WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banca Carige S.p.A. v. MustNeed.com, Lee Yi
Case No. D2004-0445
1. The Parties
The Complainant is Banca Carige S.p.A., Via Cassa di Risparmio, Genoa, Italy, represented by Internazionale Brevetti Ingg. Zini, Maranesi & C. S.r.l., Italy.
The Respondent is MustNeed.com, Lee Yi, Taipei, Taiwan, Province of China.
2. The Domain Name and Registrar
The disputed domain name <carige.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2004. On June 16, 2004, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On the same day, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 18, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2004.
The Center appointed Torsten Bettinger as the sole panelist in this matter on July 16, 2004. The Panel finds that it was properly constituted. 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.
4. Factual Background
The Complainant is an Italian bank with more than 390 bank counters in Italy and offices in Frankfurt, London, Madrid, New York, Mosca, Pechino, Algeri and Nizza. The Complainant provides financial services to more than 1.700.000 clients.
The Complainant is the registered owner of the following Italian and Community trademark registrations:
- BANCA CARIGE + Design, Italian Trademark Registration No. 39638168, registered on November 19, 1996;
- BANCA CARIGE + Design, Community Trademark 002305530, issued on September 17, 2002.
The Complainant also uses the term CARIGE (which is the acronym for Cassa di Risparmio di Genova) as a part of its business name Banca Carige Genova S.p.A and has registered and uses the following Internet domain names: <carige.it>, <gruppocarige.it> and <gruppocarige.com>, <gruppobancacarige.it>, <gruppobancacarige.com>.
Respondent registered the disputed domain name <carige.com> on June 11, 2003. Respondent uses the domain name <carige.com> to host a search engine service that contains links to a variety of commonly searched subjects such as “health”, “travel”, “Internet”, “lifestyle” and “shopping”. The Respondent offers the domain name <carige.com> for sale on its website at “www.carige.com”.
5. Parties’ Contentions
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant asserts that the domain name <carige.com> is virtually identical or confusingly similar to Complainant’s famous CARIGE marks in that the domain name consists entirely of the distinctive term “Carige”.
In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainant states that the domain name is not used for any bona fide offering of goods or services and that there is no indication that the Respondent was known by the name CARIGE prior to registration of the domain name. The Complainant further states that the Respondent is not authorized or licensed to use the Complainant’s mark CARIGE.
In reference to the element in paragraph 4(a)(iii) of the Policy, the Complainant states that Respondent had actual knowledge of Complainant’s rights on the trademark CARIGE when he registered the disputed domain name and that the word “Carige” is an acronym for Cassa di Risparmio di Genova and has no dictionary meaning.
The Complainant further states that the Respondent has been named as Respondent in various other UDRP administrative proceedings in which UDRP Panels held that it has registered and used the domain names in bad faith.
The Complainant therefore contends that the Respondent registered or acquired the domain name <carige.com> primarily for the purpose of selling, renting or transferring it to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present if it is to prevail:
(i) The Respondent’s “domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;” and
(ii) The Respondent has “no rights or legitimate interests with respect to the domain name;” and
(iii) The “domain name has been registered and is being used in bad faith.”
A. Identical or Confusingly Similar
The Respondent has registered the domain name <carige.com>. This domain name is identical to Complainant’s trademark “BANCA CARIGE”, except that the domain name does not incorporate the generic term “Banca” and a design element, and adds the generic top-level-domain “.com”.
It is well established that the specific top level of the domain name such as “.org,” “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr., WIPO Case No. D2000-1525 holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; see also Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The fact that the Complainant’s mark contains the word “Banca” and a design element which are not reproduced in the domain name does also not avoid a finding of confusing similarity as both the word “Banca” and the graphic element of the mark have no distinguishing capacity (see Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems, WIPO Case No. D2001-0932 holding that the inclusion of a logo in a trademark does not prevent the Complainant from relying on that trademark for the purpose of a successful proceeding under the Policy; Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888 holding that the fact that the word ‘autoparts’ is added to Complainant’s trademark does not eliminate the identity, or at least the similarity, between Complainant’s trademark and the disputed domain name, as ‘autoparts’ is a descriptive component of the disputed domain name).
The Panel thus finds that the domain name <carige.com> is confusingly similar to the trademark in which the Complainant has prior exclusive rights.
B. Rights or Legitimate Interests
Although paragraph 4(c ) of the Policy requires the Complainant to prove the presence of this element, Panels in a number of cases found that once a Complainant makes a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to, or legitimate interests in the domain name.
The Panel finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the domain name.
The Complainant has not yet licensed or otherwise permitted the Respondent to use any of its trademarks or business names and has not permitted the Respondent to apply for or use any domain name incorporating the trademark. Further more, the word “Carige” is a self-created word (abbreviation derived from Cassa di Risparmio di Genova ) and as such is not a word a trader would legitimately choose unless seeking to create an impression of an association with the Complainant or intending to sell, rent or otherwise transfer the name to Complainant.
The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstance giving rise to a right or legitimate interest in the domain name.
Before notice to the Respondent of the dispute, there is no evidence of it’s use or, 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’s use of the domain name to divert Internet users to its website capitalizing on the complainant’s mark in not a bona fide use pursuant to paragraph 4(c)(i) of the Policy.
Further, nothing in the record suggests that the Respondent trades under the domain name or the name “Carige” or is commonly known by said domain name or the name “Carige” or is making a legitimate non-commercial or fair use of the domain name.
Under these circumstances the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.
C. Registered and Used in Bad Faith
The fact that the Respondent has chosen not to submit a Response is particularly relevant to the issue of whether the Respondent has registered and is using the domain name in bad faith. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a Panel shall draw such inferences as it considers appropriate from the failure of a party to comply with a provision or requirement of the Rules. This Panel finds no exceptional circumstances for the Respondent’s failure to submit a Response. The Panel draws from this failure the following two inferences:
(i) the Respondent does not deny the facts which the Complainant asserts, and
(ii) the Respondent does not deny the conclusions which the Complainant asserts can be drawn from these facts.
Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see, Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438).
Complainant alleges that Respondent has registered or acquired the domain name primarily for the purpose of selling the domain name registration to the Complainant for valuable consideration in excess of its out-of-pocket costs directly related to the domain name.
In fact, there are certain circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling it to the Complainant.
The Complainant’s trademark is long established and widely known. In the absence of evidence or even an assertion by the Respondent to the contrary the Panel accepts as fact that the Respondent registered the domain name <carige.com> knowing that it was the trademark of the Complainant.
The Complainant provided evidence that the Respondent has been named as Respondent in various other UDRP administrative proceedings (see for example Bioland e.V. v. Lee Yi, WIPO Case No. D2002-1147; Tercent Inc. v. Lee Yi, NAF Case No. FA139720; Earth Forums c/o Rick Papaleo v. Lee Yi, NAF Case No. FA143702) in which UDRP Panels held that the Respondent registered and used domain names in bad faith. Given the fact the disputed domain name was previously registered by Mr. Lee Yi, and that the statement on the website at “www.carige.com “For Sale contact us” leads to Mr. Lee Yi’s e-mail address, the Panel has no doubt that the Respondent in these administrative proceedings, Mr. Lee Yi, and the Respondent in the case before the Panel are identical.
When this pattern of conduct is combined with the fact that the term “Carige” is an acronym derived from Cassa di Risparmio di Genova, and that the Respondent offers the disputed domain name for sale on its website there is ground on which the Panel can conclude that that the Respondent’s objective was to sell the domain name to the Complainant for a valuable consideration well in excess of the Respondent’s out-of-pocket expenses.
The Panel therefore concludes that Respondent registered and is using the domain name <carige.com> in bad faith and that the requirement of the paragraph 4(a)(iii) is satisfied.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <carige.com> be transferred to the Complainant.
Date: July 30, 2004