WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CAMPAGNOLO S.r.l. v. Mr. Mario Verhoeven, Verhoeven Sporthuis Vof
Case No. D2014-1195
1. The Parties
The Complainant is CAMPAGNOLO S.r.l. of Vicenza, Italy, represented by Giambrocono & C. S.p.A., Italy.
The Respondent is Mr. Mario Verhoeven, Verhoeven Sporthuis Vof of Dussen, the Netherlands.
2. The Domain Name and Registrar
The disputed domain name <mad4campy.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2014. On July 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 9, 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.
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 July 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 6, 2014. The Response was filed with the Center on July 19, 2014.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on August 13, 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 the owner of a number of trademark registrations for the word mark CAMPY,, inter alia, community trademark registration no. 004216636 of February 7, 2008; US trademark registration no. 2858238 of June 29, 2004; and UK trademark registration no. 2265548 of September 7, 2001.
The disputed domain name was registered on September 26, 2010.
5. Parties’ Contentions
The Complainant asserts that the disputed domain name is composed of the elements “mad”, “4” and “campy”. According to the Complainant “mad” here stands for “very enthusiastic” about, “4” is a common substitute for the word “for” and “campy” is both a registered trademark of the Complainant and a common contraction of its main trademark and company name “Campagnolo”. Consequently, the Complainant maintains that the disputed domain name has the evident meaning of “very enthusiastic for CAMPY / CAMPAGNOLO”.
Further, the Complainant contends that the Respondent has never been, and is not currently, commonly known by the disputed domain name. Nor does the Respondent’s name consist in whole or in part of “mad4campy” or “campy”. According to the Complainant, the Respondent does not hold any trademark or other right in CAMPY, either in whole or in part. “Campy” is said to be the distinctive part of the disputed domain name. The Complainant also asserts that CAMPY is neither a common noun nor a common name in English or in any other known language.
According to the Complainant, the disputed domain name is not used in connection with a bona fide offering of goods or services, and is in fact not used in any way at the present time.
The Complainant contends that the disputed domain name was registered and used in bad faith, since it contains the trademark CAMPY in its entirety, and that mark is a well-known mark in which the Complainant has exclusive rights in many countries, including the Netherlands.
According to the Complainant, the website “www.defietsenmaker.nl” (which stands for “the bicycle repair man” in Dutch) belongs to the Respondent. The content of the website establishes the Respondent’s knowledge of bicycle spare parts and has explicit references to Campagnolo parts. According to the Complainant, hundreds of Campagnolo spare parts are sold by way of the Respondent’s website.
According to the Respondent, he acquired the disputed domain name almost 4 years ago, intending to establish a website with a “time line” and information about the brand Campagnolo with a blog mixed into it However, only last winter could he make time to finish this, the Respondent maintains.
The Respondent also asserts that, intending to order merchandise such as ball point pens and keyhangers with “mad4campy” printed upon them, he made a Benelux application for MAD4CAMPY, which was however opposed by the Complainant. He chose the category of bicycle parts upon the advice of the Benelux office. However, the Respondent asserts that he cancelled his application immediately upon being in contact with the Complainant, rather than choosing to wait for an official decision on the application.
The Respondent maintains that he has only known for 14 days that the name “campy” was already owned by another party. He strongly disagrees with the Complainant’s request to transfer the disputed domain name as he has never established a website or generated Internet traffic or made any money out of the disputed domain name. The Respondent asserts that he understands the Complainant’s demand that he not use the disputed domain name for cycling gear, but maintains that some straightforward Google searching establishes that there are many websites using the term “campy”. He supplies some examples attached to the Response. The Respondent questions why the Complainant did not take the disputed domain name for itself nor apparently did anything about the various uses of the term “campy” that he identified on the Internet.
The Respondent contends that the fact that he is not entitled to use the disputed domain name to link to Campagnolo, does not entail that he is obliged to transfer the disputed domain name to the Complainant. He should be entitled, the Respondent maintains, to sell the disputed domain name to other interested parties who can use it for their websites, as “campy” is used in many ways and forms. The fact that he sells Campagnolo gear is, according to the Respondent, of no consequence as he does not use the disputed domain name for that purpose.
According to the Respondent, he offered to sell the disputed domain name to the Complainant for EUR 5,350, which he considers a very reasonable sum. Even with a warning not to use the disputed domain name in connection with Campagnolo gear, he could get more, for instance from a caravan manufacturer.
In conclusion, the Respondent asserts that the Complainant has no right to a transfer of the disputed domain name.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is not identical to the registered trademark CAMPY of the Complainant. However, it contains the trademark in its entirety as the last part of an easily understood sequence of words that stands for “enthusiastic for Campy”. As the Complainant points out, “4” is commonly used in the Internet and modern communications environment as a substitute for the word “for”. The other terms incorporated in the disputed domain name are thus effectively readily understood generic words, the addition of which to a distinctive trademark does nothing to dissociate the disputed domain name from the Complainant. The combination of words and numbers in the disputed domain name clearly suggest a connection with the Complainant that does not in fact exist.
Therefore, the Panel holds that the disputed domain name is confusingly similar to the Complainant’s registered trademark CAMPY.
B. Rights or Legitimate Interests
The Respondent is not known by the name “campy”, does not own nor operates under any trademark or business name consisting of or incorporating that term, nor does he have any authorization or approval in relation to the Complainant’s trademark or its incorporation in a registered domain name. The disputed domain name is not in fact in use at present, and the Respondent has neither put into effect nor provided evidence of any preparation for the mooted website concerning Campagnolo gear that he refers to in his Response.
The fact that the Respondent operates a business and website to sell Campagnolo cycling goods via the Internet is not relevant to the question whether he has rights or legitimate interests in the disputed domain name. In any case he does not according to his own assertions intend to use the disputed domain name to sell legitimate Campagnolo goods. Rather, he intended to establish a website and blog about such goods, a professed intention he has not as yet put into effect, despite the passage of time since his registration of the disputed domain name. The Respondent himself confirms his present interest is in selling the disputed domain name, either to the Complainant or to third parties. According to the Respondent, there are many Internet users who could legitimately acquire and use the disputed domain name in relation to activities unconnected with cycling. However, this fact, if indeed it is true, is not apt to vest rights or legitimate interests in the Respondent himself: he is not engaged in such activities, but in the business of selling cycling gear, including many Campagnolo branded items. Nor does it affect the right of the Complainant to secure its own rights and legitimate interests in the use of the Campagnolo and CAMPY trademark and business related uses.
Therefore, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In terms of registration in bad faith, there can be little doubt in the circumstances that the Respondent registered the disputed domain name in the full knowledge of the Complainant’s rights in the mark CAMPY in relation to cycling gear. He is engaged in the selling of cycling spare parts including many Campagnolo items, and operates a business called, in translation, the “Bike repair man”. The Complainant has a registered trademark for the word “campy” and is often referred to as such. It is well known that “campy” and “Campagnolo” stand for the same business and the same goods. Further, the Respondent has admitted that he deliberately registered the disputed domain name with the intention of establishing a website concerning the Complainant’s goods, again confirming that his registration of the disputed domain name was in the full knowledge of the Complainant’s rights.
The Respondent has not in fact established any such website, even though he has had ample time to do so. He has sought, upon his own assertion, to acquire a Benelux trademark registration for “mad4campy”. He contends that it was at the suggestion of the trademark office that he chose bicycle goods as the relevant class, but given his business history, this is not a persuasive claim. That he was only aware for 14 days of the significance of the CAMPY trademark is for the same reasons also not persuasive. He has professed his interest in selling the disputed domain name to the Complainant for a considerable sum, and confirmed his intention to sell the disputed domain name come what may. The acquisition of a domain name, followed by demands for payment from a trademark owner whose well-established trademark is wholly incorporated in it, is a classic case of cybersquatting. The fact that there may be hypothetical other purchasers of the disputed domain name is of no consequence. All the circumstances taken together are consistent with an attempt to take advantage of the reputation of CAMPY in the cycling business sphere.
Therefore, the Panel holds that the disputed domain name was registered and used in bad faith.
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 <mad4campy.com> be transferred to the Complainant.
William A. Van Caenegem
Date: August 27, 2014