WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Automobile Club Di Brescia v. Wang Liqun
Case No. D2017-1792
1. The Parties
The Complainant is Automobile Club Di Brescia of Brescia, Italy, represented by Barzanò & Zanardo Milano SpA, Italy.
The Respondent is Wang Liqun of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <1000miglia.club> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 15, 2017. On September 15, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 16, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 18, 2017.
The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on October 30, 2017. 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 entity that owns the MILLE MIGLIA trademarks. It belongs to the Italian company ACI Brescia Service S.r.l. Both companies organize each year the famous car race MILLE MIGLIA which took place for the first time in 1927, from Rome to Brescia.
The Complainant operates a website at "www.millemiglia.it" to promote the race and the related activities.
The Complainant registered over 80 domain names comprising the MILLE MIGLIA trademark.
The Complainant offers to buy online branded goods such as clothes and footwear.
The Complainant relies on the following trademarks:
- International registration semi-figurative 1000 MIGLIA No. 779502 registered on July 19, 2001 in classes 3, 9, 12, 14, 16, 18, 25, 28, 33, 36, 38, 41 and 42;
- European Union trademark 1000 MIGLIA No. 009071473 filed on April 30, 2010 and registered on October 12, 2010 in class 14;
- International registration MILLE MIGLIA No. 776355 registered on July 19, 2001 in classes 3, 9, 12, 14, 16, 18, 25, 28, 33, 36, 38, 41 and 42.
The disputed domain name <1000miglia.club> was registered on April 11, 2017, and is used to resolve to a parking website.
5. Parties' Contentions
The Complainant relies on the reputation of the 1000 MIGLIA trademark and asserts that the disputed domain name entirely reproduces this trademark.
It contends that the extension is a technical requirement that has to be disregarded to assess if the disputed domain name is either identical or confusingly similar to a trademark.
Therefore it asserts that the disputed domain name is confusingly similar to its earlier well-known trademarks, i.e. to the semi-figurative 1000 MIGLIA trademark and to the MILLE MIGLIA trademarks.
The Complainant explains that if there is no response to the Complaint, it is sufficient for the Complainant to produce a prima facie evidence.
The Respondent has no rights or legitimate interests, since it has no prior rights, has no relation with the Complainant, has never been authorized to use the Complainant's trademarks and is not commonly known by the disputed domain name.
It underlines that the trademarks are used to designate the race and also the goods related to the race, such as clothes.
Moreover using the disputed domain name to resolve to a parking website providing links to websites related to several sectors like clothing for a commercial gain is not a bona fide offering of goods or services or a legitimate or fair use of the disputed domain name.
The Respondent could not ignore the Complainant's trademark rights when it registered the disputed domain name.
The Respondent registered three other domain names in different extensions, namely <1000miglia.co.in>, <1000miglia.com.au> and <millemiglia.co.il> and it was already a party as respondent to other UDRP cases.
The Complainant has sent a cease-and-desist letter to the Respondent. In response to the Complainant's cease-and-desist letter, the Respondent made an attempt to sell the disputed domain name to the Complainant for an amount of USD 3,500 that was later reduced to USD 2,999.
The Complainant alleges that this demonstrates that the Respondent registered the disputed domain name for the sole purpose of selling it.
Moreover using the disputed domain name to resolve to a parking website providing links to websites related to several sectors like clothing for a commercial gain is not a fair use of the disputed domain name.
Therefore, the disputed domain name was registered and used in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has clearly established its registered rights in the semi-figurative 1000 MIGLIA trademarks and its MILLE MIGLIA trademarks.
The disputed domain name <1000miglia.club> is composed of the Complainant's 1000 MIGLIA trademark, together with the extension ".club".
Finally, the addition of the generic Top-Level Domain ("gTLD") identifier ".club" is irrelevant when determining whether the disputed domain name <1000miglia.club> is confusingly similar to the Complainant's trademarks.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademarks. The condition of paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
As set forth by paragraph 4(c) of the Policy, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the Respondent's rights or legitimate interests to the disputed domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to the Respondent of the dispute, its use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent did not respond to the Complaint. Consequently it did not provide any evidence or circumstances to establish that it has rights or legitimate interests in the disputed domain name, according to paragraph 4(c) of the Policy.
In the circumstances of this case, the Panel finds that the Complainant has established a prima facie case of the Respondent's absence of rights or legitimate interests in the disputed domain name.
The Respondent has not been licensed or authorized to use the Complainant's trademarks or to register the disputed domain name.
The Respondent did not make a fair or noncommercial use of the disputed domain name.
Accordingly, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a Panel to be evidence of bad faith registration and use of a domain name. It provides that:
"For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location."
The Respondent could not ignore the Complainant's rights in the 1000 MIGLIA and MILLE MIGLIA trademarks when it registered the disputed domain name.
The Panel finds that the disputed domain name was registered in bad faith with the Complainant in mind, to sell it, to make a commercial gain and to disrupt the Complainant's activity.
Many Internet users rely on the web browser's URL to seek information about authorized sources of information and merchandise and the disputed domain name will divert Internet users to unauthorized sources of merchandise.
The Respondent is likely profiting from pay-per-click revenue generated by the parking website available at the disputed domain name, which constitutes commercial gain. This is further evidence of the Respondent's bad faith pursuant to paragraph 4(b)(iv) of the Policy.
The Respondent intends to attract Internet users to its website by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the disputed domain name (Policy, paragraph 4(b)(iv)).
Therefore, the condition set out by paragraph 4(a)(iii) 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 name <1000miglia.club> be transferred to the Complainant.
Date: November 9, 2017