WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novabell S.p.A. v. Clear Imaging / Domains by Proxy Inc.
Case No. D2007-1154
1. The Parties
The Complainant is Novabell S.p.A., of Roteglia di Castellarano, Italy, represented by Barbero & Associates Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Clear Imaging / Domains by Proxy Inc., of Carson City, United States of America.
2. The Domain Name and Registrar
The disputed domain name <novabell.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2007 naming Domains by Proxy Inc as registrant. On August 15, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On August 15, 2007, Go Daddy Software transmitted by email to the Center its verification response stating that the registrant was Clear Imaging. On August 16, 2007, the Center advised Complainant and in response to the notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 21, 2007 adding Clear Imaging as a Respondent. 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 August 23, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 12, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 13, 2007.
The Center appointed Desmond J Ryan AM as the sole panelist in this matter on September 18, 2007. 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 domain name was created on July 22, 2004. According to Complainant it first became aware of the domain name in November 2006. At that time the registrant of the domain name was RegisterFly.com – WhoisProtectionService ProtectFly.com of New York. According to Complainant Register.Fly.com is an affiliate of registrar eNom that provides Whois privacy protection for domain name registrants.
On November 15, 2006, a web designer acting on behalf of Complainant requesting an indication of the possible availability of the domain name. On the same day a reply was received from “Info@Whois-Help.info” stating that the domain name was not for sale but if objective trademark rights could be demonstrated the matter might be reconsidered. In response, on January 17, 2007, Complainant’s lawyers forwarded a copy of an advice setting out Complainant’s trademark rights. No response was received. On February 21, 2007, Complainant’s lawyers sent a reminder alleging infringement of Complainant’s trademark rights and threatening legal action. On February 21, 2007, Complainant’s lawyers received a reply from the “Director of Risk Management” of eNom Inc, stating that eNom was not the registrar of the domain name and forwarding a copy of the current domain Whois showing RegisterFly.com as the registrant and also as the registrar. The domain name servers were listed as NS2.ClearImaging2.com. When Complainant again monitored the domain name the registrant was seen to be Domains by Proxy Inc and the registrar was GoDaddy.com Inc. As noted above on August 15, 2007, the registrant was shown as Clear Imaging and the registrar was GoDaddy.com.
Complainant is an Italian company which is a manufacturer of ceramic floor and wall tiles. It is the owner of the domain name <novabell.it> created January 29, 1997, and of a number of registrations of trademarks of which the word “novabell” is the dominant particular, including Italian registration No. 834353 filed October 16, 1998 and the international registrations covering China, the United States of America and the Russian Federation dating from May 2005.
Complainant asserts that it has been involved in more than 400 projects worldwide including projects in Dubai, Italy, Ireland and the United States. Complainant also claims to have carried out extensive advertising and promotional campaigns worldwide and exhibits examples of advertising in internationally circulating magazines in 2005 and 2006.
No response has been filed so no information is available as to Respondents, save that which is in the public domain and that contained in the Complaint. Respondent Domains by Proxy Inc is known to be a proxy domain name holder. No information is available in relation to Clear Imaging, however, Respondent’s website homepage, put into evidence by Complainant, bears the indication “Site by ClearImaging.com”. This would suggest that Clear Imaging is a website designer. In the absence of evidence to the contrary the Panel makes that assumption. Domains by Proxy Inc and Clear Imaging will hereafter be referred to as “Respondents”.
Complainant has adduced evidence showing that Respondents’ website accessible at the domain name is a close imitation of Complainant’s website featuring Complainant’s name and Complainant’s name and diamond logo trademark. It reproduces precisely the look and feel of Complainant’s homepage and features a number of link tabs in identical colour and typeface and similar wording to Complainants. In addition, it carries the words “Site by ClearImaging.com” referred to above, as well as a copyright notice “Copyright 2006-Novabell”. Clicking on these link tabs produces no result. However, there is a further tab “digital catalogue”. Clicking on this tab leads to a site with the address line “www.clearimaging.com” – and with active pages of what purports to be the 2004 Novabell digital catalogue.
5. Parties’ Contentions
(a) Identical of Confusingly Similar Mark
Complainant has demonstrated that it is the owner of trademark registrations consisting of the word “novabell” or of which the word “novabell” is the dominant particular. The domain name comprises the word “novabell” with the addition of the “.com” domain designator which Complainant submits is immaterial for the purposes of this dispute. Accordingly, Complainant submits the domain name is identical to Complainant’s trademark in which it has rights.
(b) Rights or Legitimate Interest
Complainant asserts that Respondents are not licensees or authorized agents of the Complainant or in any other way authorized to use Complainant’s trademark. Complainant contends that mere prior registration of the domain name does not establish any rights or legitimate interests in it and cites inter alia, Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134. Accepting the prima facie burden of proof, Complainant contends, and cites in support several prior WIPO case decisions, that having discharged the initial burden of eduction of evidence the burden reverts to Respondents and Respondents have not discharged that burden – see for example Croatia Airlines d.d. v Modern Empire Internet Limited, WIPO Case No. D2003-0455.
(c) Registration and Use in Bad Faith
Complainant contends that Respondents’ adoption of Complainant’s trademark and using it in conjunction with a website which is substantially identical in appearance to Complainant’s website and which includes a reproduction of Complainant’s 2004 catalogue clearing demonstrates not only that the domain name was registered in bad faith, but that it is currently being used in bad faith. Complainant submits that it is inconceivable given the circumstances that Respondents would not have had actual knowledge of Complainant’s trademark rights at the time of registration of the domain name. Complainant says that “Such a conduct demonstrates that the only purpose of the Respondent was and is to use the domain name to intentionally attempt to attract, for commercial gain, Internet users to such a website, creating the likelihood of confusion with the endorsement of the Complainant’s website”. As further evidence of bad faith, Complainant points to the use of a Whois protection service to conceal the identity of the domain name holder.
Respondents did not reply to the Complaint.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has clearly established rights in a number of trademark registrations in which the word “novabell” is the dominant particular. The domain name, apart from immaterial addition of the “.com” domain indicator, is identical to the word “novabell”.
The Panel therefore finds that the domain name is identical or confusingly similar to a trademark in which Complainant has established rights.
B. Rights or Legitimate Interests
Complainant asserts that it has given no licence or authority to Respondents to use its trademark and domain name. There is no apparent basis upon which Respondents could assert such rights or legitimate interest and Respondents have not taken the opportunity to assert any such rights.
The Panel therefore finds that Respondents have no rights or legitimate interest in the domain name.
C. Registered and Used in Bad Faith
Complainant’s trademark rights are clearly antecedent to Respondents’ registration of the domain name. Complainant has demonstrated substantial worldwide use and promotion of its trademark and whilst it has not, in evidence, distinguished between use and promotion prior to the date of registration of the domain name from that which has occurred subsequently to that registration, the fact that Respondents’ website displays Complainant’s 2004 catalogue is a strong indication that when Respondents registered the domain name in 2004 they were aware of Complainant and its trademark rights.
It is difficult to imagine a more blatant example of bad faith than, as has occurred here, the wholesale adoption of Complainant’s website format and online digital catalogue. Whilst it is not necessary for Complainant to show that Respondents’ conduct falls within one of the non-limiting circumstances set out in paragraph 4(b) of the Policy, the reply to the enquiry made in reply to Complainant’s agents enquiry of November 15, 2006, strongly suggests an intention to sell or otherwise commercially profit from the domain name. The reply commences with a statement that the domain name is not for sale but then goes on to imply that the matter might be open to reconsideration. This suggests an attempt at subtle negotiation. Whether or not that be the case, the Panel is of the view that Complainant has established a clear prima facie case of lack of bona fides in the registration and use of the domain name. Respondents have made no rebuttal of Complainant’s case in this respect.
Accordingly, the Panel finds that the domain name was registered and is being used 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 <novabell.com> be transferred to the Complainant.
Desmond J Ryan AM
Dated: September 20, 2007