The Complainant is Fiat Auto S.p.A., Torino, Italy, represented by Studio Legale Jacobacci e Associati, Italy.
The Respondent is Abarth Studio, Santa Ana, California, United States of America.
The disputed domain names <abarth.biz>, <abarth.com>, <abarth.net> and <abarth.org> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2008. On November 13 and 24, 2008 (as the Complainant sought to add a domain name to the Complaint), the Center transmitted by email to GoDaddy.com, Inc., a request for registrar verification in connection with the disputed domain names. On November 14 and 26, 2008, GoDaddy.com, Inc., transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 24, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 26, 2008. 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” or “UDRP”), 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 November 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2008. The Response was filed with the Center on December 15, 2008.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on December 24, 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.
According to the Complainant, Fiat, it manufactures cars. In 1971 it purchased the Italian racing car company known as Abarth, founded by the Austrian-Italian Karl Abarth in 1949. From 1971 ABARTH has been a trademark used for certain cars manufactured by Fiat.
The Complainant is the owner of many ABARTH trademarks including, among others:
Italian trademark registration ABARTH, No. 113442 of May 27, 1953 and subsequent renewals;
United Kingdom trademark registration ABARTH, No. 1213439 of February 24, 1984, and subsequent renewals;
United States trademark registration ABARTH, No. 2899069 of October 1, 2003.
According to the Respondent, he is an individual with an interest in old cars and is a fan of the original Abarth automobiles. In 2001 he purchased a 1968 Abarth 695 SS from Italy and had it shipped to the United States.
The disputed domain names appear to have been acquired by the Respondent on the following dates:
<abarth.com> on May 8, 2002
<abarth.net> on April 18, 2002
<abarth.org> on June 12, 2002
<abarth.biz> on November 8, 2001.
The contentions of the Complainant include the following.
The Respondent's name was initially shielded by Domains by Proxy Inc.
The Complainant is one of the largest car companies in the world and since 1971 has owned Abarth, founded by the Austrian-Italian Karl Abarth in 1949. Some models have evolved into cultural phenomena, developing cult status.
The Complainant says that the disputed domain names <abarth.com>, <abarth.net>, <abarth.biz> and <abarth.org> are confusingly similar and identical to the trademark ABARTH. The Respondent must have been aware of the well-known trademark ABARTH and registration may only have occurred in bad faith. The Complainant cites previous decisions as proposed precedent including Banca Sella s.p.a. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; and Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. There is no evidence of the Respondent's use of, or demonstrable preparations to use, the disputed domain names or a corresponding name in connection with a bona fide offering of goods or services. Respondent only uses the disputed domain names in order to discuss the “restoration and race preparation of a 1968 Fiat Abarth 695 SS”. The Respondent has no connection with Fiat, and has never been authorized to use the disputed domain names. The Respondent claims to operate the Californian Company “Abarth Studio”, of which there is no trace.
The Complainant says that the Respondent's use of the disputed domain names for only a few lines about what he claims is his car does not entitle him to register and keep the disputed domain names or to claim that his use of them is noncommercial or fair. By analogy, any owner of a Gucci bag should be entitled to Gucci domain names.
The Complainant further contends that the disputed domain names are used in bad faith. The meager website is a stratagem to claim “legitimate” use of the Complainant's trademark. The Complainant is thereby blocked from reflecting its trademark in those domain names.
The Complainant requests the transfer to it of the disputed domain names.
The contentions of the Respondent are lengthy and detailed, and include the following.
The Respondent denies claiming to operate a company incorporated under the laws of the State of California known as “Abarth Studio”. His use of the name “Abarth Studio” is administrative for the identification of certain emails. His use of a privacy service was free of charge and incidental. He has been easy to contact and forthcoming in response to inquiries.
His minimal website is nevertheless genuine and he has been busy with matters including family life and preparations for emigration.
The Respondent says that his interest in Abarth cars is genuine. For example, in 2001 he purchased a 1968 Abarth 695 SS in Italy which was later shipped to the United States. He researched the history of the individual car and found records of its racing career, which are submitted in evidence. The Respondent says that in 2004 he located the original owner in Italy and hired a translator to obtain a first hand account of the car's history. The original owner provided the historical photographs on the web page.
The Respondent says his website will contribute reliable information and the correction of disinformation about relevant models. Through it he has already established contact with fellow enthusiasts.
The Respondent cites among domain name decisions: Fiat Group Automobiles Switzerland S.A. & Fiat S.P.A. v. Claudio Mattioli”, WIPO Case No. DCH2007-0020 (denying the transfer of <fiat500.ch> because, among other reasons, the domain was used for informational purposes related to the original Fiat 500 model and no affiliation with Fiat was implied or likely to be construed. Further, since Fiat had waited several years after the registration and use of the relevant disputed domain names to file a dispute, they had essentially forfeited any right to claim the domains).
The Respondent further contends that the disputed domain names have not been registered or used in bad faith. He has never offered to sell, lease, or otherwise use them for profit. The website content is not disparaging to Fiat or the ABARTH brand, nor does it divert business to competitors, nor could it reasonably be confused with any current offering of goods or services. He registered <abarth.biz> at the inception of “.biz”. The other disputed domain names were purchased when they were allowed to lapse by previous registrants. There is nothing sinister in having registered four extensions other than for coverage on the Internet.
Before registration of the disputed domain names the Respondent searched the United States Patent and Trademark Office (USPTO) online and found no ABARTH mark of any kind registered by Fiat and no ABARTH mark related to automobiles. The search revealed only one ABARTH trademark for clothing and accessories.
The Respondent says he was not contacted by the Complainant about the disputed domain names until 2006. At the time of the disputed domain name registrations the ABARTH brand had been moribund for decades, and the Complainant's own evidence demonstrates this with articles stating “Abarth is back”, “Punto Abarth marks the return of the famous brand to Fiat's stable”, “El retorno del escorpión”, and “Wiedergeburt einer Legende” (rebirth of a legend).
The Respondent points out that the Complainant's annexed the Wikipedia entry for ABARTH which begins “Abarth is an Italian racing car maker founded by Italian-Austrian Karl (Carlo) Abarth in Turin in1949”, but that a search of the Wikipedia page history shows that as late as February 2007 it read in the past tense as “Abarth was an Italian racing car maker”. The Respondent submits that Abarth could not return, be reborn, or re-launched had it not been gone in the first place. The Respondent cites Fiat Group Automobiles SpA v. Jacobus Visser, Belgian Center for Mediation and Arbitration (CEPINA) Case No. 44142 (Mr. Visser is a respected Abarth collector and writer; Fiat failed to demonstrate that his registration and use of <abarth.be> was in bad faith).
The Respondent denies the allegation in the Complaint of “opportunistic bad faith”. He says that at the time of registration of the disputed domain names, the Complainant's trademark had lapsed and essentially did not exist, notwithstanding the fact that the ABARTH mark has been revived and is no longer a historical footnote. The Complainant could have secured the disputed domain names, but did not.
The Respondent requests that the Complaint be denied.
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable provider, in compliance with the Rules, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Complainant must prove that it has rights in a trademark and that each disputed domain name is confusingly similar to that trademark. There can be no doubt that this is so in the present case and the matter is not in contention. The Panel finds in favour of the Complainant in the terms of paragraph 4(a)(i) of the Policy.
The Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant asserts that it has no connection with the Respondent and has not allowed or licensed him to use the trademark ABARTH. Furthermore, in anticipation of any Response in the terms of paragraph 4(c) of the Policy, the Complainant implies that any use of the disputed domain names by the Respondent is a token or sham intended to portray a rudiment of bona fide use, and that the said use is commercial and is not fair.
Since a respondent may have a defense that is not known to a complainant, paragraph 4(c) of the Policy outlines circumstances that may constitute rights or legitimate interests in a disputed domain name. The circumstances listed, which are without limitation, are as follows:
(i) before any notice to you of the dispute, your use of, 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial 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.
In the terms of paragraph 4(c)(i), of the Policy, the Respondent's case is that he has made demonstrable preparations to use the disputed domain names since they resolve to a website about Abarth cars and in particular his own car, and that he offers a bona fide service as an information exchange. In the terms of paragraph 4(c)(iii), of the Policy, the Respondent asserts that his use of the disputed domain names is fair, is noncommercial, and does not damage the Complainant.
It is important to weigh the claimed sincerity of the Respondent's explanations against the Complainant's implications that they are merely a veneer of authentic use in order to appropriate the Complainant's trademark.
The evidence satisfies the Panel that the Respondent's enthusiasm for the ABARTH mark is genuine. He bought what is now a 40-year old Abarth car in Italy and paid to have it shipped to the United States. He spent time and money researching the history of his individual car, acquired historical documents relating to it, located the original owner and paid for a translator to interview him. It would stretch credulity to suppose that he did all this as a subterfuge for registering the Complainant's trademark as a domain name. His registration of domain names and setting up of a website are in keeping with his evident enthusiasm, and his possession of the domain name in four variants, a matter with which the Complainant has taken issue, may be taken to reflect a collector's philosophy1.
The Complainant has submitted incontrovertible evidence of its ownership of the trademark ABARTH showing continuity over many years and through the relevant timeframe. The Respondent must have been aware of the trademark and indeed had a special interest in it, but counters that the trademark had in effect lapsed. Although the disputed domain names were registered or acquired in 2001 and 2002, the Complainant did not object until 2006. The Respondent says that he took the reasonable precaution of checking the USPTO for ABARTH and did not find a registration in the relevant class.
It is significant that the Respondent's first registration was for <abarth.biz> because the inception of the “.biz” domain in 2001 was accompanied by a special Start-up Trademark Opposition Policy (STOP) that allowed a trademark owner to challenge a domain name registration. The Complainant does not claim to have moved to protect its trademark in this way when <abarth.biz> was registered.
The Respondent says that the Wikipedia entry now reads “Abarth is an Italian racing car maker.” (Last modified November 11, 2008, according to the screenprint in the Complainant's evidence) but that as recently as February 2007 it read in the past tense: “Abarth was an Italian racing car maker”, the inference being that an alteration has been arranged. Wikipedia is not definitive evidence, but this small point is contributory. On consideration of the totality of the evidence and argument from both the Complainant and the Respondent, the broad picture emerges of the Complainant having neglected the ABARTH trademark for many years until recently, except for routine renewals. The opportunity has existed for the trademark to be incorporated into another's domain name in good faith without intent for exploitation.
As the Respondent points out, there have been comparable disputes under UDRP or similar jurisdictions (to the extent relevant). In Fiat Group Automobiles Switzerland S.A. & Fiat S.P.A. v. Claudio Mattioli, supra, in which the transfer of <fiat500.ch> was denied, the panelist pointed out (loosely translated) that a trademark may give its owner exclusive rights in connection with the marketing of certain goods and services but not necessarily when used for information, provided the public is not misled. The relevant complainant's delay in pursuing its claim was also influential in that particular case.
In Fiat Group Automobiles SpA v. Jacobus Visser, supra, according to a translation from the Flemish provided for the present Respondent, the panelist said:
“In addition, the observation of the domain name holder that on the date of registration of the domain name the mark had not been used for 30 years is not disputed by complainant. On May 22, 2008 the complainant itself indicated that they wanted to re-launch this brand, so it can be inferred that the mark was indeed not used for a long time.
Although the domain name holder knew or should have known that there had been an ABARTH mark, it can not be inferred that the domain name holder in the year 2000, after more than 30 years of disuse of the mark, knew or should have known that by registering the domain name he might commit a violation.”
In summary in the matter of rights or legitimate interests, the Panel finds in the terms of paragraph 4(c)(i) of the Policy that the Respondent has not established a legitimate interest in the disputed domain names because there is no evidence or claim that the corresponding website was set up before notice of the dispute. However in the terms of paragraph 4(c)(iii) of the Policy, the Panel accepts that the Respondent's use of the disputed domain names is noncommercial, fair, and without intent for commercial gain to divert consumers misleadingly or to tarnish the trademark at issue. Accordingly the Panel finds for the Respondent in the terms of paragraph 4(a)(ii) of the Policy.
It is not strictly necessary to proceed further. Briefly, for completeness, the Panel notes that it can find no evidence that the Respondent acquired the disputed domain names primarily for the purpose of selling them for profit, or to block the Complainant from registering them, or to disrupt the Complainant's business, or to divert Internet users from the Complainant for profit. The Respondent is not found to have registered the disputed domain names in bad faith or with abusive intent.
For all the foregoing reasons, the Complaint is denied.
Dr. Clive N.A. Trotman
Dated: January 7, 2009
1 Nevertheless, it is not clear to the Panel why a genuine fan would necessarily have a need for coverage over four separate domains where each domain is itself identical to the mark at issue. However this may be, their registration and present use for what appears to be a genuine fan site is in the circumstances sufficient to convince the Panel of the Respondent's legitimate interest in each. If in the future such use were to take on an exploitative character, and action were to be brought by the Complainant, it would obviously be a matter for review on the record as it then stood.