WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Fiat S.p.A. and Fiat Group Automobiles S.p.A. v. Antonio Esposito

Case No. D2007-1868

 

1. The Parties

The Complainant is Fiat S.p.A. and Fiat Group Automobiles S.p.A., of Turin, Italy, represented by Buzzi, Notaro & Antonielli d'Oulx, of Turin, Italy.

The Respondent is Antonio Esposito, of Milan, Italy, represented by Studio Legale Garzon, of Milan, Italy.

 

2. The Domain Name and Registrar

The disputed domain name <fiatgroupautomobiles.com> (hereinafter “Domain Name”) is registered with GoDaddy.com, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2007. On December 18, 2007, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On December 18, 2007, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 January 9, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2008. The Response was submitted to the Center on January 27, 2008 electronically and by hard copy.

The Center appointed Anna Carabelli as the sole panelist in this matter on February 12, 2008. 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.

The Panel independently determined and agrees with the assessment of the Center that the Complaint complies with the requirements of the Policy, the Rules and the Supplemental Rules.

On February 25, 2008, the Complainant informed the Center that it had never received copy of the Response which was then transmitted electronically by the Center on the same day. Following receipt of the Response, the Complainant sent an e-mail to the Center pointing out that the Response does not include the statement required by paragraphs 2(b) and 5(b)(vii) of the Rules and paragraph 3 of the Supplemental Rules.

On February 26, 2008, the Respondent sent an email to the Center alleging that the Response was actually sent to the Complaint by email and by facsimile on January 28, 2008. However, the Respondent did not provide evidence of the above and the Complainant does not appear to have been copied on the January 27, 2008 email to the Center by which the Response was filed electronically.

 

4. Factual Background

The Complainant submitted evidence of registration of the following trademarks:

A) International trademark registrations:

T.M./S.M.

Reg. No.

Date of Registration

FIAT

193404

June 15, 1956

FIAT GROUP

878918

December 21, 2005

B) Community trademark registrations:

T.M./S.M.

Reg. No.

Date of Registration

FIAT

336909

October 20, 1998

FIAT GROUP

4748646

November 23, 2006

The Complainant has registered about 200 domain names in different countries, all of them comprising the word “fiat” and some of them the word “fiatgroup” and “fiatgroupautomobiles”.

The Respondent registered the Domain Name on January 24, 2007.

The Domain Name is parked on a portal of the Registrar’s where the Domain Name is offered for sale and which displays several “Sponsored Links” pointing to commercial websites operated by third parties some of which apparently refer to products of the Complainant’s direct competitors.

On July 12, 2007, the Complainant sent a cease and desist letter to the Respondent to which the latter replied to be an authorized Internet domain name buyer/wholesaler and the legitimate owner of the Domain Name. The Respondent also claimed to have no intention to use the Domain Name.

Subsequently, by letter of October 9, 2007, the Complainant offered to purchase the Domain Name from the Respondent for the amount of € 1,000.00 underlying that this amount not only covered but largely exceeded the registration expenses. On October 11, 2007, the Respondent denied the Complainant’s offer and replied: “Your offer to purchase the domain name www.fiatgroupautomobiles.com for € 1,000 has been considered much insufficient since the above mentioned is a high target International domain name in English language. Therefore we can assign the domain name to you for € 10,000 since this is the real value calculated by us and shown in our price list. As to the expenses borne by us for the domain name, I wonder whether by chance you offer for sale your automobiles at the factory price”.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- Fiat S.p.A. is well-known worldwide as it was founded in 1899 as a manufacturer of cars and agricultural vehicles; it is the largest industrial group in Italy and one of the largest in Europe; it is present in 190 countries in the world and it is the sixth biggest car selling group in Europe.

- The Complainant holds several trademarks registered throughout the world consisting of or including the word “fiat” and “fiat group”.

- The Complainant directly and through its affiliated companies and authorized dealers holds about 200 domain names which include the designation FIAT.

- The Domain Name is confusingly similar to the Complainant’s registered trademarks FIAT and FIAT GROUP as it incorporates them entirely and the deletion of the space between the words FIAT and GROUP as well as the addition of the generic top level domain “.com” are not sufficient to avoid such a confusion. Moreover, the addition of the word “automobiles” strengthens such likelihood of confusion as it refers to the Complainant’s core business.

With respect to the Respondent, the Complainant further contends that:

- The Respondent has no rights or legitimate interests with respect to the Domain Name.

- The Respondent has registered and is using the Domain Name in bad faith as:

(i) in light of the notoriety of the Complainant’s trade names and trademarks both in Italy and worldwide it is unlikely, that the Respondent was not aware of the Complainant’s trademark rights at the time of registration of the Domain Name;

(ii) the Respondent registered the Domain Name for the purpose of selling, renting or otherwise transferring the Domain Name registration to any interested party;

(iii) the Domain Name is parked on website of the Registrar’s which displays “Sponsored Links” some of which lead to some of the Complainant’s direct competitors.

B. Respondent

The Respondent contends that:

- The Respondent is an authorized Buyer/Wholesale of Internet domain names.

- The Respondent bought the Domain Name on January 24, 2007 for one year and subsequently renewed it for another year.

- The Respondent bought the Domain Name before the Complainant changed its name from “Fiat Auto” to “Fiat Group Automobiles S.p.A.” and before the creation of the trademark FIAT GROUP AUTOMOBILES S.P.A.

- The Domain Name is different from the Complainant’s trademarks and, therefore, is not confusingly similar to them, since in the Domain Name: (i) the spaces between the words FIAT and GROUP and AUTOMOBILES have been deleted; (ii) every word is written in small letters; (iii) the Domain Name ends with “.COM” instead of “S.p.A.”.

- Even if the Domain Name were to be considered as being confusingly similar to the Complainant’s trademarks, the Complaint would nevertheless be groundless since the (i) “the domain name is not a distinctive element”; (ii) Respondent is the legitimate owner of the Domain Name based on the principle “first come, first served” (iii) “the choice of a domain name is a matter of fundamental freedoms and absolute rights such as freedom of expression”.

- The Respondent does not operate a website under the Domain Name but he has just put up the Domain Name for sale on a specific page of “www.godaddy.com”.

- The Respondent did not register nor used the Domain Name in bad faith as the Respondent: (i) purchased the Domain Name before the Complainant changed its name from FIAT AUTO to FIAT GROUP AUTOMOBILES; (ii) did not use the Domain Name but only put it up for sale in a parking website of the Registrar’s; (iii) does not carry on any commercial activity in competition with the Complainant; (iv) does not obtain any undue advantage by owning the Domain Name.

 

6. Discussion and Findings

A. Procedural Issues

Preliminarily, the Panel wishes to address the formal and procedural issue brought to the attention of the Center by the Complainant by its email of February 25, 2008 and concerning:

(i) the formal deficiency of the Response, consisting in the lack, under its paragraph IX, of the statement required by paragraph 5(b)(vii) of the Rules; and

(ii) the alleged failure by the Respondent to send a copy of the Response to the Complainant as required by paragraph 2(b), 5(b)(vii) of the Rules and paragraph 3 of the Supplemental Rules.

There is no provision regulating the consequences for responses that do not meet the formal requirements comparable to paragraph 4(b) of the Rules for complaints and so far other Panels have decided the matter in their own discretion based on the circumstances of the case.

The Panel here considers that:

 

(i) the Respondent alleged that the Response was actually transmitted to the Complainant although no evidence thereof was provided,

(ii) the Complainant eventually, although late, did receive a copy of the Response which was sent by the Center on February 25, 2008,

(iii) the Rules do not provide for the parties’ right to reply to each others’ allegations and arguments, and

(vi) the Response does comply with all other formal requirements set forth by paragraph 5(b) of the Rules. Based on the above considerations the Panel will decide the Complaint taking into appropriate consideration the Response.

B. Preliminary Issue

The Panel further deems it necessary to preliminarily address a recurring argument brought forward by the Respondent according to which the purchasing and selling of domain names should be considered as a perfectly legitimate activity regardless of whether it infringes other parties registered or well-known trademark rights as such an activity would allegedly and simply be regulated by the principle “first come, first served”.

As stated in LACER, S.A. v. Constantin Gmez Marzo WIPO Case D2001-0177 “the first to come must come in good faith”. As a matter of fact the Policy, which undoubtedly applies to the Respondent as confirmed by Godaddy.com, Inc., in answering the Center’s request for registrar verification, is directed towards resolving disputes concerning allegations of abuse of domain name registration and use , i.e.: when a domain name is registered and used in bad in bad faith. The Panel will therefore decide the case based on the Policy.

The Policy identifies three concurrent elements that if proven by the complainant establish abuse of domain name registration and use, and apply to the case in hand as follows.

C. Identical or Confusingly Similar

The Complainant has established rights in the trademarks listed under paragraph 4 above, by submitting evidence of International and Community registrations of the trademarks FIAT and FIAT GROUP. Moreover, the Panel deems that the Complainant has also proved that the Complainant’s name and registered trademarks have acquired, over the years, a worldwide reputation.

The Panel finds that the Domain Name is confusingly similar to the Complainant’s registered trademarks as the Domain Name incorporates the Complainant’s registered trademarks entirely and, in line with previous WIPO UDRP decisions, the deletion of spaces between the words “fiat” and “group” is insufficient to differentiate the Domain Name from the Complainant’s registered trademarks. Furthermore, the Panel finds that the addition of the generic word “automobiles” not only is insufficient to differentiate the Domain Name from the Complainant’s registered trademarks, but may actually strengthen the likelihood of confusion as it refers to the Complainant’s core business and, nowadays, also to the current name of the Complainant (VoiceStream Wireless Corporation v. Salem Zeto, d/b/a/ Pacific Wireless Communications, d/b/a/ prepaidcellularwide.com, WIPO Case No. D2002-0313; Sanofi-aventis v. John Adams, WIPO Case No. D2006-0688; F. Hoffmann-La Roche AG v. Cheaptamiflu.net, WIPO Case No. D2005-1256; Ralph Maltby Enterprises, Inc. v. Women With Balls (W.W.B. Accessories), WIPO Case No. D2004-0917; Microsoft Corporation v. 3D Roulette, WIPO Case No. D2004-0232; Sanofi-Aventis v. Direct Response Marketing aka DRM, WIPO Case No. D2005-0661; Viacom International Inc. v. Frank F. Jackson and Nancy Miller, WIPO Case No. D2003-0755).

Finally, as opposed to what is stated by the Respondent, it is by now well established that the suffix “.com”, being just a generic top level domain, is not to be considered in assessing confusing similarity (Kuraray Co., Ltd. v. Hideo Hayashi, WIPO Case No. D2007-1929; X-Copper Legal Services Inc. v. Majid Hashemi, WIPO Case No. D2007-0251; Plan.Net concept Spezialagentur fr interactive Kommunikation GmbH v. Murat Yikilmaz, Case No. D2006-0082; Rollerblade Inc. v. Chris McReady, WIPO Case No. D2000-0429).

Consequently, the Panel finds that the Complainant has met the requirement of paragraph 4(a)(i) of the Policy.

D. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out in particular but without limitation three circumstances which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii), namely:

(i) before any notice of the dispute to the Respondent, the Respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel finds that the Respondent lacks any rights or legitimate interest in the Domain Name by plain admission of the same.

As a matter of fact, the Respondent did not argue nor submit any evidence in support of its alleged rights or legitimate interests in the Domain Name according to the above mentioned three points. To the contrary, the Respondent admitted to have registered the Domain Name for the purpose of reselling it to any interested third parties.

Consequently, the Panel deems that the Respondent has no rights or legitimate interests in the Domain Names under paragraph 4(a)(ii) of the Policy.

E. Registered and Used in Bad Faith

It is a consensus view among WIPO decisions that the transfer or acquisition of a domain name (as opposed to a mere renewal) amounts to a new registration.

The Respondent alleges to have registered the Domain Name in good-faith as it purchased it before the Complainant’s use of the name “Fiat Group Automobiles S.P.A.” and, also, before such a name was registered as a trademark.

As discussed under paragraph C above, the Panel concluded that the Complainant has established trademark rights in the marks FIAT and FIAT GROUP, both of which were registered before the Respondent initially registered the Domain Name in January 2007 and that such trade names and trademarks have acquired reputation in Italy and worldwide before the Domain Nam registration by the Respondent.

Therefore, the Respondent was well aware of the Complainant and the Complainant’s trademark rights at the time it registered the Domain Name, and such conclusion is supported by the arguments contained in the Response.

Consequently, the Panel finds that the Domain Name was actually registered in bad faith. It is clear that bad faith registration can occur when, like in the present case, a portion of the domain name is a registered trademark even though the domain name as a whole has not yet been registered as a trademark. In addition, as shown by annex 5 to the Complaint, in the case in hand the impending change of the Complainant’s name into “Fiat Group Automibles S.p.a.” was widely publicized and the Respondent registered the Domain Name on January 24, 2007 just after the press release/articles announcing such change effective as of February 1, 2007 (annex 5 to the Complaint). Therefore in the Panel’s view the Respondent had knowledge that a further trademark right would soon arise through use or registration of the new Complainant’s name and intended to take advantage of such rights.

Moreover, the Respondent alleges not to have acted in bad faith as it did not use, nor had the intention to use, the Domain Name since it registered the Domain Name for the purpose of selling it, as the Respondent actually attempted to do (albeit in response to the Complainant’s initial offer) with the Complainant for the such of €10,000. Under paragraph 4(b) (i) of the Policy such a circumstance may constitute evidence (and is any event consistent with the above finding) of bad faith use and registration.

In addition, in line with various previous WIPO decisions, the Panel notes that passive holding may in certain instances amount to a bad-faith use of a domain name under the Policy taking into consideration all the circumstances of the case (Telstra Corporation Ltd. v Nuclear Marshmallows, WIPO Case No. D2000-0003).

In the case at hand, the Panel, in accordance with the Policy paragraph 4(b)(i), deems that the Domain Name was registered and is being used by the Respondent in bad faith in light of the following circumstances:

(i) the Respondent registered the Domain Name, as stated in the Response, for the purpose of reselling it to any interested party, and

(ii) the Respondent actually offered the Domain Name for sale to the Complainant at the price of €10,000.00, which is on the face of it in excess of the out-of-pocket expenses directly related to the Domain Name as pointed out in the Respondent’s letter to the Complainant of October 11, 2007 (Bencom SRL v. NetCorporation, WIPO Case No. DRO2006-0007; LACER S.A. v. Constanti Gmez Marzo, WIPO Case No. D2001-0177; Hipercor, S.A. v. Miguel Angel Gonzlez, WIPO Case No. D2000-0045).

(iii) the Complainant’s FIAT mark is well-known;

(iv) the Panel finds it difficult to conceive of any use of this disputed Domain Name by the Respondent that could not be illegimate.

Finally, also the fact that the Domain Name is parked in a website which through “Sponsored Links” refers to some of the Complainant’s direct competitors’ products has been considered by prior WIPO decisions as an indication of bad faith use of a domain name (Members Equity PTY Limited v. Unasi Management Inc., WIPO Case No. D2005-0383; Media West-CPI, Inc., Media West-DMR, Inc., Media West-GMP, Inc., Media West-GSI, Inc., Media West-PNI, Inc., Media West-PNJ, Inc., Media West-SJC, Inc., Media West-NPP, Inc., Cape Publications, Inc., Des Moines Register and Tribune Co., Gannett Satellite Information Network, Inc., Multimedia Holdings Corp., Phoenix Newspapers, Inc., Gannett Co., Inc. v. Unasi, Inc., WIPO Case No. D2005-1336; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556).

In the light of all the above, the Panel finds that the element of bad faith according to paragraph 4(a)(iii) of the Policy has been met.

 

7. Decision

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, <fiatgroupautomobiles.com>, be transferred to the Complainant.


Anna Carabelli
Sole Panelist

Dated: February 26, 2008