WIPO Arbitration and Mediation Center


MC Projects B.V. Maastricht, succursale de Granges-Paccot v. Tino Di Febo

Case No. D2013-0520

1. The Parties

The Complainant is MC Projects B.V. Maastricht, subsidiary of Granges-Paccot, Switzerland, represented by Dreyfus & associés, France.

The Respondent is Tino Di Febo of Città Sant’Angelo, Pescara, Italy, self-represented.

2. The Domain Name and Registrar

The disputed domain name <uniroyal.tel> is registered with French Connexion (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2013. On March 15 and 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 22, 2013, 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 Complainant filed an amended Complaint on March 22, 2013.

On March 22, 2013 the Center notified the Parties that the Complaint was filed in French but that according to the information received from the Registrar the language of the Registration Agreement is English. Accordingly, the Complainant submitted the Complaint translated in English on March 27, 2013. At that stage the Respondent did not submit any comment as to the language of the proceeding. The Center thus proceeded in English only.

The Center verified that the Complaint together with the amended Complaint and the translated Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 the Respondent of the Complaint, and the proceedings commenced on April 2, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response upon extension was April 26, 2013. The Response was filed with the Center on April 24, 2013.

Between April 5 and April 15, 2013, the Respondent exchanged email communications with the Registrar copying the Center.

The Center appointed Prof. François Dessemontet as the sole panelist in this matter on May 3, 2013. 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

MC Projects B.V. Maastricht, having a subsidiary in Granges-Paccot, is a company specialized in tire manufacturing, the trademark of which UNIROYAL exists since many decades. It is the registered owner of notably the following trademark registrations: UNIROYAL, Italian Trademark N° 184859, dated February 16, 1963, duly renewed and covering goods in the international class 12, and N° 227721, dated November 30, 1967, duly renewed and covering goods in the international class 12.

Further, the Complainant operates inter alia domain names incorporating its trademark in order to promote its wares, goods and services, for example <uniroyal.fr>, registered on February 17, 2004 and <uniroyal.mobi> registered on September 18, 2006.

The activities of the Respondent, who is a physical person, have not been mentioned in the proceeding.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s trademark UNIROYAL, since it reproduces that trademark in its entirety. The Complainant has used its trademark in Italy and around the world. As a consequence, the public has learned to perceive the wares, goods and services offered under that trademark as being those of the Complainant.

Further, the Complainant points out that the Respondent has no right nor legitimate interest in respect of the disputed domain name. The Respondent has no prior rights nor is he affiliated with the Complainant or authorized by the Complainant to use and register its trademark, or to seek the registration of a domain name incorporating the trademark. The trademark UNIROYAL has been registered decades before the registration of the disputed domain name.

Moreover, the Respondent never answered the Complainant’s letters nor did he demonstrate use, or preparation to use the disputed webpage. Only the Respondent’s email address is mentioned.

The term “Uniroyal” is not a generic word in Italian, having no meaning in that language.

The Complaint further states that the Respondent has registered the disputed domain name in bad faith, being aware of the existence of the trademark that has been incorporated in its entirety. The use of the disputed domain name could only happen in bad faith, as the trademark is well-known. Besides, the only reason why the Respondent might have registered that domain name would appear to be that he wished to prevent the Complainant to own the disputed domain name. That is not a legitimate purpose. The Respondent has adopted a purely passive conduct in regard of that domain name since the display of the email address is common to all “.tel” domain names.

For all those reasons, the Complainant’s prayer is that the disputed domain name be transferred to it.

B. Respondent

The Respondent has submitted a text under the title “Counter-arguments” on April 24, 2013, after having requested in vain an extension of the deadline of 10 days, while only an extension of two days was granted by the Center. Previous e-mails copied to the Center exchanged between the Respondent and the Registrar appear not to bear on the issues concerning the disputed domain names, but on the lock having been applied to other domain names also belonging to the Respondent. Therefore, the Panel will deal only with the arguments that were raised in the counter-arguments of April 24, 2013.

First, the Respondent mentions that the disputed domain name in question has been regularly registered in April 2012, after the non-renewal by the prior owner.

Second, the Respondent mentions that he has never used the disputed domain name at issue with a view to create a confusion between the owner of the trademark UNIROYAL and his own services, since the services he would offer are quite different from the ones of the Complainant.

Third, the Respondent argues that the Complainant attempts to gain a protection for its trademark in all areas, although only particular goods belonging to the class recited above fall under the legal protection afforded to the trademark UNIROYAL. In fact, the Complainant would attempt to enjoy a monopoly on the search engines and for all business activities. The Respondent daringly describes the term “uniroyal” as belonging to the “everyday jargon”. He also blames the Complainant for not having registered the disputed domain name prior to him.

For all these reasons the Respondent’s prayer is that the transfer of the disputed domain name be rejected.

6. Discussion and Findings

Under the applicable Rules, three criteria must be met for a Panel to order the transfer of a disputed domain name. The domain name must be identical or confusingly similar to a valid trademark. The Respondent must fail to show a right to the domain name or legitimate interests for its use. Finally, the domain name must have been registered and used in bad faith. Each of those conditions is met in the present case as will be seen below.

A. Identical or Confusingly Similar (Policy, par. 4(a)(i); Rules par. 3 (b)(viii), (b)(ix)(1))

The incorporation of a trademark in a domain name is usually sufficient to create a domain name “confusingly similar” to the trademark, as is pointed out by the Counsel for Complainant with a citation of RapidShare AG. Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059. A generic TLD such as “.tel” is irrelevant to dispel the risk of confusion (see Titoni AG v. Runxin Wang, WIPO Case No. D2008-0820 and Alstom v. Itete Peru S.A., WIPO Case No. D2009-0877).

The Respondent cannot be followed when he states that the name “Uniroyal” would belong to “everyday jargon”. “Uniroyal” in all countries of the world refers to the tires of the brand UNIROYAL and no other tires.

Indeed, the Panel finds that UNIROYAL is a world famous trademark under the relevant provisions that will be cited below (B) and that the disputed domain name is identical to the trademark in which the Complainant has rights. Therefore, paragraph 4(a)(i) of the Policy is hereby satisfied.

B. Rights or Legitimate Interests

The Complainant mentions that the trademark UNIROYAL and the manufacturing company owning it (through its subsidiary) enjoy a worldwide reputation. The Respondent replies that the protection of the trademark should be limited to the goods claimed in the registration of that trademark by reference to the class 12 under the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.

That argument seems to stem from a misconception of the notion of “famous trademark” as opposed to the sheer “well-known trandemark”. Art. 6bis of the Paris Convention for the protection of Industrial Property as amended mentions only the “well known trademark” and prohibits a parallel registration of well-known trademarks in different countries members of the Union of Paris for the protection of industrial property for similar wares and services. However, UNIROYAL is not only a well-known trademark within the meaning of Art. 6bis Paris Convention, but also a famous trademark that will be protected in most European countries under the provision corresponding to Art. 4 (4)(a) of the European Directive 2008/95/CE of October 22, 2008, that reads : “4. Any Member State may, in addition, provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where, and to the extent that (a) the trade mark is identical with, or similar to, an earlier national trade mark within the meaning of paragraph 2 and is to be, or has been, registered for goods or services which are not similar to those for which the earlier trade mark is registered, where the earlier trade mark has a reputation in the Member State concerned and where the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark”. The protection of famous trademark is thus independent of the classes of goods or services for which they are protected (see for all J. Azéma, Marques renommées et marques notoires en droit européen et en droit français, in J. de Werra ed., Marques notoires et de haute renommée/ Well-Known and Famous Trademarks, Genève 2010, 23 ff.). In Italy, the former Directive 89/104/CE of the European Union with the same content in this regard has lead to the adoption of Art. 12 (1)(f) of the Code of Intellectual Property that provides that “signs are not new, pursuant to Article 7, if as of the date of filing the application any of the following applies: (f) they are identical ... or similar to trademarks already registered by others in the country or having effect in the country following filing of an application on an earlier date or having effect from an earlier date based on the right of priority or of a valid claim of seniority for goods or services even if not similar, when the earlier trademark has, in the [European Union], in case of a Community trademark, or in the country, a reputation and when the use without due cause of the later trademark would take unfair advantage [of], or be detrimental to, the distinctive character or the reputation of the earlier trademark” (emphasis by the Panelist) (see S. Mulder, Well-known and famous trademark protection in Italy, in World Trademark Review 2008, 72 ff.). Therefore, there is no doubt that the argument put forward by the Respondent on the alleged dissimilarity of his services and the ones offered as well as goods by the Complainant cannot be followed as it is contrary to the present Italian and European law. Besides, the Panel notes that the Respondent did not precise what services exactly he intends to offer should once his domain name be active, which in itself is enough to prevent his defense to be accepted as it does not appear based in fact.

C. Registered and Used in Bad Faith

UNIROYAL being obviously a famous trademark, it may be simply inferred from the circumstances of the case that the Respondent could not ignore the existence of UNIROYAL as a protected trademark at the time he registered the disputed domain name. Would he have believed in good faith that the protection did not extend to any use of that famous trademark likely to cause confusion, but only to the registration and use of the disputed domain name for similar goods and services, the Respondent would have committed a mistake of law. A well-known principle of European continental law is that “error iuris nec nocet nec prodest” (“no one can benefit or be harmed only by reason of a mistake as to the rule of law”). Some exceptions may apply in particular contexts such as the conclusion of a contract or criminal law; those exceptions need not be examined here as they are not present in the facts of the case. The consultation of a lawyer would immediately have dispelled that error on the Italian and European law, but such consultation appears not even to have been necessary. In all probabilities, the Respondent who seems to be well aware of the mechanism through which domain names are registered and exploited might have found the necessary information by some click on motor engines. His bad faith derives from the nature of the registration and the parallel registration of another well-known trademark (UNIROYAL) in similar circumstances (see Compagnie Générale des Etablissements Michelin v. Tino di Febo, WIPO Case No. D2012-0519).

An additional element of bad faith results from the conduct of the Respondent, who does not use nor, apparently, prepares to use the disputed domain name.

Nonetheless, the Panel does not follow the Complainant’s argumentation when its Counsel notes that the “Respondent (would have not availed) himself of his right to respond to Complainant”, since the file shows that letters by the Respondent’s Italian Counsel were sent in Fall 2012.

Further, the Panel does not admit that the fact of “uniroyal” not having any definite meaning in Italian would be relevant in the present case. A famous trademark may also stem from a generic word having acquired a second meaning (such as “Play Boy”). Perhaps the intended argument was actually that the trademark UNIROYAL cannot be proven to have degenerated in a generic word in Italy. In that sense the Counsel for Complainant is right, of course.

In any case, this Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <uniroyal.tel> be transferred to the Complainant.

François Dessemontet
Sole Panelist
Date: May 8, 2013