WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Braccialini S.P.A. v. Artem Mochalov / Identity Protection Service, Identity Protect Limited
Case No. D2016-0083
1. The Parties
The Complainant is Braccialini S.P.A. of Scandicci, Italy, represented by Studio Turini, Italy.
The Respondent is Artem Mochalov of Limassol, Cyprus / Identity Protection Service, Identity Protect Limited of Godalming, Surrey, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
2. The Domain Name and Registrar
The disputed domain name <braccialini.club> is registered with Mesh Digital Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2016. On January 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 18, 2016, 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 January 19, 2016 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 January 21, 2016. On January 21, 2016 the Respondent submitted an informal communication.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2016. The Respondent did not submit a formal response. Accordingly, the Center sent a procedural update on February 17, 2016.
The Center appointed Stefan Naumann as the sole panelist in this matter on February 24, 2016. 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 an Italian company that designs and manufactures ladies’ leather hand bags and other leather accessories such as wallets, belts and key rings, with retail outlets in a number of countries in Europe, Russia, the Middle East and China. The evidence shows that it owns an European Union trademark No. 004900486 and an international trademark No. 500863 for the name BRACCIALINI in lower case, sans serif letters for leather bags and other leather goods amongst others, that were filed respectively on February 14, 2006 and February 24, 1986.
Both trademarks were due to expire in February 2016 after the Complaint and amended Complaint had been filed respectively on January 15 and 21, 2016.
In keeping with the consensus view among UDRP panels that a panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision1 , the Panel verified the on line official trademark databases of the appropriate trademark registries to ascertain that both trademarks have been renewed and are active, and is satisfied that they are.
The Complainant also registered the name “braccialini” in a number of generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”).
The Respondent registered the domain name <braccialini.club> on April 6, 2015.
The evidence shows that the website at “www.braccialini.club” offers leather hand bags for sale, uses the name “braccialini” in the specific type face of Complainant’s trademarks as well as Complainant’s logo, is written in Cyrillic script and has a payment page for payment by credit cards or PayPal with a telephone number that has a country and area code for Moscow, Russian Federation
5. Parties’ Contentions
In a summary of the Complaint, the Complainant asserts that its BRACCIALINI marks are well-known, that Respondent has no permission from the Complainant to use the complainant’s trademarks or apply for a domain name with complainant’s trademarks, that the Respondent obviously knew of the Complainant’s trademarks and that the Respondent’s use of the trademarks on the website, as well as the use of privacy services to hide the identity of the Respondent are evidence of bad faith registration and use. The Complainant does not unequivocally assert that the products offered for sale on the website were counterfeit (“it seems that the Respondent is selling on its website (also by e-commerce) the Complainant’s products allegedly counterfeited [sic]”). The Complainant requests that the disputed domain name be transferred to it.
The Respondent did not reply to the Complainant’s contentions. However, on January 21, 2016, the Respondent offered to transfer the disputed domain name to the Complainant and asked what he should do in order to transfer the domain name. In his email of January 21, 2016 the Respondent states that “the domain was not used for the e-commerce purposes and for the sale of counterfeit products. It was used for the marketing research on the russian market [sic]”.
6. Discussion and Findings
In order to succeed in its claim, the Complainant must demonstrate that all three elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name must be identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent must have no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name must have been registered and used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name combines the term “Braccialini” with the gTLD “.club”. The addition of the gTLD does not affect the fact that the disputed domain name reproduces the Complainant’s BRACCIALINI marks. The disputed domain name is clearly confusingly similar to the Complainant’s trademarks since consumers may expect to land on a website of the Complainant when typing in the Complainant’s trademark BRACCIALINI, notably since the Complainant also uses the term “Braccialini” in domain names for websites.
The Panel is satisfied that the disputed domain name is confusingly similar to the Complainant’s trademarks for the purposes of the Policy.
B. Rights or Legitimate Interests
The Respondent has chosen not to reply to the Complaint. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name <braccialini.club>, and finds no indication in the evidence that the Respondent could have claimed rights or legitimate interests of its own in the term “Braccialini”. Even if the Panel were to accept the Respondent’s unsupported assertion that he used the website for marketing research about the Russian market, such a use in the circumstances of this case is neither a noncommercial nor a fair use susceptible of creating a right or legitimate interest.
The Panel notes that the website at the disputed domain name had a payment page and mentions prices for products, which tends to indicates that it was in reality used for e-commerce purposes.
The Respondent did not claim that it was selling authentic or legitimate products on a website using the Complainant’s name as domain name and reproducing the Complainant’s trademarks and logo. Instead, he denied selling at all, so that no right or legitimate interest could be alleged on the basis of a bona fide business selling authentic products. In addition, the Complainant specifically denied giving Respondent any permission to use the Complainant’s trademarks.
The Panel considers that in the present case the Respondent does not have any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Respondent claimed that he did not use the disputed domain name, meaning the website under the disputed domain name, for e-commerce purposes or for the sale of counterfeit products, and that he used the website for marketing research. The Complainant has not affirmatively asserted that the products shown on the Respondent’s website were counterfeit. The Panel considers that the Respondent’s assertion that he did not sell counterfeit products is not sufficient to establish that he was in reality selling authentic products or using the disputed domain name in connection with a bona fide offering of goods within the meaning of the Policy, paragraph 4(c)(i), particularly where the Respondent’s assertion is accompanied by a claim that the website at the disputed domain name did not offer the possibility of purchasing products, and where, contrary to a legitimate business operation, the Respondent made it difficult to be contacted by using a privacy shield. The Panel notes that after the Respondent offered to transfer the domain name to the Complainant, while asking how to do so, his website at the disputed domain name continued to operate until at least January 27, 2016, according to the evidence.
Taking into account the circumstances of this case as they result from the parties’ evidence and allegations, the Panel finds that the Respondent registered and used the disputed domain name 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 <braccialini.club> be transferred to the Complainant.
Date: March 10, 2016
1 Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647; e-Duction, Inc. v. John Zuccarini, d/b/a The Cupcake Party & Cupcake Movies, WIPO Case No. D2000-1369; see also Descente, Ltd. and Arena Distribution, S.A. v. Portsnportals Enterprises Limited, WIPO Case No. D2008-1768; Latchways PLC v. Martin Peoples, WIPO Case No. D2010-1255; Sensis Pty Ltd. Telstra Corporation Limited v. Yellow Page Marketing B.V., WIPO Case No. D2011-0057.