WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arneg S.p.A. v. Domain Name Clearing Company, LLC
Case No. D2000-1682
1. The Parties
The Complainant is Arneg S.p.A., Via Venezia 58, Loc. Marsango, 35010 Campo San Martino (PD), Italy.
The Respondent is Domain Name Clearing Company, LLC, 4640 Jewell, Ste 202A, San Diego, CA 92109, United States.
2. The Domain Name and Registrar
The domain name in dispute is "arneg.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 December 4, 2000 by e-mail and on December 5, 2000 in hardcopy. The Center acknowledged receipt thereof on December 5, 2000.
On December 5, 2000, the Center sent the corresponding Request for Registrar Verification in connection with this case to Network Solutions, Inc. On December 12, 2000, the Registrar's verification response confirmed that the Registrant was Domain Name Clearing Company, LLC and that the domain name "arneg.com" was "on hold" status.
On December 14, 2000, after having verified whether the Complaint was satisfying the formal requirements, the Center notified by courier, facsimile and e-mail the Complaint and Commencement of Administrative Proceeding to the Respondent, in accordance with Paragraph 4 of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules").
On January 1, 2001, the Respondent's counsel requested an extension of time to file the Response. Invited to comment by the Center, the Complainant left the issue in the hands of the latter, pointing out the contents of Paragraph 5 (d) of the Rules.
On January 8, 2001, the Center, on the basis of the Parties' respective position, granted the Respondent a twelve-day extension to submit the said Response from January 2, 2001 to January 14, 2001.
On January 16, 2001, the Center issued by e-mail the Notification of Default to the Respondent for having failed to submit a response within the deadline granted.
On January 25, 2001, 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 the latter had signed and forwarded to the Center, on January 23, 2001, a statement of acceptance and declared his impartiality and independence in this matter.
Transmission of the file to the Sole Panelist was made on January 25, 2001 by e-mail and registered post, hard copy of which was received by the undersigned a few days later.
The Sole Panelist forwarded his decision to the Center within the time limit fixed.
4. Factual Background
The Complainant, an Italian company involved in refrigerating installations and apparatus, and furniture industry, is the owner of the trademark "ARNEG", also corresponding to its business name, registered and used in a hundred of countries since the nineteen sixties.
The Complaint is based on the following Italian, International, United Kingdom, United States, and Canadian trademark registrations :
- Italian application No. MI99C012854, in force up to February 20, 2010, second renewal of the registration No. 244.062 applied for on February 20, 1970 (Complainant's Annex 4);
- International registration No. R368.434, applied for in 1970 and in force up to June 18, 2010 (Complainant's Annex 5);
- International registration No. 552.602, applied for in 1990 and in force up to April 4, 2010 (Complainant's Annex 6);
- United Kingdom registration No. 998494, applied for in 1972 and in force up to September 15, 2007 (Complainant's Annex 7);
- United States registration No. 1,333,096, applied for in 1985 and in force up to April 30, 2005 (Complainant's Annex 8);
- Canadian registration No. 284.557, applied for in 1982 and in force up to November 4, 2013 (Complainant's Annex 9).
5. Parties’ Contentions
The Complainant submits the following.
(i) The domain name "arneg.com" is identical to the "ARNEG" registered trademark and business name, an arbitrary denomination having a very high degree of distinctiveness. Even if the Respondent had chosen the domain name regardless of the Complainant's trademark rights, "arneg.com" is in apparent and direct conflict with the Complainant's prior rights in the registered and well-known trademark ARNEG, likely creating thereby confusion among the Internet consumers and deceiving its purpose of being a business identifier.
(ii) The Respondent has no legitimate interests in the domain name "arneg.com" because :
(iii) The Respondent has registered and is using the "arneg.com" domain name in bad faith because :
- Since the domain name was registered, the Respondent never used it as an Internet address of a web site.
- Since the domain name was placed on "Hold", the Respondent ignored Network Solutions' suggestion to try to contact the Complainant in order to reach a settlement of the dispute.
- Considering the above, the Respondent does not seem to be interested in using the domain name, while the Complainant is prevented from using its business name and most important trademark "ARNEG" under the most popular top level domain, namely ".COM".
- Moreover, the Respondent has been warehousing several domain names corresponding to famous third parties' trademarks, in particular Italian, as for instance "MALAGUTI.COM", "SPERLINGANDKUPFER.COM", "SPERLINGKUPFER.COM", "SPERLING-KUPFER.COM", "BRUNELLODIMONTALCINO.COM", "THEBRITISHMUSEUM.COM", "BRITISHMUSEUM.COM", "ASTISPUMANTE.COM", "GUZZINI.COM", "BANCADITALIA.COM", "MELEGATTI.COM", "RECORDATI.COM", "FERRARISPUMANTE.COM" and "TOWEROFLONDON.COM" (Complainant's Annex 12). Domain names warehousing has been considered as an evidence of the registrant's bad faith in several previous Panel decisions pursuant the Policy, as for instance the WIPO Case No. D2000-0022.
These facts and behavior constitute therefore registration and use in bad faith pursuant to Paragraph 4 (b) of the Policy.
The Complainant concludes therefore that it is entitled to the transfer of the domain name at stake 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 or, at least, confusing similarity between the Complainant's trademark "ARNEG" and the domain name "arneg.com".
The addition of the top-level domain name .com is of no relevance in this regard (see, e.g., WIPO Cases Nos. D2000-0489 and D2000-0490).
The Complainant has also established its rights in the trademark "ARNEG" with numerous trademark registrations for such name, inter alia, in Italy, United Kingdom, United States and Canada.
B. Rights or Legitimate Interests of the 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. WIPO Cases Nos. D2000-0009, p. 6 or D2000-0867, p. 6).
It is the Sole Panelist’s finding that the Complainant has established that the trademark "ARNEG" has been known in Europe and North America for a notable period of time. The Sole Panelist is also satisfied that such a mark - which is, in particular, registered in the United States - must be known there. Furthermore as rightly pointed out by the Complainant and absent evidence to the contrary, the latter has not granted any license or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the said mark.
Under those particular 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 non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following behaviors is sufficient to support a finding of bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name 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 of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
The Sole Panelist will follow in this case the ruling mentioned by the Complainant above, i.e. in the matter Parfums Christian Dior v. 1 Netpower, Inc, WIPO Case No. D2000-0022, March 3, 2000, at C. pp. 5-6 whereby "domain names warehousing" was considered as evidence of registrant's bad faith.
In effect, like WIPO Case D2000-0022, evidence was brought in the instant matter of the Respondent's registration of several domain names containing well-known trademarks of third parties (see Complainant's Annex 12); this amounts to unambiguous evidence of registration and use of a domain name in bad faith within the meaning of Paragraph 4 (b) (ii) of the Policy (see, e.g., Hunton & Williams v. American Distribution Systems, Inc. et al., WIPO Case No. D2000-0501 cited by Messrs. A. APPLETON and K. TROLLER, Domain Name Arbitrations: A Review of Selected Decisions, in Bulletin of the Swiss Arbitration Association, ASA, No. 4, 2000, pp. 740-741, and other relevant WIPO case decisions cited therein).
Moreover and as already stated 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 or confusingly similar to the corresponding trademarks 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 "arneg.com" shall be transferred to the Complainant.
Dated: February 7, 2001