WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Repi S.p.A. v. DomainCA (Whois Protect Service) / AD Company
Case No. D2011-0137
1. The Parties
The Complainant is Repi S.p.A. of Lonate Ceppino - (Varese), Italy, represented by Dr. Modiano & Associati S.p.A., Italy.
The Respondent is DomainCA (Whois Protect Service) of Seoul, Republic of Korea / AD Company of Bucaramanga, Santander, Colombia.
2. The Domain Name and Registrar
The disputed domain name <repi.com> is registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2011. On January 26 and 31, 2011, the Center transmitted by email to Korea Information Certificate Authority Inc. d/b/a DomainCa.com a request for registrar verification in connection with the disputed domain name and a reminder. On February 1, 2011, Korea Information Certificate Authority Inc. d/b/a DomainCa.com transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 2, 2011, providing the registrant and contact information disclosed by Korea Information Certificate Authority Inc. d/b/a DomainCa.com and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 7, 2011.
On February 2, 2011, the Center issued a Language of Proceedings notification, inviting comment from the parties. The Complainant submitted a request that English be the language of the proceedings on February 7, 2011. The Respondent did not respond to the Center’s Language of Proceedings notification. On February 8, 2011, the Center notified the parties of its preliminary decision to 1) accept the Complaint as filed in English; 2) accept a Response in either Korean or English; and 3) appoint a panel familiar with both languages mentioned above, if available and also advised the parties that the Panel has the authority to determine the language of the proceeding.
The Center verified that the Complaint together with the amended 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 February 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 28, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 1, 2011.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on March 10, 2011. 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 existing under the laws of Italy and having its principal place of business in Lonate Ceppino (VA). The Complainant has been operating on the international market for over 30 years and is located in northern Italy. It is one of the main manufacturers of liquid colors, additives, UV stabilizers and dosing units for thermoplastic and polyurethane materials. The Complainant first filed for trademark registration for REPI on July 8, 1996 and since then has been the owner of national, international and community registered trademarks. The Complainant has also registered the domain name <repi.it> since June 10, 1999.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to marks in which the Complainant has rights.
The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain name, and confirms that it has not authorized or licensed rights to the Respondent in any respect.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. Further, the Complainant alleges that the Respondent’s main purpose is to sell the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Substantive Elements of the Policy
Paragraph 4(a) of the Policy requires the Complainant to prove each and all of the following three elements in order to prevail in these proceedings:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint.” Under paragraph 14(a) of the Rules, in the event of such a “default” the Panel is still required “to proceed to a decision on the complaint,” and under paragraph 14(b), the Panel shall “draw such inferences therefrom as it considers appropriate.”
Consequently, the Panel must proceed with an assessment of the Complaint on its merits.
B. Identical or Confusingly Similar
The trademark of the Complainant is known in its field of activity and the Complainant has continually developed the goodwill and repute of its trademark for many years. The disputed domain name consists of the Complainant’s trademark plus the descriptive top level domain suffix “.com.” It is well established that the specific top level of a domain name such as “.com”, “.org”, or “.net” does not affect a domain name for the purpose of determining whether it is identical or confusingly similar. See Missoni S.p.A. v. Ahmed Salman, WIPO Case No. D2007-1485; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. The disputed domain name wholly incorporates the Complainant’s distinctive trademark and in the Panel’s view creates sufficient similarity to be deemed identical to or confusingly similar to the Complainant’s trademark.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that the Respondent may establish rights or legitimate interests in respect of the disputed domain name by proof of any of the following non-exclusive list of circumstances: (i) before any notice to the Respondent of the dispute, the Respondent used, or made demonstrable preparations 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; or (ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has not acquired trademark or service mark rights; or (iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. If the circumstances are sufficient to constitute a prima facie showing by the Complainant of the absence of rights or legitimate interests on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest.
There is nothing in the record to suggest that the Complainant has authorized the Respondent to register or use the Complainant’s trademark or the company name reflecting that trademark. The Respondent has no active web presence now and is merely linked to a domain name parking service, which fails to create rights or legitimate interests in the domain name. See ECOPETROL S.A. v. DomainCA (Whois Protect service) / Jan Jinchon, WIPO Case No. D2009-1579; Archipelago Holdings LLC, v. Creative Genius Domain Sales and Robert Aragon d/b/a/ Creative Genius Domain Name Sales, WIPO Case No. D2001-0729. Accordingly, the Respondent’s use of the disputed domain name falls outside the scope of paragraph 4(c)(i), (ii) and (iii) of the Policy.
In the Panel’s view, this combination of circumstances sufficiently establishes a prima facie case so that the evidentiary burden shifts to the Respondent to prove that it has rights or legitimate interests in respect of the disputed domain name. The Respondent has not filed a Response and thus offers nothing to legitimize its claim to the disputed domain name. Indeed, having searched the record, the Panel finds no circumstances that would indicate such rights or legitimate interests, as described in paragraph 4(c) of the Policy, or otherwise. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad Faith
The Complainant asserts that the Respondent has no apparent “business” other than to register, cybersquat and sell domain names. Although the disputed domain name has been registered since May 2, 2002 at the address “www.repi.com”, solely a page containing sponsored links is displayed. Moreover, the disputed domain name is linked with a domain name parking service to generate revenue. This is a common practice among cybersquatters, who have no intention of actually providing any real content or service, but who expect many misguided visitors precisely because of the confusing nature of the domain name. As affirmed in a number of UDRP decisions, the Panel acknowledges that passive holding of a domain name with knowledge that the domain name infringes on another party’s trademark rights is evidence of bad faith registration and use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Respondent’s true purpose appears to be to drive Internet traffic to its website at which it offers domain names for sale. The actions of the Respondent are commercial in nature and utilize a likelihood of confusion with the Complainant’s trademarks and the disputed domain name to attract, then re-route Internet users, which is in violation of paragraph 4(a)(i) of the Policy.
Both under past UDRP decisions (see for instance Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (see paragraph 2), a well-established principle is that when someone registers a domain name, it represents and warrants to the registrar that, to its knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainant’s marks are widely known in its field, it is unlikely that the Respondent, at the time of registration of the disputed domain name, was not aware that it was infringing the Complainant’s trademark.
Under the appropriate circumstances, bad faith can also be inferred based on the fame of the Complainant’s trademarks, such that the Respondent was aware or should have been aware of the Complainant’s mark and claims of rights thereto (particularly in view of the Complainant’s use of its trademark on the Internet). The Panel in light of the present circumstances finds it highly doubtful that the Respondent would have registered the disputed domain name without having knowledge of the Complainant.
Given the prior registration and the reputation of the Complainant’s trademark, the compelling conclusion is that the Respondent intended to ride on the goodwill of the Complainant’s trademark in an attempt to exploit, for commercial gain, Internet traffic destined for the Complainant.
The Panel agrees with the Complainant that the activities of the Respondent satisfy the criteria of paragraph 4(b)(iv). By using the disputed domain name, the Respondent intentionally attempted to attract, for commercial gain, Internet users its website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
In addition, the Respondent is attempting to sell the disputed domain name for the minimum price of EUR 10,000.00. It is well established that registering a domain name for the primary purpose of offering to sell, rent, or otherwise transfer the domain name for consideration in excess of the Respondent’s out-of-pocket expenses is evidence that a domain name was registered and is being used in bad faith. See adidas-Salomon AG v. Vincent Stipo, WIPO Case No. D2001-0372. The Panel finds, in the absence of rebuttal by the Respondent, that the Complainant has adequately supported the inference that the Respondent’s actions and correspondence satisfy the “intent to sell” requirement of paragraph 4(b)(i).
The Panel also notes that the Respondent appears to have registered under its name around 700 domain names and to have been involved (at least the named Respondent entity DomainCA (Whois Protect Service) has) in at least two other UDRP proceedings.
For all of the above reasons, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and that paragraph 4(a) of the Policy has been met.
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 <repi.com> be transferred to the Complainant.
Thomas P. Pinansky
Dated: March 18, 2011