WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Basic Trademark S.r.l. v. See PrivacyGuardian.org / Felix Kuhn

Case No. D2020-2606

1. The Parties

The Complainant is Basic Trademark S.r.l., Italy, represented by Studio Sindico e Associate, Italy.

The Respondent is See PrivacyGuardian.org, United States of America (“United States”) / Felix Kuhn, Germany.

2. The Domain Name and Registrar

The disputed domain name <supergaaustralia.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2020. On October 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 7, 2020, 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 October 8, 2020, 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 October 12, 2020 by Center.

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 October 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2020.

The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on November 9, 2020. 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, Basic Trademark S.r.l., is an Italian company part of the BasicNet Group, one of the market leaders in the design and marketing of clothing, footwear and accessories, mostly sportswear or leisurewear, which are sold under various trademarks, including SUPERGA.

The Complainant is the owner of multiple trademarks containing or comprising SUPERGA across various jurisdictions. These registrations include, inter alia:

- European Union trademark SUPERGA with registration No. 003181492, registered on December 10, 2004, in International classes 3, 9, 14, 16, 18, and 25;

- International trademark SUPERGA with registration No. 1018404, registered on July 8, 2009, in International classes 3, 9, 18, and 25.

Additionally, the Complainant is also the registrant of various domain names such as <superga.com>, <superga-usa.com>, <superga.fr>, <superga.shoes>, and <superga.uk>, containing the trademark SUPERGA.

The disputed domain name <supergaaustralia.com> was registered on June 25, 2019, well after the Complainant secured rights to the trademarks. According to the evidence provided by the Complainant, the disputed domain name resolves to a webpage mimicking the Complainant’s website, making use of the Complainant’s trademark and selling allegedly the Complainant’s products.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

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

The Complainant contends that by incorporating the Complainant’s SUPERGA trademark in its entirety, the disputed domain name is confusingly similar to the Complainant’s trademark.

Additionally, the Complainant claims that the mere adjunction of the geographical term “australia” does not negate the confusingly similarity between the disputed domain name and the Complainant’s trademark.

The Complainant also maintains that the generic Top-Level Domain (“gTLD”) “.com” does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar.

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

The Complainant asserts the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Complainant has never authorized any third party to register any domain name including the trademark SUPERGA.

The Complainant asserts that, at the time of registration of the disputed domain name, given its worldwide fame and its presence on the Internet, the Respondent was aware, or should have been aware of the existence of the Complainant’s trademark.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).

First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to SUPERGA.

Secondly, the disputed domain name fully incorporates the Complainant’s SUPERGA trademark in which the Complainant has rights.

Thirdly, this Panel finds that the addition of the geographical term “australia” does not constitute an element so as to avoid confusing similarity for purposes of the Policy. See in this regard section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), stating that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity.

Finally, this Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.com” to the disputed domain name is viewed as a standard registration requirement and as such is disregarded in this case.

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s SUPERGA trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“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 your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

This Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name.

It is a well-established view of UDRP panels, with which this Panel agrees, that a prima facie case advanced by the complainant is generally sufficient for the complainant to satisfy the requirements under paragraph 4(a)(ii) of the Policy, provided that the respondent does not submit any evidence to the contrary (AGUAS DE CABREIROA, S.A.U. v. Hello Domain, WIPO Case No. D2014-2087; Spigen Korea Co., Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-0145; HubSpot, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Steve Johnson, WIPO Case No. D2016-1338).

In the present case, taking into consideration the Respondent’s default, this Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, in view of the circumstances of this case, including the following factors:

- there is no evidence that the Respondent has been licensed or authorized to use the disputed domain name by the Complainant;

- there is no evidence that the Respondent has been commonly known by the disputed domain name;

- there is no evidence that legitimate noncommercial or fair use of the disputed domain name has taken place.

For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“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 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 your website or location or of a product or service on your website or location.”

With regard to the Respondent’s registration of the disputed domain name, this Panel believes bad faith may be found where the Respondent knew or should have known of the registration and use of the SUPERGA trademark prior to registering the disputed domain name. Such is true in the present case in which the Respondent registered the disputed domain name after the Complainant obtained its trademark registrations for the SUPERGA trademark. The Complainant’s reputation and its presence on the Internet makes it disingenuous for the Respondent to claim that he was unaware that the registration of the disputed domain name would violate the Complainant’s rights. This conclusion is further enhanced by the fact that the Respondent has chosen to offer allegedly the Complainant’s goods on the website to which the disputed domain name resolves.

As for the use of the disputed domain name, based on the evidence submitted the Respondent is using it to direct consumers to a website selling allegedly the Complainant’s goods. Such use, which at its heart relies on exploiting user confusion, cannot constitute bona fide use.

In light of the uncontroverted evidence furnished by the Complainant, the Panel is satisfied that the disputed domain name is used in bad faith. At the time of this decision, the Panel accessed the website linked to the disputed domain name and notes that the website of the Respondent prominently displays the Complainant’s trademark and offers SUPERGA footwear for sale. This cannot but bolster the conclusion that the disputed domain name is used in bad faith. In so doing, the disputed domain name may confuse the public about the business origin, the quality of products or services, and about the owner of the disputed domain name.

In light of the above, this Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith under 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 <supergaaustralia.com> be transferred to the Complainant.

Benoit Van Asbroeck
Sole Panelist
Date: November 23, 2020