WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Delticom AG v. Krasimir Kalushkov, Megarella Ltd.
Case No. D2021-4113
1. The Parties
The Complainant is Delticom AG, Germany, represented by Fechner Rechtsanwälte PartmbB, Germany.
The Respondent is Krasimir Kalushkov, MEGARELIA LTD, Cyprus.
2. The Domain Name and Registrar
The disputed domain name <gommadiretto.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 December 8, 2021. On December 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 9, 2021, 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 December 14, 2021 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 December 17, 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 January 12, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 1, 2022. The Response was filed with the Center on January 15, 2022.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on February 15, 2022. 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 a leading company in Europe providing online distribution of tires and complete wheels and rims for private and business customers, covering 600 brands and over 40,000 tire models for cars and motorcycles. The Complainant operates 351 online stores and sales platforms in 73 countries, serving more than 16 million customers. The Complainant maintains some 38,000 workshop partnerships worldwide where customers can have their orders fitted. In the fiscal year 2020, the Complainant generated revenues of EUR 541 million and employed 177 people. One of the Complainant’s online stores is the website at “www.gommadiretto.it”, the domain name for which was registered on July 22, 2003. The website is in the Italian language and focuses on the Italian marketplace.
The Complainant owns European Union Registered Trademark No. 6827927 for the word mark GOMMADIRETTO, registered on January 12, 2009 in Nice Classes 12, 35, and 39.
The disputed domain name was registered on January 12, 2018. Little is known regarding the Respondent, which has not replied substantively to the terms of the Complaint other than to assert that the disputed domain name is allegedly “leased” to an unidentified third party, and that it was acquired from the Registrar as a “premium domain at price of approximately EUR 10,000”. No evidence was supplied in support of either of these claims. The website associated with the disputed domain name states that it is operated by a company named Check Mate On Line SL Unipersonal of Las Palmas, Gran Canaria, Spain. Said website, which is in the Italian language, appears to offer online tire supply services in competition to those of the Complainant. The Respondent has not named Check Mate On Line SL as the alleged licensee of the disputed domain name.
The Panel has verified that the Center issued written and email notification of the Complaint not only to the Respondent but also to Check Mate On Line SL. While a brief response was received by email from the Respondent, as mentioned above, no response was received from Check Mate On Line SL.
5. Parties’ Contentions
The Complainant contends as follows:
Identical or confusingly similar
The Complainant is the owner of European Union Registered Trademark No. 6827927 for the word mark GOMMADIRETTO in respect of various goods and services including in Class 12, “automobile tires; bicycle tires; tires, solid, for vehicle wheels; tires for vehicle wheels; inner tubes for tires; tubeless tires for bicycles, cycles”. Visually, phonetically, and conceptually, there is no difference between this sign and the disputed domain name. The suffix “.com” is of no significance, being a designation that an Internet site provider must use as part of its address. The sole purpose of the disputed domain name is to sell tires and this is identical to the goods covered by the Complainant’s mark.
Rights or legitimate interests
The Respondent has no rights or legitimate interests in the disputed domain name, which unlawfully infringes the Complainant’s mark. The Respondent has no rights to do so. Even if the Respondent did not infringe said mark, it would have no rights or legitimate interests in respect of the disputed domain name. The disputed domain name was registered in 2018 while the Complainant’s corresponding domain name was registered in 2003, 15 years earlier, and the corresponding trademark was applied for in 2008. The Complainant operates a well-known tire-selling business under its said domain name that has been established for almost two decades. The Respondent is trying to divert business from the Complainant’s website to its own online store and purposefully uses the Complainant’s goodwill and reputation to sell inferior products and services. The infringement is obvious given that the Respondent is operating in an identical business field to that which the Complainant has established under its said trademark and, like the Complainant, the Respondent is using the disputed domain name to sell tires in Italy. The Respondent’s identity is not transparent, given that it is not identified on the website associated with the disputed domain name and appears to have its identity and business seat in Cyprus, while the website is operated by an entity having its seat in Las Palmas, Gran Canaria, Spain. The Respondent’s role in the use of the disputed domain name and sale of identical goods remains unclear.
Registered and used in bad faith
The Respondent uses the disputed domain name in bad faith. If the Respondent had the intention to offer unique products and services, it would not have chosen the disputed domain name, which is identical to the well-established domain name of the Complainant, given that the differences in Top-Level Domain are immaterial. It is impossible for the Respondent to overlook the Complainant’s identical domain name and trademark. The Complainant's trademark has been used to sell tyres since 2008 and the only reason for the registration of the disputed domain name is to make parasitic use of the Complainant's reputation, and to mislead and divert the Complainant’s customers to the Respondent's website for its own commercial gain.
The Respondent did not file a formal Response. On January 15, 2022, the Respondent issued an email to the Center stating “What’s the problem? Can you be more specific?” and sent a further email on the same day stating “[The disputed domain name] was purchased by provider Godaddy as a premium domain at a price of approximately EUR 10,000. The domain usage has been leased to other company. What’s the problem? Can you give us more details?”
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(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
There are two parts to the inquiry under this element of the Policy. First, the Complainant must demonstrate that it has UDRP-relevant rights in a trademark. Secondly, the Panel compares any such trademark to the disputed domain name, typically in a straightforward side-by-side manner, disregarding the generic Top-Level Domain as required for technical purposes only. The purpose of the comparison is to determine identity or confusing similarity between the trademark and disputed domain name. If the former is recognizable in the latter, confusing similarity will generally be found, while if the former is identical to the latter, identity will generally be found.
In the present case, the Panel is satisfied that the Complainant has demonstrated that it has rights in its European Union Registered Trademark No. 6827927 for the word mark GOMMADIRETTO. Comparing this mark to the Second-Level Domain of the disputed domain name, the Panel finds these to be identical. The Panel notes that the Respondent has not sought to oppose the Complainant’s submissions on this topic.
In all of the above circumstances, the Panel finds that the disputed domain name is identical to the Complainant’s trademark and that the Complainant has carried its burden with regard to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“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.”
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in the disputed domain name. Once such prima facie case is made out, the burden of production shifts to the respondent to bring forward appropriate allegations and/or evidence demonstrating its rights or legitimate interests in the domain name concerned.
In the present case, the Complainant submits that the Respondent is operating under the disputed domain name which is identical to the Complainant’s own domain name (other than the Top-Level Domain) under which the Complainant has done business since 2003, and is likewise identical to the Complainant’s GOMMADIRETTO trademark, which has been registered since 2009. The Complainant asserts that it operates a well-known tire-selling website under such mark and domain name addressing the Italian market in the Italian language, and that the Respondent is trying to divert business from such website to the website associated with the disputed domain name, which also uses the Italian language and addresses the Italian market. The Complainant also raises concerns about the lack of clarity over the Respondent’s identity. The Panel is satisfied that these submissions establish the requisite prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent’s brief submissions do not demonstrate any rights or legitimate interests to the disputed domain name in terms of paragraph 4(c) of the Policy or otherwise. The Respondent’s allegation that the disputed domain name was sold by the Registrar and purchased by the Respondent as a premium domain does not, in and of itself, disclose any such rights or legitimate interests, nor does the fact that it has allegedly licensed the disputed domain name to a third party. The present use of the disputed domain name appears to be predicated upon the goodwill of the Complainant’s trademark, as it is being used for a website selling identical goods to those covered by such mark, in the same language and appearing to address the same market. In these circumstances, the Respondent (which is ultimately responsible for the content on the website associated with the disputed domain name, even if published by a third party) could not be regarded as making a bona fide offering of goods or services. In the absence of any evidence or submissions from the Respondent suggesting or showing the contrary, the Panel considers that the disputed domain name is being used for commercial gain, with intent to misleadingly divert consumers looking for the Complainant’s website. Such use cannot confer rights and legitimate interests upon the Respondent.
In all of the above circumstances, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name. The Panel therefore finds that the Complainant has carried its burden with regard to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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 web site 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 web site or location or of a product or service on your web site or location.”
In the present case, the Complainant’s submissions effectively focus on paragraph 4(b)(iv) of the Policy. The Complainant asserts that the Respondent has selected the disputed domain name because it is identical to the Complainant’s well-established domain name and registered trademark, in order to make parasitic use of the Complainant's reputation for the Respondent’s own commercial gain.
The fact that the Respondent has selected an identical name to the Complainant’s well-established name and registered trademark, and is using this to sell identical products in competition to the Complainant in the identical market and language, suggests to the Panel on the balance of probabilities that the Respondent was aware of the Complainant and its trademark when it registered or acquired the disputed domain name. This is further affirmed by the fact that there are some notable similarities between the homepage of the Complainant’s website and that of the Respondent, as demonstrated by the Complainant’s screenshots, namely the use of a similar color scheme, i.e., a black banner with white text and the same color of light blue in the main logo. The circumstances therefore suggest that the Respondent intended to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source of the Respondent’s website, this being an indication of registration and use in bad faith.
The Respondent did not file a substantive Response in this matter and made no substantive reply to the Complainant’s contentions. The Panel has noted that the Complaint was notified both to the Respondent and to the third party which is named on the associated website. Accordingly, they have each been provided with an opportunity to make representations in the administrative proceeding, and neither of them has done so. To the extent that the Respondent alleges that it has licensed the disputed domain name to an unidentified third party, which may or may not be the entity named on the associated website, the Respondent is nevertheless responsible for the manner in which the disputed domain name has been registered and used.1
The Respondent has failed to provide any reasonable explanation for its registration and use of the disputed domain name. The present record does not indicate any possible good faith motivation to the Panel which the Respondent or its alleged licensee might have put forward in this matter. Accordingly, in all of the above circumstances, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and therefore that the Complainant has carried its burden in terms of paragraph 4(a)(iii) of the Policy.
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 <gommadiretto.com> be transferred to the Complainant.
Andrew D. S. Lothian
Date: March 1, 2022
1 According to section 184.108.40.206 of the ICANN Registrar Accreditation Agreement, the provisions of which are to be included in the agreement between a registrar, including the Registrar here, and its Registered Name-Holder, where such Registered Name-Holder “intends to license use of a domain name” it has seven days to disclose to a party such as the Center, when presented with reasonable evidence of actionable harm, whether it is not in fact the beneficial registrant or whether there is a licensee. If the registrant does not disclose contact information of the beneficial owner, as was the case here, then the section provides that the Registered Name-Holder shall accept liability for harm caused by wrongful use of the domain name concerned.