WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MV Agusta Motor S.p.A. v. 2 And 4 Tokai
Case No. D2000-1450
1. The Parties
The Complainant is MV Agusta Motor S.p.A., Via G. Macchi, 144, 21100 Varese, Italy.
The Respondent is 2 And 4 Tokai, 104, Villa Sofia, 1255-89 Kawana, Ito-city, Shizuoka, Japan.
2. The Domain Name and Registrar
The domain name in dispute is "mv-agusta.com".
The Registrar with which the domain name is registered is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received the Complaint on October 25, 2000 by e-mail and in hardcopy on October 27, 2000.
The Center sent the corresponding Request for Registrar Verification in connection with this case to Network Solutions Inc. On November 13, 2000, the Registrar's verification response confirmed that the Registrant was 2 And 4 Tokai and that the domain name "mv-agusta.com" was in "active" status.
On November 14, 2000, the Center verified that the Complaint was satisfying the formal requirements in filing the Formal Requirements Compliance Checklist.
Accordingly, the Center notified on November 14, 2000 by fax, courier and E-mail the Complaint and Commencement of Administrative Proceedings to the Respondent, in accordance with Paragraph 4 of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules").
On December 6, 2000, the Center issued by E-mail the Notification of Default to the Respondent for having failed to submit a response within the deadline granted in this matter.
On December 29, 2000, 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 he had signed and forwarded to the Center on December 23, 2000 a statement of acceptance and declared his impartiality and independence vis-à-vis the parties.
Transmission of the file to the Sole Panelist was made on December 29, 2000 by E-mail and registered post, hard copy of which was received by the undersigned few days later.
The Sole Panelist forwarded his decision to the Center within the time limit fixed.
4. Factual Background
The Complainant is the owner of numerous trademark applications and registrations related to the expression MV AGUSTA in Italy and abroad (Complainant's Annex 5).
In particular, the Complainant owns the following Japanese trademark applications and registrations :
i) Application no. 9870/96 MV AGUSTA, filed on February 2, 1996, in connection with products of class 12 (Complainant's Annex 6);
ii) Application no. 158593/97 MV AGUSTA and design, filed on September 17, 1997 in connection with products of classes 12, 14 and 25 (Complainant's Annex 7);
iii) Application no. 9869/96 MV-AGUSTA, filed on February 2, 1996 in connection with products of class 7 (Complainant's Annex 8);
iv) Registration no. 4308059 MV AGUSTA and design, filed on October 13, 1997 and granted on August 20, 1999, in connection with products of classes 3 and 18 (Complainant's Annex 9).
5. Parties’ Contentions
The Complainant essentially submits that :
(i) the domain name <mv-agusta.com> is identical to the word trademark <MV-AGUSTA> and to the verbal portion thereof;
(ii) the Respondent has not demonstrated any legitimate interest in the use of the domain name in dispute; as a matter of fact, it does not owe any trademark application and/or registration for the expression "MV-AGUSTA"; in addition, it is neither a licensee nor a distributor in Japan of the Complainant's products;
(iii) the Respondent registered the domain name <mv-agusta.com> in bad faith; in light of the notoriety of the mark <MV-AGUSTA>, it registered such a domain name being aware that the Complainant claims rights on the trademark <MV-AGUSTA> and that such registration constitutes infringement thereof; in addition, the Respondent has used said domain name in order to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainant’s mark as to the source of its web site; finally, the monetary request of the Respondent (approximately USD 800.000) for the assignment of the domain name in dispute to the Complainant has to be considered in excess of the out of pocket costs related to the present domain name and represents therefore further evidence of bad faith registration.
Hence, the Complainant concludes that it is entitled to the transfer of the domain name in its favor.
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 Complainant. Those requirements are that:
(i) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name;
(iii) Respondent's domain name has been registered and is being used in bad faith.
The Complainant must prove in the administrative proceedings that each of the aforesaid three elements are 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 no doubt that there is identity between the Complainant's trademark <mv-agusta> and the domain name <mv-agusta.com>.
B. Rights or Legitimate Interests of 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. Cases No. D2000-0009, p. 6 or D-2000-0867, p. 6).
As a matter of fact and failing evidence to the contrary, the Complainant has not granted any license or otherwise permitted the Respondent to use his trademark or to apply for any domain name incorporating the said mark.
Under those circumstances, the Sole Panelist is unable to find any evidence that would tend to 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 number of circumstances which, if found to be present by the Administrative Panel, are evidence of the registration and use of a domain name in bad faith. In particular, Paragraph 4 (b) (i) of the Policy holds that a finding of bad faith is to be made if the evidence reveals that the Respondent registered the domain name in issue 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, for valuable consideration in excess of its documented out of pocket costs directly related to the domain name.
In the instant case, it is worth considering the exchange of correspondence that took place between the Parties in August and September 2000 (Complainant's Annexes 12 to 19) filed by the Complainant in this matter and from which it flows that the Respondent - which, admittedly, had registered the domain in dispute since its representative owned an MV AGUSTA motorbike - was agreeable to find an amicable solution to solve the dispute, but that the transfer of the domain name <mv-agusta.com> could not take place free of charge, claiming, as a result, an amount of JPY 80.000.000 (Complainant's Annex 19).
Absent exceptional circumstances, such a correspondence constitutes sufficient evidence, in the Sole Panelist's view, that the Respondent registered the domain name "mv-agusta.com" primarily for the purpose of selling the domain name to the Complainant for an amount which is clearly in excess of out of pocket expenses directly related to this domain name. Furthermore, as already mentioned above, 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 light of the foregoing, the Sole Panelist decides that the domain name registered by the Respondent is identical to the corresponding trademark of the Complainant, 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 "mv-agusta.com" shall be transferred to the Complainant.
Dated: January 11, 2000