WIPO Arbitration and Mediation Center


Ferrari S.p.A v. Jim Paulos

Case No. D2008-1090

1. The Parties

The Complainant is Ferrari S.p.A, Modena, Italy, represented by Studio Barbero, Italy.

The Respondent is Jim Paulos, Irvine, United States of America.

2. The Domain Names and Registrar

The disputed domain names <ferraricaliforniagt.com> and <ferrarigtcalifornia.com> are registered with Schlund + Partner AG.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2008. On July 21, 2008, the Center transmitted by email to Schlund + Partner AG a request for registrar verification in connection with the disputed domain names. On July 22, 2008, Schlund + Partner AG 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 July 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 18, 2008.

On August 22, 2008, the Complainant requested a suspension of the proceedings, in view of pending negotiations of a settlement agreement, proposed by the Respondent, which was granted by the Center. On September 22, 2008, an extended suspension was requested and granted. A further extension was requested and granted on October 22, 2008. Since no settlement could be reached within the period of time granted by the Center, the Complainant requested to re-institute the proceedings on November 10, 2008, and on November 11, 2008 the proceedings were re-instituted.

The Center appointed Gerd F. Kunze as the sole panelist in this matter on November 14, 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.

4. Factual Background

The Complainant is a famous maker of sport cars and luxury cars. It is the owner of many trademark registrations all over the world consisting of or including the word “Ferrari”. In the context of the present case the following registrations are of particular interest, for which the Complainant submitted registration certificates:

International registration 912648 FERRARI GT CALIFORNIA, dated December 1, 2006, in classes 12 and 28 (extending its protection to the United States);

US registration 874164 FERRARI (Logotype), dated August 5, 1969 for automobiles and parts thereof in class 12;

International registration 338985 FERRARI (Logotype), dated October 23, 1967 for automobiles and parts thereof in class 12;

Community Trade Mark registration 1616473 FERRARI (word), dated January 30, 1997, in classes 3,6,9,14,16,18,24,25,28 and 41.

In order to promote the trademark FERRARI also on the Internet, the Complainant has registered a great number of domain names consisting of or including the word “Ferrari”, such as <ferrari.it>, <ferrari.us> and <ferraricalifornia.com>.

Recently the Complainant launched a new Gran Turismo (GT) car under the name “Ferrari California”. The car had its world premiere on September 18, 2008 in Maranello, Italy and in Los Angeles, United States, and was presented to the general public in October 2008 at the Paris motor show. The car is also shown on line at “www.ferraricalifornia.com”.

The Respondent registered the domain names <ferrarigtcalifornia.com> and <ferraricaliforniagt.com> on October 6, 2007. As of the date this Decision is rendered, the Respondent has not established corresponding websites under these domain names, other than a logo and what appears to be the Respondent's e-mail address.

5. Parties' Contentions

A. Complainant

The Complainant submits that the trademark FERRARI is an internationally well-known trademark, registered and used worldwide for automobiles, but also for a good number of other merchandise, such as watches, apparel, computers, toys, bicycles, shoes, sold both is so-called flagship stores in several cities in Italy, but also in Las Vegas, Los Angeles, Miami and other cities all over the world, and in other selected shops worldwide.

The Complainant furthermore submits that, when it became aware of the Respondent's domain names, they were redirected to the Respondent's personal website at “www.jimpaulos.com”. In the meantime the direct reference to the Respondent is deleted, instead the domain names are redirected to the website “www.22interactive.com”, indicating the email address […]@22interactive.com. The domain name <22interactive.com> is owned by the Respondent.

Within an exchange of contacts between the Respondent and an Italian web designer company which was exploring the possibility to acquire the disputed domain names in order to present its web-based services to the Complainant on such Domain names, the Respondent indicated that he would consider entertaining any serious offers. However the subsequent offer of a total of US$ 400/500 – corresponding to the out of pocket costs for both disputed domain names – was expressly refused by the Respondent, who proposed that the disputed domain names could be available to the Complainant directly.

Subsequently, on April 4, 2008, the Complainant itself contacted the Respondent, asking for clarification of his position. The Respondent answered on April 5, 2008: “…if Ferrari has any direct interest in these domain names, please feel free to let me know”. On April 7, 2008, the Complainant replied: “…I would appreciate if you could let me know, how and when do you wish to arrange for the transfer of ferrarigtcalifornia.com and ferraricaliforniagt.com” The Respondent answered: “…please let me know, what type of compensation and benefit Ferrari is willing to offer for the use of this domain.” The Complainant insisted on April 8, 2008: “…please let me know exactly what you wish to receive for the transfer of the domain names”. Much to the surprise of the Complainant, the Respondent replied on April 9, 2008: “…Obviously there is some value to the domains and it is difficult for me to assign a dollar value or a benefit value, but I will try to put something forth for the purpose of conversation.

1) Dollar value - $20,000 USD

2) Benefit – Right to purchase 430 Scuderia at MSRP prior to December 2008”.

When the Complainant received this request, it instructed its authorised representative, who on April 9, 2008, sent to the Respondent a cease and desist letter, requesting the Respondent to immediately cease any use of the domain names and to immediately transfer them to the Complainant. After a short exchange of correspondence, the authorised representative of the Respondent on May 12, 2008, reiterated the settlement proposal of the Respondent. In a last communication of the Complainant's representative of May 26, 2008, he advised the Respondent's representative that the Complainant would now proceed with all the actions deemed appropriate to protect its intellectual property rights in any venue deemed appropriate. The Respondent's representative replied on May 28, 2008, reducing the amount of the consideration requested to $5,000 USD.

Also the new consideration of $5,000 USD was considered far in excess of the out of pocket expenses for registering the disputed domain names. Furthermore, the Complainant had discovered that between April 9 and April 19, 2008 the Respondent had registered 8 new domain names, comprising the trademark FERRARI of the Complainant. The Complainant therefore decided to file the present Complaint.

The Complainant submitted appropriate evidence for these contentions.

The Complainant submits that (A) the domain names <ferrarigtcalifornia.com> and <ferraricaliforniagt.com> are identical respectively confusingly similar to its trademarks FERRARI GT CALIFORNIA and FERRARI in which it has rights; (B) the Respondent has no rights or legitimate interests in respect of the domain names; (C) the domain names were registered and are being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant's contentions. He has therefore not contested the allegations of the Complaint and the Panel shall decide on the basis of the Complaints' submissions, and all inferences that can reasonably be drawn there from (Rules, paragraph 14(b)).

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name <ferrarigtcalifornia.com> is for the purpose of the Policy identical to FERRARI GT CALIFORNIA, a trademark in which the Complainant has rights (the gtld .com cannot be taken into consideration when judging identity or confusing similarity). The disputed domain name <ferraricaliforniagt> consists of the same three syllabi FERRARI, GT (being a common abbreviation of GRAN TURISMO) and CALIFORNIA, of which the trademark FERRARI GT CALOFORNIA of the Complainant consists. Simply the two last syllabi are conversed. This cannot exclude confusing similarity.

Both disputed domain names are also confusingly similar to the trademark FERRARI in which the Complainant has rights. Both domain names contain the trademark FERRARI in its entirety. The addition of the generic term GT and of the geographical term “California” cannot exclude confusing similarity. In view of the well-known character of the trademark FERRARI the domain names give the impression that they lead to an official site of the Complainant and that its registration and use is authorised by the Complainant. Internet users, who are interested in information about the new Gran Turismo (GT) car Ferrari California, will expect to find such information on the sites corresponding to the two domain names. Instead they are linked to a website of the Respondent.

In conclusion the disputed domain names <ferrarigtcalifornia.com> and <ferraricaliforniagt.com> are identical respectively confusingly similar to trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

Ferrari is not a descriptive term, in which the Respondent might have a legitimate user-interest. It is a well-known trademark of the Complainant. The Respondent has no connection or affiliation with the Complainant, who has not consented to the Respondent's use of the domain names.

Furthermore, none of the circumstances listed under paragraph 4(c) of the Policy, possibly demonstrating rights or legitimate interests of the Respondent, are given. The Respondent does not use the domain names for his own legitimate commercial or non-commercial activities, if any (as of the day this Decision is rendered, the Respondent only links the disputed domain names to another website registered in his name), and he has not demonstrated any preparations for such use. Finally, for the same reason that the Respondent does not promote his own commercial activities with the help of these domain names, the Respondent has not been able to become known under them. Furthermore the Respondent has made no submission establishing rights or legitimate interests in the course of these proceedings.

The Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain names.

C. Registered and Used in Bad Faith

For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith. As an example the Policy mentions in paragraph 4(b)(i) registration or acquisition of the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the mark or to a competitor for valuable consideration in excess of his documented out-of pocket costs directly related to the domain name. A strong indication of this intent may be provided where a Respondent has attempted to sell the domain name for a sum in excess of the Respondent's out of pocket expenses in registering or acquiring the domain name. The Panel is satisfied that this is the case under the present circumstances.

As evidenced by the Complainant, the Respondent requested on April 9, 2008, for the transfer of the disputed domain names <ferrarigtcalifornia.com> and <ferraricaliforniagt.com> an amount of $20,000 USD, and his legal representative later repeated this request (as described in detail in part 5A of the Decision). This amount is clearly in excess of the Respondent's out of pocket expenses directly related to the two disputed domain names. Whilst the legal representative of the Respondent subsequently reduced the amount requested to $5,000 USD (as evidenced above 5A), this amount is still clearly in excess of the Respondent's out of pocket expenses.

The Respondent has not contested his intention to sell the disputed domain names to the Complainant for the amounts indicated.

As evidenced by the Complainant (see part 5A of the Decision), between April 9 and April 19, 2008, immediately after he had requested $20,000 USD, the Respondent had registered 8 new domain names, comprising the trademark FERRARI of the Complainant. This is a further strong indication that the Respondent registered the disputed domain names <ferrarigtcalifornia.com> and <ferraricaliforniagt.com> for the purpose of selling the domain names for valuable consideration in excess of his out of pocket expenses.

The Panel takes also into account that at the time of registration the Respondent no doubt was aware of the development of the new Ferrari California Gran Turismo (GT) car. Otherwise he would not have registered two domain names consisting of the name of this new car and the term GT.

Considering all these circumstances, and in the absence of any submission of the Respondent, according to paragraph 4(b)(i), of the Policy, the Panel is satisfied that the Respondent registered and uses the disputed domain names in bad faith.

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 names, <ferrarigtcalifornia.com> and <ferraricaliforniagt.com> be transferred to the Complainant.

Gerd F. Kunze
Sole Panelist

Dated: November 28, 2008