WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Antera S.p.A. v. Antera, Inc.

Case No. D2000-0689

 

1. The Parties

The Complainant is Antera S.p.A., a corporation organized under the laws of Italy, having its principal place of business at Viale della Resistenza n. 129/B - 20090 Buccinasco, Italy.

The Respondent is Antera, Inc., a corporation organized under the laws of the State of Florida, USA, having its registered office at 1526 University Blvd., Suite 206, Jacksonville, FL 32217, USA.

 

2. The Domain Name and the Registrar

The domain names at issue are "antera.com" and "antera.net" (hereinafter collectively the "Domain Names"). The registrar is Network Solutions, Inc. (hereinafter the "Registrar").

 

3. Procedural History

On June 28, 2000, the Complainant filed by e-mail a complaint (hereinafter the "Complaint") with the WIPO Arbitration and Mediation Center (hereinafter the "Center"). The Center received a hardcopy of the Complaint on July 26, 2000. A copy of the Complaint was notified on July 28, 2000 to the Respondent.

On July 21, 2000, the Registrar confirmed that the Domain Names had been registered via the Registrarís registration services, that the Respondent was the current registrant of the Domain Names and that the Domain Names were active. The Registrar also confirmed that Network Solutions' 4.0 Service Agreement was applicable to the Domain Names.

The Center then proceeded to verify that the Complaint satisfied the formal requirements of the of Uniform Domain Name Dispute Resolution Policy (hereinafter the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "ICANN Rules") and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "WIPO Rules"), including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on July 28, 2000.

The administrative panel (hereinafter the "Panel") has reviewed the documentary evidence provided by the Complainant and the Center and agrees with the Centerís assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Rules.

In a letter dated July 28, 2000, the Center informed the Respondent of the commencement of the proceedings as of July 28, 2000, and of the rule providing for a response to the Complaint within 20 days (hereinafter the "Response"). The Respondent failed to comply with this deadline.

On August 18, 2000, the Center notified the Parties of Respondent's default to file a Response.

On September 14, 2000, the Center informed the Parties that an administrative panel (the "Panel") has been appointed and transferred the file to the Panel.

The Panel finds it was properly constituted in compliance with the ICANN Rules and the WIPO Rules and issued a Statement of Acceptance and Declaration of Impartiality and Independence.

The Panel is obliged to issue a decision on or prior to September 28, 2000, and is unaware of any other proceedings which may have been undertaken by the parties or others in the present matter.

 

4. Factual Background

The Complainant is a producer of car wheels (Complainant's Exhibit 4). The Complainant registered the trademarks ANTERA and ANTERA (with animal head design) for vehicles, automotive parts etc. in a number of countries around the world.

Copies of the corresponding registration certificates are attached to the Complaint as Exhibit 5. The Italian Registration no. 742842 with filing date of July 27, 1995, for the word mark ANTERA is registered in classes 3, 7 and 12 for vehicles, automotive parts, wheels and tire rims. The U.S. Registration no. 2,223,074 with filing date of July 16, 1996, for the ANTERA logo is registered in class 12 for tire rims, bicycles and steering wheels.

The Complainant also registered the following domain names: "antera.org"; "antera.de" and "antera.it".

The Respondent was incorporated on January 14, 1999, and its registered field of business includes "any legally permissible activity, including adult novelty sales" (Complainant's Exhibit 2). The Respondent registered "antera.com" with Registrar, on January 13, 1999, and "antera.net" on January 26, 1999. Neither of these Domain Names are active as of the date of this decision.

However, there is evidence that Complainant has activated the Domain Name "antera.com" in the past: Complainant filed a printout of the "antera.com" website dated April 23, 1999, displaying, among other language, the following question: "Looking For Antera Wheels??? Click Here" and featuring the picture of eight models of Antera's car wheels (Type 109, Type 121, Type 123, Type 143, Type 145, Type 161, Type 163) (Complainant's Exhibit 7).

Complainant's Exhibit 7 further features the following heading: "Antera Wheels Surfers Specials" and the text "If you came here by mistake looking for Antera Wheels, Antera, Inc. of America is offering a Special 15% Discount on any of our products or Services. Mention Antera Wheels in the Comments section of your order form to receive this special discount."

 

5. Complainants Contentions

Complainant contends:

- that the trademark ANTERA enjoys substantial goodwill and valuable reputation for car wheels and is a well-known trademark;

- that the registration of U.S. trademark no. 2,223,074 establishes a presumption of validity of the ANTERA trademark under U.S. law;

- that it appears that Respondent has not registered or used the name "Antera" as a trademark;

- that the "antera.com" and the "antera.net" Domain Names are identical to the word element of the ANTERA trademarks and that they are, therefore, confusingly similar to Complainant's trademarks;

- that Respondent has no legitimate interest and no rights whatsoever in the Domain Name under debate, since Respondent is neither a licensee of Complainant nor has otherwise obtained authorization to use the Complainant's trademarks;

- that the website operated by Respondent in the past under the Domain Name "antera.com" contained an express reference to Complainant's car wheels;

- that the Respondent acted in bad faith by knowingly choosing a domain name which solely consists of Complainant's trademark, and offering Complainant's products on its website under the name "Antera, Inc. of America".

Complainant requests that the "antera.com" and the "antera-net" Domain Name registrations be transferred to Complainant.

The Respondent has not contested the allegations of the Complaint.

 

6. Discussion and Findings

To have the disputed Domain Names transferred to it, Complainant must prove each of the following (Policy, paragraph. 4(a)):

(i) hat the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

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

Identity or Confusing Similarity

Complainant has shown that it owns numerous ANTERA trademark registrations claimed in particular for car wheels in a considerable number of countries around the world.

It is obvious that Respondentís Domain Names "antera.com" and "antera.net" are identical to Complainantís trademark ANTERA (e.g. Italian Registration no. 742842; US Registration no. 2,223,074), and this Panel so finds. It is well established that the specific top level of the domain name such as ".net" or ".com" does not affect a domain name for the purpose of determining whether it is identical or confusingly similar to a trademark (See e.g. Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127, paragraph. 6).

Legitimate Rights or Interests

Complainant contended that Respondent is not a Complainant's licensee, nor has otherwise obtained authorization to use the Complainant's trademark and that the Parties have never been joined by commercial agreements of any nature.

Respondent failed to respond to the Complaint and, therefore, failed to assert any rights or legitimate interests to the Domain Names.

The documents on file show that Respondent was incorporated and registered the Domain Names in January 1999, i.e. more than three years after the filing date of the Complainant's trademarks.

The print out dated April 23, 1999, of the website which Respondent formerly operated under the "antera.com" Domain Name (Complainant's Exhibit 7) shows that Respondent offered "Antera wheels" for sale. By stating that "Antera, Inc., of America" was making this offer, Respondent misled Internet users into believing that Respondent was the U.S. affiliate of Claimant. This use of the Domain Name "antera.com" does not qualify as legitimate non-commercial or fair use.

This Panel finds that Respondent has not demonstrated its rights or legitimate interest in the disputed Domain Names (Policy, paragraph. 4(c)).

Registration and Use in Bad Faith

It is clear that Respondent had actual knowledge of Complainant's prior rights in the ANTERA trademarks since it offered "Antera wheels" on its website (Complainant's Exhibit 7).

Internet users who knew the Complainant's trademark ANTERA and looked for Complainant's products under "antera.com" have thus been misdirected to Respondent's website. This Panel holds that by registering the domain name "antera.com", and stating on its website that "Antera, Inc. of America" (i.e. Respondent) was offering Antera wheels, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web-site by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of Respondent's website (Policy, paragraph 4(b)(iv).

Complainant's Exhibit 7 shows that Respondent used the Domain Name in bad faith in the past. Absent transferral, Complainant must always be concerned about the possibility that Respondent might at any time activate again a confusing site in the future; this harm to the Complainant is not balanced by a showing of any legitimate use or potential use by Respondent (see Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028, paragraph 6).

This Panel thus finds that Respondent has registered and used the disputed Domain Names "antera.com" and "antera.net" in bad faith.

 

7. Decision

For all of the foregoing reasons, this Panel decides that the Domain Names registered by Respondent are identical to the trademarks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Names, and that the Respondent's Domain Names have been registered and used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the Domain Names "antera.com" and "antera.net" be transferred to the Complainant.

 


 

Andrea Mondini
Sole Panelist

Date: September 28, 2000