The Complainant is BolognaFiere S.p.A of Bologna Italy, represented by Dr. Modiano & Associati S.p.A, Italy.
The Respondent is Domainproxyagent.com/Compsys Domain Solutions Private Limited of Wellington, New Zealand/ Maharashtra, India.
The disputed domain name <cosmoprofbologna.com> is registered with Lead Networks Domains Pvt. Ltd (Lead Networks).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2009. On March 25, 2009, the Center transmitted by email to Lead Networks a request for registrar verification in connection with the domain name at issue and a subsequent reminder was sent on March 27, 2009 as no response had been received.
On 31 March 2009, Lead Networks transmitted by email to the Center its verification response advising that it had not received a copy of the Complaint, confirmed that the domain name in dispute was registered with Lead Networks and identified the registrant, administrative contact, technical contact and billing contact as Compsys Domain Solutions Private Limited.
Since the domain name was due to expire on April 1, 2009, the Center advised Lead Networks that since the domain name is currently the subject of an administrative proceeding, Paragraph 220.127.116.11. of the ICANN Expired Domain Deletion Policy would appear to apply. It provides, inter alia, that “In the event that a domain name which is the subject of a UDRP dispute is deleted or expires during the course of the dispute, the Complainant in the UDRP dispute will have the option to renew or restore the name under the same commercial terms as the registrant”.
The Center sought confirmation from Lead Networks whether any action is required by either party (the Respondent, or the Complainant in the event that the domain name is deleted or expires during the dispute) to keep the domain name under Registrar lock so that the administrative proceeding can continue as required under the Uniform Domain Name Dispute Resolution Policy (“UDRP”) or (“Policy”).
On March 31, 2009, Lead Networks advised by email that the Complainant or the Respondent “has to pay [Lead Networks] for the domain renewal” and the Center confirmed that it would advise the parties accordingly.
On March 31, 2009, the Center brought the communication from Lead Networks to the attention of the Parties.
On March 31, 2009, the Center advised the Complainant that the Registrar had identified the registrant for the disputed domain name as Compsys Domain Solutions Private Limited and invited the Complainant to file an amendment to the Complaint by April 5, 2009.
On April 1, 2009, the Complainant confirmed to the Center and Lead Networks that it would be willing to pay the renewal fees in the event that the domain name is deleted or expires during the dispute. In addition, the Complainant reminded the Registrar of its obligations under ICANN's Expired Domain Deletion Policy to place the domain name under lock status until the UDRP proceedings are concluded.
On April 2, 2009, the Center noted that the expiry date of the domain name appeared to be April 1, 2010 and requested that the Registrar confirm to the Center and the parties whether or not the renewal of the disputed domain name has in fact occurred, that if necessary, one of the parties has paid to the registrar any required renewal fee, that the domain name is active and has been locked and that it will remain so pending the outcome of the current proceedings. The Complainant again confirmed to Lead Networks that it is willing to pay the renewal fees and requested information on how to effect payment.
The Complainant filed an amendment to the Complaint on April 2, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the 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 April 3, 2009.
The Respondent did not file a Response within the deadline indicated in the Notification of Complaint and Commencement of Administrative Proceeding and the Center issued the Notification of Respondent Default to the Respondent on April 24, 2009.
The Center appointed Linda Chang as a sole panelist in this matter on May 7, 2009. 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 Complainant is BolognaFiere S.p.A, a company incorporated in Italy and having its principal place of business in Bologna, Italy. BolognaFiere is one of Europe's leading exhibition centers and every year it plays host to 30 specialist exhibitions including 22 world leading events, plus 500 conferences, over 23,000 exhibitors and 1,400,000 Italian and foreign visiting professionals.
The BolognaFiere group, which organises 65 events in Bologna, Modena, and Ferrara plus overseas exhibitions, heads up Fair System S.p.A International Exhibition Services, organiser of specialist events, agreements and joint ventures around the world. BolognaCongressi, operates the modern Palazzo dei Congressi conference center and the city's prestigious conference venues, Modena Fiere and Ferrara Fiere. The latest group company is BolognaFiere Web which handles Internet projects and acts as a one-stop shop for professionals and third parties.
Due to the significant number of exhibitors and visitors that attend events/exhibitions organised by BolognaFiere the awareness of the Complainant, its activities and trade marks are widespread.
The Respondent is Domainproxyagent.com/Compsys Domain Solutions Private Limited. Since it has not participated in the proceeding, there is no information about it.
The Complainant contends that as one of Europe's leading exhibition organisers the knowledge of its activities and trade marks is widespread and as a result its trade mark COSMOPROF is well-known in Italy and abroad. Also considering that it has used its trade mark extensively since December 1967, it has continually developed the goodwill and repute of the trade mark making it a valuable and important asset of the company.
The COSMOPROF trade mark has been applied for and registered as trade mark by the Complainant. In Italy the first filing dates back to October 24, 1985 and in the United States the first filing dates back to March 6 1995. Furthermore, the Complainant is the owner of national, international and community registered trade marks for the name COSMOPROF. Detailed information on the trade mark has been provided as evidence by the Complainant.
The Complainant operates various websites including, among others “www.cosmoprof.it”, “www.cosmoprof.com” and “www.cosmoprofcosmetica.com.br”. The Complainant has provided evidence in support of its turnover and data related to advertising disbursement and expositions.
The Complainant contends that the Respondent is using an identical sign as part of the domain name <cosmoprobologna.com>. The Complainant contends that the disputed domain name is identical to its COSMOPROF mark as it is a well accepted principle that when comparing domain names with trade marks, the top level domain name elements of the domain name and the inclusion of generic, descriptive and/or geographical terms have no distinguishing capability and may be disregarded when considering whether the domain name is identical or confusingly similar to the trade mark. The Complainant refers to various WIPO UDRP decisions supporting its assertions.
The Complainant states that as far as it knows and based on information collected from the Internet there is no evidence that the Respondent has trade marks or company activities under the brand. In addition, the Complainant declares that no agreement, authorisations or licenses have been granted to the Respondent to use the COSMOPROF trade mark and/or any variation of the same. The Complainant therefore claims that the Respondent has no rights or legitimate interests in respect of the domain name, the subject of the present Complaint according to the aspects mentioned within the Policy paragraphs 4(b) and 4(c).
The Complainant has provided evidence of its company information published via the Internet through its official web sites “www.bolognafiere.it” and “www.cosmoprof.it”. It has also provided evidence showing that it has registered a number of country code and generic domain names corresponding to its trade marks. The Complainant's intention is to protect its intellectual property rights and has its own trade mark and domain surveillance services. Due to this service it was made aware of the registration of the domain name <cosmoprofbologna.com> by the Respondent. Evidence submitted by the Complainant shows the domain name was registered on April 1, 2008 by Domainproxyagent.com.
The Complainant contends that in addition, the Respondent has registered further domain names, some of them containing, corresponding and/or confusingly similar to other renowned trade marks such as <youtube96.com>, <rolextoyou.com>, <cnnworldsport.com>, <bankofame4rica.com>, <thesimpsonsjuegos.com>, <encartaencyclopidia.com>, <abercrombil.com> and <disneichaner.com> and provides evidence in support of these claims.
The Respondent does not appear to have registered the trade mark “COSMOPROFBOLOGNA.COM” and has never been known under that name. The Complainant contends that all the above points shows the lack of legitimate use of the domain name <cosmoprofbologna.com> and this infers that the Respondent has no rights or legitimate interests in the domain name.
Therefore, even if what the Respondent has done (or not done) were considered as use of the domain name, this would not constitute any Respondent's rights on the domain name <cosmoprofbologna.com>, since the use must be a bona fide use and the Complainant contends that this is not the case as shown.
The Complainant contends that there are reasons to believe that the Respondent knew of the Complainant's activity and trade mark when registering the disputed domain name. This belief is supported by the following facts: a) the COSMOPROF trademarks are renowned marks; b) the Respondent has registered many other domain names corresponding and/or confusingly similar to third parties trade marks, thus it appears that the Respondent purposely chose to select and register domain names corresponding to registered trade marks; c) some of the sponsored links published on the website “www.cosmoprofbologna.com” clearly refer to the Complainants competitors as shown in the evidence provided; d) by fully incorporating the COSMOPROF mark into the domain name, the Respondent is in all likelihood trying to divert Internet users looking for the Complainant's website and particularly for COSMOPROF in Bologna where the Complainant has its main place of business; and e) the Complainant has published its company information through its official websites for a number of years. Therefore, it is highly unlikely that the Respondent registered the disputed domain name without knowledge of the COSMOPROF trade mark and the Complainant refers to earlier WIPO UDRP cases supporting its assertions; f) considering the Respondents activity of registering domain names and it appears from the evidence provided by the Complainant (domaintools) the Respondent has registered approximately 8,000 domain names, the Respondent should have checked the existence of third parties rights in the COSMOPROF name as pointed out in earlier WIPO UDRP decisions.
The Complainant contends that the evidence provided shows that even though the Respondent had knowledge of the Complainant, its trade mark and its business activities, it proceeded to register the disputed domain name and this evidences bad faith on the part of the Respondent. Actual knowledge of the Complainant's rights in the trade mark is a fact that has been repeatedly considered in the previous WIPO UDRP decision as supporting bad faith.
The Complainant contends that whether the domain name was registered primarily for the purpose of disrupting the business of a competitor, it is confirmed that the Complainant is being hindered and penalised by the use of the disputed domain name which is misleading Internet users and creating a likelihood of confusion with the Complainant's trade mark and domain names. As regard to the use of the domain name to attract Internet users by creating a likelihood of confusion with the Complainant itself, it is confirmed that the Respondent has never received any authorisation to sell products or provide services under the Complainant's trade mark in any form.
The Complainant wishes to evidence that the Respondent has already been recognised as having registered and used another domain name in bad faith. This Respondent has been involved in other WIPO UDRP administrative proceedings, in particular, Société Air France v. Compsys Domain Solutions Private Limited.com / Domainproxyagent.com, WIPO Case No. D2008-1212.
The above, together with the large number of domain names registered by the Respondent, infers a pattern of conduct, in fact the Respondent appears to be engaged in the registration of a series of third party trade marks.
It has been held previously that this type of behaviour evidences bad faith registration and use pursuant to Policy 4(b)(ii). It has in fact been decided that the fact that the Respondent has been involved in a large number of cases under the UDRP proves that the Respondent's use and registration of the disputed domain name fall within the concept of bad faith.
The Complainant contends that is has provided sufficient evidence to show that the Respondent is engaged in a pattern of cybersquatting conduct giving rise to bad faith registration and use of the domain name <cosmoprofbologna.com>.
The Complainant contends that the use of its entire mark in the disputed domain name makes it difficult to infer a legitimate use of the domain name by the Respondent. No plausible explanation exists as to why the Respondent selected the name <cosmoprofbologna.com> as a domain name, other than to trade on the goodwill of the Complainant's renowned trade mark COSMOPROF.
The Complainant contends that it appears that the use of the domain name by the Respondent is merely to direct Internet users to a webpage on which several sponsored hyperlinks are displayed. By clicking on these hyperlinks, users are directed to third parties websites. By deflecting users, the Respondent has shown bad faith use of the domain name that clearly falls within the example given in paragraph 4(b)(iv) of the Policy.
The Complainant contends that its trade marks are renowned trade marks. Therefore, the fact that the Respondent, though having knowledge of the Complainant and its trade marks still proceeded to register the disputed domain name show the Respondents bad faith.
The Complainant contends that this amounts to unambiguous evidence of registration and use of a domain name in bad faith within the meaning of paragraph 4 of the Policy.
As a result, the Complainant contends that the Respondent registered the domain name with knowledge of the Complainant's registered trade marks and has used the domain name in bad faith under paragraph 4(b)(iv) of the Policy in an attempt to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on its website or location.
Following the notification by the Center that the Registrar confirmed that the domain name is actually owned by Compsys Domain Solutions Private Limited, the Complainant filed an amendment to the complaint requesting that Compsys Domain Solutions Private Limited be added to Domainproxyagent.com as the registrant and therefore as the Respondent in the present case.
The Complainant request that the Panel should consider the assertions made by the Complainant in the Complaint as referred to the actual Respondents, i.e., Compsys Domain Solutions Private Limited/Domainproxyagent.com.
The Complainant evidences the fact that on November 14, 2008 in response to the Complainants representative's request to disclose the registrant's name and references, PrivacyProtect.org stated that: “<<the domain name cosmoprofbologna.com has not availed the Privacy Protect Service>>” and thus indicated Domainproxyagent.com as the current registrant.
The Complainant is therefore of the opinion that Domainproxyagent.com was the actual registrant when the Complaint was filed as shown in the evidence provided.
The Complainant contends that, either Domainproxyagent.com transferred the disputed domain name to Compsys Domain Solutions Private Limited immediately after receiving the Complaint and before the domain name could be locked (thus attempting to perform the renowned cyber-flight expedient), or Compsys Domain Solutions Private Limited and Domainproxyagent.com are the same entity.
The Complainant further wishes to assert that if it is the first scenario that occurred, then this would mean that the Registrar has allowed the Respondent to act in breach of paragraph 8(a) of the Policy which is further explained in Western Union Holdings, Inc. v. Private Whois Escrow Domains Private Limited / COMDOT INTERNET SERVICES PVT. LTD., LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, PLUTO DOMAIN SERVICES PRIVATE LTD., COMPSYS DOMAIN SOLUTIONS PRIVATE LIMITED, WIPO Case No. D2008-1675.
However, in support of the second option expressed, namely that Domainproxyagent.com and Compsys Domain Solutions Private Limited are the same entity, the Complainant contends as follows:
- The Domainproxyagent.com mail address and telephone number recorded on the WhoIs of the disputed domain name appear incorrect. The Complainant has been informed by the DHL courier that attempts to deliver the hardcopy of the Complaint as well as to contact the Respondent at the given phone number failed. As such, the fact that Domainproxyagent.com indicated a false address in New Zealand while Compsys Domain Solutions Private Limited alleged address is in India, appears to be another way to deceive and disguise the Respondent's true address;
- It is clear from the Western Union Case, supra, that the Respondent uses different names to disguise the fact that the domain names are controlled by the same entity;
- The contents now appearing on the website “www.cosmoprofbologna.com” are the same as those appearing when the Complaint was filed and the WhoIs report showed the name of Domainproxyagent.com. This is further inference of at least an existing close connection between the two entities;
- In addition both parties have been considered as the same entity/Respondent in Société Air France, supra and HM Publishers Holdings Ltd v. Domainproxyagent.com / Compsys Domain Solutions Private Limited, WIPO Case No. D2008-1620;
- According to these decisions, it would appear that the Respondent failed to file a response to the Complainant's claims and/or to deny in any way that there was a connection between Compsys Domain Solutions Private Limited and Domainproxyagent.com.
In addition to the claims contained in the Complaint, the Complainant further evidences that the Respondent has already been recognised as having registered and used other domain names in bad faith. This Respondent has in fact been involved in at least the following UDRP proceedings: HM Publishers, supra; Société Air France, supra; Deutsche Telekom AG v. Compsys Domain Solutions Private Limited, WIPO Case No. D2009-0058; Western Union, supra and Myxer Inc. v. Compsys Domain Solutions Private Limited, WIPO Case No. D2008-1178.
The Complainant contends that the evidence provided demonstrates that the Respondent has been engaged in a pattern of cybersquatting conduct giving rise to bad faith registration and use of the domain name <cosmoprofbologna.com>.
The Respondent did not reply to the Complainant's contentions
Paragraph 4(a) of the Policy requires the Complainant to prove all of the following in order for its contentions to be supported in the proceedings:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainants has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant is the registered owner of the trade mark COSMOPROF in numerous jurisdictions. Compared to the trade mark name, the domain name <cosmoprofbologna.com> completely reproduces the former with the only difference being the mere addition of the “Bologna” and the generic top-level term “.com”. However, neither of these two terms is sufficient to differentiate the domain name from the trade mark name. Instead, the addition of the city name “Bologna” is simply more likely to mislead Internet users into believing that the sites linked to the domain name are the official sites of the Complainant's in Bologna or in some way associated with the Complainant, when in fact this is not the case.
The domain name is therefore confusingly similar to the Complainants trade mark and the Panel is satisfied that the Complaint has met the requirements of paragraph 4(a)(i) of the Policy.
The Complainant has made a prima facie showing of the Respondent's lack of rights or legitimate interest in the disputed domain name. The Respondent appears not to be known by the disputed domain name nor is authorised to use the trade mark in any manner. Therefore, the burden shifts to the Respondent to prove otherwise. However, the Respondent has not responded to the Complainant's claims.
The Panel can only make its decision based on the information and evidence submitted before it and given the circumstances believes the Respondent does not have rights or legitimate interest in the domain name.
The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.
The files on record have shown that:
- the Complainant is a leading player in the field of exhibition organisation and is well known in its field;
- The Complainant's trade mark COSMOPROF is not an existing word, but a distinctive trade mark;
- The Complainant's trade mark COSMOPROF is extensively registered and used and due to the significant number of exhibitors and visitors that attend events/exhibitions organised by the Complainant it has obtained a reputation in the exhibition industry;
- The Respondent did not respond to the Complainants contentions;
- The Respondent has registered many other domain names corresponding and/or confusingly similar to other third parties trade marks, thus it would appear that the Respondent purposely chose to select and register domain names corresponding to registered trade marks;
- The Respondent has already been recognised as having registered and used another domain name in bad faith – Société Air France, supra;
- Both parties are considered as the same entity/Respondent and have tried to use different names to disguise the fact that the domain name is controlled by the same entity;
- The domain name has been linked to a website with listings of sponsored links and most of the links direct web visitors to competitor websites.
These circumstances lead the Panel to conclude that the Respondent's use and registration of the domain name fall within the circumstances of bad faith registration and use of domain names, as provided in paragraph 4(b).
The Panel is satisfied that the Complaint has met the requirements of paragraph 4(a)(iii).
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 <cosmoprofbologna.com> be transferred to the Complainant.
Dated: May 28, 2009