WIPO Domain Name Decision D2003-0085 for ferrari-fila.com, ferrarifila.com, ferrariguy.com, ferrarimerchandisestore.com, ferraristuff.com, galleriaferrari.com, scuderia-ferrari.net, scuderia-ferrari.org, scuderiaferrari.com, scuderiaferrari.net, scuderiaferrari.org

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ferrari S.P.A., Fila Sport S.P.A., v. Classic Jack

Case No. D2003-0085

1. The Parties

Complainants are Ferrari S.p.A., 41053 Maranello, Italy, and Fila Sport S.p.A., 13900 Biella, Italy. Complainants are represented by Massimo Introvigne, Studio Legale Jacobacci e Associati, 10152 Torino, Italy.

The Respondent is Classic Jack, Vliet N.Z. 87, 2231 GR Rijnsburg (ZH), The Netherlands. Respondent is represented by Mr. A.H. Bourdrez, Höcker Rueb Doeleman Advocaten, 1070 BR Amsterdam.

2. The Domain Names and Registrars

The domain names in issue and their Registrars are as follows:

- registered with Pair Networks, Inc., 2403 Sidney Street, Suite 510, Pittsburgh, PA 15203, U.S.A.;

- registered with Pair Networks, Inc., 2403 Sidney Street, Suite 510, Pittsburgh, PA 15203, U.S.A.;

- registered with NSI Inc., 21355 Ridgetop Circle, Dulles, VA 20166, U.S.A.

- registered with Tucows, Inc., 96 Mowat Avenue, Toronto, Ontario M6K3M1, Canada;

- registered with NSI Inc., 21355 Ridgetop Circle, Dulles, VA 20166, U.S.A.

- registered with Pair Networks, Inc., 2403 Sidney Street, Suite 510, Pittsburgh, PA 15203, U.S.A.;

- registered with NSI Inc., 21355 Ridgetop Circle, Dulles, VA 20166, U.S.A.

- registered with NSI Inc., 21355 Ridgetop Circle, Dulles, VA 20166, U.S.A.

- registered with NSI Inc., 21355 Ridgetop Circle, Dulles, VA 20166, U.S.A.

- registered with NSI Inc., 21355 Ridgetop Circle, Dulles, VA 20166, U.S.A.

- registered with NSI Inc., 21355 Ridgetop Circle, Dulles, VA 20166, U.S.A.

3. Procedural History

The Complainants initiated this proceeding by filing a Complaint by email with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on February 7, 2003. On February 10, 2003, the Center received a hard copy of the Complaint. The Center reviewed the Complaint to verify that it satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy. Payment in the required amount has been made by the Complainants.

The Center notified the Respondent of the commencement of this proceeding on February 25, 2003. On March 14, 2003, the Respondent submitted its timely Response to the Complaint by e-mail; the hard copy Response was received on March 19, 2003.

On April 1, 2003, after clearing for potential conflicts, the Center appointed Dietrich Beier as the sole panelist in this matter.

4. Factual Background

a) The first Complainant, Ferrari S.p.A., is an internationally well-known company in the field of cars and one of the leading racing car teams in Formula One in recent years, well-known as such throughout the world, and the owner of several hundreds of trademarks including the words FERRARI, SCUDERIA FERRARI and GALLERIA FERRARI around the world, and inter alia of the

- Community trademark registration "SCUDERIA FERRARI" No. 1218585 with a priority of June 23, 1999, registered for inter alia textiles, cosmetics, pins, sunglasses, games, models of motor cars;

- Community trademark registration "FERRARI" No. 161950 with a priority of April 1, 1996, registered for inter alia vehicles;

- Italian registration "GALLERIA FERRARI" No. 603282 registered on August 24, 1993, for goods in class 35, 36, 41, 42;

As far as Ferrari is concerned, in addition to cars, sales of licensed products are in excess of 18 million Euro a year. These products include toys, T-shirts, jewelry, bags, watches, perfumes, electronic video games, stationery products and several other items.

b) The second Complainant, Fila Sport S.p.A., is as of 2002, a sponsor of Ferrari in car racing Formula competitions and a well-known company in the field of clothing. It also manufactures a line of clothing with both the FERRARI and FILA trademarks, under license from Ferrari, and is the proprietor of several trademarks worldwide, which include:

- US registration "FILA" No. 2.004.655 registered on October 1, 1996, for footwear for men, women and children;

- CTM registration "FILA" No. 57042 registered on October 13, 1998, for inter alia sunglasses, bicycles, goods made of leather, clothing;

c) The Respondent, Jack Habits, trading under the name �Classic Jack�, has been an admirer of the Ferrari-brand for more than three decades. Since the year 2000, the Respondent has been selling Ferrari products. The Ferrari products offered by the Respondent can be divided into two categories. Ferrari merchandise on the one hand, such as scale model racing cars, caps, bags, flags clothing etc, under , , , , , and and Ferrari memorabilia on the other, such as vintage black and white photographs, vintage brochures and other vintage products mainly offered under and . The Respondent is not an authorized dealer of either Ferrari or Fila Sport, but allegedly a retailer selling original merchandise products he obtains from authorized distributors. The Ferrari memorabilia are obtained inter alia from auctions, fares and collectors.

d) The Respondent is using a disclaimer in different forms on the first page of his websites under the domain names in question stating that the website operators "have NO affiliation with either Ferrari, Michael Schumacher or Fila".

e) One of the Complainants, Ferrari S.p.A., sent a warning letter in 2002, to the Respondent alleging inter alia that the Respondent was distributing counterfeited goods. The Respondent denied these allegations in his answer and provided some evidence (annex 11) that he is distributing original products. In a second warning letter, Ferrari S.p.A. claimed that even if the goods were obtained from a licensee of Ferrari S.p.A., the use of the domain names and infringe its trademark rights.

5. Parties� Allegations

a) The Complainants assert that the domain names in question registered by the Respondent are confusingly similar with the trademarks FERRARI, SCUDERIA FERRARI, GALLERIA FERRARI and FILA, whereby "Scuderia" means in Italian "car racing team" and Ferrari�s Formula One world-famous racing car team is known as "Scuderia Ferrari". The Complainants refer to other Panel decisions according to which the use of generic terms such as "Merchandise", "Guy" and "Stuff" does not generally exclude similarity leading to confusion. The Respondent does not contest that the eleven domain names in question are identical or similar to the trademarks of Complainants. However, the Respondent contests that �Scuderia� can be a valid trademark, since Scuderia is the Italian word for �stable� used in a very broad sense. On the search engine "", the word Scuderia yields 66.800 hits. "" is a site for motorcycles. But also in other fields of sport, the term Scuderia is used as a description of a �team�, such as in the field of wrestling. The Respondent contests that the Complainants' claim that �Scuderia� means �car racing team� is correct. Whether �Scuderia� means �car racing team� or refers to the much broader description of �stable� or �team�, it is clear that the word �Scuderia� has a pure descriptive meaning and that it is used by Ferrari in a pure descriptive sense. Words with a pure descriptive meaning are not protected by trademark laws.

b) The Complainants allege that the Respondent was obviously aware of the trademarks FERRARI and FILA, and did not seek any authorization to register domain names including these well-known trademarks; accordingly, registration occurred in bad faith. The Respondent claims that he has legitimate interests in the domain names, because his use of the domain names was, already prior to the notice of this dispute, and still is, connected with a bona fide offering of original Ferrari and Fila goods. Thousands of domain names with trademarks have been registered without the knowledge of the trademark holder, in pure good faith and for legitimate purposes. For bad faith, further criteria must be met.

The Complainants contend that the Respondent's bad faith is also shown by the fact that it also registered dozens of domain names, some of them including well-known trademarks such as SCHUCO and ZAGATO, as well as the name of the world famous racing car pilot Michael Schumacher. The Respondent alleges that he is selling original SCHUCO-products and that ZAGATO products are not manufactured anymore.

c) The Complainants are of the opinion that retailing products connected with a trademark does not establish a right, nor a legitimate interest, to register or use the corresponding domain name. Respondent could manage a legitimate online business under any different domain name, whilst its present domain names suggest that it is associated with both Ferrari and Fila, which it is not and prevent Ferrari, or Ferrari together with Fila, from registering the same domain names and from attracting the corresponding Internet traffic and establish an unfair advantage for the Respondent vis-à-vis hundreds of other legitimate retailers and distributors within the Ferrari � Fila distribution network. Trademark laws in Italy, the Benelux countries and the European Union clearly establish that a retailer does not acquire trademark rights simply by retailing goods manufactured by other parties. Concluding otherwise with respect to domains names would deprive trademark owners of their rights, since any given product is sold by thousands of retailers and each of them would be recognized as a potentially legitimate owner of the corresponding domain name.

The Respondent alleges that he has legitimate interests in using the domain names in question. Referring inter alia to the decision Oki Data Americas inc. v. ASD inc. (; WIPO Case D2001-0903), he explains why he does not meet the criteria of the test mentioned there, since he is actually offering the goods in question and he is only selling Ferrari and/or Fila products under these domain names and his site accurately discloses the absence of a relationship with the trademark owner by saying that there is no affiliation with either Ferrari and/or Fila and that Respondent has not tried to corner the market in all domain names, since domain names such as , and are still free to be registered by the Complainants. The Complainants registered in 1997. This makes it clear that Complainants have decided to only register a few domain names in the past. As to domain names, registration takes place on a �first come, first served� basis and the registration of domain names is not reserved for the holders of trademarks. The Respondent does not contest that retailing products do not create trademark rights for the retailer, but claims that products that are manufactured by or with the approval of the trademark owner, may be offered sold, etc. without the trademark owner's authorization once his rights are exhausted. When a party offering or selling the products, uses the trademark in order to inform the public about his range of products, he may use the trademark (even without the trademark owners approval); he has a legitimate interest in using the trademark for that purpose. That is the proper and relevant application of the EU and Benelux trademark law and case law. Because the EU Directives and case law are directed to harmonize trademark protection in all the member states of the EU, this is also the only legitimate interpretation of Italian trademark law. The Respondent does not use the trademarks of the Complainants more extensively than required to advertise and sell his products.

In addition to the foregoing, the Respondent has a legitimate interest as to the domain name since the Respondent became commonly known with that domain name. The Respondent has made large investments in this website on which he sells very unique and rare memorabilia, literature, brochures etc. For that business, the Respondent has advertised in various Ferrari-magazines, such as the Ferrari Market Letter, and has become commonly known by that domain name.

c) The Complainants assert that the domain name is used in bad faith. Neither Ferrari nor Fila authorized the Respondent�s activities, nor do they control it. The Respondent is not part of the worldwide network of Ferrari and/or Fila retailers. The Complainants have no control of what the Respondent sells or advertises. By the use of the contested domain names, the Respondent diverts traffic which would otherwise go to the Complainants� websites, and also gain an unfair advantage over all the other retailers and distributors, whose domain names, as long as they have a Web presence, do not incorporate the Complainants� immediately recognizable trademarks. The (not very prominent and occasional) disclaimer used by Respondent surely does not change its general pattern of use, which clearly occurs in bad faith. The Respondent alleges that as from the beginning of his Internet business, the licensees and distributors from whom the Respondent purchased the products, were perfectly aware of the fact that the Respondent owned the domain names and offered the Ferrari and Fila products on his websites to the general public, and never complained about it. The Respondent, as one of the Complainant's retailers, contends that he has invested thousands of Euros in his business so far. The Respondent claims that he does not create a likelihood of confusion with the Complainants� trademarks as to the source, sponsorship, affiliation, or endorsement of his website or of products on his websites. The lack of control is caused by the Complainants system of selling goods. The fact that other retailers cannot use the domain names is a mere consequence of the "first-come, first-served" principle. The disclaimer is prominent enough and not occasional.

The Respondent claims that the complaint was filed in bad faith, since one of the Complainants first sent a warning letter alleging the distribution of counterfeited products and only once the representative of the Respondent explained that this was not the case did they switch to an argument that even if the goods were not counterfeit goods, there was still trademark infringement, since a connection with the Complainants was suggested.

6. Discussion and findings

In order to succeed in their claim, the Complainants must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the "Policy") have been satisfied:

(i) the domain names in dispute are identical or confusingly similar to a trademark or service mark in which the Complainants have rights;

(ii) the Respondent has no rights or legitimate interests with respect to the domain names; and

(iii) the domain names have been registered and used in bad faith.

a) The Domain Name is Identical or Confusingly Similar to the Complainants� Trademark.

It is undisputed that the domain names in question are confusingly similar to the Complainants� trademarks. The trademark rights relied on by the Complainants are valid. The question, whether or not the element "Scuderia" is a generic term must not be decided in the present case, since it is protected in connection with "Ferrari" and appears in the chosen domain names only in connection with "Ferrari". It is acknowledged by several panels that the combination of descriptive and not distinctive elements with a protected mark is covered by Art. 4 a (i) of the Policy (see e.g. Ferrero S.p.A. v. Mr. Jean-François Legendre, WIPO Case No. D2000-1534; Advanced Micro Devices, Inc. v. Dmitry, WIPO Case No. D2000-0530). Therefore, all of the domain names including those with the elements "merchandise", "stuff", "guy" are considered by the Panel as identical or confusingly similar to the trademark rights of the Complainants.

The Panel therefore considers the domain names in question to be confusingly similar to the trademarks of the Complainants in accordance with paragraph 4 a (i) of the Policy.

b) The Respondent does not have a legitimate interest in the domain names

As in several cases before it, this case raises the difficult question of whether a retailer of trademarked goods can use the trademark(s) at issue in its domain name in accordance with the Policy. The Panel is aware of the limited scope of the Policy, although both parties refer to European trademark law and its provisions on the use of retailers of trademarked goods.

Paragraph 4 c (i) of the Policy provides that a use is legitimate if, prior to the commencement of the dispute, the Respondent used the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services.

It is undisputed that the Respondent is not an authorized sales representative, agent or distributor of either of the Complainants, which would differentiate the present case from the facts as described by the Panel in the Adaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thorton, d/b/a Machines & More, WIPO Case No. D2000-0006 case, which was referred to by the Respondent. As for the issue of whether the goods the Respondent is selling are original Ferrari and Fila goods, the Respondent has provided some evidence to this effect, which was not disputed by the Complainants, so that the Panel considers this fact as proven. On the other hand, it is not absolutely clear from the statements of the parties and the related evidence provided whether the Respondent purchases its goods only from authorized distributors. However, even if one were to assume that the Respondent obtains the goods only from authorized distributors, the Respondent has failed to demonstrate a legitimate interest in the domain names in question, since a bona fide offering of goods is not shown in connection with the use of the domain names in the particular circumstances of this case.

It is without doubt for the Panel that a retailer of trademarked (and not counterfeited) goods not explicitly authorized by the trademark owner is generally allowed to use the trademark to communicate to his actual or potential customers that he is selling goods originating from a certain source represented by the trademark. However, he is not allowed to use the trademark in a manner which goes beyond the scope of informing the customer about the core of its business activities (see also Ferrero S.p.A. v. Fistagi S.r.l., WIPO Case No. D2001-0262; Raymond Weil SA v. Watchesplanet (M) Sdn Bhd, WIPO Case No. D2001-0601; dissenting opinion in DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160). It must be clear for the customer that the retailer is not an authorized partner of the Trademark owner. Therefore, the Panel is of the opinion that a retailer generally does not have a legitimate interest to use a trademark in an identical or almost identical way in the domain name itself without the authorization of the trademark owner. A possible exception to this general rule cannot be seen in the present case.

In the case to be decided by the Panel, the use of identical or almost identical trademarks is evident for the domain names and as a combination of two trademarks of proprietors who work closely together and , , , , , which consumers will connect to the trademark owner Ferrari without thinking further. The disclaimer on the websites of the Respondent does not prevent this, since it is at the lower end of the website and is only visible for visitors having determined a certain size of their browser window whereas the entire design of the upper part of the website is dominated by the elements Ferrari and Michael Schumacher who will be strongly connected with the car racing team Ferrari in the minds of many visitors. Furthermore, although there is no need to decide this point for the reasons mentioned above, the panel doubts whether a disclaimer on a website, regardless of its contents is at all suitable to avoid the impression of a connection with the trademark owner, if the visitor was already led to the website under a domain name containing the identical or almost identical trademark of a third party. (see also Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698: "But by the time consumers get to read the disclaimers, the domain name has already diverted them from the Complainant"; see also the dissenting opinion in DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160).

This is also true for the domain name , since it is known to the average consumer that many, if not all, companies active in the sports area and business offer merchandise goods. The domain name will be assumed by the consumer to be the merchandise website of Ferrari. The disclaimer does not help as mentioned above.

At first glance, however, the domain names and appear to be in a less clear-cut situation, since they might suggest a certain distance from the company Ferrari and its official distribution channels. If the Respondent had used only the domain name or to sell original Ferrari goods ("for men") or memorabilia the Respondent would have had a better argument for his defense that the addition of the element "stuff" is a modern or fashionable expression communicating that he is selling "stuff" from Ferrari. However, the Panel is of the opinion that a famous trademark can only be allowed to be used in a domain name without the authorization of the trademark proprietor in very exceptional cases, and the present case is not one of them. Furthermore, the undisputed fact that the Respondent registered eleven domain names including identical and almost identical trademarks of the Complainants show the intention of the Respondent to corner and to block the Complainants from using the domain names for their own business. This is also the reason why the Respondent meets the test of the Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, since the Respondent has filed too many further domain names with related references to trademarks of the Complainants.

This is further confirmed by the Respondent�s registration of other domain names which are not in question here such as , (Ralph Schumacher, brother of Michael Schumacher, and Heinz-Harald Frentzen are formula 1 drivers as well). The Complainants' allegation of that the Respondent also registered a domain name for has not been proven by the evidence submitted.

It is acknowledged that the Panel can investigate websites mentioned in the proceeding (see Paragraph 10 (a) of the Rules; see also Globo Comunicações e Participações S.A. � Globopar, v. Artmidia Comunicação Visual Criação E Arte Ltda., WIPO Case No. D2000-0606). Under the domain name , the following statement is found: "We are not looking to sell these names but we would like to get into contact with partners that will help develop these names into profitable concepts. Names currently in our portfolio are: Formula One & Racing: "www.ScuderiaF", "www.Schumacher-C", "www.SchumacherC", "www.RalphS", "www.TomC", "www.HHF", "www.SennaF"". This clearly shows that Respondent does not need all these domain names for his own business, since he is looking for partners to develop a business concept. It need not be considered whether this statement is an indication for a hidden offer to sell or to lease the mentioned domain names which could establish bad faith under paragraph 4 b (i) of the Policy.

The Respondent�s argument that there are still many other domain names left is not convincing, since there are always hundreds of other possibilities to combine trademarks in domain names. For multiple domain name grabbing to exist, it is already sufficient in this regard to apply for two domain names connected with one or more trademarks of a third party.

The Respondent's argument that he became commonly known with his website is in the view of the panel not sufficiently substantiated. The Respondent has only submitted one advertising from February 22, 2003, which was before the notification of this proceeding, but after the correspondence with the Complainants. Evidence created after notice of an upcoming dispute has been received is considered to be of a lower weight than similar evidence originating before such a date. Furthermore, it would have been easy for the Respondent to demonstrate hit-numbers for his website (before notice of the upcoming dispute) and/or bills for establishing the website and/or his advertising expenses in the last year(s) to substantiate his defense of being commonly known under . As all of this data is known only to the Respondent, it would be incumbent upon him to submit such data thereby also allowing the Complainant to respond to it.

The Panel therefore considers that the Respondent has no legitimate interests in respect of the domain names in question in accordance with paragraph 4 a (ii) of the Policy.

c) The Respondent has used and registered the domain name in bad faith

The Respondent has applied for the domain names in question fully aware of the well known trademarks of the Complainants, since he asserts that he has been an admirer of Ferrari for decades, which also implies knowledge about the association with FILA as a sponsor, yet without any authorization of the Complainants. As far as evidence of bad faith is concerned, paragraph 4 b (ii) and (iv) are relevant. The Respondent has applied for eleven domain names in question here, containing the trademarks of the Complainants. It cannot be excluded that the Complainants have an interest in using these domain names for themselves as they claim.

The fact that Respondent registered the domain name first, on December 27, 1999, at which point the Respondent could have argued that he intended to use only this domain name for retailing, and registered the other domain names only later does not change this evaluation. The domain name, for which the Respondent cannot claim a legitimate interest in any respect in view of the foregoing explanations, was applied for only 5 days later, on January 2, 2000. Therefore, the Panel excludes the possibility that the application of the domain name was applied for in good faith with the intention to use it for reselling Ferrari goods, and that only later on the Respondent decided to apply for all the other domain names in question in bad faith.

The Respondent's implicit argument that Ferrari had enough time to register all the domain names in question is not persuasive. There is no rule or duty for a trademark owner to register all possible or even manifest variations of its trademarks.

The pattern of such conduct by the Respondent is already evident through the registration of the eleven domain names in question, but it is further confirmed by the registrations of domain names containing the names of other drivers in the Formula 1 circuit as mentioned above. Furthermore, the Respondent, by using the domain names in question, has intentionally attempted to attract Internet users to his website for commercial gain, by creating a likelihood of confusion with the Complainants trademarks as to the affiliation of Ferrari and/or Fila to his website. As mentioned above, the disclaimer is too small and placed only at the bottom of the website, and is thus insufficiently to help clear up the confusion created by the domain names.

The above-mentioned statement that the Respondent is looking for a partner to develop profitable concepts for the domain name might even be construed as a circumstance falling under paragraph 4 b (i) of the Policy. However, this must not be decided here, since paragraph 4 b (ii) and (iv) are fulfilled already.

Finally, the panel rejects the Respondent�s allegation that the complaint was filed in bad faith. First of all, the Policy does not provide for any forfeiture of rights. Assuming that it is true that official distributors of the Complainants did know about the Respondent�s business under all or one of the domain names in question here, this does not prevent the Complainants from filing a Complaint in accordance with the Policy (see also Scorpions Musikproductions und Verlagsgesellschaft mbH .v. Alberta Hot Rods, WIPO Case No. D2001-0787 for a time of 4 � years; National Organization for the Reform of Marijuana Laws v. Industry Internet, LLC and Anthony Disano, WIPO Case No. D2002-0938). The fact that there was a correspondence between the Complainants and the Respondent prior to this proceeding dealing with Italian, Dutch or European Trademark Law is usual and need not be mentioned in the complaint. The Respondent 's allegation that he was falsely accused by the Complainant of selling counterfeited goods has no influence on the evaluation of this case under the Policy. The Panel sees no reason to consider the prior correspondence between the parties, whether the above-mentioned allegation of one of the Complainants in the prior correspondence was made in error or intentionally, as an indication that this proceeding was initiated in bad faith.

The Panel therefore considers the domain names in question to have been registered and used in bad faith in accordance with paragraph 4 a (iii) of the Policy.

7. Decision

In the light of the foregoing consideration of the arguments of both parties, the Panel decides that the domain names in question are confusingly similar with the Complainants' trademarks, that the Respondent has no rights or legitimate interests in respect of the domain names, and that the domain names have been registered and used in bad faith.

Accordingly, the Panel requires, pursuant to Paragraph 4 i of the Policy, that the domain names be transferred to the Complainant Ferrari S.p.A as requested by the Complainants.

Dietrich Beier
Sole Panelist

Dated: April 15, 2003

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