WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gianluca Mech S.p.A. v. ITtrust Domain Services LTD
Case No. DEU2019-0015
1. The Parties
Complainant is Gianluca Mech S.p.A., Italy, represented by Turini Group, Italy.
Respondent is ITtrust Domain Services LTD, Ireland.
2. The Domain Name, Registry and Registrar
The Registry of the disputed domain name <gianlucamech.eu> (the “Domain Name”) is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the Domain Name is Key-Systems GmbH.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2019. On October 28, 2019, the Center transmitted by email to the Registry a request for registrar verification in connection with the Domain Name. On October 29, 2019, the Registry transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 5, 2019. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was December 17, 2019. On November 11, 2019, and on December 20, 2019, the Center received email communications from a third party (i.e., “Onsite contact” confirmed by the Registry). Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 20, 2019.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on January 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 ADR Rules, paragraph B(5).
4. Factual Background
According to Complainant, it is an Italian company that has produced and marketed herbalist products since 1911. It also offers diet-related services.
Complainant is the proprietor of several trademark registrations for its GIANLUCA MECH trademark (the “Mark”), including the following:
- European Union trademark No. 009574146 for GIANLUCA MECH (word mark) registered on May 20, 2011 for goods and services in classes 3, 5, 16, 25, 29, 32, 38, 41 and 44;
- Italian trademark No. 0001569549 for GIANLUCA MECH (word mark) registered on November 26, 2013 for services in classes 35 and 43;
Complainant operates its primary website at “www.gianlucamech.com”, and is the proprietor of numerous domain name registrations containing the Mark, including “www.gianluca-mech.eu”.
The Domain Name was registered on March 30, 2018. It does not resolve to an active site.
5. Parties’ Contentions
Complainant’s allegations may be summarized as follows:
Under the first element, Complainant states it is a well-known Italian company which produces and markets herbalist products using ancient and patented methods since 1911. Complainant is the proprietor of the well-known GIANLUCA MECH Mark and of several domain names containing this Mark. The Domain Name is identical to the Mark, and the Top-Level Domain (“TLD”) “.eu” should be disregarded in considering confusing similarity. Therefore, the Domain Name is identical or confusingly similar to Complainant’s Mark.
Under the second element, Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because it is not commonly known by that name, nor is Respondent authorized, licensed or otherwise allowed by Complainant to use the Mark nor to register such a domain name. The Domain Name is not currently being used by Respondent, and therefore is not being used in connection with a bona fide offering of products. Respondent is not an authorized factory nor retailer of Complainant’s products. The composition of the Domain Name, which is identical to Complainant’s Mark, is suitable to attract Internet users and to mislead and divert customers, which cannot be considered noncommercial or fair use. It is unlikely that Respondent would not have known of Complainant’s rights in the Mark.
Under the third element, Complainant asserts that Respondent knew or should have known of the registration and use of the Mark prior to registering the Domain Name, since the existence of the Mark is readily visible online, and the Mark is well known. The registration of the Domain Name prevents Complainant from reflecting its Mark in a .eu domain name.
Respondent is not making any use of the Domain Name. Respondent has chosen the Domain Name to create a false impression of an association with Complainant or its products or services or with the intent to misleadingly divert Internet users.
Respondent did not submit a formal reply to Complainant’s contentions, but the record contains informal correspondence from the Onsite contact.
6. Discussion and Findings
Under paragraph B(11)(d)(1) of the ADR Rules, in order for the Complaint to succeed, it is for Complainant to establish:
(i) that the Domain Name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or European Union law and; either
(ii) that the Domain Name has been registered by Respondent without rights or legitimate interest in the name; or
(iii) that the Domain Name has been registered or is being used in bad faith.
Furthermore, Article 22(10) of the Regulation provides that “[f]ailure of any of the parties involved in an ADR procedure to respond within the given deadlines or appear to a panel hearing may be considered as grounds to accept the claims of the counterparty”.
A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or European Union law
Complainant has provided evidence establishing that it has trademark rights in the Mark through use and registration in the European Union and Italy. This is sufficient for the Panel to make a finding that Complainant has rights recognized by European Union law for the purposes of standing to bring a Complaint under paragraph B(11)(d)(1)(i) of the ADR Rules.
In comparing Complainant’s Mark with the Domain Name, the Panel finds that the Domain Name is identical to the Mark, since the Domain Name contains the Mark in its entirety, without any alterations. It is well established in decisions under the ADR Rules that the country code Top-Level Domain “.eu” is typically ignored when assessing the similarity between a trademark and a domain name.
The Panel therefore finds that Complainant has established the first element according to paragraph B11(d)(1)(i) of the ADR Rules.
B. Rights or Legitimate Interests
Under paragraph B(11)(e) of the ADR Rules, Respondent may demonstrate its rights or legitimate interests to the Domain Name for purposes of paragraph B(11)(d)(1)(ii) by showing any of the following circumstances, in particular but without limitation:
(1) prior to any notice of the dispute, Respondent has used the Domain Name or a name corresponding to the Domain Name in connection with the offering of goods or services or has made demonstrable preparation to do so;
(2) Respondent, being an undertaking, organization or natural person, has been commonly known by the Domain Name, even in the absence of a right recognized or established by national and/or European Union law;
(3) Respondent is making a legitimate and noncommercial or fair use of the Domain Name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or European Union law.
According to Complainant, Respondent was not authorized to register the Domain Name. Complainant has established that it has no relation with Respondent, has never authorized Respondent to use the Mark in any way and that Respondent is not commonly known by the Domain Name. Respondent, in failing to file a formal response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the Domain Name.
Previous ADR panels have found that a domain name that is not being used by Respondent cannot be considered as used in connection with a bona fide offering of products (see, for example, Gymworld Inc. and Magformers UK Limited v. Vanbelle Jo, Vanbelle Law, WIPO Case No. DEU2017-0001).
The Panel therefore finds that Complainant has established the second element, according to paragraph B11(d)(1)(ii) of the ADR Rules.
C. Registered or Used in Bad Faith
Under paragraph B11(d)(1)(iii) of the ADR Rules, the registration or use of the Domain Name in bad faith are considered alternate bases for a successful complaint. The Panel finds that Respondent must have been aware of Complainant at the time of registering the Domain Name. Complainant has submitted evidence showing that Respondent registered the Domain Name well after Complainant registered its Mark, which is distinctive and has been widely publicized at least within Italy. According to the evidence filed by Complainant, it has owned a registration for the GIANLUCA MECH trademark at least since 2011, and the Mark appears to have been in use for far longer. The Mark is identical to the name of Complainant’s CEO.
Under the doctrine of passive holding, the fact that the Domain Name does not resolve to an active website does not prevent a finding of bad faith (See Section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”1), and cases such as Carrefour v. Manager Limited Domain / Maria Di Blasi, WIPO Case No. DEU2018-0014).
Furthermore, the Panel notes that Respondent has chosen not to file a formal response to the Complaint and consequently has not rebutted Complainant’s assertions. (See FNAC Darty Participations et Services and Establissements Darty et Fils v. Paul Romain, WIPO Case No. DEU2018-0003).
Under these circumstances and on this record, the Panel finds that Respondent registered the Domain Name in bad faith, and that Complainant has established the third element, according to paragraph B11(d)(1)(iii) of the ADR Rules.
For the foregoing reasons, in accordance with paragraph B(11) of the ADR Rules, the Panel orders that the Domain Name, <gianlucamech.eu> be transferred to Complainant.2
Date: January 16, 2020
1 Considering the substantive similarities between the ADR Rules and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel also refers to UDRP case law and analysis, where appropriate.
2 The remedy sought is transfer of the Domain Name to Complainant. As Complainant is established in Italy, it satisfies the general eligibility criteria for registration of the Domain Name set out in article 4(2)(b) of the Regulation (EC) No. 733/2002.