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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

IVECO S.p.A. v. Linecom

Case No. D2008-1726

1. The Parties

The Complainant is IVECO S.p.A. of Torino, Italy, represented by Garibaldi Giani Associati, Italy.

The Respondent is Linecom of Seoul, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <ivecoshop.com> is registered with Cydentity, Inc. dba Cypack.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center”) on November 10, 2008. On November 11, 2008, the Center transmitted by email to Cydentity, Inc. dba Cypack.com a request for registrar verification in connection with the disputed domain name. On November 12, 2008, Cydentity, Inc. dba Cypack.com 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 12, 2008, the Center notified the Parties of the procedural rules relevant to the language of the proceeding. On November 14, 2008, the Complainant has submitted a request that English be the language of the proceeding, to which the Respondent has not replied. On November 20, 2008, the Center notified the Parties of its preliminary decision to 1) accept the Complaint as filed in English; 2) accept a Response in either Korean or English; and 3) appoint a panel familiar with both languages mentioned above, if available.

The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on November 20, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 10, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2008.

The Center appointed Young Hill Liew as the sole panelist in this matter on January 9, 2009. 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 proceeding is found to be English in accordance with the Panel’s discretion under paragraph 11 of the Rules and Panel Procedural Order No. 1.

4. Factual Background

The Complainant is, together with its affiliated companies, a worldwide manufacturing group (hereinafter “IVECO Group”) in the fields of commercial vehicles, buses, parts and diesel engines. IVECO Group employs over 24,500 people and runs 28 production units in 16 countries.

The Complainant has put three registrations forward;

- International Registration with the WIPO No. 426061 of the trademark IVECO, registered on October 21, 1976 for classes 7, 9, 12.

- Registration with Italian Patent and Trademark Office No. 298201 (Renewal No. 719118) of the trademark IVECO, registered on November 8, 1976 for classes 7, 9, 12.

- Registration with the Office for Harmonization in the Internal Market No. 001006725 of the trademark IVECO, registered on March 27, 2000 for classes 7, 9, 12.

The Complainant’s affiliate, Iveco France S.A., has a registration with Institut National de la Propriété Industrielle of the trademark IVECOSHOP registered on June 2, 1987, which was properly renewed under the French National Registration No. 14011585.

The Respondent registered the disputed domain name with the Registrar Cydentity, Inc. dba Cypack.com, on June 12, 2008.

5. Parties’ Contentions

A. Complainant

The Complainant is the owner of IVECO trademark registrations worldwide, including Italy and Europe. IVECO trademark is widely known through IVECO Groups’ worldwide operation, including direct operation in 16 countries and more than 4,600 service outlets in over 100 countries.

The disputed domain name is confusingly similar to IVECO trademark. When a respondent merely adds descriptive terms, such as “shop”, to an otherwise distinctive and well-known trademark, the domain name is considered confusingly similar to the trademark. In fact, the disputed domain name <ivecoshop.com> contains in its entirety the Complainant’s trademark IVECO with the only addition of the suffix “shop”.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. It does not have any connection with the company name of the Complainant or with its activity. And neither the Respondent nor its business are commonly known by the name “Ivecoshop”. Moreover the disputed domain name is currently inactive, and it is for sale. The Respondent registered the disputed domain name with the sole purpose and interest to sell it to the Complainant.

The disputed domain name was registered and is being used in bad faith by the Respondent. The Respondent registered the disputed domain name for the purpose of selling it to the trademark owner (the Complainant) for an amount, which does not correspond with the cost of registration.

B. Respondent

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

6. Discussion and Findings

A. Selection of Language

The Complaint was filed in the English language. The language of the registration agreement for the disputed domain name is Korean; however, the Complainant asserts that English should be the language of the proceeding.

According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the Parties’ level of comfort with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors.

In the present case, although the registration agreement for the disputed domain name is in the Korean language, it is apparent that the Respondent has sufficient ability communicating in the English language because the Respondent uses the English name “Linecom” and the Respondent registered another website “www.citym.com” directed to English speakers.

On the other hand, the Complainant is not able to communicate in Korean. If the Complainant was to submit all documents in Korean, the proceeding will be unduly delayed and the Complainant would have to incur substantial expenses for translation.

Therefore, in consideration of the above circumstances and in the interest of fairness to both Parties, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of the administrative proceeding in this case.

B. Transfer of the Domain Name in Dispute

To qualify for cancellation or transfer, a complainant must prove each element of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

B1. Identical or Confusingly Similar

The Complainant has registered and currently owns trademarks and rights on the mark IVECO.

The disputed domain name consists of the trademark of the Complainant to which the general term “shop” is added as a suffix. The added term “shop” is a descriptive term. Without the term “shop”, the trademark IVECO is distinctive because the word “iveco” does not have a meaning but is an invented word by the Complainant.

The Panel, therefore, concludes that the Complainant has proven that the disputed domain name is confusingly similar to the trademark “IVECO” in which the Complainant has rights pursuant to paragraph 4(a)(i) of the Policy.

B2. Rights or Legitimate Interests

The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating any such mark.

The disputed domain name is currently inactive, and thus not used in connection with a bona fide offering of goods or services. There is no evidence that the Respondent has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. The Respondent is not commonly known by the domain name.

The Respondent has merely held the disputed domain name passively. The Respondent’s website is not operational, and the Panel infers that it never has been. There is no evidence before the Panel in this case that the Respondent has any legitimate interest in the disputed domain name for the purposes of paragraph 4(c) of the Policy.

The inclusion of the general term “shop” in the disputed domain name does not create a legitimate interest.

The panel draws the inference from the Respondent’s failure to respond to this administrative proceeding, that the Complainant is correct in its assertion that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel, therefore, concludes that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.

B3. Registered and Used in Bad Faith

It cannot reasonably be argued that the Respondent could have been unaware of the Complainant’s trademark when registering the disputed domain name because IVECO is an invented word by the Complainant.

Since the Respondent has formed the disputed domain name by only adding “shop” to the registered mark IVECO, the Panel infers that the Respondent’s motivation was to exploit user confusion as to source, sponsorship, affiliation, or endorsement of any IVECO branded product.

The Respondent has owned the disputed domain name since June 12, 2008, approximately for 6 months, without using it by creating a website, but continues to retain it. Moreover, shortly after registering the disputed domain name, the Respondent offered it for sale on “www.sedo.com”, a website skilled in buying and selling domain names.

The Panel, therefore, concludes that the Complainant has proven that the Respondent registered and is using the disputed domain name in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

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 <ivecoshop.com> be transferred to the Complainant.

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Young Hill Liew
Sole Panelist

Dated: January 31, 2009