WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dada S.p.A. v. SL Master
Case No. DMX2008-0002
1. The Parties
The Complainant is Dada S.p.A., Firenze, of Italy, represented by Studio Turini, Italy.
The Respondent is SL Master, San Diego, California, of United States of America.
2. The Domain Name and Registrar
The disputed domain name <dada.com.mx> is registered with NIC-México.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2008. On February 26, 2008, the Center transmitted by email to NIC-México a request for registrar verification in connection with the domain name at issue. On February 27, 2008, NIC-México 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 .MX Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .MX Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .MX Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, articles 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 11, 2008. In accordance with the Rules, article 5, the due date for Response was March 31, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2008.
The Center appointed Martin Michaus Romero as the sole panelist in this matter on April 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, article 9.
Considering that the Complainant requested that this proceeding be conducted in English for the convenience of both Parties, the Panel shall render this decision in English.
4. Factual Background
The Complainant is the owner of several trademarks and domain names which include the word “dada”. As indicated in the Complaint, the word “dada” is registered as a trademark in Italy, Mexico, and as a Community Trademark.
It also appears that the Complainant owns several active domain names, as appears in attachment 4 to the Complaint, particularly <dada.com.mx> which is the subject of this controversy and is still in force.
According to the Mexican trademark registration, attachment number 3 to the Complaint, all trademarks, relevant to this dispute, owned by Dada, S.p.A. were filed on August 2006 and granted in 2006 or 2007.
Some of the relevant Mexican trademark registrations that apply to this case, are as follows: 952076 DADA , 952079 DADA, 952077 DADA, 952078 DADA, 974424 DADA, 952075 DADA, 952074 DADA, 990052 DADA, 977715 DADA, 958078 DADA and Design, 959897 DADA and Design, 955538 DADA and Design, 974423 DADANET, 958079 DADA NET and Design, 985094 DADA NET and Design. Likewise, the Complainant submitted as evidence in attachment number 3 to the Complaint, copies of the DADA Italian registrations as well as a list of 153 domain names that include “dada” or “dada net”. The Complainant also submitted as attachment number 6 to the Complaint, a printout of the web site “www.dada.com.mx”, which indicates that it is for sale on Sedo.
5. Parties’ Contentions
The Complainant states in its Complaint:
a. That it owns several trademark registrations in Mexico, Italy and Community Trademarks, as well as domain names in different parts of the world, involving the word “dada”. The word “dada” is a fanciful name and is not descriptive.
b. That the Respondent has not used the disputed domain name or a name corresponding to the disputed domain name, in connection with a bona fide offering of goods or services. It uses the disputed domain name for a parking web site, with links to other domain names, and hosts, among other things, erotic contents.
c. That the Respondent does not conduct any business under the name “dada”.
d. That the disputed domain name has been registered for the purpose of sale and was offered for an amount of $35,000.00 Euros, as indicated in attachment number 8 to the Complaint.
All the above reveal the Respondent’s intention to attract for commercial purposes, Internet users to the web site to which the disputed domain resolves, with the main purpose being to deceive or confuse third parties by use of the DADA trademark in the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Article 19 of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
As translated, article 1(a) of the Policy states that the Complaint must prove each of the following: “(i) that the domain name registered is identical or confusingly similar to a registered trademark or service mark, commercial notice mark, denomination of origin or reserve of rights in which the complainant has rights; and, (ii) that the Respondent has no rights or legitimate interests in respect to the domain name; and, (iii) that the domain name has been registered or used in bad faith”.
The Panel finds that the disputed domain name violates the Policy due to the following:
A. Identical or Confusingly Similar
The disputed domain name violates article 1(a) (i) of the Policy, as it is identical to the trademarks, as indicated in attachment 4 to the Complaint, in which the Complainant has prior rights. The disputed domain name <dada.com.mx> is identical to the DADA, S.p.A.’s trademark-service mark. Furthermore, consumers may associate the disputed domain name with the Complainant business activities as the domain name fully incorporates the Complainant’s trademark.
B. Rights or Legitimate Interests
The disputed domain name violates article 1(a) (ii) of the Policy, provided that the Respondent has not received permission nor authorization to use the trademark-service mark DADA. The Respondent did not reply to the Complainant’s contentions, and therefore has not provided any evidence or arguments to prove anything to the contrary. In addition, Complainant’s use of the trademark-service mark DADA precedes the registration of the domain names, as the date of creation of the dispute domain name is September 18, 2007, meanwhile the filing date of most of the Mexicana DADA or DADA NET trademark registrations is August 24, 2006. It should be pointed out that the Respondent is an individual, not known or identified as related to any business with the “dada” name, nor does it appear to be engaged in any other legitimate commercial or non commercial use of the domain name.
C. Registered or Used in Bad Faith
According to the statements and documents submitted by the Complainant, this Panel considers that the registration and use of the domain name has been done in bad faith. The Respondent appears to be the owner of other domain names that could infringe others’ trademarks or names. The website “www.dada.com.mx” is for sale in an amount that goes beyond the regular expenses of registration and with the clear purpose to obtain a profit and to trade on the goodwill of the Complainant’s trademarks. The Panel also considers that another indication of bad faith is that the Respondent is not known as an individual or business organization by the disputed domain name. Further, these contentions stand uncontested by the Respondent.
For all the foregoing reasons, in accordance with articles 1(g)(ii) of the Policy and 19 and 20 of the Rules, the Panel orders that the domain name, <dada.com.mx> be transferred to the Complainant.
Martin Michaus Romero
Dated: April 28, 2008