WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alfa Gomma S.p.A. v. ITtrust Domain Services LTD
Case No. DEU2019-0019
1. The Parties
The Complainant is Alfa Gomma S.p.A., Italy, represented by Turini Group, Italy.
The Respondent is ITtrust Domain Services LTD, Ireland.
2. The Domain Name, Registry and Registrar
The Registry of the disputed domain name <alfagomma.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 December 18, 2019. On December 18, 2019, the Center transmitted by email to the Registry a request for registrar verification in connection with the Domain Name. On December 20, 2019, the Registry 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 .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 the Respondent of the Complaint, and the proceedings commenced on January 6, 2020. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was February 17, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 19, 2020.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on February 26, 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
The Complainant is an affiliate company of the Alfagomma Group, a globally operating company manufacturing hydraulic and industrial fluid handling systems. The Complainant is the owner of many registered trademarks worldwide, containing the verbal element ALFAGOMMA, including, but not limited to the international registration, designating the European Union No. 886015, registered on December 1, 2005 and the International Registration, designating Italy, No. 653620, registered on March 25, 1996 (hereinafter referred to together, in singular, as the “Trademark”).
Furthermore, the Complainant is the owner of several domain name registrations containing the Trademark. The Complainant also operates under the trade name Alfagomma (the “Trade Name”) since 1955.
The Domain Name was registered on December 8, 2015. At the time of filing the Complaint, the Domain Name resolves to an active website which mimics the Complainant’s official website.
5. Parties’ Contentions
Insofar as relevant, the Complainant contends the following.
The Domain Name is identical to the Complainant’s well-known Trademark and Trade Name. The addition of the country code Top-Level Domain (“ccTLD”) suffix “.eu” is a standard registration requirement and should be disregarded under the confusing similarity analysis.
The Respondent is not authorized or permitted to use the Trademark, nor is the Respondent associated with the Complainant. Furthermore, the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. The Respondent is using the Domain Name to mislead and divert Internet traffic to a website which seems to be cloned from the Complainant’s website, which cannot be considered non-commercial or fair use.
The Domain Name was registered and has been used in bad faith. The Trademark significantly predates the registration date of the Domain Name and the Respondent was aware of the Trademark. Due to the worldwide fame of the Complainant and its Trademark, the registration of the almost identical Domain Name gives rise to an interference of bad faith registration and use. In addition, the Respondent is using the Domain Name to attract Internet users by creating a false impression of an association with the Complainant or its products and services or with the intention to misleadingly divert internet users. Furthermore, the registration of the Domain Name prevents the Complainant from reflecting its Trademark in a corresponding “.eu” domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with Article 21(1) of Regulation (EC) No. 874/2004 of April 28, 2004 laying down public policy rules concerning the implementation (the “Regulation”), and Paragraph B(11)(d) of the ADR Rules, the Complainant, in order to succeed, is required to prove that:
(i) 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) The domain name has been registered by the Respondent without rights or legitimate interest in the name; or
(iii) The domain name has been registered or is being used in bad faith.
It is generally established case law that Complaints are not granted based on Respondents’ failure to supply a response.
The Complainant must establish a prima facie case in order to succeed. The panel finds in this matter that in the absence of a response the facts as asserted by the Complainant has to be accepted and draws all reasonable inferences therefrom. This also follows from article 22 (10) of the Regulation which states that failure 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
The Complainant sufficiently proved to have rights in the Trademark and the Trade Name.
The Domain Name consists in its entirety of the Trademark and the Trade Name in which the Complainant has rights. The ccTLD “.eu” may be disregarded for purposes of assessing confusing similarity.
Therefore, the Panel finds the Domain Name to be confusingly similar and in fact identical to a name in which the Complainant has established a satisfactory right within the meaning of Article 21(1) of the Regulation and Paragraph B(11)(d)(1)(i) of the ADR Rules.
B. Rights or Legitimate Interests
The Complainant has asserted that the Domain Name has been registered without the Respondent having any rights or legitimate interest in it. Article 21(2) of the Regulation and similarly Paragraph B(11)(e) of the ADR Rules provide that a legitimate interest may include:
(1) prior to any notice of an alternative dispute resolution (ADR) procedure, the 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; or
(2) the 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; or
(3) the 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.
The Panel finds that the Complainant has established a prima facie case in order to succeed.
There is no evidence in the case file that the Respondent has any rights or legitimate interests in the Domain Name.
The Respondent does not appear to be affiliated with the Complainant in any way. There is no evidence that the Respondent is commonly known as “Alfaogomma” or “Alfa Gomma”.
There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the Trademark, Trade Name, or to apply for or use any domain name incorporating either of these.
The Respondent did not demonstrate any use or demonstrable preparation to use the Domain Name in connection with a bona fide offering of goods or service. On the contrary, the Respondent is using the Domain Name to mislead and divert Internet traffic to a website which is highly similar to the Complainant’s website. Such use cannot be considered as fair use.
Finally, in the circumstances of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the Domain Name is further supported by the fact that no response was filed by the Respondent. See GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090; and Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493.
The Panel therefore finds that the Respondent has not established rights or legitimate interests in the Domain Name and accordingly the Complainant is found to have satisfied Article 21(2) of the Regulation.
C. Registered or Used in Bad Faith
Given the considerations above, it is strictly taken not necessary for the Panel to consider registration or use in bad faith. Nonetheless, the Panel will discuss this below.
For purposes of Article 21(1)(b) of the Regulation and Paragraph B(11)(d)(1)(iii) of the ADR Rules, the following circumstances as listed in Article 21(3) of the Regulation and, similarly under Paragraph B(11)(f), may be evidence of the registration or use of a domain name in bad faith:
(a) circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name to the holder of a name, in respect of which a right is recognized or established by national and/or European Union law, or to a public body; or
(b) the domain name has been registered in order to prevent the holder of such a name in respect of which a right is recognized or established by national and/or European Union law, or a public body, from reflecting this name in a corresponding domain name, provided that:
(i) a pattern of such conduct by the registrant can be demonstrated; or
(ii) the domain name has not been used in a relevant way for at least two years from the date of registration; or
(iii) in circumstances where, at the time the ADR procedure was initiated, the holder of a domain name in respect of which a right is recognized or established by national and/or European Union law or the holder of a domain name of a public body has declared his/its intention to use the domain name in a relevant way but fails to do so within six months of the day on which the ADR procedure was initiated;
(c) the domain name was registered primarily for the purpose of disrupting the professional activities of a competitor; or
(d) the domain name was intentionally used to attract Internet users, for commercial gain to the Respondent’s website or other on-line location, by creating a likelihood of confusion with a name on which a right is recognized or established, by national and/or European Union law, or it is a name of a public body, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location of the Respondent; or
(e) the domain name is a personal name for which no demonstrable link exists between the Respondent and the domain name registered.
The examples of bad faith mentioned above are non-exhaustive. It is for the Panel to consider whether bad faith exists.
Similar to the assessment of the rights and legitimate of the Respondent, the Panel here finds that the Complainant has established a prima facie case in order to succeed.
The Panel notes that the Trademark is, as well as the activities of the Complainant, well known throughout the world. Accordingly and because of the fact that the website to which the Domain Name resolves, shows a cloned version of Complainant’s website, the Respondent must have been aware of the Complainant’s existence and rights at the time the Respondent registered the Domain Name.
In addition, there is no other plausible explanation why the Respondent registered the Domain Name, other than the Respondent being aware of the Complainant, the Trademark and the Trade Name, which constitutes a registration in bad faith.
By using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark and website, as to the source, sponsorship, affiliation, or endorsement of the Respondent’s, since the Respondent clearly attempts to impersonate the Complainant.
In addition, the Domain Name, which fully reproduces the Trademark, has been registered in order to prevent the Complainant from reflecting this name in a corresponding “.eu” domain name.
Finally, although the lack of a formal response by the Respondent as such cannot by itself lead to the conclusion that there is registration and use in bad faith, the cumulative circumstances as outlined in the Decision are sufficient for the Panel to find that the registration and use of the Domain Name by the Respondent is in bad faith.
Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the Domain Name, <alfagomma.eu>, be transferred to the Complainant 1.
Willem J. H. Leppink
Date: March 26, 2020
1 The remedy sought is transfer of the Domain Name to the Complainant. As the Complainant is established in Italy, it satisfies the general eligibility criteria for registration of the Domain Name set out in article 20 of the Regulation (EC) No. 2019/517.