WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Nouvelle Del Arte v. Domain Administrator, Domain Asset Holdings, LLC
Case No. D2016-1859
1. The Parties
Complainant is Société Nouvelle Del Arte, Rennes, France, represented by AARPI Clairmont Avocats, France.
Respondent is Domain Administrator, Domain Asset Holdings, LLC, Potomac, Maryland, United States of America.
2. The Domain Name and Registrar
The disputed domain name <pizzadelarte.com> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2016. On September 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 15, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 11, 2016.
The Center appointed Roberto Bianchi as the sole panelist in this matter on October 18, 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 Del Arte chain of Italian-style restaurants is based in Rennes, France, and was founded in 1985. In 1995, the Le Duff group acquired the chain from the Accor group. In 2013, the Del Arte chain counted 113 restaurants in France.
Complainant owns several trademark registrations for PIZZA DEL ARTE, inter alia,
- European Union Reg. No. 001123256, Registration date June 13, 2000, filed on March 30, 1999, renewed on April 14, 2009, covering various products in International Classes 29 and 30 and 42.
- European Union Reg. No. 003001088, Reg. date February 23, 2004 in International Class 38.
According to the Registrar’s WhoIs database, the disputed domain name was registered on July 30, 2008.
5. Parties’ Contentions
Complainant claims that the disputed domain name is confusingly similar to its prior PIZZA DEL ARTE and DEL ARTE trademarks and domain names, since it incorporates these trademarks in their entirety. It only differs from Complainant’s trademarks by the addition of the non-distinctive term “pizza” regarding the prior DEL ARTE trademarks and for technical reasons, the “.com” Top-Level Domain (“TLD”) at the end andthe absence of space between the terms “del”, “arte” and “pizza”. These elements do not eliminate the identity or at least the confusing similarity between Complainant’s registered prior rights and the disputed domain name.
Complainant claims, that Respondent has no rights or legitimate interests in respect of the disputed domain name. To Complainant’s best knowledge, Respondent is not currently and has never been known by the disputed domain name. Complainant contends that it did not know Respondent before the disputed domain name was registered. Complainant also states that Respondent is not in any way related to its business, and does not carry out any activity for or has any business with it. In particular, Respondent has not been licensed, contracted or otherwise permitted by Complainant in any way to use the prior PIZZA DEL ARTE and DEL ARTE trademarks or to register any domain name incorporating these prior trademarks, nor has Complainant acquiesced in any way to such use or registration of those marks by Respondent.
Complainant claims that Respondent registered the disputed domain name in bad faith. Complainant has previously demonstrated the strong reputation and the leading position of its PIZZA DEL ARTE and DEL ARTE trademarks in France and abroad in the field of Italian-style restaurant chain. A simple search via Google or any other search engine using the keywords “pizza del arte” and “del arte” demonstrates that nearly all results relate to Complainant’s websites or business. The first result of the United States version of Google for these keywords corresponds to Complainant’s website (Annex H to the Complaint). Respondent, who resides in the United States should be clearly aware of the Complainant’s activity under the denominations “Pizza Del Arte” and “Del Arte” when it registered the disputed domain name. The notoriety of Complainant’s trademarks, especially in the field of Italian-style restaurants, is such that a prima facie presumption is raised that the respondent registered the domain name for the purpose of selling it to Complainant or one of its competitors”. See Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, WIPO Case No. D2001-0020, relating to <guinessbeer.com>.
Moreover, the denominations “Pizza Del Arte” and “Del Arte” are arbitrary and fanciful so that they exclusively refer to the prior trademarks and domain names of Complainant, especially since in English, i.e., the language spoken in the United States of America, Respondent’s country, the expression “Del Arte” has no meaning. It is therefore highly unlikely that Respondent was unaware of the existence of Complainant and its well-known reputation and trademarks in the field of Italian-style restaurants, . Therefore, registering the disputed domain name, which includes the PIZZA DEL ARTE and DEL ARTE trademarks, cannot be considered accidental. This proves that Respondent has registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or to a competitor, for valuable consideration in excess of costs, which is a proof of bad faith. Furthermore, the disputed domain name reproduces entirely Complainant’s prior trademarks and domain names. In this regard, the mere filing of a domain name corresponding to well-known trademarks is an indication of bad faith, especially when this domain name is not used. The disputed domain name resolves to an inactive website and directly links to the website “www.domainmarket.com”, indicating that this domain name is for sale at USD 4 000 (Annex I of the Complaint). This confirms that Respondent registered this domain name in bad faith for the sole purpose of selling it to Complainant or one of its competitors. In this regard, UDRP panels constantly state that the fact that the disputed domain name is for sale is a proof of use in bad faith (Cantor Fitzgerald Securities v. Kabir S Rawat,
WIPO Case No. D2013-1257; Booz Allen Hamilton Inc. v. PrivacyProtect.org / ICS INC., WIPO Case No. D2013-0740; Loris Azzaro B.V. v. Fraud Fighters, Inc. (DOMAIN FOR SALE), WIPO Case No. D2013-2248 and Academy of Motion Picture Arts and Sciences v. This Name Is For Sale, WIPO Case No. D2005-1063).
Further, Complainant sent a formal notice to Respondent on March 20, 2016 asking for the transfer of the disputed domain name (Annex J of the Complaint). Moreover, Respondent has already been a party to a large number of cases leading to a decision of transfer of the therein-contested domain names (Pullmantur, S.A. v. Domain Asset Holdings, LLC, Domain Administrator, WIPO Case No. D2015-0053; WesTrac Pty Ltd v. Domain Asset Holdings, LLC., WIPO Case No. D2014-2032; Take-Two Interactive Software, Inc. v. Domain Asset Holdings, WIPO Case No. D2013-1434; Tracy Anderson Mind and Body LLC v. Domain Asset Holdings, WIPO Case No. D2013-0699; Universal Assistance S.A. v. Domain Asset Holdings, LLC, WIPO Case No. D2012-2547; Lifetime Assistance, Inc. v. Domain Asset Holdings, LLC, WIPO Case No. D2011-2137; Training Channel, S.A v. Domain Asset Holdings; WIPO Case No. D2011-0875; and Facebook, Inc. v. Domain Asset Holdings, WIPO Case No. D2011-0516). This prima facie constitutes a pattern of bad faith registration and use pursuant to the Policy: “The Respondent has historically operated a business model that seeks by reason of domain name registrations to take unfair advantage of the trade mark rights of others”, ( WIPO Case No. D2015-0053, supra).
Thus, Respondent knew or should have known that the registration of the disputed domain name was illegal. He should have answered to the cease and desist letter sent by Complainant and accepted to transfer the disputed domain name to Complainant when he was asked to. Therefore, pursuant to paragraph 4(b)(iii) of the Policy, the registration of the disputed domain name without any other use or intended use has been made (i) for the purpose of disrupting Complainant’s business and (ii) in order to prevent Complainant from reflecting its trademarks in a corresponding domain name.
Complainant concludes that the disputed domain name was registered in bad faith, and that any possible exploitation of it could only be made in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has shown with printouts taken from the database of the European Union Intellectual Property Office that it owns trademark rights in the PIZZA DEL ARTE trademark. See section 4 above. The Panel notes that Complainant also refers to the PIZZA DEL mark, but Complainant has not attached any evidence in this regard.
The Panel notes that the disputed domain name incorporates the PIZZA DEL ARTE s mark in its entirety, without the spaces between the terms “pizza”, “del” and “arte”, and adding the TLD “.com”. It is well established that both the suppression of spaces between the components of a domain name, and the addition of a TLD, are necessary for technical reasons and, therefore, are inapt to distinguish the resulting domain name from the incorporated mark.
The Panel concludes that the disputed domain name is confusingly similar to Complainant’s PIZZA DEL ARTE trademark.
The first requirement of the Policy is met.
B. Rights or Legitimate Interests
Complainant contends that Respondent is not currently and has never been known by the disputed domain name. The Panel agrees with Complainant, since according to the WhoIs database, Respondent is “Domain Administrator”, while Respondent’s registrant organization is “Domain Asset Holdings, LLC”. Thus, Policy paragraph 4(c)(ii) appears to be inapplicable.
Complainant states that it did not know Respondent before the disputed domain name was registered, that Respondent is not in any way related to Complainant’s business, and does not carry out any activity for or has any business with Complainant. In particular, Complainant also states that it has not in any way licensed, contracted or otherwise permitted Respondent to use the PIZZA DEL ARTE and DEL ARTE trademarks, or to register any domain name incorporating these prior trademarks. Nor has Complainant acquiesced in any way to such use or registration of those marks by Respondent.
In the Panel’s view, the existing evidence supports Complainant’s contentions. Also, the Panel notes that Respondent’s only use of the disputed domain name was re-directing it to the “www.domainmarket.com” website, on which it was offered for sale at USD 4,000 (Annex I to the Complaint). The Panel’s independent visit to the Wayback Machine at “www.archive.org”, conducted on October 31, 2016, showed that this was the only use of the disputed domain name, at least until December 8, 2014. The Panel believes this is neither a bona fide use pursuant to Policy paragraph 4(c)(i), nor a fair or legitimate noncommercial use under Policy paragraph 4(c)(iii).
Also, on March 20, 2016 Complainant’s counsel sent a cease-and-desist letter to Respondent with regard to the disputed domain name, without obtaining any answer from Respondent. Finally, Respondent failed to present any argument or evidence in its own favor in this proceeding. It is reasonable to infer from Respondent’s silence, that it lacks any rights or legitimate interests in the disputed domain name.
In view of the above, the Panel tconcludes that Complainant has made out its case that Respondent has no rights or legitimate interests in the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1 (“[...] A complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP ...)”
The second requirement of the Policy is thus met.
C. Registered and Used in Bad Faith
Complainant has evidenced that its chain of Italian-style restaurants operating under the PIZZA DEL ARTE trademark is well known in the relevant industry, and that it had registered this trademark several years before the registration of the disputed domain name. From these facts the Panel infers that in all likelihood Respondent knew of, and targeted Complainant’s restaurants and trademark when it registered the disputed domain name.
The Panel notes that the only use of the disputed domain name was redirecting it to another’s website and offering it for sale at USD 4,000. In the Panel’s view, this strongly suggests that Respondent registered or acquired the disputed domain name primarily for the purpose of selling it to Complainant or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name. This is a circumstance of registration in bad faith, according to Policy paragraph 4(b)(i). Using the disputed domain name as shown is also a use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001 (“Because respondent offered to sell the domain name to complainant for valuable consideration in excess of, any out-of-pocket costs directly related to the domain name, respondent has “used” the domain name in bad faith as defined in the Policy.”)
The third requirement of the Policy is also met.
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, <pizzadelarte.com>, be transferred to Complainant.
Date: November 1, 2016