WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ferrari S.p.A. v. Inter-Mediates Ltd.
Case No. D2003-0050
1. The Parties
The Complainant is Ferrari S.p.A., a company incorporated under the laws of Italy, having its principal place of business in Maranello, Modena, Italy.
The Respondent is Inter-Mediates Ltd., a company incorporated under the laws of the United Kingdom, having its principal place of business in Sawbridgeworth, Herts, United Kingdom.
2. The Domain Names and Registrar
The domain names at issue are <clubferrari.com> and <clubferrari.net>, which are registered with Melbourne IT trading as Internet Name Worldwide ("the Registrar") of Melbourne, Australia.
3. Procedural History
A Complaint was submitted by e-mail to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on January 23, 2003, and in hardcopy on January 28, 2003. An Acknowledgment of Receipt was sent by the Center to the Complainant, dated January 24, 2003.
On January 24, 2003, a Request for Registrar Verification was transmitted to the Registrar.
On January 28, 2003, the Registrar stated that it was not in receipt of the Complaint, but confirmed that the domain names at issue were registered with the Registrar and that the Respondent was the current registrant of the names. The Registrar also forwarded the requested WHOIS details and confirmed that the Uniform Domain Name Dispute Resolution Policy (the "Policy") applies to the domain names.
The Registrar has currently incorporated the Policy in its agreements. The Policy was adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999. There is no evidence that the Respondent ever requested that the domain names at issue be deleted from the domain name database. Accordingly, the Respondent is bound by the provisions of the Policy.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 29, 2003.
The Panel has determined that the Complaint, together with the amendment to the Complaint, is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999, (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, in effect as of December 1, 1999 (the "Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
No formal deficiencies having been recorded, on January 30, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, the Registrar and ICANN), setting a deadline of February 19, 2003, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by post/courier, facsimile and e-mail to the addresses indicated in the Complaint. The Response was filed with the Center on February 5, 2003.
On February 17, 2003, the Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. This Notification informed the parties that the Administrative Panel would be comprised of a single Panelist, Mr. Jonas Gulliksson.
The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules. 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 Administrative Panel shall issue its Decision based on the Complaint, the Response, the Policy, the Rules, and the Supplemental Rules.
4. Factual Background
The Complainant and its Registered Trademarks
Complainant is an internationally well-known company in the field of cars and the owner of several hundreds of trademarks including the word FERRARI throughout the world, re Annex 1 to the Complaint. In order to limit the number of enclosures, the Complainant has enclosed copies of representative trademarks with the Complaint:
- Italian registration No. 666132 (re Annex 2 to the Complaint);
- CTM registration No. 161950 (re Annex 3 to the Complaint);
- U.S. registration No. 874164(re Annex 4 to the Complaint);
- UK registration No. 1291547 (re Annex 5 to the Complaint)
5. Partiesí Contentions
(1) The Domain Names are Identical or Confusingly Similar to a Trademark in which Complainant has Rights
The domain names <clubferrari.com> and <clubferrari.net> are confusingly similar with the trademarks FERRARI. The creation of a "club" for buyers of a particular quality product is not uncommon; and adding "club" to FERRARI only enhances the impression that the web site is officially associated with Ferrari. That adding "club" to a registered trademark creates a confusingly similar domain name has been repeatedly established by Panels, inter alia in the cases Louis Vuitton Malletier v. Soomsak Sooskripanich (WIPO Case No. D2000-0866, involving <louisvuittonclub.com>), Viacom International Inc. v. Elephantronics (WIPO Case No. D2001-0921, involving <mtvclubs.com>, where Complainantís trademark was MTV); Altadis S.A. v. Gourmetabaco S.L. (WIPO Case No. D2001-1229: domain names <altadisclub.com> and similar are confusingly similar with trademark ALTADIS); Ellerman Investments Ltd. and The Ritz Hotel Casino Ltd. v. Antonios Manessis (WIPO Case No. D2001-1461: domain name <ritzclub.com> is confusingly similar with trademark RITZ); and many others.
(2) Respondent has No Rights or Legitimate Interests in the <clubferrari.com> and <clubferrari.net> Domain Names
According to the Complainant it is not possible that Respondent may not have been aware of the famous trademark FERRARI, and registration may only have occurred in bad faith; when it may be presumed that "the Respondent (Ö) knew of the renown of the Complainantís trademarks," a finding of "opportunistic bad faith" is in order (Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; here, the Panel found that Respondent could not have ignored that BANCA SELLA is a famous trademark in Italy for banking services). In Veuve Cliquot Ponsardin v. The Polygenix Group Ltd., WIPO Case No. D2000-0163, the Panel noted that "Ďveuvecliquot.orgí is so obviously connected with such a well-known product [VEUVE CLIQUOT champagne] that its very use by someone with no connection with the product suggests opportunistic bad faith."
In Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226, it was also suggested that "the domain names are so obviously connected with such a well-known name and products that its very use by someone with no connection with the products suggests opportunistic bad faith [quoting Veuve Cliquot]. In the absence of contrary evidence, the Panel finds that Respondents knew of or should have known of the Complainantís trademark and services at the time Respondents registered the domain names given the widespread use and fame of the Complainantís CHRISTIAN DIOR mark."
Even in a case where the trademark involved (EXPEDIA for online travel services) was somewhat less famous than VEUVE CLIQUOT or CHRISTIAN DIOR, it was decided that "the Respondent knew of or should have known of the Complainantís trademark and services at the time it registered the domain name <xpediatravel.com>, given the widespread use of the Complainantís EXPEDIA website" (Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137).
In this case Respondent obviously knows about, and mentions in its web sites (inter alia) to international car racing competitions, where FERRARI cars play a prominent role, and otherwise uses Ferrariís fame in its web sites to promote sales of a variety of services and products; it is as a consequence obvious that it is familiar with this trademark.
Upon information and belief, Respondent has no rights or legitimate interests in respect of the domain names. Registering the domain names <clubferrari.com> and <clubferrari.net> were two acts in a pattern explicitly aimed at infringing Complainantís rights. Simply adding the word "club" to a domain name consisting of a well-known trademark does not establish a right, nor a legitimate interest, to own the corresponding domain name. Respondent could have managed a legitimate online business selling FERRARI-connected and other products under any different domain name, whilst its present domain names (a) suggest that it is officially associated with Ferrari which it is not; (b) prevent Ferrari from registering the domain names <clubferrari.com> and <clubferrari.net> and to attract the corresponding Internet traffic; and (c) establish an unfair privilege for Respondent vis-à-vis hundreds of legitimate retailers and distributors within the Ferrari distribution network. In fact, Respondent does not even operate a Ferrari online fan club but uses its web sites to promote web and e-mail services, video games, benefit from percentages and royalties linking to other commercial web sites, and promote a variety of products, most of them completely unrelated to Ferrari.
(3) Respondent Registered and is Using the <clubferrari.com> and <clubferrari.net> Domains in Bad Faith
The domain names are used in bad faith. Neither did Ferrari authorize Respondentís activities, nor does it control them. Complainant has no control of what Respondent currently sells or advertises. By the use of the contested domain names Respondent diverts traffic which would otherwise go to Complainantís web sites. References to Ferrari in a web site which advertises a variety of unrelated services and products are a graphic confirmation of Respondentís intention to use the world-famous trademark FERRARI to its benefit and mislead consumers, and that its use occurs in bad faith.
The Complainant has requested the Administrative Panel to issue a decision by which the contested domain names are transferred to the Complainant.
The Respondent has contested the allegations of the Complaint. The Respondent claims that it is not purporting to be connected to Ferrari in any way. According to the Respondent its documentation clearly states that "No connection with any organization other than Special Reserve, Freeola or GetDotted is implied."
The Freeola ISP business holds a wide choice of domains, which represent peopleís passions, interests and occupations. The Respondent offers Freeola customers free use of these domains for e-mail (email@example.com) and a web site (www.yourname.clubferrari.com). Freeola does not charge customers for the use of the ClubFerrari (or any other) domains.
The Respondentís aim is to allow its customers to express their passion for Ferrari by encouraging them to use one of these addresses. The Respondent claims that it certainly does not seek to harm the reputation of Ferrari.
The Respondent is not aware of a single instance where a third party has confused the Respondent with Ferrari S.P.A.
At the time of writing the Respondent has 239 people who have taken an address at one of these domains. According to the Respondent these people will undoubtedly be fans or supporters of the Ferrari name.
The domains were registered in May 1999. Ferrari has never contacted the Respondent with regard to its use of any domains. Given their lack of action in this respect the Respondent concludes that Ferrari do not regard the "clubferrari" name as essential or damaging to their business.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the owner of several hundreds of trademarks including the word FERRARI throughout the world. The contested domain names are <clubferrari.com> and <clubferrari.net>. It has been established in several cases, inter alia in Louis Vuitton Malletier v. Somsak Sooskripanich (WIPO Case No. D2000-0866), Viacom International Inc. v. Elephantronics (WIPO Case No. D2001-0921) that adding the word "club" to a registered trademark creates a confusingly similar domain name. It has also been decided in many cases under the Policy that "essential" or "virtual" identity is sufficient for the purposes of the Policy, inter alia in Nokia Corporation v. Nokiagirls.com (WIPO Case No. D2000-0102).
In view of the above it is the Panelistís opinion the domain names <clubferrari.com> and <clubferrari.net> are confusingly similar to the trademark FERRARI. Accordingly, the Panelist finds that the domain names at issue are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4 (c) of the Policy, any rights or legitimate interests in the domain names. In particular, the fact that the Respondent refers to Ferrari in its web site, in which the Respondent advertises a variety of unrelated services and products, shows that the Respondent is not making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue, according to Paragraph 4(c)(iii) of the Policy. Furthermore, in its web site the Respondent offers several other domain names, which include other famous trademarks, e.g. ROLLSROYCE, DAIMLER, JAGUAR, BENTLEY, TOYOTA and HONDA.
The fact that the Respondent is using the word FERRARI in relation to a service that has no natural connection with FERRARI-cars or services relating to such cars shows that there are no circumstances, which indicate fair use, like e.g. an association or club of collectors of vintage FERRARI-cars or the like. Even if the use had related to such clubs it would not necessarily constitute fair use to register a domain name containing FERRARI for these activities.
Besides, the Respondent is obviously using the several famous trademarks in order to attract consumers to visit the web site, which in its turn contains advertisements for commercial products and services.
In view of the above, the Respondent has not proven that he has any prior rights or legitimate interests in the domain name. Nor has the Complainant authorized the Respondentís activities or has any control over these activities.
The prerequisites in the Policy, Paragraph 4(a)(i) and (ii) are therefore fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4 (a)(iii) of the Policy further provides registration and use in bad faith.
According to Paragraph 4(b)(i)-(iv) of the Policy the certain circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
The Panelist does not find that the circumstances under Paragraph 4(b)(i)-(iii) are at hand in this particular case. The Panelist has therefore considered whether the circumstances under Paragraph 4(b)(iv) could be applicable to this case.
The Complainant's trademark is well-known and has a strong and world wide reputation. In light of these circumstances and the fact that the Respondent has shown no rights or legitimate interests with respect to the name FERRARI, the Panelist believes that it is not credible that when Respondent applied for registration of the domain names at issue Respondent was not aware of Complainantís rights regarding FERRARI. Therefore, the Panelist finds that the contested domain names were registered in bad faith.
According to the Complainant the contested domain names are also used in bad faith, since the use of these domain names diverts traffic that would otherwise go to Complainantís web sites. According to the Complainant the fact that the Respondent refers to Ferrari in its web site, which advertises a variety of unrelated services and products, confirms the Respondentís intention to use the world-famous trademark FERRARI to its benefit and mislead consumers.
The Respondent has alleged that it is not purporting to be connected to Ferrari in any way. Furthermore, the Respondent does not charge customers for the use of the ClubFerrari domains. However, in its web site the Respondent also offers a variety of unrelated services and products, which are not free of charge. It can therefore be inferred that by using the contested domain names the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site.
In accordance with several other WIPO cases concerning well-known trademarks, e.g. Veuve Cliquot Ponsardin v. The Polygenix Group Ltd., WIPO Case No. D2000-0163, Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 and Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137, it is the Panelistís opinion that the contested domain names are so obviously connected with the well-known name FERRARI and its products that the very use of the name by someone with no connection with the products suggests opportunistic bad faith.
In view of these circumstances and the fact that the Respondent has not proven that he has any prior rights or legitimate interests in the contested domain names it is the Panelistís opinion that the Respondent has registered the contested domain names in bad faith.
It is also the Panelistís opinion that by using the contested domain names the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainantís well-known trademark FERRARI. Therefore, the domain names have also been used in bad faith.
Consequently, it is the Panelistís opinion that the domain names have been registered and used in bad faith in accordance with Paragraph 4(b)(iv) of the Policy. Consequently, all the prerequisites for cancellation or transfer of the domain names according to Paragraph 4 (i) of the Policy are fulfilled.
The Complainant has requested transfer of the domain names.
In view of the above circumstances and facts the Panel decides, that the domain names registered by Respondent are identical or confusingly similar to the trademark and service mark in which the Complainant has rights, and that the Respondent has no rights or legitimate interests in respect of the domain names, and that Respondentís domain names have been registered and are being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names <clubferrari.com> and <clubferrari.net> be transferred to the Complainant.
Dated: March 3, 2003