WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Stock S.r.l. v. Domain Admin
Case No. D2010-1128
1. The Parties
The Complainant is Stock S.r.l. of Trieste, Italy, represented by Kivial s.r.l, Italy.
The Respondent is Domain Admin, Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines.
2. The Domain Name and Registrar
The disputed domain name <keglevich.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2010. On July 8, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On July 8, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.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 July 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 3, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2010.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on August 11, 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.
4. Factual Background
The Complainant is a company operating under the name “Stock S.r.l.” with its registered office at Trieste, Italy (hereinafter "Stock").
Stock is an internationally well-known company dealing in the spirits business, which began its business in 1884. Stock launched its new brand KEGLEVICH in 1963. A one hundred percent pure grain spirit, KEGLEVICH is produced using the traditional method set out in the original recipe of Count Keglevich in 1882.
Stock Spirits Group has registered various trademarks, and with regard to the name in question it holds:
- Italian trademark KEGLEVICH, first filing no. 186914 (07/09/1966), subsequently renewed under no. RM2006C004978 (29/08/2006);
- International trademark KEGLEVICH no. 277263 first filed on 07/12/1963 valid in Austria, Czech Republic, Germany, Egypt, Spain, Croatia, Hungary, the Principality of Liechtenstein, the Kingdom of Morocco, the Principality of Monaco, the Former Yugoslav Republic of Macedonia, Montenegro, Portugal, Romania, Serbia, Russia, Slovenia, San Marino, Vietnam;
- Community trademark KEGLEVICH no. 276444 filed on 04/06/1996; as well as numerous figurative trademarks comprising the KEGLEVICH logo and label and its distinctive bottle shape.
The brand KEGLEVICH is recognized worldwide by the press as well as the presence in various advertisement reviews.
Stock was also, from 1998-2008, the previous owner of disputed domain name <keglevich.com>, which was not renewed by its technical partner due to its bankruptcy.
5. Parties’ Contentions
The Complainant claims that:
The domain name <keglevich.com> is confusingly similar to the trademark KEGLEVICH owned by the Complainant. According to the Complainant, the domain name owned by the Respondent is clearly identical to the word elements of its trademark KEGLEVICH, given that it comprises of a specific family name that is neither banal nor common, with no specific meaning in other languages and which is also well known in spirits markets.
Furthermore, in the Complainant’s view the Respondent has no rights or legitimate interests in the domain name, as they are not using the domain name for a bona fide offering of goods or services. As the Complainant further states “the site currently linked to the domain name <keglevich.com> has a generic thematic search page concerning alcoholic drinks, which appears to be a generic placeholder" normally supplied by the registrar to its users”. The web page contains also a notice that the disputed domain name is for sale. In the Complainant’s view this may be the first proof that the registration made by the Respondent was a bad faith registration, since the Respondent did not intend to use the disputed domain name for its own activity.
The Complainant has filed its Complaint in order to protect its marks and halt the Respondent’s conduct.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has proven that the disputed domain name <keglevich.com> is identical or confusingly similar to the name, trademarks and service marks of the Complainant.
The confusing similarity of the disputed domain name <keglevich.com> to the Complainant’s trademarks and service marks is apparent from a simple visual comparison. The disputed domain name is a replica of the Complainant’s name and marks. The phrase “keglevich” does not appear to have any generic meaning in any European language.
The disputed domain name <keglevich.com> contains a trademarks owned legally by the Complainant. This is sufficient to satisfy the requirement that the disputed domain name in question be confusingly similar to a mark in which the Complainant have rights.
The Panel therefore finds that the domain name <keglevich.com> is confusingly similar to Complainant’s trademark and as a consequence, the complaint brought by the Complainant meets the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
From the evidence submitted before the Panel it is clear that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent is not the Complainant’s licensee in any respect, nor is the Respondent authorized to use the Complainant’s marks. The Respondent has not been commonly known by the disputed domain name, nor does the Respondent run any enterprise commonly or legitimately known by the disputed domain name.
There is no evidence of the Respondent’s use of, or demonstrable preparation to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
There is no evidence that the Respondent is making a legitimate non-commercial or fair use of the domain name.
Nonetheless, the Respondent was also given the opportunity to contest the case against him. However, the Respondent did not submit any evidence that would demonstrate that it has any rights to, or legitimate interests in the domain name <keglevich.com>.
The Panel therefore infers from the Respondent’s silence and Complainant’s contentions that the Respondent has no serious arguments to prove its rights to, or legitimate interests in the domain name <keglevich.com>. The Panel considers the requirement of paragraph 4(a)(ii) of the Policy fulfilled.
C. Registered and Used in Bad Faith
The Complainant is the owner of the trademark comprising of the word KEGLEVICH.
Under Article 4(b) a domain name is considered to be registered in bad faith if circumstances indicate that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.
The Panel finds that the domain name is being used in bad faith. The Respondent did not actively use the disputed domain name at all. Instead the disputed domain name is owned by the Respondent with the aim of selling it. In other words, no positive action is being undertaken by the Respondent in relation to the domain name. (See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Paragraph 4(b) of the Policy sets out four circumstances, without limitation, that demonstrate bad faith including that “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”. Regarding the Respondent’s use of the domain name it transpires that the disputed domain name is being used for commercial ads since the domain name which is currently linked to the domain name <keglevich.com> has a thematic search engine concerning alcoholic drinks.
In the absence of evidence to the contrary, the Panel finds that the Respondent knew of or should have known of the Complainant’s trademark and services at the time the Respondent registered the Domain name, and did so with a view to illegitimately taking advantage thereof.
As a result, the Panel finds that the domain name <keglevich.com> was registered and is used by the Respondent in bad faith and considers the requirements of paragraph 4(a)(iii) of the Policy to be fulfilled.
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 <keglevich.com> be transferred to the Complainant.
Dated: August 20, 2010