World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aluc Mark Ansalt v. A. Borsje

Case No. DNL2011-0037

1. The Parties

Complainant is Aluc Mark Ansalt of Eschen, Liechtenstein, represented by Perani Pozzi Tavella, Italy.

Respondent is A. Borsje of Giessen, The Netherlands.

2. The Domain Name and Registrar

The disputed domain name <borrelli.nl> (the “Domain Name”) is registered with SIDN through Metaregistrar.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2011. On June 1, 2011, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On June 3, 2011, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 3, 2011. In accordance with the Regulations, article 7.1, the due date for Response was June 23, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 24, 2011.

The Center appointed Remco M.R. van Leeuwen as the panelist in this matter on July 4, 2011. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.

4. Factual Background

A. Complainant

Complainant is the owner of apparently one of the most popular Italian marks for clothing, “Luigi Borrelli”. It owns several trademark registrations for this mark world wide. In these proceedings it invokes the following trademark (hereinafter: the “Trademark”):

Community trademark LUIGI BORRELLI & device, registered on September 3, 2003, under number 2304202 in classes 3, 14, 18 and 25.

B. Respondent

According to the Complaint the Domain Name is linked to a “parking page” which links back to the Registrar’s website “www.mijndomein.nl”.

5. Parties’ Contentions

A. Complainant

A trademark or trade name protected under Dutch law

Complainant claims that it is entitled to the Trademark. According to Complainant the Domain Name is very similar to the Trademark since it reproduces the distinctive part BORRELLI.

No rights or legitimate interests

According to Complainant Respondent has no rights in the Domain Name, since Respondent has nothing to do with Complainant and Complainant has never authorized or licensed the use of the Domain Name. Moreover, Complainant claims that because the Domain Name is merely linked to a parking page, it is not used for any fair noncommercial use or bona fide offering.

Registration or use in bad faith

According to Complainant, the Domain Name was registered and is being used in bad faith. Complainant claims that because the Trademark is well known across the world, Respondent, by registering the Domain Name, was certainly planning to exploit the reputation of the Trademark.

According to Complainant it is clear that Respondent intended to exploit the fame of the Trademark by attracting Internet users to a website linked to a parking page promoting the Registrar’s website, offering web services in exchange for money.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Article 10.3 of the Regulations states that if no response has been submitted, the panelist shall rule on the basis of the complaint. Based on this article, the Panelist will have to grant the Complaint unless the Panelist considers it to be unlawful or without merit. Therefore, the Panelist will review the Complaint on this basis.

A. Identical or Confusingly Similar

With Complainant, the Panelist is of the opinion that the most distinctive part of the Trademark is the word “Borrelli”. Therefore, it deems the Domain Name to be confusingly similar to the Trademark which Complainant has introduced into the record.

The Panelist therefore rules that based on Complainant’s Trademark rights, Complainant has met the first element of the Regulations as set out in article 2.1 (a).

B. Rights or Legitimate Interests

Complainant states that Respondent has no right in the Domain Name, and Complainant has found no fair or noncommercial use of the Domain Name. Because Respondent did not file any response, the Panelist is not aware of any rights or legitimate interests that Respondent may have in the Domain Name and will have to presume it has none.

The Panelist therefore rules that Complainant has met the second element of the Regulations as set out in article 2.1 (b).

C. Registered or Used in Bad Faith

Complainant states that since the Trademark is such a well known trademark around the world, Respondent must have been planning to exploit the reputation of the Trademark by attracting Internet users to a website which is not related to Complainant.

Since the Domain Name is linked to a page maintained by the Registrar and Respondent has not filed any response explaining its intended use of the Domain Name, the Panelist will look at other relevant circumstances to establish whether the Domain Name is registered or being used in bad faith. In past cases cumulative circumstances found to be indicative of bad faith included complainant having a well-known trademark, the fact that no response to the complaint has been filed and the registrant's concealment of its identity. Two of these three circumstances apply in this case as well and the Panelist does not consider the Complaint unlawful or without merit.

The Panelist therefore rules that Complainant has met the third element of the Regulations as set out in article 2.1 (c).

7. Decision

For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name <borrelli.nl> be transferred to Complainant.

Remco M.R. van Leeuwen
Panelist
Dated: July 12, 2011

 

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