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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Automobile Club di Brescia v. Zhao Ke, Domain Smart

Case No. DAE2016-0001

1. The Parties

Complainant is Automobile Club di Brescia of Brescia, Italy, represented by dotNice Italia srl, Italy.

Respondent is Zhao Ke, Domain Smart of Shanghai, China.

2. The Domain Name and Registrar

The disputed domain name <millemiglia.ae> is registered with AE Domain Administration (.aeDA).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2016. On June 9, 2016, the Center transmitted by email to.aeDA a request for registrar verification in connection with the disputed domain name. On June 12, 2016,.aeDA transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on June 15, 2016.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the UAE Domain Name Dispute Resolution Policy for – UAE DRP approved by .aeDA (the “Policy”), the Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (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 June 16, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2016. Respondent did not submit any Response. Accordingly, the Center notified Respondent’s default on July 7, 2016.

The Center appointed Lawrence K. Nodine as the panelist in this matter on July 19, 2016. 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 is the sole shareholder of ACI Brescia Service S.r.l., and the two entities jointly organize the “Mille Miglia” car race, which was first organized in 1927 and takes place every year in May between Brescia and Rome.

Complainant owns numerous trademark registrations around the world for the MILLE MIGLIA mark, dating back at least as early as October 6, 1986 in the case of Italian trademark registration no. 0000450961, including four registrations in the United Arab Emirates. Complainant owns the domain name <millemiglia.it> and operates its website through this domain name. Complainant also owns approximately 80 additional domain names including both gTLDs and ccTLDs incorporating the MILLE MIGLIA and 1000 MIGLIA marks.

The disputed domain name was registered on December 11, 2015. The disputed domain name resolves to a website displaying sponsored links and listing the disputed domain name for sale.

5. Parties’ Contentions

A. Complainant

Complainant states that the Mille Miglia is a world-renowned and historical automobile race dating back to 1927, and that the MILLE MIGLA mark has gained recognition throughout the world during this time. Complainant asserts that the disputed domain name is confusingly similar to the MILLE MIGLIA mark because it is identical to the mark.

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not a licensee or authorized agent of Complainant, or in any way legally permitted to use Complainant’s MILLE MIGLIA mark, and that Respondent’s sole purpose in registering the disputed domain name was to resell it.

Regarding bad faith, Complainant alleges that Respondent must have known of Complainant’s rights in the MILLE MIGLIA mark when it registered the disputed domain name due to Complainant’s numerous trademark registrations, worldwide trademark use and world-famous race. Complainant further alleges that Respondent only registered the disputed domain name for the purpose of selling it, as is evidenced by the offer to sell the disputed domain name on the website hosted thereon, and with the express intention of referring maliciously to Complainant’s MILLE MIGLIA mark and corresponding race.

B. Respondent

Respondent did not respond to the Complaint.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the MILLE MIGLIA mark in view of its numerous trademark registrations. The Panel further finds that the disputed domain name is confusingly similar to the MILLE MIGLIA mark because it incorporates the entirety of the trademark. The addition of the country code Top-Level Domain “.ae” does not differentiate the disputed domain name from Complainant’s mark. See, e.g., Societe Nationale des Chemins de Fer Francais (SNCF) v. Nextone Media Ltd, WIPO Case No. DCO2010-0023.1

The Panel finds that Complainant has satisfied paragraph 6(a)(i) of the Policy.

B. Rights or Legitimate Interests

The evidence of record supports Complainant’s unrebutted allegations that Respondent is not authorized to use the MILLE MIGLIA mark, is not affiliated with Complainant and is not known by that name. The Respondent’s use of the disputed domain name for a website displaying sponsored links and listing the disputed domain name for sale does not in the present case constitute a bona fide offering of goods or services. Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name; Respondent, by virtue of its default, has failed to rebut that showing.

The Panel finds that Complainant has carried its burden and satisfied paragraph 6(a)(ii) of the Policy.

C. Registered or is Being Used in Bad Faith

Regarding bad faith registration, the Panel finds that Complainant’s MILLE MIGLIA mark has been in used since 1927 and has been registered since at least October 6, 1986. It is therefore highly unlikely that Respondent was unaware of the MILLE MIGLIA mark and Complainant’s rights when it registered the disputed domain name.

The Panel finds that Complainant has carried its burden and satisfied paragraph 6(a)(iii) of the Policy, which requires that Complainant prove that the disputed domain name has been registered or is being used in bad faith, unlike the Uniform Domain Name Dispute Resolution Policy (“UDRP”), which requires that the disputed domain name be both registered and used in bad faith.

However, the Panel further finds, based on UDRP precedent, that the disputed domain name is likewise being used in bad faith because it likely diverts Internet traffic away from Complainant’s true websites. The Panel finds that the above-described use of the disputed domain name coupled with the fame of Complainant’s mark evidences bad faith. Additionally, the Panel finds that the disputed domain name is being offered for sale, which constitutes bad faith use where Respondent knew or should have known of Complainant’s rights in the MILLE MIGLIA mark. See CEAT Limited, CEAT Mahal v. Vertical Axis Inc., WIPO Case No. D2011-1981) (finding that a general offer to sell a domain name constitutes bad faith use when the respondent should have known that someone with rights in the trademark contained in the domain name would have an interest in the domain name). Complainant has therefore made a prima facie showing of bad faith use.

7. Decision

For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <millemiglia.ae> be transferred to Complainant.

Lawrence K. Nodine
Sole Panelist
Date: August 2, 2016

1 The Panel, noting the substantive similarities between the Policy and the UDRP has made reference to previous UDRP decisions in support of its findings.

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