WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ferrari S.p.A. v. Allen Ginsberg
Case No. D2002-0033
1. The Parties
The Complainant is Ferrari S.p.A., a company incorporated under the laws of Italy and domiciled at Via Abetone Inferiore 2, 41053 Maranello (province of Modena), Italy.
The Respondent is, according to contact details from the Registrarís Whois database, Allen Ginsberg, Domain for Sale, 19, Bondarenko Square, Obninsk, Kaluga, 249020 Russia.
2. The Domain Name and Registrar
The domain name at issue is <maserati.org>, registered with Dotregistrar.com, a division of iHoldings.com Inc., 9032 NW 12th St., Miami, FL 33172, U.S.A.
3. Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on January 16, 2002. An amended Complaint containing a rectification of the name of the Complainant was filed and received on January 17, 2002. A hardcopy form of the Complaint was received by the WIPO Center on January 18, 2002. Receipt of the Complaint, as amended, was acknowledged to the Complainant by the WIPO Center on January 23, 2002. On January 24, 2002, the WIPO Center requested and received a Registrar Verification issued by Dotregistrar.com. On January 25, 2002, the WIPO Center requested a further amendment of the Complaint. The WIPO Center received such second amended Complaint by e-mail on January 28, 2002, and a hardcopy on January 30, 2002. Payment of the administration fee was duly received. After Formal Compliance Review, verifying that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Uniform Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), a Notification of Complaint and Commencement of Administrative Proceeding was issued on January 31, 2002. A Notification of Respondent Default Notification was issued on February 25, 2002.
The Complainant chose to have the dispute decided by a single-member Administrative Panel. No Response to the Complaint has been submitted. The Panel was properly constituted on February 28, 2002, the formal date set for commencement of this administrative proceeding. It was founded on a Statement of Acceptance and Declaration of Impartiality and Independence dated February 28, 2002. A Notification of Appointment of Administrative Panel and Projected Decision Date was properly issued on February 28, 2002, indicating as single panelist Dr. Michael Treis.
On February 28, 2002, the WIPO Center forwarded to the Panel by courier mail the relevant documents, which were received on March 1, 2002. Pursuant to Rule 5 (b), in the absence of exceptional circumstances, the Panel is required to forward its decision by March 14, 2002.
4. Factual Background
In accordance with Paragraph 3(b)(xiii) of the Rules, the Complainant has agreed to submit, only with respect to any challenge that may be made by the Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of its Complaint, to the jurisdiction of the courts where the Registrar is located.
The Registrar Verification states that the Uniform Policy applies to the domain name at issue.
5. Partiesí Contentions
A. Complainant (short summary; and request for remedy)
1) The Respondentís domain name <maserati.org> is confusingly similar with Complainantís mark MASERATI.
The Complainant is an internationally well known trademark in the field of cars. The Complainant has been the owner of the trademark MASERATI for many years. MASERATI is a world famous trademark.
2) The Respondent has no rights or legitimate interest in the domain name <maserati.com>. There is no evidence of the Respondentís use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Respondent does not offer any goods or services whatsoever. Respondent has never been commonly known in the normal course of business under the trademark MASERATI. Any conceivable use the Respondent may do of the domain name <maserati.org> may only be commercial, thus excluding the possibility of a non-commercial fair use.
3) The Respondent has registered the domain name <maserati.org> in bad faith and uses it in bad faith.
The Respondent must have been aware of the famous trademark MASERATI. The choice of the name cannot be coincidental. Even if the domain name <maserati.org> is not "used" for a website in the proper sense of the word, the particular circumstances of the case are such that inaction also constitutes bad faith. There are a significant number of decisions rendered by other Administrative Panels in support of this view. In addition, the holding of the domain name <maserati.org> is somewhat "active" in that it constitutes a link to a pornographic website. Finally, the fact that Respondent also uses the name "Domain for Sale" says it all. If one clicks on "domain for sale" on the page for <maserati.org>, a page opens with a form advising inter alia that "any offer below 500 USD will be ignored. The attempt to sell the domain name in excess of the Respondentís investment relative to the domain name constitutes bad faith use of the domain name.
4) The Complainant has requested, in accordance with Paragraph 4 i. of the Uniform Policy, that the Administrative Panel transfer the domain name <maserati.org> to the Complainant.
There has been no Response from the Respondent.
6. Discussion and Findings
On the basis of the Complainantís submissions and evidence introduced by the Complainant, and in particular with regard to the content of the relevant provisions of the Uniform Policy (paragraph 4. a. to c.), the Administrative Panel considers that the case does not necessitate any lengthy arguments on its part.
A. The domain name <maserati.org> is not only confusingly similar to but indeed practically identical with the registered trademark MASERATI, notwithstanding the added gTLD .org.
B. Evidence provided by the Complainant shows that the Respondent has neither any rights nor any legitimate interest in respect of its domain name. The Respondent has chosen not to respond to the Complaint and has not made use of his right to invoke any arguments or circumstances, which would indicate the contrary. MASERATI is a very well known and possibly even famous trademark. It is more than likely that the Respondent has been aware of it. The Panel notes that on the basis of the available facts of the case, the Respondent has not taken any act, which could infer that he has any legitimate interest, let alone any rights, in respect of the domain name. He is not known as having any business in relation to MASERATI cars. He does not use the name for his proper business purposes, but uses it as a link to a pornographic website. He offers the domain name for sale. These elements show that he tries to make undue financial profit from the transfer of domain name registrations to trademark owners and others. There is no doubt in the mind of the Panel that the Respondentís registration of the domain name <maserati.org> is illegitimate and forms part of an intentional abuse of the domain name system
C. The Respondent has been shown to have registered the domain name in bad faith and to misuse the domain name system to the detriment of legitimate trade mark right holders, in the present case the Complainant, in ways described in the Uniform Policy under article 4 b. (i) and (ii). The Respondent has registered the domain name <maserati.org> corresponding to the well-known or even famous trademark MASERATI which he must have been aware of. Further, there is not any element whatsoever indicating that the Respondent would have a bona fide intention to use the domain name. Quite the contrary, the Respondentís use of the domain name <maserati.org> as a link to a pornographic website is a tentative to divert internet traffic intended for the Complainantís website to a pornographic website, and this act is conclusive of bad faith. Under these circumstances, his standing offer to sell the domain name to any third party offering a price that is high enough must also be qualified as amounting to use of the domain name in bad faith. These elements correspond to a pattern of conduct, to a general "cyber squatter scheme" and constitute conclusive evidence that the name has been registered and is being used in bad faith. The Complaint is therefore well founded.
D. The Administrative Panel concludes that all elements mentioned in the Uniform Policy under article 4 a. (i)-(iii) are present in the case.
The Administrative Panel requires that the registration of the domain name <maserati.org> be transferred to the Complainant.
Dated: March 14, 2002