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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Faac S.p.A. v. Igor Zaharchenko, Nex-group

Case No. D2015-1813

1. The Parties

The Complainant is Faac S.p.A. of Zola Pedrosa (BO), Italy, represented by Studio Turini, Italy.

The Respondent is Igor Zaharchenko, Nex-group of Moscow, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <faac.biz> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 12, 2015. On October 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 13, 2015, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 15, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 4, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 9, 2015.

The Center appointed Assen Alexiev as the sole panelist in this matter on November 17, 2015. 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 an Italian company founded in 1965. It provides solutions for automation and for control of pedestrian and vehicle access for residential and industrial use.

The Complainant is holder of the following trademark registrations (the "FAAC trademark"):

- the Russian trademark FAAC with registration No. 258679, registered on November 14, 2003 for goods and services in International Classes 09, 35 and 37; and

- the International trademark FAAC with registration No. 809135, registered on July 3, 2003 for goods and services in International Classes 07 and 09.

The Complainant is also the owner of the domain name <faac.it>, where the Complainant's website is located.

The disputed domain name was registered on July 8, 2004.

5. Parties' Contentions

A. Complainant

The Complainant contends that the FAAC trademark is popular in the Russian Federation, where the Respondent is located.

According to the Complainant, the disputed domain name is confusingly similar to the FAAC trademark in which the Complainant has rights. The disputed domain name is composed by the verbal element of the FAAC trademark, which makes it confusingly similar to the same trademark and suggests that the disputed domain name leads to the official website of the Complainant or that its registration and use is authorized by the Complainant.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not an official retailer of the Complainant and is not commonly known by the name "Faac". The Respondent was not authorized, licensed or otherwise allowed by the Complainant to use the name "Faac" or to register any domain name incorporating the FAAC trademark. The Respondent has not acquired any rights in any name corresponding to the disputed domain name. The Respondent is using the disputed domain name in connection with a website where the FAAC trademark is reproduced, in order to attract Internet users to the website. It is very unlikely that the Respondent would not have known of the existence of the Complainant's legal rights in the FAAC trademark at the time of registration of the disputed domain name. Rather, it is the knowledge of the existence and notoriety of this trademark that motivated the Respondent to register the disputed domain name.

In the Complainant's submission, the disputed domain name was registered and is being used in bad faith. The Respondent was aware of the Complainant's reputation and of the FAAC trademark before registering the disputed domain name. The website at the disputed domain name incorporates the FAAC trademark in order to attract Internet users to the website.

B. Respondent

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

6. Discussion and Findings

Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(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 respect of the disputed domain name; and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the FAAC trademark. The Complainant has also submitted evidence that the FAAC trademark has been used in the Russian Federation, where the Respondent is located.

The disputed domain name consists of the element "faac", which is identical to the Complainant's FAAC trademark, and the generic Top-Level Domain ("gTLD") ".biz". As summarized in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), the applicable gTLD would usually be disregarded under the confusing similarity test, except in certain cases where the applicable gTLD may itself form part of the relevant trademark. In this case, the Panel will disregard the ".biz" gTLD in the disputed domain name.

Taking the above into account, the Panel finds that the disputed domain name is identical to the FAAC trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Policy requires the Complainant to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview 2.0.

The Complainant alleges that it has not authorized the Respondent to register or use the disputed domain name and that the Respondent is not commonly known by the disputed domain name. The Complainant also contends that the Respondent uses the disputed domain name to attract Internet users to its website which incorporates the FAAC trademark. The Complainant has supported its contentions with printouts from the website to which the disputed domain name refers.

The Respondent has not submitted any evidence or arguments that it has rights or legitimate interests in the disputed domain name and has not denied the contentions of the Complainant despite the inferences that the Panel may draw from the fact of a default (Rules, paragraph 14). If the Respondent had any justification for registering or using the disputed domain name, it could have provided it. In particular, the Respondent has not contended that any of the circumstances described in Policy, paragraph 4(c) — or any other circumstance — are present in its favor.

The only information available about the Respondent is the WhoIs information, provided by the Registrar.

The WhoIs information contains no evidence of rights or legitimate interests of the Respondent in the disputed domain name, which, as found above, is identical to the FAAC trademark of the Complainant. The evidence submitted by the Complainant shows that the website at the disputed domain name incorporates the FAAC trademark and offers products for which the FAAC trademark is registered, which may confuse Internet users.

In these circumstances, and in the absence of any rebuttal by the Respondent of the contentions of the Complainant or allegation to the contrary, the Panel accepts the Complainant's contention that the Respondent was aware of the Complainant and of its FAAC trademark at the time of registration of the disputed domain name, and that this registration was made in view of the popularity of the Complainant and its products. In the Panel's view, such actions of the Respondent cannot be regarded as giving rise to rights or legitimate interests in the disputed domain name.

Therefore, the Panel finds that the evidence confirms the Complainant's prima facie case, and the Respondent has no rights or legitimate interests in the disputed domain name within the meaning of the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the domain name 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 the holder's documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's website or other online 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 the holder's website or location.

The Panel finds that the circumstances of the present case support a finding of bad faith of the Respondent. The Complainant has asserted that the Respondent is using the goodwill and reputation of the Complainant's name and of the FAAC trademark to attract consumers, and has referred to the content of the website at the disputed domain name in support of this assertion. As discussed under the issue of rights or legitimate interests above, the website at the disputed domain name displays the FAAC trademark and offers products of the same categories to those protected by the FAAC trademark, which may lead to confusion of Internet users. Taking this into account, and in the lack of any denial by the Respondent, the Panel is prepared to accept the Complainant's contention that the Respondent must have sought to register and use the disputed domain name with knowledge of the Complainant and in an attempt to attract consumers to its website and to sell its products by causing consumers to mistakenly believe that the website and the products offered there are authorized by the Complainant.

In view of the above, the Panel is satisfied that at the time of the registration of the disputed domain name, the Respondent was aware of the Complainant and of its products, and that its registration and use was made with the Complainant and its products' popularity in mind, in an attempt to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's FAAC trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website and of the products offered there.

For these reasons, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith.

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 <faac.biz> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: December 8, 2015

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