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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sparco Srl v. Mr. Alexander Albert W. Gore / Ukrainian Cat. University
Case No. D2003-0448
1. The Parties
The Complainant is Sparco Srl, Torino, Italy, represented by Studio Legale Jacobacci e Associati, Italy.
The Respondent is Mr. Alexander Albert W. Gore / Ukrainian Cat. University, Lviv Rudno, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <sparcosrl.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 11, 2003. On June 11, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On June 17, 2003, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 26, 2003. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 15, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 7, 2003.
The Center appointed Brigitte Joppich as the Sole Panelist in this matter on August 19, 2003. 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 is an Italian company in the field of accessories for cars and sport clothing. The company is internationally well known particularly through its sponsorship of Formula One racing teams and events. Sparco Srl is the owner of numerous trademarks including the word SPARCO throughout the world, inter alia:
Mark |
Country |
Registration
No. |
Priority |
SPARCO
and
device |
Italy |
335748 |
May 2, 1983 |
SPARCO |
Italy |
717542 |
July 16, 1997 |
SPARCO
and
device |
International
Registration,
extended,
inter
alia,
to
Ukraine |
478132 |
May 2, 1983 |
Srl is the Italian abbreviation of the equivalent of a limited liability company.
5. Parties’ Contentions
A. Complainant
The Complainant contends that each of the three elements specified in the Policy, paragraph 4(a), are given in the present case, i.e.,
(i) the domain name is confusingly similar to the trademarks in which the Complainant has rights and is virtually identical to the trade name Sparco Srl;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name:
- the Respondent has never been commonly known by the domain name or by any trade name similar to Sparco Srl;
- the Respondent has no rights in a trademark, a trade name SPARCO or "Sparco Srl";
- the Respondent is not making a legitimate non-commercial or fair use of the domain name.
(iii) the domain name was registered and is being used by the Respondent in bad faith:
- the registration of a domain name obviously connected with a well-known name by someone with no connection to this name suggests opportunistic bad faith;
- the association between "Sparco" and "Srl" in the domain name constitutes additional evidence of Respondent’s intention to refer to the Italian company which owns the trademark SPARCO and trades under the name Sparco Srl;
- Respondent engages in a pattern of preventing owners of trademarks from reflecting their trademarks in a corresponding domain name as he has registered other domain names corresponding to internationally well-known Italian trademarks, for example <astispumante.net>, <elenamiro.net>, <ferrari-scuderia.net>, <nutellaferrero.com>, <zegnaermenegildo.net> and <lanerieagnona.net>. This is additional evidence of bad faith registration as well as bad faith use;
- the default page of <sparcosrl.com> resolves in a pornographic page in Italian language, selling various services connected with pornography. The Respondent attracts, for commercial gain, customers not looking for an adult sex site to his website;
- Respondent uses mouse-trapping effects to prevent Internet users from leaving his website.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, paragraph 4(a), the Complainant must prove that each of the following three elements are present:
(i) the domain name is identical or confusingly similar to a trademark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The domain name <sparcosrl.com> is confusingly similar to the SPARCO trademarks owned by the Complainant as the additional term "srl" is merely an abbreviation of the Italian legal form of the company "Società a Responsabilità Limitata" and therefore is descriptive. This term is not an adequate criterion for differentiation. In addition, the global top-level domain name identification ".com" has no distinctive function.
The Complainant
has therefore
satisfied
the requirements
of the Policy,
paragraph 4(a)(i).
B. Rights
or Legitimate
Interests
The Policy,
paragraph 4(c),
sets out
three illustrative
circumstances
as examples,
which, if
proved by
the Respondent,
shall demonstrate
his rights
to or legitimate
interests
in the domain
name for
purposes
under the
Policy,
paragraph 4(a)(ii),
i.e.,
(i) before
any notice
to the Respondent
of the dispute,
the use
by the Respondent
of, or demonstrable
preparations
to use,
the domain
name or
a name corresponding
to the domain
name in
connection
with a bona
fide
offering
of goods
or services;
or
(ii) the
Respondent
(as an individual,
business
or other
organization)
has been
commonly
known by
the domain
name, even
if the Respondent
has acquired
no trademark
or service
mark rights;
or
(iii) the
Respondent
is making
a legitimate
noncommercial
or fair
use of the
domain name,
without
intent for
commercial
gain to
misleadingly
divert customers
or to tarnish
the service
marks at
issue.
The Respondent
has not
proved any
of the above-mentioned
circumstances.
To the Panel’s
knowledge,
the domain
name can
neither
be derived
from the
Respondent’s
personal
name nor
the name
or the nature
of a business
operated
by him,
nor is the
Respondent
commonly
known by
the domain
name, which
was not
used in
connection
with a bona
fide
offering
of goods
and services
nor in any
legitimate
non-commercial
or fair
content.
The Panel
therefore
sees no
rights of
the Respondent
to or legitimate
interests
in the domain
name and
finds that
the Complainant
has satisfied
the requirements
of the Policy,
paragraph 4(a)(ii).
C. Registered
and Used
in Bad Faith
The Policy,
paragraph 4(b),
sets out
four illustrative
circumstances,
which for
purposes
of the Policy,
paragraph 4(a)(iii),
shall be
evidence
of the registration
and use
of the domain
name in
bad faith,
including,
"(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 he
engaged
in a pattern
of such
conduct;
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 its website
or location."
When the
Respondent
registered
the domain
name he
must have
been aware
of the presence
of the Complainant’s
company
as he registered
a domain
name identical
to Complainant’s
trade name
including
the abbreviation
"Srl."
Furthermore,
as the Complainant
has rights
in a trademark
covering
the territory
of the Ukraine,
the Panel
finds that
there is
also evidence
of Respondent’s
knowledge
of Complainant’s
trademarks.
Finally,
the Respondent’s
use of the
domain name
for a website
in Italian
language,
the language
of the country
where the
Complainant
has its
principal
seat, is
additional
evidence
of his knowledge
of Complainant’s
rights.
Therefore,
the Panel
finds that
the domain
name was
registered
in bad faith.
The Respondent
has registered
numerous
domain names
identical
or confusingly
similar
to well-known
Italian
trademarks.
Thereby
he prevents
the owners
of the corresponding
trademarks
from reflecting
their marks
in these
domain names.
This, in
the Panel’s
view, is
evidence
that the
Respondent
engages
in a pattern
of such
conduct
under the
Policy,
paragraph 4(b)(ii),
and therefore
uses the
domain name
in bad faith.
The domain
name is
also used
to divert
traffic
intended
for the
Complainant’s
website,
using a
domain name
that is
the same
as the trademarks
of the Complainant
to link
to a pornographic
website.
Thereby,
the Respondent
attempts
to attract
Internet
users to
his website
by creating
a likelihood
of confusion
with Complainant’s
trademarks.
As some
services
under the
domain name
are offered
for payment,
the Panel
assumes
that this
attempt
was made
for commercial
gain, as
set out
in the Policy,
paragraph 4(b)(iv).
The Respondent
is using
"mouse-trapping"
techniques
to prevent
customers
from leaving
the website
under the
domain name.
In connection
with pornographic
content
this has
already
been found
to reinforce
bad faith
use in former
decisions.
Therefore
the Panel
finds that
the Complainant
has satisfied
the requirements
of the Policy,
paragraph 4(a)(iii).
7. Decision
For all
the foregoing
reasons,
in accordance
with the
Policy,
paragraph 4(i),
and the
Rules, paragraph 15,
the Panel
orders that
the domain
name <sparcosrl.com>
be transferred
to the Complainant.
Brigitte
Joppich
Sole Panelist
Dated:
August
22, 2003