World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Campagnolo S.r.l. v. Thomas Keller, 1&1 Internet Inc

Case No. D2012-1197

1. The Parties

The Complainant is Campagnolo S.r.l. of Vicenza, Italy, represented by Giambrocono & C. S.p.A., Italy.

The Respondent is Thomas Keller, 1&1 Internet Inc of Wayne, Pennsylvania, United States of America.

2. The Domain Names and Registrar

The disputed domain names <campagnoloergo.com>, <campagnoloneutron.com>, <campagnolorecord11.com>, <campagnolo10.com>, <campagnolo10speed.com>, <campagnolo11.com>, <campagnolo11speed.com> and <campagnolo9speed.com> ("the Disputed Domain Names") are registered with 1&1 Internet AG.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2012. On June 13, 2012, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the Disputed Domain Names. On June 20, 2012, 1&1 Internet AG transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 21, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 25, 2012.

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 June 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 19, 2012.

The Center appointed Dawn Osborne as the sole panelist in this matter on July 27, 2012. 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 the owner of a Community trade mark registration and United States (“US”) trade mark registrations for CAMPAGNOLO for cycles and related goods going back first in time to 1970, and has US trade mark registrations for NEUTRON, ERGOPOWER and RECORD for bicycle parts and 11 SPEED (the latter in logo form) for sports and leisurewear all registered several years before the Disputed Domain Names.

The Disputed Domain Names have been used to post links to third party goods and services not connected with the Complainant.

5. Parties’ Contentions

A. Complainant

The contentions of the Complainant can be summarized as follows:

The Disputed Domain Names all contain CAMPAGNOLO, which has no meaning in English and is identical to trade mark registrations owned by the Complainant. The Complainant owns more than 120 trade mark registrations consisting of, or comprising, the term “Campagnolo” including a Community trade mark registration and US trade mark registrations for CAMPAGNOLO for cycles and related goods. Some of the Disputed Domain Names also contain other registered trade marks owned by the Complainant. The Complainant also has US trade mark registrations for NEUTRON, ERGOPOWER and RECORD for bicycle parts and for 11 SPEED in logo form for sports and leisurewear.

The Disputed Domain Names are also very similar to the domain name <campagnolo.com>, which has been owned by the Complainant since 1996.

The addition of elements such as "9 speed", "10 Speed", "11 Speed", "neutron", "ergo" and "record 11" does not avoid confusion on the part of the public but, on the contrary, falsely suggests a possible link between the Complainant and the owner of the Disputed Domain Names as if it was somehow entitled to use them for the US territory, which it is not.

The Respondent has never been, and is not currently, commonly known by the Disputed Domain Names and CAMPAGNOLO forms no part of its name. Its business is not connected with the Complainant. It does not hold any trade mark rights in CAMPAGNOLO, the distinctive part of the Disputed Domain Names. CAMPAGNOLO is not a common noun or name in English. The Complainant has not granted any rights in or licensed the CAMPAGNOLO mark to the Respondent. The Respondent is not using the Disputed Domain Names in connection with a bona fide offering of goods or services. The Respondent has no rights or legitimate interests in the Disputed Domain Names.

At the time the Complaint was filed the Disputed Domain Names displayed links to external sites selling not only the Complainant's products, but products of its competitors. As such the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names, but when the Complainant was filed was using the Disputed Domain Names to provide links to earn money for the Respondent who was unjustly enriching itself from the reputation of the Complainant's CAMPAGNOLO mark to the Complainant's detriment. After becoming aware of the dispute the Respondent modified the relevant pages to which the Disputed Domain Names direct to a parking service.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(1) The Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(3) The Disputed Domain Names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Apart from the “.com” suffix, which is not taken into account for the purposes of the Policy, the Disputed Domain Names consist of the Complainant’s CAMPAGNOLO registered mark, plus additional signs which are the subject of or similar to other trade mark registrations of the Complainant "neutron", "record", "11 speed" or "ergo", or apparently generic terms which relate to the complainant's business of cycles "9 speed" and "10 speed" and/or the ordinary numbers "10" or "11". The addition of these additional signs or generic terms do not serve to distinguish any of the Disputed Domain Names from the Complainant’s CAMPAGNOLO mark, but indeed, in the names in which other signs identical or similar to other registered trade marks of the Complainant "neutron", "record", "11 Speed" or "ergo" or the apparently generic cycling related terms "9 speed" and "10 speed" are used, this compounds the likelihood of confusion between the Disputed Domain Names and the Complainant’s trade mark, because of the reference to the Complainant's business or field of activity. The Panel finds that the Disputed Domain Names are all individually confusingly similar to the Complainant’s registered trade mark CAMPAGNOLO and as such paragraph 4(a)(i) of the Policy is satisfied for all the Disputed Domain Names.

B. Rights or Legitimate Interests

The Respondent has not filed a Response (i.e., it has not shown any circumstances under the Policy paragraph 4(c) which may apply in its favour) and does not appear to have any rights or legitimate interests in any of the Disputed Domain Names. The Complainant has indicated that it has not licensed the Respondent in any way and the Respondent’s business has no obvious trade mark rights or connection with the designation “CAMPAGNOLO” appearing in all of the Disputed Domain Names or the other signs "ergo", "neutron", "11 speed" and "record" connected with the Complainant appearing in some of the Disputed Domain Names. The Respondent does not appear to be commonly known by the Disputed Domain Names and CAMPAGNOLO forms no part of its name. CAMPAGNOLO is not a common noun or name in English. The Respondent is not using the Disputed Domain Names in connection with a bona fide offering of goods or services (see further the findings re bad faith below). As such the Complainant has satisfied paragraph 4(a)(ii) of the Policy in respect of all the Disputed Domain Names.

C. Registered and Used in Bad Faith

The reference to cycling goods on the web site linked to the Disputed Domain Names and the addition of other signs connected with the Complainant "ergo", "11 speed", "neutron" and "record" in some of the Disputed Domain Names shows that the Respondent is aware of the Complainant and its business and by registering the Disputed Domain Names and using them commercially to point to links to third party businesses offering goods and services not connected with the Complainant the Respondent is seeking to take advantage of the Complainant’s trade marks.

Paragraph 4(b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including “by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to its 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 its web site or location or of a product or service on [its] web site or location.” Policy, Paragraph 4(b)(iv).

The Disputed Domain Names all found to be confusingly individually similar to the Complainant's CAMPAGOLO mark have all been used to link to third party commercial sites not connected with the Complainant. Accordingly, it appears to the Panel that the Respondent has intentionally attempted to attract for commercial gain Internet users to its web site, by creating confusion as to the source, sponsorship, affiliation or endorsement of products or services on its web sites connected to the Disputed Domain Names. The Panel, therefore, finds that bad faith has been demonstrated under paragraph 4(b)(iv) of the Policy with respect to all the Disputed Domain Names.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names <campagnoloergo.com>, <campagnoloneutron.com>, <campagnolorecord11.com>, <campagnolo10.com>, <campagnolo10speed.com>, <campagnolo11.com>, <campagnolo11speed.com> and <campagnolo9speed.com>be transferred to the Complainant.

Dawn Osborne
Sole Panelist
Date: August 6, 2012

 

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