WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Casappa S.p.A. v. Jill Holder, Dow
Case No. D2017-1835
1. The Parties
Complainant is Casappa S.p.A. of Lemignano, Italy, represented by Crea Avvocati Associati, Italy.
Respondent is Jill Holder, Dow of Lagos, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <casappauk.com> 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 21, 2017. On September 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 23, 2017, 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 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 18, 2017.
The Center appointed Gary J. Nelson as the sole panelist in this matter on October 31, 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
Complainant is a company headquartered in Italy, and operates within the hydraulic systems industry.
Complainant is the registered owner of many trademarks for or incorporating CASAPPA. Complainant is the owner of at least one trademark registration in the United States of America ("United States") for CASAPPA as a standard character word mark. Specifically, the Complainant owns the following trademark registration, among others:
March 7, 1995
The disputed domain name was registered on August 31, 2017. The disputed domain name does not resolve to an active website.
5. Parties' Contentions
Complainant is a well-known Italian company and is a world leader in the sector of designing and manufacturing of several components for hydraulic systems.
Complainant was founded more than 60 years ago and, today, is a multinational company totally owned by the Casappa family.
Complainant expanded its business into the United States in 1993, followed by further expansions into France and Germany, among other countries.
Complainant is the owner of several trademark registrations in numerous countries comprising entirely of, or containing, CASAPPA.
Respondent registered the disputed domain name on August 31, 2017, without the permission of the Complainant.
Respondent has used the disputed domain name to set up fraudulent email addresses from which Respondent contacted customers of Complainant for the purpose of collecting privileged information from these same customers. Respondent sent out numerous emails using the name of, an employee working for Complainant.
The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and has subsequently used and is using the disputed domain name in bad faith.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a formal Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has established that it owns rights in the CASAPPA trademark and that the disputed domain name is confusingly similar to Complainant's CASAPPA trademark.
Where a Complainant owns a nationally or regionally registered trademark or service mark, this fact is prima facie evidence that satisfies the threshold requirement of having trademark rights for the purposes of standing to file a UDRP Complaint. See Integrated Print Solutions, Inc. v. Kelly Davidson and Integrated Print Solutions, WIPO Case No. D2013-0219; VKR Holding A/S v. Li Pinglong, WIPO Case No. D2016-2269.
In this case, Complainant owns at least one registration in the United States for the CASAPPA trademark as a standard character word mark. Complainant owns many other registrations around the world that incorporate the CASAPPA trademark into the subject marks of those other registrations. Accordingly, Complainant has established rights in its CASAPPA trademark pursuant to Policy, paragraph 4(a)(i).
Where the relevant trademark (i.e., CASAPPA) is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographic, pejorative, meaningless, or otherwise) typically do not prevent a finding of confusingly similarity under the first element. See Valero Energy Corporation and Valero Marketing and Supply Company v. Valero Energy, WIPO Case No. D2017-0075 (the addition of descriptive term "petroleum" to the VALERO trademark being insufficient to avoid a finding of confusing similarity); Allianz SE v. IP Legal, Allianz Bank Limited, WIPO Case No. D2017-0287 (the addition of the geographic term "Kenya" to the ALLIANZ trademark being insufficient to avoid a finding of confusing similarity).
In this case, adding the geographic descriptive abbreviation "UK" (i.e., the country code for the United Kingdom of Great Britain and Northern Ireland) to Complainant's CASAPPA trademark is insufficient to establish a domain name that is distinct from Complainant's trademark and is insufficient to avoid a finding of confusing similarity.
Moreover, the addition of a gTLD suffix, such as ".com" in this case, is typically disregarded, thus insufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc., WIPO Case No. D2014-1919 (the ".com" portion of the disputed domain name being disregarded when conducting the confusingly similar analysis); Groupon, Inc. v. Whoisguard Protected, Whoisguard, Inc. / Vashti Scalise, WIPO Case No. 2016-2087 (adopting the same rationale).
Complainant has proven the requirements of Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has failed to file a formal Response, which can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse., WIPO Case No. D2000-1221 (finding that the respondent's failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).
By not filing a formal Response, Respondent has not provided any evidence that it is commonly known by the disputed domain name, or that it is commonly known by any name consisting of, or incorporating the words "casappa", or "uk" or "United Kingdom" or any combination of these words. In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) the respondent is not a licensee of the complainant; (2) the complainant's rights in its related trademarks precede the respondent's registration of the domain name; and (3) the respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a formal Response, Respondent also failed to provide any evidence that it is a licensee of Complainant or that its registration of the disputed domain name predates the establishment of Complainant's rights in its CASAPPA trademark.
Complainant has provided unrebutted evidence showing that Respondent established operational email addresses associated with the disputed domain name for the purpose of contacting customers of Complainant hoping to secure private confidential information from these customers. Such use of the disputed domain name for this nefarious purpose, all while pretending to be Complainant or having some sort of connection with Complainant, cannot be considered by the Panel as a bona fide offering of goods or services or as a legitimate noncommercial or fair use.
Moreover, Respondent's decision to add a common geographic term (e.g., "uk") to a well-known trademark does not instill Respondent with rights or legitimate interests in the corresponding domain name. See Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 (finding that use of a famous trademark to attract the public to a website is not a fair or legitimate use of the domain name, and ordering the transfer of <chanelstor.com> and <chanelfashion.com> to the complainant).
Respondent is also maintaining an undeveloped website associated with the disputed domain name. Respondent's failure to develop an active website corresponding to the disputed domain name is evidence supporting the conclusion that Respondent has no rights or legitimate interests in this domain name. See Pharmacia & Upjohn AB v. Romero, WIPO Case No. D2000-1273 (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and made no use of the domain name in question); see also Melbourne IT Limited. v. Grant Matthew Stafford, WIPO Case No. D2000-1167 (finding no rights or legitimate interest in the disputed domain name where there is no proof that the respondent made preparations to use the disputed domain name in connection with a bona fide offering of goods and services before notice of the domain name dispute, the disputed domain name did not resolve to a website and the respondent is not commonly known by the disputed domain name).
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the disputed domain name in bad faith.
The Panel finds that Respondent likely chose the disputed domain name with full knowledge of Complainant's rights in the CASAPPA trademark. Complainant has alleged, and Respondent has not rebutted, that Respondent was most likely aware of the rights owned by Complainant in CASAPPA when Respondent registered the disputed domain name. Supporting this conclusion is the fact Respondent was directly targeting Complainant and Complainant's customers when it sent out fraudulent emails associated with the disputed domain name, all while posing as Complainant (i.e., emails fraudulently signed by actual employees of Complainant), and seeking private confidential information from Complainant's customers. The Panel finds complainant's evidence in this regard to be convincing evidence of bad faith, and is sufficient to establish the bad faith registration and use of the disputed domain name.
Furthermore, the Panel finds that the use of the disputed domain name falls within one of the express examples of bad faith identified in paragraph 4(b)(iv) of the Policy. By using the disputed domain name to send out fraudulent emails seeking confidential information, Respondent has intentionally targeted Internet users to an operational domain name (i.e., <casappauk.com>), albeit without an obviously active website, for commercial gain by creating a likelihood of confusion with Complainant's mark.
Respondent's awareness of the CASAPPA trademark may also be inferred because the mark was registered with the United States Patent and Trademark Office prior to Respondent's registration of the disputed domain name and since the CASAPPA trademark is widely known. The relevant priority date for all of Complainant's trademark registration precede the date upon which the disputed domain name was registered (i.e., August 31, 2017). See Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066 (finding bad faith where the respondent had actual and constructive notice of the complainant's trademarks registered in the United States); see also Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide, WIPO Case No. D2000-0911 ("the fact that Respondent [chose] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue").
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii).
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, <casappauk.com> be transferred to Complainant.
Gary J. Nelson
Date: November 6, 2017