WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arblu S.r.l. v. Above.com Domain Privacy / Transure Enterprise Ltd
Case No. D2015-0814
1. The Parties
The Complainant is Arblu S.r.l. of Fontanafredda, Italy, represented by ADEXE S.r.l., Italy.
The Respondent is Above.com Domain Privacy of Beaumaris, Victoria, Australia / Transure Enterprise Ltd of Tortola, Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <arblu.com> is registered with Above.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2015. On May 11, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 13, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 13, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 14, 2015.
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 15, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2015.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on June 9, 2015. 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 the Community Trademark ARBLU with device, registered in relation to goods in classes 11, 37 and 42, being bath and shower cubicles and components, and design thereof (No. 011094331, registered on December 31, 2012).
The disputed domain name was registered on December 26, 2006.
5. Parties’ Contentions
The Complainant asserts that it started to use the mark ARBLU in 1996 when the term was adopted as its company name. The Complainant’s shower cubicle and bath products have been on the market since the same year. The Complainant put before the Panel evidence of its activities in the shape of a catalogue of its products for 2005, price lists for 2002, 2003, 2005, proof of attendance at a major international exhibition called “Cersaie” in 2001, 2002, 2003, and 2004, two agency agreements for Italian regions dated 1999 and 2002, and a French agency agreement for 2004.
According to the Complainant the business name and the registered trademark mentioned above have been consistently used since 1996 in relation to bathroom fixtures, shower stalls, bath tubs, bathroom furniture and accessories, which constitute its core business. The Complainant has also registered a number of domain names that redirect to its main website at <arblu.it>, and that incorporate the term “arblu”.
The Complainant contends that the disputed domain name reproduces its business name and the word element of the registered trade mark referred to above, as well as its own registered domain names.
Further, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. It has not authorized the use of the disputed domain name, the Respondent is not known by the name Arblu, nor has it acquired, according to the Complainant, any related trademark rights. The Complainant also contends that the disputed domain name is not being used for a bona fide offering of goods or services or for a legitimate noncommercial fair use. According to the Complainant, the website to which the disputed domain name resolves is used for the generation of click-through license fees, as it redirects users to hyperlinked websites of the Complainant’s competitors.
Further, the Complainant alleges that the disputed domain name was registered and is used in bad faith. The Complainant adopted the ARBLU trademark in 1996 as a company name and used it to identify shower cubicles and bathroom furniture since that time. This predates the registration of the disputed domain name, according to the Complainant. The Complainant also asserts that it attended the Cersaie trade fair, said by the Complainant to be the biggest in the world relating to ceramic tiles and bathrooms, in the years 1999, 2000, 2001, 2002, 2003, 2004 and 2005. In the result, the ARBLU trademark was exposed to the international public, including relevant industry sector companies, prior to the date of registration of the disputed domain name, according to the Complainant.
Further, the Complainant reiterates that the website to which the disputed domain name resolves contains sponsored links to third parties’ websites with bathroom products. The website concerned is also in Italian, which is the language of the Complainant’s legitimate website “www.arblu.it”, and its main operating language, as it is situated in Italy. All the sponsored links on the contested website are to Italian websites, according to the Complainant’s material. Some of the competitors’ websites are well-known in Italy. The Complainant also asserts that the words that are most common in the sponsored links exactly accord with the products that the Complainant supplies, such as “doccia, docce, vasche etc.” (shower, showers, bathtubs). According to the Complainant, all this demonstrates that the Respondent is using the disputed domain name to intentionally attract Internet users to competitors’ websites by exploiting the reputation and knowledge of the Complainant’s trademark in the sector of ceramic tiles and bathroom products. It is a classic case of bad faith registration, according to the Complainant, similar to other cases against the same Respondent, where WIPO UDRP panels have ordered the transfer of disputed domain names because the Respondent had registered and used them in bad faith. The Complainant cites four such decisions.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademark ARBLU with device. The word “arblu” is a prominent part of the Complainant’s registered mark, the device element of that mark being relatively minor. Figurative, stylized or design elements in a trademark are typically disregarded for the purpose of assessing identity or confusing similarity, with such assessment generally being between the alphanumeric components of the domain name, and the dominant textual components of the relevant trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.11. Moreover, the Complainant has used Arblu as its business name as well, in connection with its goods and services since 1996, and has used that term as the identifying part of its legitimate websites, in particular “www.arblu.it”. The disputed domain name reproduces the term “arblu” in its entirety. Indeed it constitutes the totality of the dispute domain names, leaving aside the generic Top-Level Domain.
Therefore the Panel holds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark ARBLU.
B. Rights or Legitimate Interests
The Respondent has not been authorized by the Complainant to use any part of the Complainant’s relevant trademark and in particular not the term “arblu”. There is no evidence before the Panel that the Respondent is known by the term “arblu” or is the owner of a relevantly similar trademark. The term “arblu” is distinctive and has no generic meaning either in Italian or in English. The only use made of the mark as incorporated in the disputed domain name, is to attract Internet users to the Respondent’s website where sponsored links are made available. Such practice is not consistent with the acquisition of rights or legitimate interests in a domain name by a respondent.
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
The adoption and use of the mark and business name “Arblu” predates the registration of the disputed domain name by approximately a decade. The material put before the Panel by the Complainant demonstrates consistent use of the mark ARBLU in relation to bath and shower products well before the time of registration of the disputed domain name. The Complainant was regularly present at a significant international trade fair under its business name and with its trademark ARBLU, also before the registration of the disputed domain name. Further, the sponsored links on the website to which the disputed domain name resolves direct to competitors of the Complainant in the same line of business, which demonstrates the Respondent’s relevant knowledge. The relevant website is in Italian which is also the language of the Complainant, which is based in and most active in that country. The sponsored links point to Italian companies.
In the circumstances, it is apparent to the Panel that the Respondent registered the disputed domain name for the purpose of generating click-through licenses by taking advantage of the established reputation of the Complainant’s trademark and business name amongst interested Internet users at the date of registration, whether they were consumers or companies active in the same bathware sector. The Respondent then operated the website to which the disputed domain name resolves in bad faith for the exact purpose for which it is apparent that it had registered the disputed domain name in the first instance.
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 <arblu.com> be transferred to the Complainant.
WiIliam A. Van Caenegem
Date: June 22, 2015