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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Recordati Industria Chimica e Farmaceutica S.P.A., Recordati S.A. Chemical and Pharmaceutical Company v. John D. Ross

Case No. D2014-0816

1. The Parties

The Complainants are Recordati Industria Chimica e Farmaceutica S.p.A. of Milan, Italy, and Recordati S.A. Chemical and Pharmaceutical Company of Luxembourg, represented by Studio Legale Turini, Italy.

The Respondent is John D. Ross of Syracuse, New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <au-recordati.com> is registered with Todaynic.com, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 16, 2014. On May 16, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 17, 2014, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amended Complaint on May 21, 2014.

The Center verified that the Complaint together with the amended 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 May 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 13, 2014.

The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on June 20, 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 Complainants are related pharmaceutical firms engaged in discovering and developing innovative medical products. The Complainant "Recordati Industria Chimica e Farmaceutica S.p.A" has been developing medicine since its founding in 1949 and is currently a leading company in the pharmaceutical industry.

The Complainants own trademark registrations in different countries containing the element RECORDATI such as:

- United States Trademark Registration No. 0695541 RECORDATI (word mark) filed on May 27, 1959, registered on April 5, 1960, for goods and services in Class 5 including medical products.

- European Community Trademark Registration No. 000999409 RECORDATI (figurative) filed on November 24, 1998, registered on February 21, 2000, for goods in services in Classes 1, 3 and 5 including medical products.

The Complainants have registered the domain name <recordati.it> incorporating the RECORDATI trademark which is resolving into the corporate website of the Complainants.

The disputed domain name <au-recordati.com> has been created and registered by the Respondent on December 22, 2013 and expires on December 22, 2014. It is no longer possible to access the website.

5. Parties' Contentions

A. Complainant

The Complainants contend that all three criteria stated in paragraph 4(a) of the Policy are met in the present case.

(1) The Complainants state that the disputed domain name is identical or confusingly similar to their trademark.

Since the 50s, RECORDATI has become a well-known trademark in the field of pharmaceutical industry.

The disputed domain name is highly similar to the Complainants' trademark due to the fact that the trademark RECORDATI is included in the disputed domain name in its entirety. Hence people are led to assume a connection between the Respondent and the Complainants.

(2) Furthermore, the Complainants allege that the Respondent has no rights or legimate interests in respect of the disputed domain name.

There was no authorization, license or other allowance for using the name Recordati given to the Respondent by the rightful owners of the trademark. Therefore he has no rights or legimate interests in the disputed domain name. This, the Complainants state, has been the UDRP panels' assumption in other comparable cases such as Media West - GRS, Inc., Media West - MNC, Inc., Ganett Pacific Corporation, Gannett Co., Inc., Ganett River States Publishing Corp., Guam Publications and Incorporated v. Moniker Privacy Services / Forum LLC / Registrant(187640) info@fashionid.com, WIPO Case No. D2006-0478 where the panel conducted "the Respondents have also never been authorized by the Complainants to use the Complainants' marks, in any way, shape or form, […] which gives rise to a presumption that the Respondents cannot establish that they have rights or any legimate interest in the domain names."

Neither is the Respondent commonly known by that name.

(3) Finally, the Complainants state that the disputed domain name was registered and is being used in bad faith.

The Complainants argue that in other cases such as SportSoft Golf, Inc. v. Hale Irwins's Golfers' Passport, NAF Claim No. FA94956; Marriott International, Inc. v. John Marriot, NAF Claim No. FA94737; Canada Inc. v. Sandro Ursino and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com, NAF Claim No. FA95037, the UDRP panels confirmed a use in bad faith if the respondent knew or should have known of the earlier trademark and its registration before registering the website.

Due to the fact that RECORDATI has become a well-known trademark in the pharmaceutical industry in the last 60 years the Complainants state their disbelief that the Respondent did not know of their trademark prior to the registration of the disputed domain name.

According to the Complainants there is no proof that the Respondent made any reasonable efforts to inform himself about potential third party rights. As the disputed domain name is composed of the gTLD ".com" – the most common on the internet – the registration of the disputed domain name prohibits the Complainants from reflecting their trademarks in a corresponding domain name.

According to an annexed screenshot handed in by the Complainants, the Respondent made use of their tax identification number and trademark on the website at the disputed domain name. Furthermore, a person naming himself Mr. Olney used the email address […]@au-recordati.com for publishing a job offer for an Accountant Assistant in an alleged Australian branch of the Complainants using the Complainants' trademark RECORDATI, the logo and the company name Recordati SpA. As several mails from people who answered to the offer to Recordati Industria Chimica e Farmaceutica S.p.A show, the job offer was published with the intention of obtaining personal information including bank details.

B. Respondent

The Respondent did not reply to the Complainants' contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainants must prove that each of the following three elements is present:

(i) the disputed domain name is identical or confusingly similar to the Complainants' trademark; and

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

(iii) the disputed domain name has been registered and is being used in bad faith.

In the following, the Panel will discuss in consecutive order if each of these requirements are met here.

A. Identical or Confusingly Similar

The test for identity or confusing similarity under paragraph 4(a)(i) of the Policy demands a direct comparison between the Complainants' mark and the textual string of the disputed domain name which is claimed to affect the Complainants.

In the present case, the Complainants established that they have rights on the trademark RECORDATI due to the registration and regular renewal of trademark registrations for RECORDATI at the United States Patent and Trademark Office and the Office for Harmonization in the Internal Market.

The disputed domain name <au-recordati.com> consists the word "recordati" with the prefix "au-" and the gTLD ".com".

The Complainants' trademark RECORDATI is identical to the predominant part of the second-level-domain of the disputed domain name.

The prefix "au-" does not serve to differentiate the disputed domain name from the Complainants' trademark. "Au" is the country code for Australia and is traditionally used by Australian companies for their website accessible via domains with the top-level-domain ".com.au". Taking the emails from an alleged Australian office of the Complainants' companies into consideration, the prefix "au-" may therefore lead people to believe that the disputed domain name resolves into the Australian website of the Complainants.

All in all, the addition of the prefix "au-" does not impede the finding of similarity between the trademark and the disputed domain name. People are maybe led to believe that the disputed domain name is operated or at least approved by the Complainants.

In contrast, the gTLD does not affect the confusing similarity in any way due to the fact that it is a top-level-domain which people normally do not take into consideration when indentifying a website as to its origin. Top-level-domains are, in general, a mere code of information about the kind of owner or content on the website (e.g. a firm or an organization). Therefore, ".com" just indicates a worldwide operating business which is true for the Complainants.

Therefore the Panel comes to the conclusion that the Complainants have satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant is required to prove that a respondent has no rights or legitimate interests in the disputed domain name.

In the present case, the Complainants make a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on the Respondent, as ruled in Media West - GRS, Inc., Media West - MNC, Inc., Ganett Pacific Corporation, Gannett Co., Inc., Ganett River States Publishing Corp., Guam Publications and Incorporated v. Moniker Privacy Services / Forum LLC / Registrant (187640) info@fashionid.com, supra.

The Respondent did not show any proof of rights or legimate interests in the disputed domain name. As contended by the Complainants, the Respondent was not authorized, licensed or otherwise allowed to make use of their protected trademark. Also, there is no evidence that the Respondent is commonly known by the disputed domain name.

Therefore the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainants have to establish that the disputed domain name has been registered and is being used in bad faith by the Respondent.

Whether a disputed domain name has been registered and is being used in bad faith for the purposes of the Policy may be determined by evaluating the following criteria set forth in paragraph 4(b) of the Policy:

- (i) circumstances indicating that the registrant has registered or the registrant has 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 registrant's documented out-of-pocket costs directly related to the domain name;

- (ii) the registrant 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 registrant has engaged in a pattern of such conduct;

- (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor;

- (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location.

The Complainants have explained that they have become commonly known under their trademark in the field of pharmaceutical industry in the last 60 years. They state that the Respondent knew or should have known of their earlier rights. This thesis is proven by the evidence the Complainants provided showing that the Respondent used their tax identification number and trademark on the website into which the disputed domain name resolved. Furthermore, the evidence shows that the Respondent wanted to create a likelihood of confusion with the Complainants' trademark. This is highlighted by the email address […]@au-recordati.com which was used by a person named Mr. Olney for publishing a job offer for an Accountant Assistant. Several emails of people who applied for the job show that the intention of the offer was to obtain personal information including bank details.

It can be inferred from these facts that the Respondent or a related person used the disputed domain name and the email address to create a likelihood of confusion in order to attract Internet users and to obtain personal data from them which can be used for commercial gain or even fraud.

All in all, the Panel concludes that the disputed domain name has been registered and is being used in bad faith in the sense of paragraph 4(b)(iv) of the Policy and that the Complainants have satisfied the requirement of paragraph 4(a)(iii) of the Policy.

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 <au-recordati.com> be transferred to the Complainants.

Andrea Jaeger-Lenz
Sole Panelist
Date: July 2, 2014

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