WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Iveco S.p.A. v. Ben Williams, Business Direct Gateway

Case No. D2021-1922

1. The Parties

The Complainant is Iveco S.p.A., Italy, represented by Studio Barbero, Italy.

The Respondent is Ben Williams, Business Direct Gateway, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <ivecogroup.com> (the “Disputed Domain Name”) is registered with Mesh Digital Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the“Center”) on June 18, 2021. On June 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 21, 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 sent an email communication to the Complainant on July 8, 2021 providing the 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 July 8, 2021.

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 July 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 29, 2021. The Respondent sent an informal email to the Center on July 29, 2021.

The Center appointed Lynda M. Braun as the sole panelist in this matter on August 10, 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

Founded on January 1, 1975, the Complainant is an Italian company that manufactures vehicles covering heavy, medium and light segments. Today, the Complainant has 25,000 employees worldwide, and manages vehicle production sites in 11 countries throughout Europe, Asia, Africa, Oceania, and Latin America.

The Complainant is the owner of numerous trademark registrations, including, but not limited to:

IVECO (word mark), International Trademark Registration No. 426061, registered on October 21, 1976 in international classes 7, 9 and 12;

IVECO (figurative mark), International Trademark Registration No. 495769, registered on August 2, 1985 in international classes 6, 8, 14, 15, 16, 18, 21, 24, 25, 28 and 37;

IVECO (word mark), International Trademark Registration No. 782547, registered on April 22, 2002 in classes 36, 37 and 39 (designating several jurisdictions, including the United Kingdom);

IVECO (figurative mark), European Union Trademark Registration No. 001006725, registered on March 27, 2000 in international classes 7, 9 and 12;

IVECO (figurative mark), United Kingdom Trademark Registration No. 00901006725, registered on March 27, 2000, in classes 7, 9 and 12;

IVECO (word mark), United Kingdom Trademark Registration No. 00001064904, registered on May 10, 1976 in international class 7;

IVECO (word mark), United Kingdom Trademark Registration No. 00001064905, registered on May 10, 1976 in international class 12; and

IVECO (figurative mark), United Kingdom Trademark Registration No. 0001279196, registered on May 11, 1990 in international class 37.

The foregoing trademarks will hereinafter be referred to collectively as the “IVECO Mark”. The Complainant has used its trademarks for over 40 years in jurisdictions worldwide.

In addition, the Complainant owns more than 500 domain names containing its IVECO Mark, including <iveco.com>, which resolves to its official website at “www.iveco.com”.

The Disputed Domain Name was registered on February 5, 2014, at first resolving to internal pages of the Complainant’s website, later resolving to a blog website that allegedly included a false copyright notice, and finally resolving to a web landing page that states: “The domain name ivecogroup.com is for sale!”. The landing page provides a link to an online form through which Internet users can contact the holder of the Disputed Domain Name to request information and submit offers for purchase, for a minimum amount of GBP 180.000.

Prior to the Respondent redirecting the Disputed Domain Name to the webpage with the offer for sale, the Complainant instructed a web agency to contact the Respondent, and also instructed its attorney to send cease and desist letters to the Respondent. The Respondent replied, requesting EUR 1,600,000 for the Disputed Domain Name, and eventually lowered the sale price to EUR 1,000,000.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- the Disputed Domain Name is confusingly similar to the Complainant’s trademark.
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- the Disputed Domain Name was registered and is being used in bad faith.
- the Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

Aside from the informal communication mentioned in Section 3 above, informing that the Disputed Domain Name was for sale, the Respondent made no formal reply to the Complainant’s contentions. In the communication, the Respondent claimed that it has owned the Disputed Domain Name since 2016, that to date, it never had an infringement reported to it, and uses it only to sell the “domain name” to those interested in purchasing it.

6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):

(i) the Disputed Domain Name is 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 Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the IVECO Mark.

It is uncontroverted that the Complainant has established rights in the IVECO Mark based on its decades of use as well as its registered trademarks for the IVECO Mark in the United Kingdom and many other jurisdictions worldwide. The general consensus is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in the IVECO Mark.

The Disputed Domain Name consists of the IVECO Mark in its entirety followed by the dictionary term “group”, and then followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be deemed confusingly similar to that trademark for purposes of the Policy despite the addition of other terms. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. For example, numerous UDRP decisions have reiterated that the addition of a dictionary or descriptive word to a trademark does not prevent a finding of confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011‑0795; Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.

Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a disputed domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11. Thus, the Disputed Domain Name is confusingly similar to the Complainant’s IVECO Mark.

Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its IVECO Mark. Nor does the Complainant have any type of business relationship with the Respondent. Based on the initial use made of the Disputed Domain Name to resolve to the Complainant’s website, later to a blog page, and finally to a landing page offering the Disputed Domain Name for sale, the Panel finds that the Respondent was not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. On the contrary, the Respondent used the IVECO Mark for commercial gain and to deceive Internet users who believed they arrived at the Complainant’s website.

Further, offering the Disputed Domain Name for sale in excess of the Respondent’s likely documented out-of-pocket costs does not constitute a legitimate noncommercial or fair use. See Turner Network Television, Inc. v. Expired Domain Resource****Maybe For Sale on Dynadot Marketplace**** c/o Dynadot, WIPO Case No. D2018-1036 (“The offering of the Domain Name for sale does not constitute a bona fide sale of goods or services or a legitimate noncommercial or fair use”).

Finally, the composition of the Disputed Domain Name, comprising the entirety of the IVECO Mark, carries a risk of implied affiliation and cannot constitute fair use here, as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.

Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

The Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.

First, based on the circumstances here, the Panel concludes that the Respondent registered and is using the Disputed Domain Name in bad faith in an attempt to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s IVECO Mark as to the source, sponsorship, affiliation or endorsement of the Disputed Domain Name’s resolving webpage. The Respondent’s registration and use of the Disputed Domain Name indicate that such registration and use has been done for the specific purpose of trading on the name and reputation of the Complainant and its IVECO Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi/Madonna.com, WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain”).

Second, the registration of a domain name that reproduces a trademark in its entirety (being identical or confusingly similar to such trademark) by an individual or entity that has no relationship to that mark, without any reasonable explanation on the motives for the registration, may be suggestive of opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.

Third, the Respondent's offer to sell the Disputed Domain Name for valuable consideration likely in excess of its documented out-of-pocket costs directly related to the Disputed Domain Name is also evidence of the Respondent's bad faith registration and use under paragraph 4(b) of the Policy. It is no defense to bad faith use that the Respondent owned the Disputed Domain Name since 2016 without receiving any notice of infringement to date, although it offered it for sale since then.

Finally, the Respondent’s registration of the Disputed Domain Name was an attempt to disrupt the Complainant’s business by diverting Internet users who were searching for the Complainant’s products and services at its official website as well as to prevent the Complainant from registering the Disputed Domain Name. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552. The Panel thus concludes that the Respondent has registered and is using the Disputed Domain Name in bad faith.

Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant.

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 <ivecogroup.com> be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: August 23, 2021