WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fedrigoni S.P.A. v. Kai Hung Wang, PLASTECH INDUSTRIAL CO.

Case No. D2019-2422

1. The Parties

The Complainant is Fedrigoni S.P.A., Italy, represented by Dr. Modiano & Associati S.p.A., Italy.

The Respondent is Kai Hung Wang, PLASTECH INDUSTRIAL CO., China.

2. The Domain Name and Registrar

The disputed domain name <fedrigoni-group.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2019. On October 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 7, 2019, 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 October 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 30, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2019.

The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on November 12, 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 Fedrigoni S.P.A. an Italian joint stock company with principal place of business in Verona, Italy, representing one of the leading companies in the world in the production and sale of special papers for graphic use and self-adhesive labels for the wine sector, with over 130 years of history.

In 2018, Bain Capital Private Equity became the main shareholder in the Fedrigoni Group and achieved 1,181.5 million EUR in revenues with 3,000 employees in Italy, Spain, Brazil, and the United States of America, with more than 25,000 products in its catalogue distributed and sold in almost 130 countries.

The Complainant has published information on the Internet since the year 2000, through different websites such as <fedrigoni.com>, <fabriano.com>, among others. The Complainant’s domain name <fedrigoni.com> was registered on April 22, 1997.

The Complainant’s first filing for the trademark FEDRIGONI in Italy dates from February 18, 1982, and in Taiwan Province of China dates from May 16, 2006. The Complainant also owns many national, international and community trademark registrations for FEDRIGONI and FEDRIGONI GROUP as per the Annex 4, including the European Union trademark No. 000597583 registered on June 1, 1999.

The disputed domain name was created on July 9, 2019, and the website is currently inactive.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the Respondent registered the disputed domain name, which is confusingly similar to its FEDRIGONI mark, to the various domain names including <fedrigoni.com> as well as to its company name Fedrigoni S.P.A. Also, the Complainant says that the disputed domain name is identical to its registered mark FEDRIGONI GROUP, giving the impression that it pertains to the Complainant’s business.

The Complainant alleges that the Respondent has no license or authorization from the Complainant and also no relationship at all with the Complainant.

Furthermore, the Complainant says that the Respondent is not commonly known by the disputed domain name and that the disputed domain name was registered without any rights or legitimate interests.

In addition, the Complainant demonstrates that the website corresponding to the disputed domain name displayed, until September 24, 2019, the message “internal error – server connection terminated”, whereas currently it displays a parking page containing sponsored links related to websites competing with the Complainant’s products.

The Complainant adds that there is no explanation as to why the Respondent should have chosen the name “Fedrigoni Group” for a website, since it has its own page at “www.hiplastech.com”.

According to the Complainant, the Respondent is clearly aware of the Complainant’s fame and notoriety and registered the disputed domain name in bad faith to intentionally attracting Internet users to its website, creating a likelihood of confusion with the Complainant.

Finally, the Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

As per paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a 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; and

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

A. Identical or Confusingly Similar

The evidence presented to the Panel demonstrates that the Complainant is the owner of several trademark registrations for FEDRIGONI and FEDRIGONI GROUP around the world, including the European Union registration No. 000597583 of June 1, 1999.

The disputed domain name incorporates the Complainant’s trademarks FEDRIGONI and FEDRIGONI GROUP in their entirety.

As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety or a dominant feature of a trademark is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

The Respondent has not submitted a response to the Complaint.

The Complainant’s trademarks and domain names predate the registration of the disputed domain name.

There is no evidence that the Respondent has any authorization to use the Complainant’s trademark or to register domain names containing the trademarks FEDRIGONI and/or FEDRIGONI GROUP.

There is no evidence that the Respondent is commonly known by the disputed domain name.

There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made 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. Instead, the Complainant showed evidence that the disputed domain name was used before the notice of the dispute to mislead Internet users.

The Panel finds that the use of the disputed domain name, which incorporates the Complainant’s trademark, does not correspond to a bona fide use, or demonstrable preparations to a bona fide use of the disputed domain name under the Policy.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The trademarks FEDRIGONI and FEDRIGONI GROUP are registered by the Complainant in several jurisdictions and has been used since several years. Also, the Complainant registered many domain names consisting of the mark FEDRIGONI, including the domain name <fedrigoni.com>, which was registered in 1997. The registration of the Complainant’s trademarks predate the registration of the disputed domain name as well.

The disputed domain name incorporates the Complainant’s trademarks FEDRIGONI and FEDRIGONI GROUP, its company name and also its registered domain names. The Respondent has no rights or legitimate interests in the disputed domain name. The inclusion of these terms was not by coincidence and creates confusion for customers, since it actually makes it appears that the disputed domain name belongs to the company Fedrigoni S.P.A., the Complainant.

The Complainant’s FEDRIGONI mark is well-known in its segment, not only in Italy, its country of origin, but also abroad. Thus, a domain name that comprises such mark may be suggestive of the Respondent’s bad faith.

There is evidence in the Complaint that the disputed domain name was used with the intent to deceive Internet users to believe they were dealing with the Complainant.

Therefore, this Panel finds that the Respondent has intentionally attempted to cause confusion with the Complainant’s trademark by misleading Internet users to believe that its website belongs to or is associated with the Complainant.

The Panel finds that the Respondent’s attempt of taking undue advantage of the Complainant’s trademarks as described in paragraph 4(b)(iv) of the Policy has been demonstrated.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being used in bad faith.

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 <fedrigoni-group.com> be transferred to the Complainant.

Mario Soerensen Garcia
Sole Panelist
Date: November 26, 2019