WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CITOZEATEC s.r.l. v. Diego Fior
Case No. D2018-0621
1. The Parties
The Complainant is CITOZEATEC s.r.l. of Milan, Italy, represented by Barzanò & Zanardo Milano SpA, Italy.
The Respondent is Diego Fior of Vedelago, Italy.
2. The Domain Names and Registrar
The disputed domain names <citoethyl.com> and <citozeatec.com> are registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2018. On March 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 21, 2018, 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 March 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 17, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 19, 2018.
The Center appointed Edoardo Fano as the sole panelist in this matter on May 9, 2018. 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.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a Response from the Respondent.
The language of the proceeding is English, being the language of the Registration Agreements, as per paragraph 11(a) of the Rules.
4. Factual Background
The Complainant is Citozeatec s.r.l., an Italian company operating in the field of food supplements and creams from 2006 and owning the following trademark registrations:
- Italian Trademark Registration No. 0001634755 CITOETHYL and design, registered on May 12, 2015;
- Italian Trademark Registration No. 302015000013509 CITOZEATEC and design, registered on December 5, 2016.
The Complainant operates a website at the address “www.citozeatec.it”.
The Complainant provided evidence in support of the above.
The disputed domain name <citoethyl.com> was registered on July 15, 2013 and the disputed domain name <citozeatec.com> was registered on October 13, 2014. At the time of filing the Complaint, the disputed domain names were not active.
5. Parties’ Contentions
The Complainant states that the disputed domain names <citoethyl.com> and<citozeatec.com> are confusingly similar to its trademarks CITOETHYL and CITOZEATEC respectively.
During a limited period of time in 2013 the company A&D Global Trade s.r.l., represented by the Respondent, was in charge of the distribution of the Complainant’s products CITOETHYL and CITOZEATEC in several countries, without any authorization to register the two trademarks as domain names.
Therefore, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names since he has never been authorized by the Complainant to register them as domain names and he was only authorized to use them in connection to limited distribution rights of Complainant’s products for a limited period of time in 2013.
Moreover, the Respondent is not commonly known by the disputed domain names, nor is the Respondent making neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names.
The Complainant submits that the Respondent has registered the disputed domain names in bad faith, since in 2013 the Respondent was a distributor of the Complainant and therefore knew that both CITOETHYL and CITOZEATEC were trademarks of the Complainant, although yet unregistered at that time.
As regards the use in bad faith, the Complainant asserts that even if the disputed domain names are not active, they can be considered a case of passive holding since it is impossible to conceive a use in good faith of the disputed domain names.
The Respondent has not replied to the Complainant’s contentions and is in default. In reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International PLC v. Mark Freeman, WIPO Case No. D2000-1080; Altavista Company v. Grandtotal Finances Limited et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(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 have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant is the owner of the trademarks CITOETHYL and design and CITOZEATEC and design and that the disputed domain names <citoethyl.com> and<citozeatec.com> are confusingly similar to their trademarks.
According to paragraph 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), when the Panel assessment of identity or confusing similarity involves a trademark with design elements, these design elements are largely disregarded where they do not represent the dominant portion of the trademark or where the trademark registration do not entirely disclaims the textual elements.
In the present case the Panel finds that the dominant elements of the Complainant’s trademarks are the textual components “citoethyl” and “citozeatec”.
It is also well accepted that a generic Top-Level Domain (“gTLD”) suffix, in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain names are confusingly similar to the Complainant’s trademarks, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Respondent has failed to file a response in accordance with the Rules, paragraph 5.
The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. It asserts that the Respondent, who is not currently associated with the Complainant in any way, is not using the disputed domain names for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain names. However, the Respondent has not presented any evidence of any rights or legitimate interests he may have in the disputed domain names, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, 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 [the respondent has] registered or has 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that [the respondent has] 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 [the respondent has] engaged in a pattern of such conduct; or
(iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online 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 or service on [the respondent’s] website or location.”
Regarding the registration in bad faith of the disputed domain names, the Panel finds that the Respondent knew of the Complainant’s trademarks since he was the representative of an official distributor of the Complainant’s CITOETHYL and CITOZEATEC products in several countries in 2013 and deliberately registered the disputed domain names corresponding to the Complainant’s trademarks without authorization. See section 3.8.2 of WIPO Overview 3.0.
Regarding the use in bad faith of the disputed domain names, both pointing to inactive websites, the Panel considers that bad faith may exist even in cases of so-called “passive holding”, as found in the landmark UDRP decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the circumstances of this case, the Panel finds that such passive holding amounts to bad faith use since no good faith use of the disputed domain names by the Respondent could be conceived.
The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain names in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <citoethyl.com> and<citozeatec.com> be transferred to the Complainant.
Date: May 18, 2018