WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mangusta S.r.l. v. Conforzi Design & Consulting Di Conforzi
Case No. D2011-1336
1. The Parties
Complainant is Mangusta S.r.l. of Lucca, Italy, represented by Studio Legale Caneva & Associati, Italy.
Respondent is Conforzi Design & Consulting Di Conforzi of Poggio Mirteto, Italy, self represented.
2. The Domain Names and Registrar
The disputed domain names <mangusta-yachts.com>, <mangustayachts.com> and <overmarine-yachts.com> are registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2011. On August 5, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain names. On August 5, 2011, Tucows Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2011. The Response was filed with the Center on August 27, 2011.
The Center appointed Roberto Bianchi as the sole panelist in this matter on September 2, 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
Complainant owns numerous registrations for the MANGUSTA and OVERMARINE marks, inter alia,
International Trademark registration for MANGUSTA, Reg. No. 589104, Reg. Date filed on August 18, 1992, covering nautical vehicles and their parts, etc. of International Class 12;
Italian trademark registration for OVERMARINE, Reg. No. 0001250920, Reg. Date. March 9, 2010. This is a renewal without modifications or transfer of rights, of the first filing made on April 1990 under Filing No. FI1990C009937, with Reg. No. 0000593492, Reg. Date April 14, 1993. This registration covers nautical vehicles, etc., of International Class 12;
Community Trademark registration for MANGUSTA, Reg. No. 004920492, Reg. Date January 19, 2007, filed on February 23, 2006, covering products of International Class 12, filed originally in Italy under No. FI2006C000226 on February 22, 2006, registered.
The disputed domain name <mangusta-yachts.com> was registered on October 19, 2002. The disputed domain name <overmarine-yachts.com> was registered on December 30, 2003. The disputed domain name <mangustayachts.com> was registered on October 6, 2010.
During an independent Panel visit conducted on September 16, 2011 to the disputed domain name <mangusta-yachts.com> the Panel browser was redirected to a website located at ”www.italianyachting.com/Italian_Yachts/Shipyards/Mangusta”, showing a webpage entitled “Italian Yachting.com, your link to the Italian yachting world ”. The web page containing the following links: Italian Yachts, Italian yachts net, Directory, Magazines, Links, etc. Get your personal Showcase on Italian yachting.com, as well as the address and phone number of Mangusta (the Complainant). News on other Italian yacht manufacturers such as the Azimut-Benetti Group are also published on the site. A notice is posted indicating that the website is under beta testing. Advertising for yacht cruises and sale of yachts from manufacturers other than Complainant is also displayed.
A similar result was obtained when the Panel entered the <overmarine-yachts.com> domain name into its browser.
When the Panel entered the <mangustayachts.com> domain name into its browser, a web page with the following text was displayed: “Questo dominio e' stato appena registrato”. (“This domain has just been registered”).
5. Parties’ Contentions
In its Complaint, Complainant contends as follows:
Complainant's MANGUSTA and OVERMARINE marks are incorporated in their entirety into the disputed domain names. The addition of the generic term “yachts” to the distinctive and famous MANGUSTA and OVERMARINE trademarks does not avoid the confusing similarity since MANGUSTA and OVERMARINE are famous marks covering the manufacturing and selling of yachts. Accordingly, the disputed domain names are confusingly similar to Complainant's marks.
Respondent cannot claim any rights in respect of the disputed domain names as no private right has been granted to Respondent in Italy or elsewhere. Complainant has never authorized Respondent to register the disputed domain names, and has no relation to Respondent. Respondent has knowingly registered and still maintains the disputed domain names for the sole purpose of preventing Complainant to register them, in violation of the rules of competition and fair commercial conduct.
That Respondent lacks any rights in the disputed domain names is confirmed by the fact that Respondent, in its response to Complainant's letter of notice, has not opposed any right whatsoever in the terms MANGUSTA and OVERMARINE. Instead, Respondent has only declared that it should have an interest because at its “www.italianyachting.com” website, to which Internet users are being re-directed from the disputed domain names, it gives “promotional advantage for the relative companies which only acquired more visibility on the web”. In Complainant’s opinion, the only advantage from re-directing Internet users to this website belongs to Respondent.
Complainant's MANGUSTA and OVERMARINE marks covering yachts and boats are definitely well-known, enjoying a substantial and global dissemination. Moreover, Respondent has constructive knowledge of Complainant's rights because the disputed domain names were registered well after many of Complainant's trademark registrations were issued in Italy, Respondent's home country, and where Complainant also is based.
By registering several domain names confusingly similar to Complainant’s marks, Respondent has prevented Complainant from reflecting its marks in corresponding domain names, which is sufficient to constitute a pattern of conduct, and thus, bad faith.
The disputed domain names <mangusta-yachts.com> and <overmarine-yachts.com> redirect Internet users to the “www.italianyachting.com” website owned by Respondent where products and services connected to yachts and boats are offered. This use tends obviously to make a profit by taking advantage of the reputation of Complainant's marks and constitutes an act of unfair competition and parasitism at the expense of Complainant. This misuse is likely to harm the image and reputation of Complainant's marks, by causing a loss of customers that would be induced to think that there is a commercial link between Complainant and Respondent.
Furthermore, the website associated to the disputed domain names presents several pay-per-click links, part of the Google’s AdSense program, which is a sign of bad faith. Respondent tried to take advantage of the reputation of the MANGUSTA and OVERMARINE marks to mislead Internet users and attract them to its website where sponsored links are posted.
Respondent does not use the disputed domain name <mangustayachts.com> and is thus committing a passive holding.
In its Response, Respondent contends as follows:
Respondent is aware that the disputed domain names incorporate Complainant's marks but the generic term “yachts” was not added to generate domain names confusingly similar to such marks, but were registered with the intent of endorsing the class of registration on the Internet for the benefit of Complainant, to use the domain names as a lead to search engines and eventually to redirect Internet users exclusively to the legitimate holder of the trademark rights, including a link to the respective official website and a free editable show-case illustrating the company profile. Thus, the disputed domain names do not generate confusion as they relate directly to Complainant and actually give more visibility on the Internet. The use of the domain names do not tarnish or dilute Complainant's trademarks since they actually endorse the fact that these trademarks are part of the best Italian yachting industry.
Well before Respondent received any notice of the dispute, the “www.italianyachting.com” website was online offering free promotional services to the owners of the trademarks, and in no way damaging them, which is evidence of bona fide use.
The companies related to the trademarks knew of the web portal “www.italianyachting.com” and they had been invited to confirm or correct their contact data on the directory and to open a free company show case on the portal, which proves that Respondent's primary purpose was to provide visibility on the web.
The Google Ads were added well after the registration of the disputed domain names and are of little importance since their commissions have not even been collected.
Respondent never asked or obtained any compensation for the disputed domain names from Complainant. The trademark owners had never complained before about the registration of two of the disputed domain names, which proves that the domain names are of little interest to Complainant.
As to the disputed domain name <mangustayachts.com>, it was registered for the benefit of Mr. Balducci, the former owner of the trademark, because he is a friend of Respondent, with the intention of transferring the domain name to his convenience.
6. Discussion and Findings
Under Policy, paragraph 4(a), a complainant must make out its case that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant proved that it owns numerous valid trademark registrations for the MANGUSTA and OVERMARINE marks in Italy and elsewhere, a fact that is not contested by Respondent. The disputed domain names incorporate these marks in their entirety, only adding the generic term “yachts” and the gTLD “.com”. It is well established by UDRP panels that the addition of a generic term and a gTLD in a domain name incorporating a mark is inapt to distinguish the domain name from the mark. See “WIPO Overview of WIPO Panel Views on Selected UDRP Questions 2nd Edition” (“WIPO Overview 2.0” at paragraph 1.9). “The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name …”. In fact, the addition of the term “yachts” reinforces the association of the disputed domain names with Complainant's marks, which protect precisely yachts and boats.
The Panel concludes that the disputed domain names are confusingly similar to Complainant's MANGUSTA and OVERMARINE marks.
B. Rights or Legitimate Interests
Complainant contends that Respondent cannot claim any rights in respect of the disputed domain names as no private right has been granted to Respondent in Italy or elsewhere, that Complainant has never authorized Respondent to register the disputed domain names, and that Complainant has no relation to Respondent. Also, says Complainant, Respondent has knowingly registered and still maintains the disputed domain names for the sole purpose of preventing Complainant to register them, in violation of the rules of competition and fair commercial conduct. Finally, adds Complainant, Respondent lacks any rights in the disputed domain names because, in its response to Complainant's letter of notice, Respondent did not oppose any right whatsoever in the terms Mangusta and Overmarine. Instead, Respondent has only declared that it should have an interest because at its “www.italianyachting.com” website, to which Internets users are being re-directed from the disputed domain names, it gives “promotional advantage for the relative companies which only acquired more visibility on the web”, which in Complainant's opinion, if any, is an advantage for Respondent only. As to the disputed domain name <mangustayachts.com>, there is no use of it whatsoever.
Taken together, these contentions and supporting evidence are apt to constitute a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. For its part, Respondent contends that its use of the <mangusta-yachts.com> and <overmarine-yachts.com> domain names is legitimate because they redirect the Internet user to Complainant’s exclusive “show case” and Complainant's true contact data.
The Panel is not satisfied that Respondent’s use of the disputed domain names is legitimate. In fact, Internet users entering either “www.mangusta-yachts.com” or “www.overmarine-yachts.com” into their browsers (presumably looking for the well-known MANGUSTA and OVERMARINE yachts manufactured by Complainant) are being redirected to Respondent’s website with advertising and news from other manufacturers of luxury yachts such as the Azimut-Benetti company, which competes with Complainant, or from other sources totally unrelated to Complainant. Additionally, ads are posted on Respondent's website, which - as admitted by Respondent - generate income for it through pay-per-click. A legitimate bona fide offering of Complainant's products would require even for a reseller or distributor “the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to "corner the market" in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.” See WIPO Overview 2.0, paragraph 2.3.
Since Respondent did not furnish any other argument in favor of its having rights or legitimate interests in the <mangusta-yachts.com> and <overmarine-yachts.com> domain names, and given that there is no evidence of any use of the <mangustayachts.com> domain name, apart from a one-line text stating that the domain name has just been registered, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Respondent admits that it knows Complainant and its predecessor in interest as a trademark owner, Mr. Balducci. In the Panel’s view, it is obvious that Respondent, an Italian architect active in or with relations to the Italian yacht industry, knew of Complainant and its MANGUSTA and OVERMARINE marks. Thus the registration of the disputed domain names appears to have been made with Complainant’s marks in mind. Moreover, the addition of the term “yachts” shows that just Complainant’s products were meant, i.e. the registration of the three disputed domain names was in bad faith.
The use of the disputed domain names <mangusta-yachts.com> and <overmarine-yachts.com> as described above reveals that, by redirecting Internet users presumably looking for Complainant to a website where the products of competitors of Complainant are shown and advertising for products from sources unrelated to Complainant generate commissions – big or small – from a pay-per-click scheme, Respondent tried to extract a profit by free riding on Complainant’s well-known marks. In other words, Respondent, by using the disputed domain names <mangusta-yachts.com> and <overmarine-yachts.com>, has intentionally attempted to attract, for commercial gain, Internet users to its “www.italianyachting.com” website by creating a likelihood of confusion with Complainant's MANGUSTA and OVERMARINE marks as to the source, sponsorship, affiliation, or endorsement of its website or of products or services on its website. This is a circumstance of registration and use in bad faith of the disputed domain names pursuant to Policy, paragraph 4(b)(iv).
The lack of any active use of the disputed domain name <mangustayachts.com> is, in the circumstances of this case, evidence of bad faith under the doctrine of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Those circumstances include the fact that Respondent is related to the same industry as Complainant, is thus well aware of Complainant, its marks and luxury boats, and has used the almost identical disputed domain name <mangusta-yachts.com> to divert Internet users presumably looking for Complainant to a website offering competing products and advertising generating income for Respondent by free-riding on Complainant’s goodwill associated with its marks. One can imagine that Respondent is likely to contemplate a similar use in bad faith for this domain name.
The Panel concludes that the disputed domain names were registered and are 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 names <mangusta-yachts.com>, <mangustayachts.com> and <overmarine-yachts.com> be transferred to the Complainant.
Dated: September 16, 2011