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Sutti.com : Italian #law firm claims former partner tried to hijack #domain name

An Italian law firm claimed that its domain name, Sutti.com, was taken over by a former partner.

SLS Società a Responsabilità Limitata, Italy jointly with Studio Legale Sutti Società Semplice, Italy, filed a UDRP to reclaim that domain name.

Usually, such cases of domain hijacking end with the Complainant being told the WIPO panel isn’t meant for this job.

In this case, the Complainant stated the following:

The Complainant submits that the Respondent, Roberto Spelta, was a partner in the Complainant’s Law Firm until October 2018, in charge of managing the registration of the disputed domain name as Administrative Contact. After he left the Complainant’s Law Firm and a consequent dispute arose between him and the Complainant’s Law Firm, on January 21, 2019 there was an illegal attempt to transfer the disputed domain name to another Registrar, with the relevant information sent by the actual Registrar to the Respondent’s email address “[…]@sutti.com” as Administrative Contact for the disputed domain name.

A few days before, on January 16, 2019, there was a reset of the password concerning the disputed domain name, with the relevant information sent by the Registrar to the Respondent’s email addresses “[…]@sutti.com” and “[…]@gmail.com” as Administrative Contact for the disputed domain name. On May 15 and July 9, 2019 there was an interruption of the services connected to the disputed domain name and the relevant website “www.sutti.com”, having as a consequence the total disruption of the email service connected to the Complainant’s official website. Therefore the Respondent Roberto Spelta, a lawyer competitor of the Complainant, is making a bad faith use of the disputed domain name, aimed to the disruption of the Complainant’s business and to prevent the owner of the trademark from reflecting the mark in a corresponding domain name.

The Respondent stated they had nothing to do with all this:

“Dear all, my mum has received the notice of this strange and curious complaint by post (I did not receive anything by email); strange and curious because I have not heard before from the complainant the existence of an issue related to a domain name. Anyway, I am not the owner of any domain name and I am not aware of being indicated as such in any registry. Maybe in the past, when I was a partner of Studio Legale Sutti and in charge of checking and controlling the payments of the providers of informatic services, for only this reason there is the chance that I had to take internally this role. But just internally at my knowledge because in Sls it was not ever even just discussed such a point as it was clearly stated that Sls as a separate entity was the only owner of any domain name pertaining to its activities such as the one we are discussing. In my understanding there is no dispute because I am not using the domain name and therefore I see no point in arguing against the prospective owner or pretend to have a legitimate title on the domain name. Consequently, as a result, I have to be intended not responsible in any way about any possible liability in regard of the use of such a domain name of exclusively property of Sls. If I can be of help to you, your honourable organization or the complainant I remain at your and her disposal. Roberto Spelta.”

In the end, the WIPO panelist sided with the Complainant, ordering the domain name Sutti.com to be transferred to them. Full details on this UDRP decision for Sutti.com follow:

SLS Società a Responsabilità Limitata and Studio Legale Sutti Società Semplice v. Perfect Privacy, LLC / Roberto Spelta
Case No. D2020-0085

1. The Parties

The Complainant is SLS Società a Responsabilità Limitata, Italy jointly with Studio Legale Sutti Società Semplice, Italy, represented by Studio Legale Sutti Società Semplice, Italy.

The Respondent is Perfect Privacy, LLC, United States of America / Roberto Spelta, Italy.

2. The Domain Name and Registrar

The disputed domain name <sutti.com> is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2020. On January 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 16, 2020, the Registrar 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 Complainant on January 17, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 20, 2020.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2020. The Respondent sent an email communication on January 30, 2020. Accordingly, the Center notified the Commencement of Panel Appointment on February 12, 2020.

The Center appointed Edoardo Fano as the sole panelist in this matter on February 19, 2020. 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 Panel has not received any requests from the Complainants or the Respondent regarding further submissions, waivers or extensions of deadlines. On March 5, 2020 an Administrative Panel Procedural Order was issued. The Complainant answered on March 9, 2020 and the Respondent did not comment on the Administrative Panel Procedural Order.

Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a formal response from the Respondent.

The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.

4. Factual Background

The Complainant is SLS Società a Responsabilità Limitata jointly with Studio Legale Sutti Società Semplice, the latter being an Italian Law Firm that owns several trademark registrations including the family name of the founder, SUTTI, among which the following ones:

– Italian Trademark Registration No. 702.409 for STUDIO LEGALE SUTTI, registered on January 22, 1997;
– European Union Trade Mark Registration No. 012846259 for STUDIO LEGALE SUTTI and design, registered on February 6, 2015.

The Complainant also actively operates on the Internet, at the websites “www.sutti.com” and “www.sutti.it”.

The Complainant provided evidence in support of the above.

The disputed domain name <sutti.com> was registered on April 21, 1997, according to the WhoIs records, and when the Complaint was filed the website at the disputed domain name was, as it has always been, the Complainant’s official website (apart from the moment when the Complaint was notified as the disputed domain name resolved to an inactive page).

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain name <sutti.com> is confusingly similar to its trademark STUDIO LEGALE SUTTI, since within the disputed domain name the word “SUTTI” is the heart of the Complainant’s trademark, and “STUDIO LEGALE” means “Law Office” in English.

Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since the latter, together with “sutti.it”, has been used for over 20 years and is still used by the Complainant as its official website.

The Complainant submits that the Respondent, Roberto Spelta, was a partner in the Complainant’s Law Firm until October 2018, in charge of managing the registration of the disputed domain name as Administrative Contact. After he left the Complainant’s Law Firm and a consequent dispute arose between him and the Complainant’s Law Firm, on January 21, 2019 there was an illegal attempt to transfer the disputed domain name to another Registrar, with the relevant information sent by the actual Registrar to the Respondent’s email address “[…]@sutti.com” as Administrative Contact for the disputed domain name. A few days before, on January 16, 2019, there was a reset of the password concerning the disputed domain name, with the relevant information sent by the Registrar to the Respondent’s email addresses “[…]@sutti.com” and “[…]@gmail.com” as Administrative Contact for the disputed domain name. On May 15 and July 9, 2019 there was an interruption of the services connected to the disputed domain name and the relevant website “www.sutti.com”, having as a consequence the total disruption of the email service connected to the Complainant’s official website. Therefore the Respondent Roberto Spelta, a lawyer competitor of the Complainant, is making a bad faith use of the disputed domain name, aimed to the disruption of the Complainant’s business and to prevent the owner of the trademark from reflecting the mark in a corresponding domain name.

The Complainant tried to solve the matter with the Registrar of the disputed domain name but the latter eventually replied that it was unable to independently enforce the rights of a trademark holder.

B. Respondent

The Respondent has made no formal Response to the Complainant’s contentions. However, the Respondent submitted an informal email communication on January 30, 2020. In his email, the Respondent stated the following:

“Dear all, my mum has received the notice of this strange and curious complaint by post (I did not receive anything by email); strange and curious because I have not heard before from the complainant the existence of an issue related to a domain name. Anyway, I am not the owner of any domain name and I am not aware of being indicated as such in any registry. Maybe in the past, when I was a partner of Studio Legale Sutti and in charge of checking and controlling the payments of the providers of informatic services, for only this reason there is the chance that I had to take internally this role. But just internally at my knowledge because in Sls it was not ever even just discussed such a point as it was clearly stated that Sls as a separate entity was the only owner of any domain name pertaining to its activities such as the one we are discussing. In my understanding there is no dispute because I am not using the domain name and therefore I see no point in arguing against the prospective owner or pretend to have a legitimate title on the domain name. Consequently, as a result, I have to be intended not responsible in any way about any possible liability in regard of the use of such a domain name of exclusively property of Sls. If I can be of help to you, your honourable organization or the complainant I remain at your and her disposal. Roberto Spelta.”

6. Discussion and Findings

The Panel finds that the Complainant is the owner of the trademark STUDIO LEGALE SUTTI and that the disputed domain name <sutti.com> is confusingly similar to this trademark, as it wholly contains the dominant element of the Complainant’s trademark, namely SUTTI.

The Respondent has failed to file a formal Response in accordance with the Rules, paragraph 5. The Panel has however considered the Respondent’s submission of January 30, 2020.

Here, although the Parties have not agreed to a formal settlement, the Respondent’s communication is an acknowledgment of the Complainant’s exclusive rights in the disputed domain name, and his lack of right or interest in the disputed domain name. In the circumstances, the Panel does not find it necessary to proceed to a substantive decision on the merits (under the second and third elements) and grants the remedy requested by the Complainant.

7. Decision

For the foregoing reasons and the specific circumstances of this case, in accordance with paragraph 10 of the Rules, the Panel orders that the disputed domain name <sutti.com> be transferred to the Complainant.

Edoardo Fano
Sole Panelist
Date: March 16, 2020

 


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