The Complainant is Cartiere Fedrigoni S.p.A. of Verona, Italy, represented by Dr. Modiano & Associati S.p.A., Italy.
The Respondent is JK Plex Pte. Ltd. of Singapore.
The disputed domain name <fabrianoboutiques.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2010. On March 31, 2010, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the disputed domain name. On April 1, 2010, OnlineNic, Inc. d/b/a China-Channel.com 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” 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 April 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 28, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on May 6, 2010.
The Center appointed Dennis A. Foster as the sole panelist in this matter on May 19, 2010. 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 a large and well-established Italian company that markets paper and cardboard products throughout the world. Its primary trademark, FABRIANO, is well-known internationally, and it also owns a Community Trade Mark (“CTM”) registration for the mark FABRIANO BOUTIQUES (Registration No. 6785638; issued April 12, 2008).
The Respondent is the registered owner of the disputed domain name <fabrianoboutiques.com> and the date of registration is June 1, 2009. The disputed domain name is not in active use.
- The Complainant is an Italian company that is a world supplier of paper, cardboard and related products. It is the second leading European company in its field, having recorded some € 523 million in sales in 2005.
- The Complainant states that it has been operating under the famous trademark FABRIANO for centuries. Moreover, in 2000, the Complainant initiated the FABRIANO BOUTIQUE trademark, under which high quality paper products are sold. Finally, the Complainant also obtained a CTM registration for the mark FABRIANO BOUTIQUES in 2008.
- Among the domain names owned by the Complainant is <fabrianoboutique.com>.
- The disputed domain name, <fabrianoboutiques.com> is identical to the Complainant's trademark FABRIANO BOUTIQUES. The name is also confusingly similar to the older mark FABRIANO, since the addition of the generic word “boutiques” is an insufficient distinction.
- There is no agreement, authorization or license between the Complainant and the Respondent to use the Complainant's trademarks. The Respondent has never made a bona fide use of the disputed domain name, but is passively holding it. To the Complainant's knowledge, the Respondent has never been commonly known by the disputed domain name. As a result, the Complainant believes that the Respondent has no rights or legitimate interests in the disputed domain name.
- The disputed domain name was registered and is being used in bad faith. The Complainant's mark, FABRIANO, is world renowned and thus the Respondent undoubtedly had actual knowledge of it before registering the disputed domain name. The Respondent presents itself on its website as a company offering Internet services, and therefore should be well aware that it should not violate trademark rights in registering domain names.
- The Respondent's passive holding of the disputed domain name is evidence of bad faith. Moreover, the Respondent's reply to the cease-and-desist letter sent by the Complainant did not assert any rights to the domain name, but merely stated that the name was registered for the benefit of a third party, which the Complainant states is further evidence of bad faith registration and use.
- There is likelihood of confusion between the disputed domain name and the Complainant's trademarks that will attract Internet users to the domain name, and which will serve to disrupt the Complainant's business.
The Respondent did not reply to the Complainant's contentions.
Pursuant to paragraphs 4(a)(i) – (iii) of the Policy, the Panel will find that the Complainant prevails and is entitled to a transfer of the disputed domain name, <fabrianoboutiques.com>, if the Complainant proves that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith.
Since the Respondent failed to file a Response, the Panel shall deem as true all of the Complainant's reasonable contentions, unless contradicted otherwise in the record. See Randstad General Partner (U.S.), LLC v. Domains For Sale For You, WIPO Case No. D2000-0051 (“Because Respondent has failed to submit an answer to the Complaint in a timely fashion, and because the allegations of the Complaint, taken on their face, engender no substantial doubt, the Panel accepts as true all allegations set forth in the Complaint.”); and Hyatt Corporation v. Sinichi Akiyama, NAF Claim No. 839408 (“In view of Respondent's failure to submit a response, the Panel…is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.”).
Because the evidence (Annex 5 of the Complaint) submitted to the Panel establishes the Complainant's valid CMT trademark registration for the mark, FABRIANO BOUTIQUES, the Panel concludes that the Complainant has rights in that mark as required by Policy paragraph 4(a)(i). See Classmates Online, Inc. v. Maxim Snezko a/k/a Steve Cho, WIPO Case No. D2007-0825 (“The Panel further determines that Complainant has rights in the CLASSMATES marks. These rights are manifested in the U.S. and CTM registrations for the CLASSMATES marks…”); and Pirelli & C. S.p.A. v. Were, LLC, 938180 (“…Complainant has a single CTM registration for the identical trademark ZERO […] The Panel therefore finds that Complainant has established trademark rights in ZERO…”).
The Panel need not analyze whether the disputed domain name <fabrianoboutiques.com> is confusingly similar to the Complainant's older mark, FABRIANO, because the domain name is identical to the Complainant's more recently registered trademark, FABRIANO BOUTIQUES. The only variation between the disputed domain name and the latter mark are the addition of the gTLD “.com” and the omission of a space between the words as found in the mark, both distinctions being irrelevant for purposes of a Policy paragraph 4(a)(i) determination. See The Weir Group PLC v. MIC c/o Domain Management, NAF Claim No. 1036495 (finding <weirspm.com> to be confusingly similar to the complainant's WEIR and SPM marks, and stating, “[t]he addition of the gTLD “.com” is irrelevant, as a top-level domain is a required element of all domain names.”); and Eddy Merckx Rijwielen Cycles NV v. Irfan Khalil, WIPO Case No. D2009-0074 (“The Panel finds that [<eddymerckx.com>] is identical to the Complainant's trade mark EDDY MERCKX. The only difference between the Disputed Domain Name and the Complainant's trade mark is the generic indicator .com and the absence of a space in the Disputed Domain Name, which are to be ignored for purposes of this analysis.”).
Accordingly, the Panel finds that the Complainant has proven that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant has successfully made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name by submitting to the Panel, inter alia, conclusive evidence of its ownership of an identical trademark and by asserting that no permission or authority was granted to the Respondent to use that trademark.
As the Respondent has tendered no reply in this proceeding, the Panel must look elsewhere in the record to determine whether there is any effective rebuttal to the Complainant's prima facie case. In doing so, the Panel will consider the applicability in this case of any of the three legitimizing criteria found in Policy paragraph 4(c). First, since the Panel accepts the Complainant's contention that the disputed domain name is not being used, the Panel is compelled to believe the domain name is being used neither in a bona fide offering of good or services, per paragraph 4(c)(i), nor in a noncommercial or fair use manner, per paragraph 4(c)(iii). Second, with respect to paragraph 4(c)(ii), the Panel cannot conclude by examination that the Respondent, “JK Plex Pte. Ltd.”, is commonly known as <fabrianoboutiques.com>, since the two names are completely different. Therefore, in the absence of a successful rebuttal, the Complainant's prima facie case prevails.
As a consequence, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel accepts the Complainant's contention that the disputed domain name is not being put to active use. Such passivity in the use of a disputed domain name has been found in certain circumstances by prior UDRP panels to constitute bad faith use of that domain name. See Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Claim No. 95095 (“The Respondent has not developed the website located at the domain name in question. Passive holding of a domain name is evidence of bad faith.”). The Panel is inclined to agree with this reasoning and rules that the disputed domain name in this case is being used in bad faith.
As to registration, it seems unlikely to the Panel that the Respondent could have registered the disputed domain name, which so closely resembles the Complainant's widely-known mark, in good faith. Both registration of a domain name that includes a complainant's entire trademark and failure to respond to a complaint have been accepted as factors giving rise to a finding of bad faith registration by prior Policy panels. See BolognaFiere S.p.A. v. Bonopera Daniele, WIPO Case No. D2003-0295; and Ditting Maschinen AG v. I.C.T. Company, WIPO Case No. D2003-0170. Given the international notoriety of the Complainant's basic mark, the identity between Complainant's CTM registered variation of that mark and the disputed domain name and the failure of the Respondent to file a Response, the Panel concludes that the disputed domain name was indeed registered in bad faith.
Therefore, the Panel finds that the Complainant has proven that the disputed domain name was registered and is being used in bad faith.
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 <fabrianoboutiques.com>, be transferred to the Complainant.
Dennis A. Foster
Dated: June 2, 2010