WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Automobile Club di Brescia v. THE AGENCY, Strategy Agency, Inc

Case No. D2021-0101

1. The Parties

The Complainant is Automobile Club di Brescia, Italy, represented by Barzanò & Zanardo Milano SpA, Italy.

The Respondent is THE AGENCY, Strategy Agency, Inc, United States of America.

2. The Domain Names and Registrar

The disputed domain names <millemigliafilm.com> and <themillemiglia.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2021. On January 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 14, 2021, 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 January 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2021. The Center received the Respondent’s communications by email on January 15, 2021 and on January 25, 2021. On February 12, 2021, the Center informed the Parties that it would proceed to panel appointment.

The Center appointed Mathias Lilleengen as the sole panelist in this matter on April 1, 2021. 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

Through its company 1000 Miglia S.r.l., the Complainant organizes every year in May the car race MILLE MIGLIA. It was first organized in 1927. As of 1977, the race has been transformed into a regularity race for classic and vintage cars and the participation is limited to models produced no later than the year 1957.

The Complainant owns national, European Union and International trademarks comprising the term MILLE MIGLIA, such as European Union Trade Mark registration No. 001519511 registered on April 2, 2001 and International registration No. 776355 registered on July 19, 2001.

The Complainant operates a website at “www.millemiglia.it”, which receives over 750,000 visitors every year from more than 170 countries. It also owns over 80 domain names comprising the MILLE MIGLIA trademark, and the Complainant is active on several social networks, such as Facebook, Twitter and YouTube.

The Domain Names were registered on July 23, 2020. At the time of the Complaint, and the time of drafting the Decision, the Domain Names resolved to a pay-per-click (“PPC”) webpage offered by the Registrar.

5. Parties’ Contentions

A. Complainant

The Complainant provides evidence of trademark registrations, and argues that the Domain Names incorporate the Complainant’s trademark, together with “the” and “film”, respectively. The additions are not sufficient to exclude a confusing similarity with the Complainant’s trademark.

The Complainant asserts that the Respondent is not authorized to use the Complainant’s trademark. There is no evidence that the Respondent is commonly known by the Domain Names. The Respondent’s name is Strategy Agency. The Respondent cannot establish rights in the Domain Names as it has not made any use of, or demonstrable preparations to use, the Domain Names in connection with a bona fide offering of goods or services. On the contrary, the Respondent has used to Domain Names to resolve to a PPC webpage. According to the correspondence with the Respondent, the Domain Names were intended to be used for a film on the well-known Mille Miglia race, but there is no evidence of such use. In any case, the organization of a movie regarding the Complainant must be authorized by the owner of the MILLE MIGLIA trademark.

The Complainant believes the said correspondence from the Respondent proves that the Respondent was aware of the Complainant’s activity and trademark. The Complainant argues that the Respondent has used the Domain Names in bad faith when linking them to a PPC webpage, and in that way intentionally attempted to attract Internet users for commercial gain, by creating confusion with the Complainant’s trademark. The Respondent is exploiting the reputation and distinctiveness of the Complainant’s trademarks through sponsored links. Finally, bad faith could also be inferred by the correspondence that took place before the Complaint as it discloses the Respondent’s intention to sell the Domain Names for valuable consideration in excess of the costs.

B. Respondent

The Respondent did not reply to the Complainant’s contentions, but sent informal emails to the Center on January 15, 2021 and January 25, 2021, informing inter alia that “We registered these domains with the hopes of working on a film project in support of the Mille Miglia. These are dormant domains and placers and have not been used and we had no intention of using them without working with the Mille Miglia organization in some fashion”.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established that it has rights in the trademark MILLE MIGLIA. The test for confusing similarity involves the comparison between the trademark and the Domain Names. The Domain Names incorporate the Complainant’s trademark, with “the” and “film” respectively added to the Domain Names. The additions do not prevent a finding of confusing similarity between the Domain Names and the Complainant’s trademark.

For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domain (“gTLD”) “.com”; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.

The Panel finds that the Domain Names are confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register the Domain Names containing the Complainant’s trademark or otherwise make use of the Complainant’s mark. There is no evidence that the Respondent has registered the Domain Names as a trademark or acquired unregistered trademark rights. The Respondent cannot establish rights in the Domain Names, as it has not made use of, or demonstrable preparations to use, the Domain Names in connection with a bona fide offering of goods or services. The Respondent’s email explanation that it intended to make a film on the well-known Mille Miglia race is not supported by any documentation or evidence. The said email also implicitly acknowledges that the Respondent would need an approval from the Complainant to see out its alleged intention.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel agrees with the Complainant that the Respondent must have been aware of the Complainant when the Respondent registered the Domain Names.

Based on the evidence, in particular the composition of the Domain Names, and the use of the Domain Names to resolve to a PPC webpage and the Respondent’s undocumented email explanation, the Panel finds it likely that the Respondent has registered and used the Domain Names to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark. It is not necessary for the Panel to assess the Complainant’s claims regarding the solicited offer to sell the Domain Names.

For the reasons set out above, the Panel concludes that the Domain Names were registered and are being used in bad faith, within the meaning 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 Domain Names <millemigliafilm.com> and <themillemiglia.com> be transferred to the Complainant.

Mathias Lilleengen
Sole Panelist
Date: April 12, 2021