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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fondazione Arena di Verona v. Domains By Proxy, LLC / Mikhail Mushenkov, Rascal, LLC

Case No. DME2019-0006

1. The Parties

The Complainant is Fondazione Arena di Verona, Italy, represented by Brandstock Domains GmbH, Germany.

The Respondent is Domains By Proxy, LLC, United States of America (“United States”) / Mikhail Mushenkov, Rascal, LLC, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <arenadiverona.me> 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 June 17, 2019. On June 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 June 25, 2019, 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 amended Complaint on June 28, 2019.

The Center verified that the Complaint together with the amended 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 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 24, 2019.

The Center appointed Taras Kyslyy as the sole panelist in this matter on August 6, 2019. 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 Fondazione Arena di Verona, founded in 1998 and located in Italy, is responsible for all spectacles, operas and shows presented at the Arenas of Verona. The Arenas are known for the large-scale opera performances given and can welcome up to 15,000 people for each representation. The Complainant’s objective is to carry out non-profit cultural activity of a public utility nature, pursuing the spread of musical art and the musical education of the community.

The Complainant, inter alia, owns Italian trademark ARENADIVERONA, registration No. 966342, registered on May 20, 2005.

The Complainant is the holder of domain names incorporating its trademarks including <arenadiverona.it>, <arena-di-verona.com>, <arena-verona.it>, <fondazionearena.it>.

The disputed domain name was created on March 14, 2019 and resolves into a website mainly offering for sale tickets for events at the Arena di Verona.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical or confusingly similar to the Complainant’s trademark. The disputed domain name is identical to the Complainant’s earlier trademark ARENADIVERONA as incorporates it. The disputed domain name is highly similar to the point of confusion with other Complainant’s earlier trademarks ARENA-VERONA. The generic Top-Level Domain (“gTLD”) “.me” does nothing to prevent a finding of confusing similarity and shall be ignored.

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name. The Respondent has acquired no trademark or service mark related to the “Arena di Verona” term. The Respondent’s use of the disputed domain name or preparation to use the disputed domain name demonstrates no intent to use it in connection with a bona fide offering of goods or services, since the current use impersonates the Complainant, provides for sale of fake tickets to the shows at the Arenas of Verona, provides for a fake phone number, engages in phishing or scamming activities to obtain personal/bank details from the Internet users. Since the adoption and extensive use by the Complainant of the trademark ARENADIVERONA predates the registration of the disputed domain name <arenadiverona.me>, the burden shifts to the Respondent to show the Respondent's rights or legitimate interests.

The disputed domain name was registered and is being used in bad faith. The Complainant and its trademarks are so widely well known, that it is inconceivable that the Respondent ignored the Complainant’s earlier rights on the terms ARENADIVERONA. The Respondent had the Complainant’s name and trademark in mind when registering the disputed domain name. There is no possible way whatsoever that the Respondent would use the disputed domain name in connection with a bona fide offering of products or services, since any use of the ARENADIVERONA trademark would amount to trademark infringement and damage to the repute of the trademark. The Respondent imitates the official website of the Complainant and offers fake tickets for sale, which shows that the Respondent knew of the Complainant and is trading on the Complainant’s worldwide reputation for commercial gain. The Respondent is using a whoIs privacy protection service to conceal its identity to escape domain name dispute proceedings.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in its registered trademark.

The gTLD “.me” in the disputed domain name is viewed as a standard registration requirement and may be disregarded for the purposes of the confusing similarity test (see, e.g., Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).

According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that the disputed domain name incorporates the entirety of the Complainant’s trademark.

Considering the above the Panel finds the disputed domain name is identical to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.

Furthermore, the Respondent provided no evidence that it holds rights or legitimate interests in the disputed domain name.

The Respondent is not commonly known by the disputed domain name, which could demonstrate its rights or legitimate interests (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).

The Complainant did not license or otherwise agree for use of its priory registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875).

The disputed domain name incorporates the ARENADIVERONA trademark of the Complainant in its entirety and it is its distinctive element. The Respondent’s website associated to the disputed domain name contains design elements that made it to appear as related to the services of the Complainant and offers to Internet users for sale allegedly fake tickets for events at the Arena di Verona. This satisfies the Panel that the Respondent must have been aware of the ARENADIVERONA trademark when it registered the disputed domain name, and that it chose to target the ARENADIVERONA trademark because of the likelihood that it will attract traffic to the Respondent’s website. In the Panel’s view, such conduct cannot be regarded as giving rise to rights or legitimate interests on the part of the Respondent (see, e.g., LEGO Juris A/S v. Andrei Novakovich, WIPO Case No. D2016-1513).

Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Respondent’s use of the disputed domain name to purport to sell fake tickets to the Complainant’s events shows that at the time of the registration of the disputed domain name the Respondent clearly knew and targeted the Complainant’s prior registered and famous trademark, which confirms the bad faith (see, e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).

According to section 3.1 of the WIPO Overview 3.0 bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. To facilitate assessment of whether this has occurred, and bearing in mind that the burden of proof rests with the complainant, UDRP paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

In this regard, the Panel finds that at least the fourth of the above scenarios applies to the present case confirming the Respondent’s bad faith.

The Respondent ignored its possibility to comment on the contrary and provide any good explanations to prove its good faith while registering and using the disputed domain name.

Moreover, the Respondent used a privacy service to register the disputed domain name. According to section 3.6 of the WIPO Overview 3.0, the use of a privacy or proxy service merely to avoid being notified of a UDRP proceeding, may support an inference of bad faith; a respondent filing a response may refute such inference. However, no such response was provided by the Respondent. The Panel finds that such use of the privacy service here confirms registration of the disputed domain name in bad faith.

Considering the above the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) of the Policy.

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 <arenadiverona.me> be transferred to the Complainant.

Taras Kyslyy
Sole Panelist
Date: August 16, 2019

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