WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BolognaFiere S.p.A. v. Currentbank-Promotools, SA. Inc/Isidro Sentis a/k/a Alex Bars
Case No. D2004-0830
1. The Parties
The Complainant is BolognaFiere S.p.A., Bologna, Italy, represented by Dr. Modiano & Associati S.p.A., Italy.
The Respondent is Currentbank-Promotools, SA. Inc/Isidro Sentis a/k/a Alex Bars, Tarragona, Spain.
2. The Domain Name and Registrar
The disputed domain name <cosmoprof.biz> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2004. The Complaint named Currentbank-Promotools, SA Inc./Isidro Sentis as the Respondent. Subsequently on October 11, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. In the interim, on October 11, 2004, the Respondent changed the name of the registrant of the disputed domain name to Currentbank-Promotools, SA. Inc./Alex Bars and also changed the contact address. Still on October 11, 2004, eNom transmitted by email to the Center its verification response confirming Currentank-Promotools, SA Inc./Alex Bars as the registrant and providing the contact details for the administrative, billing, and technical contacts. The Panel views Alex Bars as the same person as Isidro Sentis. The Center verified that 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 October 15, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2004. The Response was filed with the Center on November 4, 2004.
The Center appointed Dennis A. Foster as the sole panelist in this matter on November 19, 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 in the business of organizing trade fairs in Bologna, Italy, in other Italian cities, and in other countries such as Russia and China. The Complainant has extensively used the trademark COSMOPROF when its trade fairs involved perfumery and cosmetology.
The Respondent is engaged in a variety of activities that include designing trade fair booths and selling domain names. Some of the Respondent’s domain names explicitly denote pornographic content.
After receiving email notification from the Complainant on October 11, 2004, before the registrar could lock the disputed domain name, the Respondent succeeded in re-registering it under a different name—the change was from Currentbank-Promotools, SA. Inc./Isidro Sentis to Currentbank-Promotools, SA. Inc./Alex Bars. This is sometimes called “cyberflight” or “cyberflying”.
The Respondent first registered the disputed domain name <cosmoprof.biz> on March 27, 2002.
5. Parties’ Contentions
- The trademark, COSMOPROF, is well known in Italy and abroad, and has been extensively used by BolognaFiere since December, 1967. This use has continually developed the goodwill and repute of the trademark, which is therefore a valuable and important asset of the company.
- The COSMOPROF trademark in Italy has a priority filing date of October 24, 1985, while in the USA the priority filing date is March 6, 1995, (Annex 5). Furthermore, BolognaFiere is the owner of national, international and community registered trademarks for the name COSMOPROF (Annex 6).
- The disputed domain name, <cosmoprof.biz>, can be considered identical to the Complainant’s registered trademark, COSMOPROF.
- Complainant declares that no agreements, authorizations or licenses have been granted to the Respondent to use the COSMOPROF trademark. Complainant thus claims the Respondent has no rights or legitimate interests in the disputed domain name.
- The fact that the domain name has not been used for such a long time implies passive holding.
- There are in fact inferences showing that Respondent is linked to numerous domain name registrations under the names Isidro Sentis, Alex Bars, Current-Promotools, Comgoods, DSales and LSites (Annex 10).
- The Respondent has the disputed domain name and more than 20 other domain names for sale, including: <cosmobella.info>, <cosmobelleza.biz>, <videosex.info> (Annexes 13 and 14).
- The current registrant of the disputed domain name, i.e., Currentbank-Promotools/Isidro Sentis has the same address, phone and fax number of the previous registrant, i.e., Comgoods/Isidro Sentis.
- The domain names <isites.com>, <domain-brand.com>, <videoxxx.biz>, <vsex.biz> and <wipo.biz>, first registered by Alex Bars and then by Isidro Sentis, until September 21, 2004, showed Alex Bars as administrative contact for all of them (Annex 10).
- Complainant points out that in Xavier Hernández Creus v. Isidro Sentis Sales, WIPO Case No. D2001-0710, it appears that the Respondent (who is the same as in the present case) asked the sum of 150,000 pesetas to sell the domain name to the complainant.
- The fact that some of the domain names registered by Isidro Sentis were used to redirect to pornographic websites up until September 17, 2004, (see the “www.videoxxx.biz” web page at Annex 15) and the previous name of the Respondent, i.e., “Comgoods”, suggest that Respondent may be using this as a tactic to force the Complainant to buy the domain name at a higher price because the Complainant would fear that the <cosmoprof.biz> domain name also could be used for a pornographic website, thus increasing the damage to Complainant’s reputable trademark.
- Since September 22, 2004, the disputed domain name, <cosmoprof.biz>, appears to be on sale.
- The Respondent chose and registered the domain name <cosmoprof.biz> while aware of the fact that COSMOPROF was a registered trademark of the Complainant.
- Complainant’s search on the Internet revealed that the Respondent has been in the business of design and assembly of stands in fairs for several years (Annex 26). The fact that Respondent is in the business of “the design, production, organization and assembly of stands for fairs and exhibitions, together with the choice to register a domain name corresponding to the trademark COSMOPROF which is well known in the fair field, implies Respondent’s knowledge of Complainant’s trademark”.
- Actual knowledge of the Complainant’s rights in a trademark is a factor that has been repeatedly considered in previous UDRP decisions as supporting bad faith.
- If not for resale, the disputed domain name must have been registered to create a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement on the website or of a product. In addition, as stated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, passive holding of the domain name, without use in commerce, may support a holding of use in bad faith.
- The Respondent, alias Isidro Sentis and Lsites, has already been recognized as having registered and used the domain names <xavierhernandez.com> and <grammy.biz> in bad faith. It appears from the Xavier Hernandez decision supra that Respondent, apart from the domain names indicated in the list provided with Annex 10, has also registered other domain names corresponding to names of well known football players of the Barcelona team as well as a name related to the town of Barcelona.
- The disputed domain name was registered on March 27, 2002, and since then Respondent has not made any good faith use of the name. Passive holding can be considered not only as evidence of a lack of rights and legitimate interests in a domain name, but also as evidence of bad faith.
- No plausible explanation exists as to why Respondent selected the name <cosmoprof.biz> as a domain name other than to trade on the goodwill of the Complainant.
The Respondent argued that:
- The disputed domain name is not his but belongs to a client of his.
- The Complaint is vague and in bad faith.
- The only other domain names that have anything to do with the Respondent are: <ipic.info>, <ipic.biz>, and <ipic-stands.com>.
- The Respondent has no doubt that, as usual, the big company will win in this proceeding.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has exhibited copies of its COSMOPROF trademark registrations in Italy, the United States of America, the European Union — including Spain where the Respondent is located, and elsewhere (Complaint Annexes 5-7). The Italian national registration is no. 000735 with a priority date of October 24, 1985, in international class 42 for fairs focusing on perfumes and cosmetics. The United States of America registration, no. 1988179, has a priority date of March 6, 1995, and is in international class 35 for arranging and conducting trade show exhibitions for cosmetics. The European Union trademark, no. 001050483, has a priority date of January 22, 2001, in international classes 35, 41 and 42 for perfumery and cosmetology fairs.
The Complainant has also provided extensive evidence of use of its COSMOPROF trademark in connection with trade fair promotions in various Italian cities and abroad (Annexes 7-8).
The disputed domain name, <cosmoprof.biz>, is identical to the Complainant’s COSMOPROF trademark since all agree that the “biz” top-level indicator should not be taken into consideration when analyzing for identity or confusing similarity under the Policy.
The Panel finds the Complainant has carried its burden of proof under Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant contends the Respondent is not licensed or permitted to use the disputed domain name. The Complainant also has shown that the Respondent has attempted to auction the disputed domain name on the Internet (Annexes 13-14).
The Respondent has not attempted to show rights or legitimate interests in the disputed domain name as outlined in Policy paragraphs 4(c)(i-iii). On the contrary, the Respondent has attempted to deflect the entire proceeding through cyberflight and by saying the disputed domain name belongs to a 3rd party who is Respondent’s client. As stated earlier in the Procedural History and Factual Background sections of this Decision, the Panel does not find the Respondent’s contention of mistaken identity at all convincing.
Furthermore, the Respondent’s attempts to auction the disputed domain name while well aware it contains the Complainant’s reputable trademark does not create rights and legitimate interests under the Policy. Among many decisions, see e.g., Conoco Inc. v. RDH Computer Solutions/Ronald D. Harris, WIPO Case No. D2000-0960, where the respondent attempted to auction <conoco.net> while fully aware the domain name contained the complainant’s famous petroleum industry trademark.
C. Registered and Used in Bad Faith
The Complainant has made a number of supported arguments to show that the Respondent registered and is using the disputed domain name in bad faith.
The Complainant notably contends the Respondent’s holding the domain name without using it since March 27, 2002, and with knowledge of the Complainant’s trademark rights is evidence of bad faith under Telstra and subsequent supporting decisions. However, the Panel finds this argument does not mesh with the Complainant’s contention and ample supporting evidence that the Respondent is attempting to auction the disputed domain name, which is a use of sorts (Annex 13).
In the Panel’s view, there are in fact convincing grounds for finding, as the Complainant argues in the alternative, that the Respondent has registered and is using the disputed domain name in bad faith in violation of the Policy at paragraph 4(b)(i). As the Complainant contends, the Respondent’s work designing trade fair booths in Spain (Annex 26) certainly made the Respondent aware of the Complainant and its COSMOPROF trademark. Even though the Respondent has not requested a particular price for the disputed domain name while advertising it for sale on the Internet, the Panel is quite willing to infer from the business-for-profit posture of the Respondent’s activities that the Respondent intends to sell it at a profit. The Panel notes that a suggested opening bid for one of the domain names being auctioned with the disputed domain name was over 6,000 euros (Annex13).
The Panel also finds the Respondent is in bad faith for having changed the domain name registration on the same day he received the Complainant’s email notification of the Complaint on October 11, 2004. This violated paragraph 8 of the Policy and created confusion as the Center and the registrar tried to figure out why the Respondent’s name and contact information changed between the time when the Complainant filed the Complaint and the time when the Center sought to verify the Respondent’s identity with the registrar. The Respondent then stated in the Response that he was not the owner of the disputed domain name but that the owner was a “client” of his. The Respondent even had the temerity to offer to mediate this dispute between the Complainant and the Respondent’s “client”. The Panel is aware that this particular ground for finding bad faith is not one of the enumerated grounds in the Policy, but these grounds are non-exhaustive, and paragraph 15(a) of the Rules allows the Panel to find additional grounds for bad faith where appropriate. In the Telstra case supra and many subsequent cases, Respondents’ attempts to hide their identities, including through cyberflight, did lead to a finding of bad faith.
For example, recently in British Sky Broadcasting Group plc v. Mr. Pablo Merino and Skyservices S.A., WIPO Case No. D2004-0131, the Panel stated, “Cyberflying and providing false contact information for inclusion in the Whois database has also been interpreted as a sign of bad faith”. And in a similar case, ABB Asea Brown Boveri Ltd. v. Yvonne Bienen, Bienen Enterprises, WIPO Case No. D2002-0718, the panel stated, “…the Panel finds the Respondent should be treated as being the same entity as the original registrant. The name, Yvonne Bienen, is either an alias of the original registrant or an alter ego of the original registrant, being the name of another entity selected by the original registrant to suit his cyberflying purpose.”
The Panel finds the Complainant has carried its burden of proof under Policy paragraph 4(a)(iii) to show that the Respondent registered and is using the disputed domain name in bad faith.
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, <cosmoprof.biz>, be transferred to the Complainant.
Dennis A. Foster
Dated: December 2, 2004