WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Campagnolo S.r.l. v. Marzena Zytka
Case No. D2008-1037
1. The Parties
The Complainant is Campagnolo S.r.l., Vicenza, Italy.
The Respondent is Marzena Zytka, Choszczno, Poland.
2. The Domain Name and Registrar
The domain name at issue, <campagnoloshop.com>, is registered with CSL Computer Service Langenbach GmbH dba Joker.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2008. On July 10, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On July 14, 2008, 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”), 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 July 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2008. The Response was filed with the Center on July 22, 2008.
The Center appointed M. Scott Donahey as the sole panelist in this matter on August 12, 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 the Rules, paragraph 7.
4. Factual Background
Complainant is the current owner of more than 120 trademark registrations in more than 50 countries, including Poland, the country of residence of Respondent, consisting of or comprising the mark CAMPAGNOLO. The mark is widely known in bicycle circles and is associated with Complainant, the manufacturer of high-end components and apparel for racing bikes and bicyclists. Complainant holds European Community marks dating from June 16, 1998 and registrations in Poland dating to October 21, 1986. Complaint, Annexes 4 and 6.
Respondent registered the domain name at issue on June 12, 2005. Respondent listed as a contact in the Whois one Danuta Badziag, whose organization is listed as Raddiscount and whose email is listed as “email@example.com”. Danuta Badziag is the registrant of the domain name <raddiscount.de>, which resolves to a web site at which Complainant's trademarked products are offered for sale. Complaint, Annexes 8 and 9. Danuta Badziag also registered the domain name <campagnolo.pl> on April 27, 2007, and later transferred the domain name to Respondent. Complaint, Annexes 10 and 11. Complainant bought the domain name <campagnolo.pl> from the respondent in or about November 2007. Complaint Annex 12.
At the time the Complaint was filed the domain name was parked and was not being used. Complaint, Annex 7.
5. Parties' Contentions
Complainant contends that the domain name at issue consisting of Complainant's mark plus the addition of the common English word “shop” is confusingly similar to Complainant's CAMPAGNOLO mark. Complainant further contends that Respondent has no rights or legitimate interests in respect of the domain name at issue, since Respondent is not authorized to use the Complainant's mark and has no connection to Complainant or its products. Nor is Respondent making any use of the domain name at issue. Complainant also alleges that the domain name at issue was registered and is being used in bad faith, since the CAMPAGNOLO mark is known world wide and is well-known in the sport of bicycle racing and the community of fans and participants in bicycle racing. By listing Danuta Badziag among the contacts in the Whois, Respondent was obviously aware of Complainant, as Danuta Badziag is offering Complainant's trademarked products on the web site to which Danuta Badziag's <raddiscount.de> domain name resolves. Moreover, Respondent was contacted by Complainant and informed of its trademark rights in 2007, at which time Complainant purchased the domain name <campagnolo.pl> from Respondent.
Respondent contends that the term “campagnolo” is a common Italian word meaning “rural” or “farm worker” and that the Italian word when combined with the common English word “shop” “means in Italian a shop with rural products.” Respondent states that the domain name at issue was purchased from Danuta Badziag so that Respondent could sell rural products in Respondent's online shop. Respondent asserts that Respondent is currently planning to sell rural products under this domain name.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
2) that the respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The domain name at issue consists of the registered mark CAMPAGNOLO to which the English word “shop” is affixed. Even if “campagnolo” were a common Italian word, panels will generally not second guess a competent trademark authority who has found that the term was entitled to be registered as a mark. Moreover, an Italian/English dictionary does not show that “campagnolo” is an Italian word. The Italian word meaning “rural” or countryman” is “campagnuolo” with a “u.” The “u” is not present in Complainant's widely-known mark.
Moreover the addition of the common English word “shop” to Complainant's widely -known mark does not serve to defeat confusing similarity. Unites States Olympic Committee v. MIC, WIPO Case No. D2000-0189 (“us” plus “olympics” plus “store” still confusingly similar to OLYMPICS trademark).
Accordingly, the Panel finds that the domain name at issue is confusingly similar to Complainant's mark.
B. Rights or Legitimate Interests
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.
Complainant has shown by the evidence of record that Respondent is not known by the domain name at issue, is not using the domain name at issue, and that Respondent is not authorized to use Complainant's mark, nor is Respondent in any way connected to Complainant. This is sufficient to require Respondent to demonstrate rights and legitimate interests in respect of the domain name.
Respondent alleges that “campagnoloshop” “means in Italian a shop with rural products.” This assertion is ludicrous. First, the word that means rural is “campagnuolo,” not “campagnolo.” Second, the word “shop” is an English word and has no meaning in Italian. Third, even if “campagnolo” meant “rural” in Italian and “shop” was the Italian equivalent of the English word “shop,” the combination of the two would indicate a “rural shop,” and not a “shop with rural products.”
The assertion that Respondent intends to set up an online “shop” that sells “rural products” is not sufficient to give Respondent rights and legitimate interests under the Policy. The Policy requires that a respondent show that prior to having received notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. Policy, paragraph 4(c)(i). This Respondent has failed to do. Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue.
C. Registered and Used in Bad Faith
Respondent registered the domain name at issue well after Complainant had registered its CAMPAGNOLO mark in Europe. Moreover, at the time that Respondent registered the domain name at issue, Respondent listed Danuta Badziag as a contact person in the Whois. Danuta Badziag operates an online web site at which Complainant's trademarked products are offered for sale. Moreover, Respondent purchased the domain name <campagnolo.pl> from Danuta Badziag and resold it to Complainant. The Panel has no difficulty in finding that Respondent has registered and is using the domain name at issue in bad faith.
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, <campagnoloshop.com>, be transferred to the Complainant.
M. Scott Donahey
Dated: August 20, 2008