tThere is no evidence of the Respondent’s \"demonstrable preparations\" to market goods and services related to the term GABS.\r\n12.\tThe identity between the IP rights of the Complainant and the disputed domain name is seriously affecting the Complainant's business and its reputation, especially as it leads to a pay-per-click page containing many links to websites for adults and to chat rooms.\r\n\r\n         BAD FAITH\r\n13.\tThe disputed domain name was registered in bad faith. In fact, it was registered primarily for the purpose of selling, and is still offered for sale today.\r\n14.\tIn that regard, the Complainant relies on previous UDRP decisions that support the proposition that an offer to sell generally is sufficient evidence for a finding of bad faith.\r\n15.\tThat contention is supported by the fact that the price demanded by the Respondent shows that it intended to speculate on domain name registrations. \r\n16.\tThat is also confirmed by the fact that the relevant whois report does not contain any information regarding the owner of the domain name, and the Complainant does not know if the Registrant is an individual or a Company which could have a reasonable interest in the business of domain names.\r\n17.\tAs far as use in bad faith is concerned, the offer for sale to the general public of a domain name reproducing a renowned third party's trademark is an illegitimate use of the domain name that is potentially likely to create serious damages to the Complainant, and that certainly cannot qualify as a use in good faith.\r\n18.\tMoreover, the Respondent is using the disputed domain name to lead to a parking page containing pay-per-click links of adult contents. These pay-per-click links generate a profit to the Respondent and therefore the disputed domain name is used intentionally to attempt to attract, for commercial gain.\r\n19.\tThe real scope behind the registration and use of the disputed domain name is clear, i.e., that of taking an undue economic advantage from the Complainant's renowned trademarks and name.\r\n\r\n\r\nTHE RESPONDENT:\r\n\r\nI. Introduction\r\n\r\nThis is a dispute which should not have been brought. The word \"gabs\" is a common English word which as a verb means \"to engage in idle chat\" and also is a plural noun referring to idle chat sessions. The domain name is used by the Respondent to earn revenue by displaying paid search advertising for \"Chat Rooms\", \"Chat Server Software\" and \"Chats\" and so forth. The Respondent's use of the domain name is consistent with the dictionary meaning of the word constituting the domain name, which has nothing to do with the Complainant's alleged mark for clothing. Moreover, the Complainant presents no evidence whatsoever of any trade or service mark in GABS senior to the Respondent's registration and use of the domain name.\r\n\r\nII. Identical or Confusingly Similar\r\n\r\nComplainant's tendered documents are not evidence of \"trade or service mark rights\" under the Policy. They are company registrations that are cancelled, revealing that the corporate name \"GABS DI FRANCO GABBRIELLI\" was changed in 2010 to \"GABS S.R.L.\" and a domain name and website located at <gabs.it>, neither of which confers a trade or service mark right. \r\n\r\nIn any event, the Complainant’s <gabs.it> domain name was not registered until 24 January 2002. Thus the Respondent was the earliest to register and use a \"gabs\" domain name, as the disputed name was registered by the Respondent in 2001.\r\n\r\nComplainant's first applications for a textual GABS mark appears to date from 2015. This will become important on considering the issue of bad faith.\r\n\r\nThe Complainant has failed to establish \"common law\" rights in GABS, as it relies on only one invoice, dating from March 2001, which does not establish a reputation among consumers sufficient to recognize a trade or service mark right. \r\n\r\nThe Complainant provides none of the usual indicia under which common law rights could be established, such as length and amount of sales under the name, advertising, consumer surveys and media.\r\n\r\nIII. Legitimate Rights and Interests\r\n\r\nThe Complainant has not proved that the Respondent has no legitimate rights or interests in the domain name. First, Respondent registered and has used the domain name since 2001 and the Complainant has not shown any trademark rights to GABS prior to that year. None of the Complainant's trademark applications or registrations appear to have been filed prior to 2005, and the Complainant's own <gabs.it> domain name registration data shows that the Complainant had not established an online presence until 2002. \r\n\r\nSecondly, insofar as use of a domain name is concerned, the Respondent is also the senior party. Panels under the UDRP have consistently recognized priority as a legitimate right under the policy. See. Webanywhere Ltd. v. Marchex Sales, LLC \/ Brendhan Hight NAF Claim Number: FA1303001491617.\r\n\r\nThirdly, the Respondent is very well known as a trader in domain names consisting of dictionary words, short common phrases, and other non-distinctive terms. The domain name here consists of the English word \"gabs\", meaning idle chats or the act of engaging in idle chat. The Respondent has then populated the resolving website with search terms such as \"Chat Rooms\", \"Chat Server Software\" and \"Chats\". This gives the Respondent a legitimate right and use of the domain name. See Walk the Walk Worldwide v. Name Administration Inc. (BVI) WIPO Case No. D2013-0731; and Manga Films, S.L. v. Name Administration, Inc. WIPO Case No. D2005-0730, Snowboards-for-sale.com, Inc. v. Name Administration Inc., WIPO Case No. D2002-1167, Fluke Corporation v. Name Administration Inc. (BVI), NAF Case No. 430650 and Angstrom Corporation v. Name Administration Inc , NAF Case No. 281591. \r\n\r\nThere is not, and there has not been, any use of the domain name by the Respondent to trade in clothing on the basis of the claimed reputation of an Italian clothing company of which the Respondent had never heard prior to this dispute. \r\n\r\nNor is the Respondent’s legitimate interest in the domain name negated by whether or not the Respondent is interested in selling the disputed domain name or the preferred price; see Personally Cool Inc. v. Name Administration Inc. (BVI), NAF Claim Number: FA1212001474325.\r\n\r\nThe Respondent is therefore using an English dictionary word as a domain name in association with its primary generic meaning, which is well established as a legitimate use. \r\n\r\nIV. Registered and Used in Bad Faith\r\n\r\nUnder this element the Complainant must prove that the Respondent's registration and use of the domain name was aimed at the Complainant's claimed mark.\r\n\r\nThere is no reason for the Respondent to have known of or been aware of the Complainant when the domain name was registered. The Complainant did not have an online presence when the domain name was registered in 2001, and it would not register gabs.it as its own domain name until 2002. \r\n\r\nLikewise, the Complainant did not file or pursue any trademark registration activities until 2005. The Respondent had not heard of the Complainant prior to this dispute, and the Respondent's use of the domain name has had nothing to do with the Complainant's trade in clothing.\r\n\r\nThe Complaint claims \"the domain was registered primarily for the purpose of selling, and still nowadays is offered for sale.\" The Policy does not forbid buying and selling domain names in general. The Complainant must therefore show that the Respondent registered the domain name, in 2001, for the purpose of selling it to the Complainant or someone else in the clothing business which it cannot do. \r\n\r\nThe evidence shows that there was no way for the Respondent to know that the inquiry to buy the domain name was made on behalf of the Complainant or a competitor of the Complainant or that the Respondent was trying to do so. See.BERNINA International AG v. Name Administration Inc.,WIPO Case No. D2016-1811.\r\n\r\nThese events show that this is a classic Plan B case, which has been used by prior panels as a ground for finding Reverse Domain Name Hijacking which the Panel might consider. \r\n\r\nThere is nothing illegal, immoral, infringing, or otherwise ill intended by using the English word \"gabs\" to advertise chat services. \r\n\r\nAccordingly, the Complainant has failed to show how the Respondent's registration of the domain name in 2001 could have been undertaken with any intent whatsoever based on the Complainant's non-existent trade mark. ",
    "rights": "The Complainant has shown the Domain Name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (within the meaning of paragraph 4(a)(i)of the Policy).",
    "no_rights_or_legitimate_interests": "The Complainant has not shown the Respondent to have no rights or legitimate interests in respect of the Domain Name (within the meaning of paragraph 4(a)(ii)of the Policy).",
    "bad_faith": "The Complainant has not shown the Domain Name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy).",
    "procedural_factors": "The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.",
    "decision": "Rejected",
    "panelists": [
        "The Hon. Neil Brown, QC, Douglas M. Isenberg, Avv. Ivett Paulovics"
    ],
    "date_of_panel_decision": "2017-02-26 00:00:00",
    "informal_english_translation": "The Complainant has submitted evidence, which the Panel accepts, showing that it is the registered owner of the following trademark:\r\n\r\nGABS (word) – European Intellectual Property Office trademark no. 014428783. That trademark was applied for on July 31, 2015 and registered on December 1, 2015.",
    "decision_domains": {
        "GABS.COM": "REJECTED"
    },
    "panelist": null,
    "panellists_text": null
}