WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Automobile Club di Brescia v. Zhao Ke
Case No. DRO2018-0012
1. The Parties
The Complainant is Automobile Club di Brescia of Brescia, Italy, represented by Barzanò & Zanardo Milano SpA, Italy.
The Respondent is Zhao Ke of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <1000miglia.ro> is registered with ROTLD (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2018. On November 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 14, 2018, 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 November 19, 2018 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 November 23, 2018.
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 November 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 17, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 18, 2018.
The Center appointed Jane Lambert as the sole panelist in this matter on December 26, 2018. 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
Since 1927, one of the most famous motorsports events has been the 1,000 mile or “Mille Miglia” run from Brescia to Rome and back. For many years it offered an important opportunity for automotive manufacturers to trial and showcase their latest products and for drivers from across the world to make their name in motor racing. Because of safety concerns, the race event changed after 1977 from a competition for the latest models to one for classic and vintage cars. Only vehicles built before 1957 are eligible to compete in the event.
The event is promoted by the Complainant and run by the Complainant’s wholly owned subsidiary, 1000 Miglia S.r.l. The event has considerable prestige and value as a brand throughout the world, especially in Romania which has a national language that is similar to Italian. The Complainant is the registered proprietor of many trade marks that incorporate the words “Mille Miglia” or “1000 Miglia” including the European Union (“EU”) trade mark 001519503 in which the words “1000 MIGLIA” appear in white against a red background in the form of a signpost. That trade mark was registered for a range of goods and services in classes 9, 28 and 41 with effect from February 21, 2000.
The Complaint annexes screen prints of websites showing the use to which the disputed domain name has been put. One page shows “www.millemiglia.ro” in the toolbar with links to various other sites, such as Alitalia’s frequent flyer programme, and services that offer to help passengers claim compensation from airlines for delay. Other pages show the sites that had been reached upon clicking those links.
The Respondent has a history of registering domain names that incorporate the Complainant’s trade mark, including <millemiglia.co.za>, <millemiglia.kk>, <1000miglia.hk>, <millemiglia.sg>, <1000miglia.sg>, <1000miglia.com.ru>, <millemiglia.co.il>, <millemiglia.com.co>, <millemiglia.cz>, <millemiglia.fi>, <millemiglia.is>, <millemiglia.lt>, <millemiglia.lv>, <millemiglia.pe>,<millemiglia.si>, <1000miglia.cz>, <1000miglia.dk>, <1000miglia.fi>, <1000miglia.lt>,<1000miglia.lu>, and <1000miglia.lv>.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain name on the grounds that:
- The disputed domain name is confusingly similar to a trade mark in which the Complainant has right;
- The Respondent has no rights or legitimate interests in the disputed domain name; and
- The disputed domain name was registered and has been used in bad faith.
As to the first ground, the Complainant points to the similarity between the disputed domain name and its many registered trade marks including EU001519503 mentioned above. In respect of the second, the Complainant submits that it is not required to prove a negative and that it can discharge the burden of proving that the Respondent has no rights or legitimate interests in the disputed domain name by establishing a prima facie case. In that regard, the Complainant confirms that the Respondent is not licensed or otherwise authorized or permitted to use the disputed domain name. The Complainant adds that the registration of the disputed domain name would have breached its standard licensing terms. In relation to the third ground, the Complainant argues that the registration of a domain name that is the same as, or substantially similar to, a trade mark that has a reputation within the European Union is itself an act of bad faith. Alternatively, it argues that the Respondent has used the disputed domain name intentionally to attract Internet users to its site for commercial gain by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s site.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The agreement for the registration of the disputed domain name incorporates by reference paragraph 4 (a) of the Policy:
“You are required to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.”
A. Identical or Confusingly Similar
The Panel finds that the first element is present.
The disputed domain name incorporates the words “1000 miglia” which forms the textual element of the EU trade mark mentioned in paragraph 4 in its entirety. The only difference is the addition of the letters “.ro” which is the country code top level domain name for Romania. The addition of those letters does nothing to distinguish the disputed domain name from the EU trade mark. On the contrary, at least some Internet users will be led to believe that the disputed domain name has been registered or licensed by or is otherwise connected with the Complainant for Romania by reason of the similarity of the disputed domain name with the EU trade mark. It follows that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel finds that the second element is present.
Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) notes that:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
Paragraph 4(c) of the Policy lists a number of circumstances that could indicate that a Respondent has a right or legitimate interest in the disputed domain name. The Complainant has sought evidence that one or more of those circumstances applies but has found none.
The Complainant states that it has never licensed, authorized or permitted the Respondent to register the disputed domain name and its only use of the disputed domain name has been as a URL for a parking page for sponsored links or searches. Without the Complainant’s consent it is hard to see how the Respondent could trade under a name or mark that is the same as or similar to the disputed domain name since the Complainant’s trade mark appears to have a reputation in the European Union and any use of the name or mark similar to the disputed domain name would be actionable under art 9(c) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of June 14, 2017 on the European Union trade mark.
The Respondent has had an opportunity to answer the Complainant’s evidence and arguments but has not taken advantage of it.
In the circumstances, the Panel is satisfied that the Complainant has made out a prima facie case, that the evidential burden has shifted to the Respondent and that the Respondent has not discharged that burden.
C. Registered and Used in Bad Faith
The Panel finds that the third element is present.
Paragraph 4(b) of the Policy lists a number of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth of those circumstances is as follows:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
The Panel has already found that the disputed domain name is confusingly similar to the Complainant’s mark and that at least some members of the public are likely to surmise that the disputed domain name has been registered or licensed by, or is otherwise connected with, the Complainant. It follows that the Respondent’s use of the disputed domain name to resolve to the parking pages that have been annexed to the Complaint constitutes use of the domain name to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship affiliation, or endorsement of the Respondent’s web site or location. There is no question that such use would have been intentional. Commercial gain would have been obtained whenever an Internet user clicked a sponsored link. The Panel is satisfied that the fourth circumstance is proved. In the absence of countervailing evidence or argument from the Respondent, the Panel finds the third element is proved.
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, <1000miglia.ro>, be transferred to the Complainant.
Date: January 4, 2019