WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Motovario S.p.A. v. Sany Xiao

Case No. D2014-0601

1. The Parties

The Complainant is Motovario S.p.A.of Milan, Italy, represented by Studio Legale Associato avv.ti Pier Luigi Costa & Paolo Creta, Italy.

The Respondent is Sany Xiao of Dongguan, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <motovario-china.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2014. On April 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 2014, the Registrar 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 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 7, 2014.

The Center appointed Jonathan Agmon as the sole panelist in this matter on May 16, 2014. 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, Motovario S.p.A., (Hereinafter: the “Complainant”), is an Italy based manufacturer of gear units for industrial and civil applications.

The Complainant is the owner of the following trademark registrations:

International trademark n. 1017121 – Motovario heart of motion & Design, in classes 7, 9,16, 21, registered on June 19, 2009;

International trademark n. 689487 – Motovario & Design, in classes 7, 9, registered on October 3, 1997;

Community trademark n. 1608678 -- Motovario & Design, in classes 7, 9, registered on August 5, 2002;

Chinese trademark n. 1089910 -- Motovario & Design, in class 7, registered on August 28, 1997;

Chinese trademark n. 3679418 – MOTOVARIO (In Chinese characters), in class 7, registered on June 14, 2005;

Chinese trademark n. 3679420 – MOTOVARIO (In Chinese characters), in class 7, registered on June 14, 2005;

Chinese trademark n. 5925591– MOTOVARIO (In Chinese characters), in class 7, registered on November 7, 2009;

Chinese trademark n. 5925592– MOTOVARIO (In Chinese characters), in class 12, registered on November 7, 2009;

and pending applications for translations of MOTOVARIO to Chinese:

Chinese trademark application n. 13020457, filed on August 2, 2013 for class 7;

Chinese trademark application n. 13020456, filed on August 2, 2013 for class 7.

The disputed domain name <motovario-china.com> was registered by the Respondent on July 4, 2010.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name <motovario-china.com> is identical to its trademark MOTOVARIO. Complainant argues that the addition of the geographical term “china” cannot be considered enough to distinguish the disputed domain name from its trademarks and is likely to generate further confusion to the public.

The Complainant further argues that the Respondent does not have a right or legitimate interest in the disputed domain name since the disputed domain name .<motovario-china.com> was created on July 4, 2010, long after the Complainant registered the international, Community and Chinese trademarks, the first in 1997. It further notes that its trademarks are also being unlawfully reproduced and displayed on the associated website.

The Complainant further argues that the entire website under the disputed domain name is a mere reproduction and copy of the Complainant’s website, including graphics and representation of the Complainant’s trademarks, aimed to create a false link with the reputation and quality of the products originating from the Complainant. The Complainant also verified that the disputed domain name <motovariochina.com> appears as one of the first results listed on Google when entering Chinese translation of the word “Motovario”, probably also due to an association of the website with meta tags corresponding to various translations of the word “Motovario” to Chinese and considers this as a further evidence of Respondent’s unlawful use of the trademark.

The Complainant further argues that the disputed domain name was registered and used in bad faith in order to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademarks as to the source. Hence, the Complainant argues that the Respondent clearly intends to present the website under the disputed domain name as managed by a Chinese affiliate company of the Complainant or even the official website of the parent company translated into Chinese language. The Complainant further stresses that it has no connection whatsoever to the Respondent and to the disputed domain name.

The Complainant argues that the evidence presented, including the use of the trademark, the presentation of the website, appearance of the disputed domain name in Google, etc. is a clear demonstration that the registration of the disputed domain name by the Respondent was made with the specific intention to engage in illegitimate and counterfeiting activities.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.

The Complainant owns numerous worldwide trademark registrations for the mark MOTOVARIO. For example: International trademark n. 1017121 – Motovario heart of motion & Design, in classes 7, 9,16, 21, registered on June 19, 2009; International trademark n. 689487 – Motovario & Design, in classes 7, 9, registered on October 3, 1997; Community trademark n. 1608678 - Motovario & Design, in classes 7, 9, registered on August 5, 2002; Chinese trademark n. 1089910 - Motovario & Design, in class 7, registered on August 28, 1997; Chinese trademark n. 3679418 – MOTOVARIO (In Chinese characters), in class 7, registered on June 14, 2005; Chinese trademark n. 3679420 – MOTOVARIO (In Chinese characters), in class 7, registered on June 14, 2005; Chinese trademark n. 5925591– MOTOVARIO (In Chinese characters), in class 7, registered on November 7, 2009; Chinese trademark n. 5925592– MOTOVARIO (In Chinese characters), in class 12, registered on November 7, 2009; and also owns pending applications in China for translations of the word motovario in Chinese characters.

The Complainant also owns domain names with the trademark MOTOVARIO,e.g., <motovario-group.com>.

The disputed domain name <motovario-china.com> is identical to the registered trademark MOTOVARIO apart from the addition of the geographical term “china”. The disputed domain name is also identical to Complainant’s domain name <motovario-group.com>, including the word “Motovario” and the hyphen, whilst the only different element is the geographical term “china” included in the disputed domain, versus the word “group” included in the Complainant’s domain name. The disputed domain name integrates the Complainant’s trademark MOTOVARIO in its entirety, as a dominant element.

The addition of the geographical term “china” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s MOTOVARIO trademark as “china” stands for the People’s Republic of China, where the Complainant also conducts business. It is clear that the most prominent element in the disputed domain name is the term “Motovario”.

Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505). See also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name <redbull-jp.net> is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd., WIPO Case No. D2006-0909).

Indeed, “[t]he mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709).

Consequently, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.

In the present case, the Complainant has demonstrated to the Panel that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent had failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the MOTOVARIO trademark, or a variation thereof.

The Respondent had not submitted a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).

The Complainant submitted evidence which shows that the Respondent registered the disputed domain name long after the Complainant started to use the name and trademark MOTOVARIO and long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark, the Complainant has owned a registration for the MOTOVARIO trademark since the year 1997. It is suggestive of the Respondent’s bad faith in these particular circumstances where the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using a disputed domain name, it had intentionally attempted to attract, for commercial gain, Internet users to the website or other online location to which the disputed domain name resolved , by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location to which the disputed domain name resolved .

The disputed domain name is confusingly similar to the Complainant’s trademarks. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (See Edmunds.com, Incv. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

From the evidence provided by the Complainant, it appears that the disputed domain name <motovario-china.com> resolves to a commercial website, which is a reproduction of the Complainant’s website, featuring the same graphics and presenting the Complainant’s registered trademarks, goods and products. Using the disputed domain name to promote similar or identical goods to the goods being offered by the Complainant and the fact that the Respondent’s website is a reproduction of Complainant’s website and trademarks is clear evidence that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of the use the Complainant is making with its trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. The Panel also finds that the Respondent’s attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks and its affiliation with the Respondent’s website falls under paragraph 4(b)(iv) of the Policy.

Another indication for the Respondent’s bad faith is raised from the incorporation of the Complainant’s well-known trademark into the disputed domain name by the Respondent who has no plausible explanation for doing so (Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273).

In light of the Complainant’s distinctive registered trademark and the Respondent’s use of a confusingly similar disputed domain name the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

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 name <motovario-china.com> be transferred to the Complainant

Jonathan Agmon
Sole Panelist
Date: May 30, 2014