WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Calligaris S.p.A. v. Domain Administrator, Fundacion Private Whois
Case No. D2014-0156
1. The Parties
The Complainant is Calligaris S.p.A of Manzano, Italy, represented by Perani Pozzi Associati - Studio Legale, Italy.
The Respondent is Domain Administrator, Fundacion Private Whois of Panama.
2. The Domain Name and Registrar
The disputed domain name, <calligarisusa.com> (the “Disputed Domain Name”), is registered with Internet.bs Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2014. On January 31, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 4, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the Disputed Domain Name. The Registrar also indicated that the language of the registration agreement is English.
The Center verified that the 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 February 5, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 26, 2014.
The Center appointed Lynda M. Braun as the sole panelist in this matter on March 4, 2014. 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
The Complainant is a leading Italian furniture company which manufactures and distributes chairs, tables, beds, sofas, storage units and accessories internationally. The Complainant was founded in 1923 by Antonio Calligaris and is currently owned by Alessandro Calligaris and based in Manzano, Italy. The Complainant employs 600 people worldwide and distributes its products in over 90 countries.
The Complainant is the owner of numerous trademark registrations in the United States and in many countries throughout the world (the “CALLIGARIS Mark”). The Complainant’s CALLIGARIS Mark are distinctive and well-known all around the world.
The Complainant is the registrant of numerous domain names, including <calligaris.com>, <calligaris.org>, <calligaris.biz>, <calligaris.it>, <calligaris.us> and many others.
The Disputed Domain Name resolves to the website “www.calligarisusa.com”, which is a landing page containing pay-per-click hyperlinks or sponsored listing advertisements. The links contain information about furniture products and services, among other things, including furniture products created by the Complainant’s competitors.
On October 7, 2013, the Complainant’s attorney sent a cease and desist letter to the Respondent, informing the Respondent of the Complainant’s rights in the CALLIGARIS Mark and requesting that the Respondent transfer the Disputed Domain Name to the Complainant. The Respondent did not respond to the letter.
5. Parties’ Contentions
The following are the Complainant’s contentions:
- The Disputed Domain Name is confusingly similar to the Complainant’s CALLIGARIS Mark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Disputed Domain Name was registered and is being used in bad faith.
- The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s CALLIGARIS Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the CALLIGARIS Mark based on longstanding use as well as its United States and foreign trademark registrations for the CALLIGARIS Mark. The Disputed Domain Name consists of the CALLIGARIS Mark followed by the geographic or descriptive term “usa” and the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of geographic or descriptive terms. F. Hoffman-La Roche AG v. Globex International, WIPO Case No. D2006-1008. The mere addition of the country abbreviation “usa” to the Complainant’s CALLIGARIS Mark does not diminish, but rather adds to the confusing similarity between the Disputed Domain Name and the Complainant’s trademark. See Gannett Co., Inc. v. Henry Chan, WIPO Case No. D2004-0117 (a domain name incorporating a well-known trademark combined with a geographically descriptive term is confusingly similar to the trademark); Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438 (the addition of the term “korea” in <ikea-korea.com> does not prevent the domain name from being confusingly similar to the Complainant’s trademark).
Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether domain names are identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. The Respondent’s lack of reply notwithstanding, there is no evidence in the record that the Respondent is in any way associated with the Complainant.
Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use the CALLIGARIS Mark. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that the Respondent is improperly using the Disputed Domain Name for commercial gain.
The Respondent registered the Disputed Domain Name long after the CALLIGARIS Mark had become world famous and distinctive. The only use that the Respondent has made of the Disputed Domain Name is to host a website that contains hyperlinks to sponsored ads, including competitors of the Complainant. Such use does not give rise to a right or legitimate interest on the part of the Respondent. The Chase Manhattan Corp. v. Whitely, WIPO Case No. D2000-0346.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt 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.
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent's bad faith pursuant to paragraph 4(b) of the Policy.
First, based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with Complainant’s CALLIGARIS Mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Respondent’s registration and use of the Disputed Domain Name indicate that such registration and use has been done for the specific purpose of trading on the name and reputation of the Complainant and its CALLIGARIS Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain” and “[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law.”).
The Respondent’s action of registering the Disputed Domain Name and using it to direct Internet traffic to its website evidences a clear intent to disrupt the Complainant’s business, deceive customers and trade off the Complainant’s goodwill by creating an unauthorized association between the Respondent and the Complainant’s CALLIGARIS Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552.
Second, the website to which the Disputed Domain Name currently resolves contain hyperlinks that are pay-per-click sponsored ads that promote, among other things, furniture products and services, including those of the Complainant’s competitors. As such, the Respondent is not only trading on consumer interest in the Complainant in order to generate Internet traffic and to commercially benefit from the sponsored links that appear on the website, but the Respondent also derives commercial advantage in the form of referral fees. In the Panel’s view, this constitutes bad faith. Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; Lewis Black v. Burke Advertising, LLC, WIPO Case No. D2006-1128. Further, when the links on pay-per-click pages are based on the trademark value of a complainant’s domain name, the trend in UDRP decisions is to recognize that such practices constitute bad faith. See, e.g., Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006 (pay-per-click landing page not legitimate where ads are keyed to the trademark value of the domain name); The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340 (same); Brink’s Network, Inc. v. Asproductions, WIPO Case No. D2007-0353 (same).
Third, the Respondent has engaged in a pattern of behavior which consists of registering domain names containing well-known trademarks and using them to prevent the owner of the trademark from reflecting the trademark in a corresponding domain name. Such conduct is evidence of the Respondent’s bad faith. Siemens Aktiengesellschaft v. Telmex Management Services, Inc., WIPO Case No. D2003-0995; Policy, paragraph 4(b)(ii). Several UDRP cases in which “Domain Administrator/Fundacion Private Whois” or “Fundacion Private Whois” was the Respondent are:
- Bright Imperial Ltd. v. Domain Administrator Fundacion Private Whois/INTEvraccddhb2fe, WIPO Case No. D2013-0292;
- FIL Limited v. Domain Adminstrator Fundacion Private Whois, WIPO Case No.D2013-0849;
- Intesa Sanpaolo S.p.A. v. Fundacion Private Whois, WIPO Case No. D2013-1437;
- Agaplesion gemeinnützige Aktiengesellschaft v. Domain Administrator Fundacion Private Whois, WIPO Case No. D2012-2510.
Indeed, such involvement into multiple UDRP proceedings has been held to support a finding of bad faith. Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556 (citing Respondent’s history in UDRP proceedings and registration and use of domain names incorporating the VOLVO trademark as evidence of bad faith).
Further, the Panel finds that the Respondent’s bad faith can also be inferred from its lack of reply to the cease and desist letter sent by the Complainant’s counsel prior to commencing this proceeding. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210.
Finally, the Respondent knew or should have known of the Complainant’s rights in its trademarks when registering the Disputed Domain Name. The Complainant’s CALLIGARIS Mark is extremely well-known and widely used and the Complainant’s CALLIGARIS Mark has been in use by the Complainant for decades. Thus, it strains credulity to believe that the Respondent had not known of the Complainant or its CALLIGARIS Mark when registering the Disputed Domain Name or creating its website to which the Disputed Domain Name resolves. Indeed, when a domain name contains a well-known trademark, no other action aside from registering the domain name is required for a finding of bad faith. See Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 (a finding of bad faith may be made where Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the domain name). This conduct is indicative of bad faith. See Champion Broadcasting System, Inc. v. Nokta Internet Technologies, WIPO Case No. D2006-0128.
Based on the foregoing, the Panel concludes that the Respondent registered and is using the Disputed Domain Name in bad faith.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <calligarisusa.com> be transferred to the Complainant.
Lynda M. Braun
Date: March 12, 2014