WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cohidrex, S.L. v. Giuliani Stefano, RM SRL

Case No. DEU2021-0031

1. The Parties

The Complainant is Cohidrex, S.L., Spain, represented by Whitewell Legal, Spain.

The Respondent is Giuliani Stefano, RM SRL, Italy.

2. The Domain Names, Registry and Registrar

The Registry of the disputed domain names <trasteel-rm.eu> and <trasteelwearparts.eu> (the “Domain Names”) is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the Domain Names is EuroDNS S.A.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2021. On October 15, 2021, the Center transmitted by email to the Registry a request for registrar verification in connection with the Domain Names. On October 19, 2021, 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. On November 4, 2021, the Center sent a request for clarification concerning the remedy section. The Complainant filed an amended Complaint on November 4, 2021.

The Center verified that the Complaint together with the amended 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 November 5, 2021. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was December 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 20, 2021.

The Center appointed Willem Leppink as the sole panelist in this matter on December 22, 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 ADR Rules, Paragraph B(5).

On December 23, 2021, the Center received an email from the Respondent, confirming that it will not participate in the ADR proceedings, given the fact that the relationship between Respondent and Complainant, which will also include the issue about the Domain Names, will be decided in a court case before the Court of Ravenna in which a hearing will be held on June 15, 2022.

4. Factual Background

Complainant is a Spanish private limited company, headquartered in Spain, that sells spare parts for heavy machinery of construction and mining around the world.

The Complainant is the owner of several trademark registrations, including, but not limited to the European Union trademark, TRASTEEL (word/device), with registration no. 010050839, with a registration date of October 20, 2011, for goods in classes 6, 7 and 17 (the “TRASTEEL Trademark”) and the European Union trademark, TRASTEEL WEAR PARTS (word/device), with registration no. 018035337, with a registration date of July 9, 2019, for goods in classes 6 and 7 (the “TRASTEEL WEAR PARTS Trademark”). The aforementioned trademark registrations will hereinafter also jointly be referred to as the “Trademarks”, or in singular to “Trademark” where there is no need to specify the specific trademark registration involved.

The Complainant and the Respondent entered into a collaboration agreement on June 27, 2016 (the “Agreement”). The Agreement was terminated by Complainant on July 9, 2021.

The Domain Names were registered between March 25, 2019 and July 22, 2020. On September 22, 2021, the Domain Names were redirected to <extremewearparts.eu>. On that website, the Respondent is marketing and promoting wear parts for heavy machinery (the “Website”).

5. Parties’ Contentions

A. Complainant

The Complainant contends the following:

The Domain Names are each identical or confusingly similar to one of the Trademarks. More specifically, the Domain Name <trasteel-rm.eu> is composed of the TRASTEEL Trademark in its entirety, followed by a hyphen and the Respondent’s name (RM). Furthermore, the Domain Name <trasteelwearparts.eu> is identical to the TRASTEEL WEAR PARTS Trademark.

Moreover, the Domain Names have been used in bad faith. By marketing and promoting wear parts for heavy machinery, i.e. products that are in direct competition to those marketed under the Trademarks, Respondent is intentionally using the Domain Names to attract Internet users to the Website by creating a likelihood of confusion. The likelihood of confusion derives from the false impression of an association with the Complainant. In doing so, the Respondent diverts not only the clientele but also the goodwill that corresponds with the Trademarks to its trademark EXTREME for the sole purpose of commercial gain.

The Domain Names were registered while the Agreement was in effect. However, the Agreement never authorized the Respondent for the registration of the Domain Names. In addition, after the termination of the Agreement, the Respondent was not authorized or permitted to use the Trademarks to promote and market other products.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. It has, however, confirmed, after the appointment of the Panel, that it will not participate in these ADR proceedings and that a court case is pending before the Court of Ravenna.

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 Names are 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 Names have been registered by the Respondent without rights or legitimate interests in the name; or

(iii) The Domain Names have been registered or are being used in bad faith.

It is generally established case law that complaints are not granted based on a respondent’s failure to supply a response.

The Complainant must establish a prima facie case in order to succeed. The Panel finds 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 deadline or appear to a panel hearing may be considered as grounds to accept the claims of the counterparty.

Although court proceedings before the Court of Ravenna, seems to be pending, the Panel is authorized to render a decision in this case, as according to paragraph A(5) of the ADR Rules, the conduct of the ADR proceedings shall not be prejudiced by any court proceedings, as the dispute before the Court of Ravenna has not yet been finally decided.

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 proven to have rights in the Trademarks.

The Domain Names all comprise one of the Trademarks. More specifically, the Domain Name <trasteel-rm.eu> consists of the TRASTEEL Trademark in its entirety, and is accompanied by part of the Respondent’s organization “RM” and a hyphen. The Panel, therefore, considers that the Trademark is sufficient recognizable in the Domain Name. The addition of the term “rm” does not lead to another conclusion than that this Domain Name is confusingly similar to the TRASTEEL Trademark. Furthermore, the Domain Name <trasteelwearparts.eu> consists of the TRASTEEL WEAR PARTS Trademark in its entirety.

For all the foregoing reasons, the Panel is satisfied that the first element as referred to in Article 21(1) of the Regulation and Paragraph B(11)(d)(1)(i) of the ADR Rules is met.

B. Rights or Legitimate Interests

The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name.

It has asserted that the Domain Names were registered while the Agreement was in effect, but that the Agreement never authorized the Respondent to register the Domain Names. In addition, after the termination of the Agreement, the Respondent was anyway not authorized or permitted to use the Trademarks to promote and market other products.

The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the Domain Names. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the Domain Names, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it.

The Panel could not find any evidence by referring to the examples listed in Paragraph B(11)(e) of the ADR Rules that

(i) prior to commencing this proceeding the Respondent has used the Domain Names in connection with the offering of goods or services or has made demonstrable preparations to do so;
(ii) the Respondent as an undertaking, organization or natural person has been commonly known by the Domain Names; or that
(iii) the Respondent is making a legitimate and noncommercial or fair use of the Domain Names, 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.

Although the Respondent could perhaps have made bona fide use of the Domain Names during the term of the Agreement, use after the termination of the Agreement cannot easily be regarded as bona fide use.

As discussed in section 2.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) ¹, panels tend to assess claimed respondent rights or legitimate interests in the present, i.e., with a view to the circumstances prevailing at the time of the filing of the complaint. Without prejudice to the complainant’s duty to establish that a domain name has been registered and used in bad faith, a respondent claiming a right or legitimate interest in a domain name for example based on a prior agreement or relationship between the parties or based on past good-faith use (thus demonstrating merely a past right or legitimate interest) would not necessarily have rights or legitimate interests in the domain name, at the time a decision is rendered.

Certainly lacking a substantive Response, the Panel thus finds that the Respondent’s use cannot be considered to be in good faith which could result in a legitimate interest.

The Panel therefore finds that Paragraph B(11)(d)(1)(ii) of the ADR Rules has been satisfied.

C. Registered or Used in Bad Faith

According to Article 21(1) of the Regulation and Paragraph B(11)(d)(1) of the ADR Rules (ii) lack of rights or legitimate interests and (iii) registration or use in bad faith are alternative requirements. The Panel finds that the Respondent lacks rights or legitimate interests in the Domain Names and therefore there is no need to consider also the bad faith element. However, the Panel, nonetheless, will consider this element.

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;
(iii) In circumstances where, at the time of 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 holder of a domain name; or of the Respondent’s, since the Respondent clearly attempts to impersonate the Complainant.

(e) the domain name registered is a personal name for which no demonstrable link exists between the domain name holder 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.

In light of the evidence filed by the Complainant, the Panel finds that the Respondent was aware of the existence of the Complainant’s activities and rights at the time the Respondent registered the Domain Names. Given the fact that the Respondent and Complainant have previously entered into an Agreement, the Respondent was well aware of the existence and nature of the Complainant, its activities and the Trademarks.

In the Panel’s view, there is no plausible explanation as to why the Respondent is still using the Domain Names after the Agreement was terminated. Moreover a redirection of the Domain Names to the Website, are clearly intended to trade off the goodwill and reputation associated with the Complainant.

By using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Website, by creating a likelihood of confusion with the Trademarks, as to the source, sponsorship, affiliation, or endorsement of the Respondent’s. In doing so, the Respondent makes it unclear for Internet users whether the Website is operated by the Complainant or not (see WIPO Overview 3.0, section 2.5.2). Furthermore, the Domain Names redirect the Internet users to his own Website where Respondent markets and promotes products that are in direct competition to those of the Complainant (see WIPO Overview 3.0, section 3.1.4).

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 use of the Domain Name by the Respondent is in bad faith.

Accordingly, the Panel finds that the Domain Name is being used in bad faith and as such the third element is satisfied.

7. Decision

For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the Domain Name <trasteel-rm.eu> be revoked and the Domain Name <trasteelwearparts.eu> be transferred to the Complainant² .

Willem Leppink
Sole Panelist
Date: January 17, 2021

¹ Considering the substantive similarities between the ADR Rules and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”), the Panel also refers to UDRP case law and analysis, where appropriate.