WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Shelbox SRL v. Alliance Mobilhome
Case No. D2008-0404
1. The Parties
The Complainant is Shelbox SRL of Castelfiorentino, Florence, Italy, represented by Notarbartolo & Gervasi S.p.A., Italy.
The Respondent is Alliance Mobilhome of Agde, France.
2. The Domain Name and Registrar
The disputed domain name <shelbox.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2008. On March 17, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On March 17, 2008, Network Solutions, LLC 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”), 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 20, 2008. In accordance with paragraph 5(a) of the Rules, the due date for Response was April 9, 2008. The Respondent did not submit any response within the deadline. Accordingly, the Center notified the Respondent’s default on April 10, 2008.
The Center appointed Brigitte Joppich as the sole panelist in this matter on April 18, 2008. 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 paragraph 7 of the Rules.
The Panel has noted that the electronic version of the Complaint appears to have been erroneously sent to the Respondent at the email address “firstname.lastname@example.org” instead of “email@example.com”, as indicated in the applicable WHOIS data. However, the hard copy of the Complaint appears to have been effectively notified. The Panel is thus satisfied that any prejudice to the Respondent arising from the error contained in the email address is not likely to be extensive. However, for the avoidance of doubt, the Panel instructed the Center to notify the electronic version of the Complaint once more to the Respondent at the correct email address, providing the Respondent with a further 7 days to indicate whether it intends to take an active part in the current proceedings. The Respondent did not reply to such notification either.
4. Factual Background
The Complainant is an Italian company established in 1996, doing business in the field of manufacturing and installing mobile homes. The Complainant is the Italian leader and one of the leading companies in Europe in the field of mobile homes, having its head office and main production plant in Castelfiorentino (Italy), further production centers in Barcelona (Spain) and in Pola (Croatia) and subsidiaries in France (where the Respondent is located) and in Spain. The Complainant employs approximately 300 people and scored a 58.8 million Euro turnover in 2006, with a production of 2,800 mobile homes and 2,000 prefabricated modules.
The Complainant is the registered owner of a number of pending or registered trademarks including the word “Shelbox”, inter alia International Registration No. 928272 SHELBOX, registered on May 15, 2007, and Community Trademark No. 005781331 SHELBOX, registered on March 26, 2008 (the “SHELBOX Marks”).
Furthermore, the Complainant has used its name as a mark on the Internet since 2001 through its website at “www.shelbox.it”, available from the beginning also in French, and registered <shelbox.it> as a domain name on March 18, 2000.
The disputed domain name was first registered on January 18, 2002, and is currently used to redirect users to the website at “http://mobilhhomes.free.fr” where the Respondent sells new and used mobile homes.
The Complainant, through its trademark attorneys, sent a cease and desist letter to the Respondent on April 10, 2007. The Respondent replied by email on the same day, stating that the domain name is for sale at a price of EUR 50,000.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The domain name <shelbox.com> is identical with the Complainant’s company name and mark SHELBOX.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The domain name does not reflect the Respondent’s name nor any of its common law or registered marks. Furthermore, the Respondent is not an authorized dealer of the Complainant’s mobile homes and none of the Complainant’s products seem to be on sale at its website.
(3) The Complainant finally contends that the domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant contends that at the time of the registration of the domain name it was already known in the specialized field of mobile homes in France because of the Complainant’s participation in the trade fair at La Grande Motte in France since 2001. Furthermore, the Respondent must have been aware of the Complainant and its registered and unregistered trademark rights since it bought several mobile homes for its camping site from the Complainant right around the time when it registered the disputed domain name. With regard to bad faith use, the Complainant contends that the Respondent intentionally attempted to attract for commercial gain, Internet users to its website at “http://mobilhomes.free.fr”, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. Finally, the Complainant contends that the Respondent is acting in bad faith because it offered the domain name for sale at a price of EURO 50,000.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s SHELBOX Marks in which the Complainant has exclusive rights and is therefore identical to such marks.
It is well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374; Teradyne, Inc v. 4Tel Technology, WIPO Case No. D2000-0026).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name it is consensus view among panelists that the Complainant has to make a prima facie case to fulfill the requirements under paragraph 4(c) of the Policy. The burden of proving that the Respondent has rights or legitimate interests in the disputed domain name will then lie with the Respondent.
The Complainant has asserted that the Respondent has neither been licensed nor acquired any other permission from the Complainant to use the SHELBOX Marks and has therefore fulfilled its obligations under paragraph 4(c) of the Policy. The Respondent has not denied these assertions.
The Panel thus finds that the Complainant has proven that the Respondent has no rights or legitimate interests under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that the respondent has registered or 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 respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith.
The first issue to be dealt with is the fact that the Complainant’s trademark registrations were applied for and registered quite some time after the registration of the disputed domain name. A domain name registration is generally not in bad faith if the domain name is registered before a trademark right is established as the registrant cannot contemplate the complainant’s non-existent right (cf. John Ode dba ODE and ODE - Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074; Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827; PrintForBusiness B.V v. LBS Horticulture, WIPO Case No. D2001-1182).
However, in certain situations, where the respondent is clearly aware of the complainant, and where it is evident that the aim of the registration was to take advantage of the confusion between the domain name and any potential rights of the complainant, bad faith can be found. This often occurs when the respondent is aware of the complainant’s potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant’s enterprises (cf Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc), WIPO Case No. D2003-0320; WIPO Overview of WIPO Panel Views on Selected UDRP Questions). Furthermore, previous panels have recognized that unregistered or common law trademark rights may be sufficient for the purposes of establishing bad faith pursuant to Paragraph 4(a)(iii) of the Policy (see MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205; British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050).
The Complainant provided evidence that it had common law trademark rights in the mark SHELBOX at the time of the registration of the disputed domain name. The fact that the disputed domain name was registered before the Complainant applied for registration of its mark does not as such hinder a finding of bad faith registration under paragraph 4(a)(iii) of the Policy. On balance, the Panel is convinced that the Respondent knew about the Complainant and its common law trademark rights at the time of the registration of the disputed domain name in 2002 for the following reasons:
- The Complainant’s business was established already in 1996 and the Complainant has been active in France since 2000,
- the Respondent manages a camping site in France,
- the Respondent is seemingly active in the business of buying and selling mobile homes, while the Complainant is one of the leading companies in Europe in the field of mobile homes, and
- the Respondent apparently bought several mobile homes from the Complainant shortly after registration of the disputed domain name.
As to bad faith use, by fully incorporating the SHELBOX Marks into the domain name and by using the domain name to redirect users to the website at “http://mobilhomes.free.fr” where the Respondent offers mobile homes from direct competitors of the Complainant for sale, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for the purpose of selling mobile homes to Internet users searching for the Complainant’s website. The use and exploitation of the Complainant’s mark is to be regarded as use in bad faith under paragraph 4(b)(iv) of the Policy.
This inference of bad faith use is further supported by the fact the Respondent offered to transfer the disputed domain name to the Complainant at a price of EURO 50,000 which is more than any out-of-pocket costs directly related to the domain name that he might have incurred. Therefore, the Respondent has also acted in bad faith under paragraph 4(b)(ii) of the Policy.
The Panel is therefore satisfied that the Respondent also used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy.
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 <shelbox.com> be transferred to the Complainant.
Dated: May 9, 2008