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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aquafil S.p.A. v. Contact Privacy Inc. Customer 0154488655 / Jannik Fischer

Case No. D2019-1152

1. The Parties

The Complainant is Aquafil S.p.A., Italy, represented by Barzanò & Zanardo Milano S.p.A., Italy.

The Respondent is Contact Privacy Inc. Customer 0154488655, Canada / Jannik Fischer, South Africa.

2. The Domain Name and Registrar

The disputed domain name <aquafilengineerings.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2019. On May 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 21, 2019, 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 May 28, 2019, 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 amendment to the Complaint on May 29, 2019.

The Center verified that the Complaint together with the amendment to 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 May 31, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2019.

The Center appointed Eduardo Machado as the sole panelist in this matter on July 2, 2019. 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 founded in 1969, focused on the production of Polyamide 6. The Complainant is a part of the Aquafil Group, present in eight countries on three continents, including Italy, Slovenia, Croatia, Germany, the United Kingdom, the United States of America, Thailand and China.

The Group’s German division operates though the company Aquafil Engineering GmbH, founded in 1988 in Berlin. The Group also has a division in United States, Aquafil U.S.A., Inc., founded in 1999.

The Complainant is the owner of several international trademark registrations for the AQUAFIL mark, including International trademark No. 728740, registered on January 26, 2000.

The Complainant is also the owner of domain name registrations composed by the AQUAFIL mark, such as <aquafil.com> and <aquafileng.com>, since 2016 and 2000, respectively. The domain name <aquafileng.com> is currently in use to identify Aquafil Engineering GmbH’s activities.

The Respondent did not submit any response, and, therefore, very little information is known about the Respondent.

The disputed domain name was registered on April 15, 2019, and was redirecting to a commercial website promoting third parties’ products and mimicking Complainant’s website.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name is confusingly similar to the Complainant’s trademarks since it incorporates the entirety of the AQUAFIL mark, owned by the Complainant since 2000.

In addition, the Complainant argues that the term “engineerings” (part of the disputed domain name) is also bound to create confusion among consumers considering that such is descriptive of the sector in which the Complainant operates, also recalling the Complainant’s German division: Aquafil Engineering GmbH.

The Complainant highlights that the use of the generic Top-Level Domain (“gTLD”) “.com” is merely instrumental and therefore, should be disregarded, remaining the disputed domain name confusingly similar to the Complainant’s registered AQUAFIL mark.

Furthermore, the Complainant affirms that the Respondent is not an authorized dealer, agent, distributor, wholesaler or retailer of AQUAFIL and therefore has no legitimate interests in the disputed domain name and use of said mark.

The Complainant also alleges that it is not aware of the existence of any evidence tending to demonstrate that the Respondent is commonly known by the disputed domain name, as individual, business, or other organization. In addition to that, the Complainant argues that the Respondent has no legitimate interests in the disputed domain name considering that such resolves to a website promoting the Complainant’s competitors’ products.

The Complainant also claims that the fact that the Respondent failed to respond to the cease and desist letter sent by the Complainant amounts to adoptive admission of the allegations.

Moreover, the Complainant states that the disputed domain name was registered by the Respondent with the sole purpose of misleading potential consumers, to tarnish the Complainant’s trademark and to prevent the Complainant from reflecting its trademark in a corresponding domain name.

The Complainant argues that the disputed domain name was registered and is being used in bad faith by the Respondent considering that the Respondent could not ignore the existence of the AQUAFIL trademark at the time of the registration since the AQUAFIL mark is a widely known mark and fanciful word.

Also, the Complainant argues that the bad faith of the Respondent in the use of the disputed domain name is reflected in the website redirected through the disputed domain name, which uses a figurative representation mostly identical to the one used by the Complainant. Thus, the Complainant claims that the disputed domain name was registered by the Respondent with the purpose of capitalizing on the Complainant’s reputation by diverting Internet users, proving the bad faith of the Respondent.

Lastly, the Complainant states that the website redirected by the disputed domain name is used to publish incorrect contact information of the Complainant, therefore it is impeding to the relevant public to get in touch with the Complainant or, even, directly diverting users to a different entity that is trying to pass off as the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:

(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name;

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the required rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. As disclosed through Annexes 9a-10f of the Complaint, the Complainant owns several trademark registrations for the AQUAFIL mark, all around the world, in several classes, since 2000.

Moreover, the disputed domain name incorporates the Complainant’s AQUAFIL mark in its entirety, having only added the word “engineerings”. In this regard, the Panel considers that the addition of said word does not prevent a finding of confusing similarity with the Complainant’s AQUAFIL mark.

The Complainant is, and has been for decades, active in the area of production of polymer material, which can be associated with the word “engineering”.

The addition of the word “engineerings” to the disputed domain name does not serve to distinguish the disputed domain name in any way. see Hugo Boss Trade Mark Management GmbH & Co. KG and Hugo Boss AG v. Brown Harry, WIPO Case No. DCH2016-0015 (“It should first be noted that the disputed domain name was registered containing the entirety of the Claimants’ trademark with the addition of the term “outlet” thus clearly suggesting to consumers or Internet users that it ties to a sales outlet for the Claimants’ products.”) and General Motors LLC v. Shenzhen Belding Golf Planning Co.,ltd, WIPO Case No. D2009-1781 (“The addition of the generic word “golf” does not serve to distinguish the disputed domain name in any way, particularly given the fact the Trade Mark is used by the Complainant in respect of golfing goods and equipment, and in respect of the sponsoring of professional golf tournaments. The word “golf” should be disregarded in determining the question of confusing similarity.”).

Moreover, the use of the gTLD “.com” also does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark, considering that such is viewed as a standard registration requirement and as such is disregarded under the analysis of the first element.

In this sense, the use of the gTLD “.com” is irrelevant in order to establish identity or confusing similarity between the disputed domain name and the Complainant’s trademark. see Topvintage.nl BV v. DOMAIN ADMIN, WIPO Case No. D2017-1019 (“the various generic Top-Level Domains (“gTLDs”) in each of the disputed domain names are commonly disregarded for the purposes of comparison in cases under the Policy on the grounds that they are required for technical reasons only.”), see also Volkswagen AG v. Todd Garber, WIPO Case No. D2015-2175.

The Panel, thus, concludes that the Complainant has established the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Complainant has alleged that the Respondent has no rights or legitimate interests with respect to the disputed domain name.

There is no evidence that the Respondent has, before any notice of the dispute, ever been commonly known by the disputed domain name nor has made or is making a legitimate noncommercial or fair use of the disputed domain name.

The Complainant has prior rights in the AQUAFIL mark and has never authorized, licensed or permitted, in any way, the Respondent to register or use the disputed domain name.

Considering that the Respondent has failed to send any response to the Complaint, this Panel finds that there are no elements suggesting that the Respondent has or might have had rights or legitimate interests in respect of the disputed domain name.

Moreover, it is important to note that, in spite of the disputed domain name being currently inactive, not resolving to any websites, the Complainant has presented screenshots in Annex 7 providing evidence that the Respondent was using the disputed domain name to redirect to a website using a layout apt to generate the impression to be amongst the Complainant’s official websites to promote products produced by the Complainant’s competitors.

Thus, no legitimate or fair use can be inferred by the Respondent.

Therefore, the Panel concludes that the Complainant has succeeded to establish the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

In order to facilitate assessment of whether the bad faith element is established, paragraph 4(b) of the Policy provides the following non-exclusive scenarios:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on the respondent’s website or location.

The Panel finds that the circumstances described in paragraphs 4(b)(iii) and (iv) of the Policy fit those of the current proceeding.

That is because the Complainant has proven that that the Respondent, by registering the disputed domain name which reproduces the entirety of the AQUAFIL mark, owned by the Complainant, did so with the intention of disrupting the Complainant’s business, considering that the Respondent is using the disputed domain name to redirect to a website to promote products produced by the Complainant’s competitors, such as products produced by the company Cornell Pump, which can be considered a competitor of the Complainant considering the activities of both companies, indicating the aim of the Respondent to eventually hinder the Complainant’s business by diverting the Complainant’s costumers.

In this sense, the Respondent when registering the disputed domain name composed by the Complainant’s AQUAFIL mark, intended to attract Internet users to its website, who had an intention to find out information about the Complainant’s activities. However, the website redirected by the disputed domain name promotes products produced by the Complainant’s competitors. Therefore, the registration of the disputed domain name can be considered disruptive of the activities of the Complainant. see Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279 and Dukascopy Bank SA v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2018-0478.

Bad faith in use is also indicated considering that the website redirected by the disputed domain name, which is indeed using a layout apt to generate the impression to be amongst the Complainant’s official websites, contains incorrect contact information related to the Complainant, attempting to confuse Internet users and provide erroneous information on the Complainant, also disrupting the Complainant’s business and possibly diverting consumers.

Moreover, it is undeniable that the disputed domain name was registered by the Respondent with the aim to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark, considering the use of the entirety of the AQUAFIL mark in the disputed domain name, the use of the term “engineerings” in the disputed domain name which relates to Complainant’s activity as well as the use of a similar logo to the AQUAFIL composite mark in the website redirected by the disputed domain name.

Accordingly, the evidence, which is not rebutted by the Respondent, shows that the Respondent likely knew of and has sought to take unfair advantage of the similarity between the disputed domain name and the Complainant’s AQUAFIL word and composite marks in order to attract Internet users to its website for commercial gain.

In addition, given the circumstances of the case, in particular the Complainant’s trademark rights related to the AQUAFIL mark since 2000 and the use of a similar layout in the website redirected by the disputed domain name, it is inconceivable to the Panel that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that the disputed domain name it chose could attract Internet users in a manner that is likely to create confusion for such users.

This conclusion is supported by the fact that the Respondent failed to submit any response in this case or to provide any evidence of good faith registration and use of the disputed domain name.

Therefore, the Panel finds that the Complainant has established the third element of paragraph 4(a)(iii) of the Policy.

7. Decision

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 <aquafilengineerings.com> be transferred to the Complainant.

Eduardo Machado
Sole Panelist
Date: July 10, 2019

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