WIPO Domain Name Decision: D2007-0535

Complainant is IFIL S.p.A of Torino, Italy, represented by Grande Stevens Law Firm, Italy.

The disputed domain name <ifil.com> is registered with Cydentity, Inc. dba Cypack.com.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2007. On April 11, 2007, the Center transmitted by email to Cydentity, Inc. dba Cypack.com a request for registrar verification in connection with the domain name at issue. On April 12, 2007, Cydentity, Inc. dba Cypack.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details and also indicating the language of the registration agreement as Korean. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed amendments to the Complaint on April 16, 2007 and on April 25, 2007, respectively, including a submission that English should be the language of proceedings. The Center verified that the Complaint together with the amendments to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 Respondent of the Complaint, and the proceedings commenced on April 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2007. The Response was filed with the Center on May 17, 2007.

The Center appointed Mr. Thomas P. Pinansky as Presiding Panelist and Dr. Luca Barbero and Dr. Jung Wook Cho as Co-Panelists in this matter on July 2, 2007. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.

Complainant is an investment company listed on the Italian stock exchange. Complainant is one of the major investment holding companies in Europe, managing a portfolio that includes investments in Fiat, SGS, Sequana Capital, Sanpaolo IMI, Banca Leonardo, Alpitour, Turismo & Immobiliare, Juventus and Cushman & Wakefield.

Complainant owns, among others, since 1999, the domain name <ifil.it> and the domain name <gruppoifil.com>.

Complainant has been known in Asia at least for twenty years through Fiat Group, Juventus, SGS and Sequana Capital.

Complainant is the owner of a number of international trademark registrations for marks including INVESTMENTS IFIL registered in, among others, in the European Union, United States of America, Hong Kong SAR and the Republic of Korea.

Respondent is an individual residing in the Republic of Korea and obtained the domain name via transfer from 3v Networks (the “Former Registrant”), an entity that has been involved with other domain name disputes.

The domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.

A domain name is considered “identical or confusingly similar” to a name and/or to a trademark if it incorporates the name and/or the mark in its entirety, regardless of any other terms appended to the domain name. The name IFIL is completely identical to Complainant’s company name and it is also identical and/or confusingly similar to the registered trademark “Investments IFIL” or “IFIL Investments”.

Neither the Former Registrant nor Respondent has rights or legitimate interests in the domain name. In fact, they have never been authorized by Complainant to use the IFIL name and/or the “IFIL Investment” or “Investments IFIL” registered trademark.

Neither the Former Registrant nor Respondent has been, and is currently, commonly known by the disputed domain name.

Respondent has not at any stage put the disputed domain name to a use recognized by the Policy as one which amounts to a legitimate one.

The commercial hypertext links contained in the <www.ifil.com> cache redirect users to <www.mymedia.com>.

The Former Registrant and Respondent could be the same entity and they still hold other domain names that incorporate others’ trademarks.

Among the more than 4,000 domain names registered by the Former Registrant and by Respondent, it is possible to verify that almost all the domain names are parked names without any use.

By choosing exactly the same name (registered as a trademark also in the Republic of Korea) of Complainant, it is reasonable to presume that Respondent knew Complainant and its services.

The domain name was registered for the principal purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark for valuable consideration in excess of the out-of-pocket costs directly related to the domain name.

Complainant underlines other facts that demonstrate bad faith. For example, Respondent and/or affiliated entities have been involved in prior domain name disputes.

Respondent contends that he registered the disputed domain name for the purpose of various online businesses.

Respondent further contends that <[il].com> is likely to act as a job search site as “il” means “work” in Korean.

Respondent states that he has no intention to sell the domain name or bad faith.

Respondent alleges that Complainant’s trademark is not well-known in Korea and in the world.

Respondent alleges that Complainant’s intention is reverse domain name hijacking to deprive Respondent of the disputed gTLD domain name.

Respondent notes that four-letter domain names are allowed to be registered by anybody in principle.

The Complaint was filed in the English language. It is noted that the language of the registration agreement for the domain name in dispute is Korean, however, Complainant asserts that English should be the language of the proceeding.

According to paragraph 11 of the Rules, the language of the administrative proceedings shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceedings in the event translations are required and other relevant factors.

In the present case, the registration agreement for the domain name in dispute was made in the Korean language. However, the Panel notes that the website was in English, and that the Former Registrant and/or Respondent have demonstrated via written e-mails sufficient ability communicating in the English language.

On the other hand, Complainant is not able to communicate in Korean and therefore, if Complainant were to submit all documents in Korean, the administrative proceeding would be unduly delayed and Complainant would have to incur substantial expenses for translation. Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under paragraph 11 of the Rules, that (i) English shall be the language of administrative proceeding in this case, but that (ii) Respondent’s response in the Korean language shall be considered by the Panel. See Deutsche Messe AG v. Kim Hyungho., WIPO Case No. D2003-0679.

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Moreover, under paragraph 14(b) of the Rules, it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”

In light of the above, the Panel may draw such inferences from Respondent’s failure to comply with the Rules as he considers appropriate (see paragraph 14(b) of the Rules; see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

Under paragraph 4(a) of the Policy, Complainant must prove each of the following:

(i) the domain name is identical or confusingly similar to Complainant’s trademark or service mark;

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

Complainant’s marks are registered in the European Union, the USA, the Republic of Korea and in other countries. Complainant owns numerous marks, including the mark INVESTMENTS IFIL as well as the registration for the domain name <ifil.it>. The disputed domain name incorporates the distinctive element of Complainant’s INVESTMENTS IFIL mark and is identical to Complainant’s company name. The suffix “.com” does not contribute to distinguish the disputed domain name from Complainant’s mark. While Complainant appears to claim rights in a registered mark for “IFIL Investments”, the Panel has been unable to find any evidence of such mark in the case file. However, in view of the Panel’s above finding, it is unnecessary to consider the issue further in the present decision.

Therefore, the Panel finds that the domain name is confusingly similar to Complainant’s mark pursuant to Paragraph 4(a)(i) of the Policy.

According to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in the domain name. In connection with the burden of proof, several WIPO UDRP decisions have held that “once a Complainant establishes prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to Respondent to rebut the showing” (see among other cases, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).

Complainant has asserted that Respondent has no relationship with or authorization from Complainant to use its mark; the Panel notes that there is nothing in the record to suggest that Respondent has been commonly known by the domain name; the Panel further notes that Respondent is not, and has not been, commonly known by the domain name. The Panel’s view is that these facts must be taken as sufficiently established in the present case, given that they have not been contested by Respondent.

Respondent’s response is not persuasive. Therefore, Respondent has failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in the domain name under paragraph 4(c) of the Policy.

Accordingly the Panel holds that Respondent has no rights or legitimate interests in the domain name pursuant to paragraph 4(b) of the Policy.

Under past UDRP decisions (see for instance Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (see Section 2), a well-established principle is that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since Complainant’s marks are well-known, it is very unlikely that Respondent, at the time of registration of the domain name or thereafter, was not aware that he was infringing Complainant’s mark.

The Panel also notes that Respondent and/or affiliated parties appear to have been involved in other domain name disputes.

The Panel further notes in passing that, at the time of drafting, Complainant’s company name appears at the top of the list of hits generated when the term “IFIL” is entered into a Google search. The Panel further notes that while Respondent claims that Complainant’s mark is not well-known, it does not deny knowledge of Complainant’s mark. The Panel is satisfied on the evidence before it that Complainant does indeed appear to be widely known in the area of investment services, and that Respondent was in all likelihood aware of this fact. It would also have been reasonably foreseeable to Respondent that one of the consequences of registering the disputed domain name <ifil.com> would be to prevent Complainant from doing so, and that Complainant may very well have an interest in acquiring the disputed domain name from Respondent. The prospects for confusion between the disputed domain name and Complainant’s trademark would also have been readily apparent.

Accordingly, the Panel concludes that Respondent registered the domain name in bad faith.

In regards to use, the Panel notes that Complainant has asserted, and Respondent has not sought to contest, that the domain has previously been used, inter alia, to provide links, including to sites of Complainant’s competitors. The Panel further notes that Complainant has provided evidence of offers to sell the disputed domain name to Complainant for a substantial sum, although it appears that such offers came from the Former Registrant which it appears from Respondent’s contentions was in fact a former, now bankrupt, company owned by Respondent. However this may be, the disputed domain currently appears to redirect to a website titled “My Media” in Korean that provides internet news services. Respondent claims that the disputed domain name has been redirected to this site while he prepares to use the domain name in connection with a job search service. However, no evidence of such preparations has been provided by Respondent. In the circumstances, the Panel finds it difficult to conceive of any use of the disputed domain name that would not amount to an infringement of Complainant’s trade mark rights.

In light of the above, the Panel concludes that Complainant has on balance proven bad faith in registration and use on the part of Respondent.

Complainant has prevailed on its claim and, therefore, to the extent that Respondent’s contentions may amount to an allegation of reverse domain name hijacking, it is unnecessary for the Panel to consider the issue further in the present case.

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <ifil.com> be transferred to Complainant.

Thomas P. Pinansky
Presiding Panelist

Dr. Jung Wook Cho

Panelist

Dr. Luca Barbero

Panelist