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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Barocco Roma srl Unipersonale v. Eurobox Ltd./Whois privacy services, provided by DomainProtect LLC / “Barocco Roma srl Unipersonale”

Case No. D2008-0047

1. The Parties

The Complainant is Barocco Roma srl Unipersonale, of Italy, represented by Bugnion S.p.A., Italy.

The Respondent is Eurobox Ltd./Whois privacy services, provided by DomainProtect LLC of St. Petersburg, Russian Federation / “Barocco Roma srl Unipersonale” of Italy.

2. The Domain Name and Registrar

The disputed domain name <roccobarocco.com> is registered with DomReg Ltd. d/b/a LIBRIS.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2008. On January 14, 2008, the Center transmitted by email to DomReg Ltd. d/b/a LIBRIS.com a request for registrar verification in connection with the domain name at issue. After several reminders, finally on February 29, 2008, DomReg Ltd. d/b/a LIBRIS.com transmitted by email to the Center its verification response. The Registrar informed the Center that the Complainant, Barocco Roma srl Unipersonale was the domain name registrant. On March 4, 2008, the Complainant confirmed that it did not have actual control over the domain name. On March 17, 2008, the Center issued a notice of Language of Proceeding. On March 18, 2008, the Center forwarded a request that English be the language of proceeding. 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 March 26, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 16, 2008.

The Center appointed Clark W. Lackert as the sole panelist in this matter on May 5, 2008. 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.

The language of the registration agreement for the disputed domain name is Russian. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant has submitted a request that English shall be the language of the present proceedings. The Panel also notes that the Center notified the Complaint in both Russian and English. Considering the particular circumstances of the present case and the submission of the Complainant’s request, the Panel is of the opinion that the language for the present proceedings shall be English and the decision will be rendered in English.

4. Factual Background

Rocco Barocco is a well-known Italian fashion designer who has registered his name as a trademark is several countries, including in the WIPO International Register under No. 483398 dated February 29, 1984, in the United States of America under No. 1334418 dated May 7, 1985, and in Italy under No. 321101 dated September 14, 1979.

5. Parties’ Contentions

A. Complainant

1. Trademark Rights

The Complainant owns many trademark registrations for ROCCOBAROCCO which is a trademark well-known all around the world in the field of fashion, design and accessories. The wording “roccobarocco” corresponds to the first name (Rocco) and surname (Barocco) of the sole owner of the company. Mr. Rocco Barocco is one of the most important Italian designers, and uses this trademark extensively. The current chief website of the Complainant can be found at “www.roccobarocco.it”.

The Respondent is the company Eurobox Ltd. which has a pattern of registering other well-known trademarks as part of Domain Names (see Кеско Ой против Юробокс Лтд. и Комар Лтд., WIPO Case No. D2003-0975 <rautia.com>; Soda-Club (CO2) S.A. v. Percom Ltd. d/b/a WebBooster.com, WIPO Case No. D2005-0465 <sodaclub.com> and Imperial Chemical Industries Plc, Desowag GmbH v. BusinessService Limited, WIPO Case No. D2007-0998 <xylamon.com>). The Respondent has registered the domain name without authorization of the Complainant and the Domain Name and is redirected to a website where Internet users can find a number of sponsored links to various web sites. More in particular, by clicking on the sponsored link “ROCCOBAROCCO NEW COLLECTION”, Internet users are redirected to non-official websites offering Complainant’s products (probably also counterfeited) for sale such as “www.eu.forzieri.com” or “www.fi.shopping.com”. It should be noted that the website also triggers pop up advertising. Furthermore, on “www.roccobarocco.com” it appears the indication that “this domain is for sale” at the price of US$10,820.

The domain name is identical to the trademark ROCCOBAROCCO owned by the Complainant as the domain name consists entirely of the distinctive wording “roccobarocco”. Therefore, the Panel should find that the domain name in dispute is identical to a trademark in which the Complainant has rights.

2. The Respondent has no rights or legitimate interests in respect of the domain name;

The Respondent could show its legitimate interest by proving one or more of the following items:

- Whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s use 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;

- Whether 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;

- Whether the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

Since the Respondent has not replied, the record is devoid of any evidence to indicate that it has any rights or legitimate interests in the domain name.

3. The domain name was registered and is being used in bad faith.

Under the Policy, the Complainant is also required to prove that the disputed domain name has been registered and is being used in bad faith. In this regards particular attention should be paid to the Policy, paragraph 4(b), which includes the following circumstances in order to prove the Respondent’s bad faith:

- Circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name; or

- Whether the domain name was registered in order to prevent the owner of he 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

- Whether the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

- Whether by using the domain name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s 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 the Respondent’s web site or location or of a product or service on the Respondent’s web site or location. As to the assessment of the Respondent’s bad faith at the time of registration, in light of fact that trademark “ROCCOBAROCCO is certainly well known, the Respondent could not have possibly ignored the existence of the trademark registration, confusingly similar to the disputed domain name.

As held in The Nasdaq Stock Market, Inc., v. Hamid Reza Mohammad Pouran, WIPO Case No. D2002-0770 “this Panel concludes that Respondent knew or should have known of the existence of Complainant, Complainant’s trademark being widely publicized globally and constantly featured throughout the Internet, and thus the Panel decides that the disputed domain names were registered in bad faith.”.

As to the use in bad faith, it is clear that in the present case factor (i) of paragraph 4(b) of the Policy is applicable. Actually, according to the evidence provided it results that the contested domain name has been put on sale on the corresponding website. The insertion of the wording “this domain is for sale” constitutes satisfactory evidence, when combined with the Respondent’s lack of legitimate rights to or interests in the domain name, that the Respondent’s primary purpose in registering the domain name was to sell it in contrast with the Policy (see Mr. Donning Eric v. Mr. Nyunhwa Jung, WIPO Case No. D2003-0689 <astrocard.com> and EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036 <efgpb.com>).

The Panel in Educational Testing Service v. TOEFL WIPO Case No. D2000-0044 decided that an offer to sell generally was sufficient evidence for a finding of bad faith. Likewise offering domain name for sale on website constitutes an offer to sell to the Complainant, the Complainant’s competitors and others see i.a. Venturum GmbH v. Coventry Investments, Ltd, DomainCollection Inc., WIPO Case No. D2003-0405. The fact that the disputed domain name is offered for sale for $ 10,820 represent a clear violation of the Policy since this amount is far in excess with respect to the normal out-pocket expenses directly related to the registration of a domain name (see Mr. Donning Eric v. Mr. Nyunhwa Jung, WIPO Case No. D2003-0689 <astrocard.com> and Benetton Group SpA v. Domain for Sale, WIPO Case No. D2001-1498 <benettonspoitsystem.com>.

Furthermore, it must be stressed that bad faith is recognizable since the Respondent has already registered domain names identical to trademarks belonging to third parties. Indeed the Respondent has registered the disputed domain name in order to prevent the Complainant from using the mark and has clearly engaged in a pattern of such conduct since it has also registered other domain names incorporating registered trademarks that have been subject of three proceedings under the Policy. In the Hartz Mountain Corporation v. Whois ID Theft Protection, WIPO Case No. D2006-1319 the panel stated that “the Respondent has engaged in a pattern of ‘cyber squatting’ before, as evidenced by the cases of Industrial Products Limited v. Whois ID Theft Protection c/o Domain Admin, NAF Case No.726075 (transfer of the domain name industrialproducts.com> to the Complainant) and Wind-lock Corporation v. Whois ID Theft Protection, NAF Case No. 767125 (transfer of the domain name <windlock.com> to the Complainant) (. . .) bad faith is supported by the Respondent’s prior practice of registering other domain names in a like manner”.

See also Auctions Inc. v. Whois ID Theft Protection WIPO Case No. D2006-1044 and Carte Blanche Greetings Limited v. metoyou, WIPO Case No. D2004-0946, where the panel stated that “it is clear that the Respondent is heavily involved in cyber squatting activities in relation to many domain names relating to well known names and trademarks. Such behavior corresponds to a pattern to register domain names identical to, or confusingly similar with, famous names and trademarks. This constitutes bad faith registration pursuant to Paragraph 4(b)(ii) of the Policy.”

As an additional element evidencing bad faith, the disputed domain name is currently linked to the web page where, as described above, Internet users can find a number of sponsored links to various web sites. As a result, also the Respondent may earn commission whenever an Internet user visits the website and clicks on one of the sponsored link. Such a conduct where the Respondent sought or realized commercial gain indicates the Respondent’s bad faith as stated in many previous UDRP decisions such as Zinsser Co. Inc., Zinsser Brands, Co. v. Henry Tsung, WIPO Case No. D2006-0413; Volvo Trademark Holding AB v. Unasi, Inc. WIPO Case No. D2005-0556, Gianfianco Ferre’ S.p.A. v. Unasi Inc., WIPO Case No. D2005-0622; Scania CV AB Publ v. Unaci, Inc. WIPO Case No. D2005-0585, Volvo Trademark Holding AB v. Michele Dinoia, WIPO Case No. D2004-0911, Claire’s Stores, Inc., Claire’s Boutiques, Inc., CBI Distributing Corp. v. La Porte Holdings, WIPO Case No. D2005-0589. Deutsche Telekom AG v. Gary Seto, WIPO Case No. D2006-0690 (Even if the users who access the Respondent’s website may conclude that it is not what they were originally looking for, the Respondent has already succeeded in its purpose of using the Complainant’s mark to attract users for commercial gain, see for example the panel’s observations in Red Bull GmbH v. Unasi Management Inc., WIPO Case No. D2005-0304.) (see also Banca di Roma S.p.A. v. Unasi Inc. a/k/a Domaincar, WIPO Case No. D2006-0068).

B. Respondent

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

6. Discussion and Findings

The Complainant must prove each of the following three elements set forth in the Policy paragraph 4(a), namely (i) the domain name is identical or confusingly similar to a trademark or service mark 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. The Panel will now look at each one of the elements to determine if the Complainant has met its burden of proof.

A. Identical or Confusingly Similar

The Complainant has asserted rights in the trademark ROCCOBAROCCO. The Panel finds that the trademark and the domain name are identical, and that the Complainant has asserted and proven trademark rights in such term. Accordingly, the Panel finds that the Complainant has the requisite rights to object pursuant to Policy 4(a)(i).

B. Rights or Legitimate Interests

There is no proof in the record of rights or legitimate interests of the Respondent pursuant to Policy 4(c). The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the domain name. The Respondent has not rebutted the Complainant’s contentions. Accordingly, the Panel finds that the Complainant has met its burden of proof concerning Policy 4(a)(ii).

C. Registered and Used in bad Faith

The last element in the proceeding is bad faith pursuant to Policy 4(a)(iii). Policy 4(b)(i) states “circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 your documented out-of-pocket costs directly related to the domain name” shall be evidence of the registration and use of a domain name in bad faith. In this proceeding, the record indicates that the Respondent offered to sell the domain name to the highest bidder on its website and appears to have registered other parties’ trademarks as domain names. Moreover, the record indicates (with no refutation by the Respondent) that Rocco Barocco is known in the fashion industry, as is his trademark ROCCOBAROCCO. Accordingly, the Panel finds that Respondent registered and is using the domain name in bad faith pursuant to Policy 4(a)(iii).

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <roccobarocco.com> be transferred to the Complainant.

Clark W. Lackert
Sole Panelist

Dated: May 19, 2008