WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Automobile Club di Brescia v. Li Fanglin
Case No. D2015-0975
1. The Parties
The Complainant is Automobile Club di Brescia of Brescia, Italy, represented by dotNice Italia SRL, Italy.
The Respondent is Li Fanglin of Hangzhou, China.
2. The Domain Names and Registrar
The disputed domain names <millemigliareplica.net>, <millemigliawatches.net> and <watchmillemiglia.com> (the "Disputed Domain Names") are registered with Crazy Domains FZ-LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 9, 2015. On June 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On June 12, 2015, 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 June 12, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2015. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on July 3, 2015.
The Center appointed Lynda M. Braun as the sole panelist in this matter on July 8, 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.
The Panel has determined that the language of the proceeding is English. Paragraph 11(a) of the Rules provides that "[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement […]".
4. Factual Background
The Complainant is an Italian entity which owns the Italian company ACI Brescia Service SRL. The two companies jointly organize the famous car race called Mille Miglia, meaning one thousand miles, which takes place every year in May. First organized in 1927, the race, which has gained international distinction, is an open-road endurance car race traveling round trip from Brescia to Rome, and totals a distance of one thousand miles.
The Complainant owns several trademark registrations for MILLE MIGLIA (the "MILLE MIGLIA Mark") worldwide, including the following:
- Italian Trademark Registration No. 450961 for MILLE MIGLIA, registered on October 6, 1986, in class 9;
- Community Trademark Registration No. 001519511 for MILLE MIGLIA, registered on April 2, 2001, in classes 9, 28 and 41;
- International Trademark Registration No. 555346 for MILLE MIGLIA, registered on June 23, 1990, in classes 3, 9, 18, 34 and 35;
- International Trademark Registration No. 776355 for MILLE MIGLIA, registered on July 19, 2001, in classes 3, 9, 12, 14, 16, 18, 25, 28, 33, 36, 38, 41 and 42;
- United States of America Trademark Registration No. 1776133 for MILLE MIGLIA, registered on June 8, 1993, in class 41.
The world sponsor and official time keeper of the race is Chopard, a high-end Swiss watch company that has been granted a license from the Complainant to promote and sell its watches using the Complainant's MILLE MIGLIA Mark.
The Complainant registered the domain name <millemiglia.it> in 1998, which is the official website for its annual car race. The Complainant has also registered approximately 80 additional domain names containing its famous MILLE MIGLIA Mark.
The Disputed Domain Names <millemigliareplica.net> and <millemigliawatches.net> were registered on December 8, 2014. The Disputed Domain Name <watchmillemiglia.com> was registered on December 31, 2014.
As of the writing of this decision, the Disputed Domain Names <millemigliareplica.net> and <millemigliawatches.net> are not active. The Disputed Domain Name <watchmillemiglia.com> resolves to a website that sells Chopard watches named after the famous Mille Miglia car race. The Complainant claims that the watches are counterfeit.
On March 19, 2015, the Federation of the Swiss Watch Industry, the leading trade association representing 90% of Swiss watch producers, sent the Respondent a cease and desist letter, to which no response was received.
5. Parties' Contentions
The Complainant contends that:
- The Disputed Domain Names are confusingly similar to the trademarks in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names;
- The Disputed Domain Names were registered and are being used in bad faith; and
- The Complainant seeks the transfer of the Disputed Domain Names from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
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 Names transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(i) The Disputed Domain Names are 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 Names; and
(iii) The Disputed Domain Names were registered and are 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 or trademarks and, second, are the Disputed Domain Names identical or confusingly similar to those trademarks.
It is uncontroverted that the Complainant has established rights in the MILLE MIGLIA Mark based on both longstanding use as well as its numerous trademark registrations worldwide for the MILLE MIGLIA Mark. The Disputed Domain Names consist of the MILLE MIGLIA Mark along with the descriptive words "watch", "replica" and "watches", and followed by the generic Top-Level Domain ("gTLD") ".net" and ".com". "The fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy." Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249 (quoting Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).
Numerous UDRP panel decisions have reiterated that the addition of a descriptive or generic word to a trademark is generally insufficient to avoid confusing similarity. Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795. See also Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923 (The addition of a descriptive or generic word to a trademark will not avoid a determination that the domain name at issue is confusingly similar); Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434 (same); Weight Watchers International Inc. v. Kevin Anthony, WIPO Case No. D2011-2067 (same).
This is especially true where, as here, the descriptive or generic word is associated with the Complainant or its services. See, e.g., Gateway Inc. v. Domaincar, WIPO Case No. D2006-0604 (finding the domain name <gatewaycomputers.com> confusingly similar to the trademark GATEWAY because the domain name contained "the central element of the Complainant's GATEWAY marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business").
Finally, the addition of a gTLD such as ".com" or ".net' in a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is 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. 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. 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 its MILLE MIGLIA Mark. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names. Instead, the Panel finds that the Respondent is improperly using the Disputed Domain Names for commercial gain. The Respondent has not submitted any arguments or evidence to rebut the Complainant's prima facie case.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
The Policy identifies the following circumstances that, if found, are evidence of registration and use of the Disputed Domain Names in bad faith:
(i) The Respondent has registered or has acquired the Disputed Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Names registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the Disputed Domain Names; or
(ii) The Respondent has registered the Disputed Domain Names 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) The Respondent has registered the Disputed Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's 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 on the Respondent's website or location.
First, bad faith may be found where the Respondent knew or should have known of the MILLE MIGLIA Mark prior to registering the Disputed Domain Names. Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Names after the Complainant obtained its registrations for the MILLE MIGLIA Mark. The fame of the MILLE MIGLIA Mark makes it extremely disingenuous for the Respondent to claim that it was unaware that the registration of the Disputed Domain Names would violate the Complainant's rights. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant's trademarks).
Second, it is reasonable to infer from the circumstances of this case that the Respondent registered the Disputed Domain Names to disrupt the Complainant's business and to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's MILLE MIGLIA Mark. The websites were offering for sale Mille Miglia watches created by Chopard without any disclaimer disclosing the relationship between the Complainant or its partner Chopard. While this Panel does not have sufficient evidence to decide whether these products are counterfeit, it can be inferred that the Respondent registered and is using the Disputed Domain Names for the specific purpose of trading on the name and reputation of the Complainant and its MILLE MIGLIA 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."). This behavior constitutes bad faith registration and use of the Disputed Domain Names under the Policy.
Third, in this Panel's view, the registration of the Disputed Domain Names that are confusingly similar to the Complainant's famous MILLE MIGLIA Mark by the Respondent that has no relationship to that mark is sufficient evidence of bad faith registration and use. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith).
Fourth, the Respondent's bad faith can further be inferred from its lack of reply to the cease and desist letter sent to the Respondent prior to the commencement of this proceeding. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210.
Finally, this is not the first time that the Respondent has been involved in UDRP cases. The Respondent, along with two other individuals, registered a domain name that contained a registered trademark of a well-known brand. The trademark owner brought a UDRP proceeding against these individuals and the domain name was transferred to the complainant. See Stefano Ricci S.p.A. v. Honghai Zhou, Zhou Hong Hai, Li Fanglin, WIPO Case No. D2015-0095. Such a pattern of behavior is further evidence of bad faith registration and use of the Disputed Domain Names by the Respondent.
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 Names <millemigliareplica.net>, <millemigliawatches.net> and <watchmillemiglia.com> be transferred to the Complainant.
Lynda M. Braun
Date: July 10, 2015