WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sparco S.p.A. v. Mr. Hugo Bazzo
Case No. D2003-0597
1. The Parties
The Complainant is Sparco S.p.A., an Italian company with its registered office at Torino, Italy. The Complainant is represented by Massimo Introvigne, Studio Legale Jacobacci & Associati, Torino, Italy.
The Respondent is registered as Mr. Hugo Bazzo, Paratiba, Chile.
2. The Domain Name and Registrar
The disputed domain name is . The registrar of the domain name is Key-Systems GmbH.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by email on July 30, 2003, and in hardcopy on July 31, 2003. On June 30, 2003, the Center transmitted by email to the registrar a request for the registrar�s verification of details relating to the domain name.
On August 1, 2003, the registrar responded to the Center confirming that the Respondent is listed as the registrant of the disputed domain name, and providing the contact details for the administrative, billing, and technical contacts for the domain name. The Center then verified that 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 sent notification to the Respondent of the Complaint on August 7, 2003, by post and email, to all available contact details for the Respondent. This proceeding commenced on that day. In accordance with the Rules, paragraph 5(a), the due date for the Response was August 27, 2003. No response was filed by the Respondent. Accordingly the Center notified the Respondent�s default on August 29, 2003.
The Center appointed James A. Barker as Sole Panelist on September 3, 2003. The Panel finds that it was properly constituted. The Panel has submitted a Statement of Acceptance and Declaration of Impartiality and Independence for compliance with the Rules, paragraph 7.
This Decision is due to be provided to the Center on September 17, 2003.
4. Factual Background
The Complainant, Sparco S.p.A., is well known in Italy and internationally in the field of products and clothing relating to motor racing. It is the owner of several trademark registrations for SPARCO.
The Complainant was incorporated until June 16, 2003, as Sparco S.r.l. (S.r.l. means "limited liability company" in Italian). On June 16, 2003, Sparco S.r.l. was merged into Sparco S.p.A. (S.p.A. means "joint stock company" in Italy). The Complainant is the owner of several trademark registrations for SPARCO, including Italian registration 335748 and international registration 335748, copies of which were attached to the Complaint.
The Respondent registered the disputed domain name on June 12, 2003, and pointed the domain name to a pornographic website.
The facts of this case are very similar to a recent case decided under the Policy, in which Sparco S.r.l. was the Complainant (Sparco Srl v. Mr. Alexander Albert W. Gore / Ukrainian Cat. University, WIPO Case No. D2003-0448). The decision of the Panel in that case was for the transfer of the disputed domain name then in dispute to the Complainant.
5. The Parties� Summarized Contentions
A. Complainant
The following is a summary of the Complaint.
The Complainant is the owner of the trademark SPARCO, which is registered in a large number of countries and in various categories. (A summary list of registered trademarks, in which the Complainant has rights, were attached to the Complaint.) The domain name is confusingly similar with the trademark SPARCO and with the trade names Sparco S.r.l. and Sparco S.p.A., it is, indeed, identical.
The Respondent has no rights or legitimate interests in respect of the domain name. In particular:
(i) there is no 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. The only thing the Respondent offers through its domain name is a link to a pornographic website;
(ii) the Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name SPARCO or "Sparco S.r.l.";
(iii) the Respondent links to the default page of a website, which can be further navigated only by paying a fee. Hence, its use is commercial, and any possibility of a non-commercial fair use is excluded.
There is no way that the Respondent may not have been aware of the trade name and trademark SPARCO and registration can only have occurred in bad faith. The association between "Sparco" and "S.r.l." uniquely identify the Italian company. Also, the use of a title tag "Girls of the Sparco Racing Team" in the Respondent�s pornographic website confirms that the Respondent did indeed intend to refer to the Complainant, whose trademark and trade name are commonly associated with racing car products, and which sponsors a famous racing team. This is a case of "pornosquatting," in which a cybersquatter tries to take advantage of a well-known trademark and/or trade name to attract Internet users to a pornographic website. Redirection to pornographic sites from a domain name incorporating the trademark of another company is, per se, evidence of bad faith, as has been confirmed by several Panel decisions.
The Complainant seeks the transfer of the domain name to it.
B. Respondent
The Respondent did not file a Response.
6. Discussion and Findings
Under the Policy, paragraphs 4(a)(i)-(iii), for the Complainant to succeed and have the disputed domain name transferred to it, the Complainant must prove that:
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is Sparco S.p.A. The Complaint has stated that until June 16, 2003, it was incorporated as Sparco S.r.l. The Complainant has stated that this change "is being currently recorded with respect to existing trademark applications." Copies of a sample of trademark certificates attached to the Complaint appear to be registered to Sparco S.r.l., as they are copies of certificates of renewal applications for the mark made in April 2003. As such, the Complaint does not clearly identify that the Complainant, in its new legal form, is the owner in any particular jurisdiction of the registered mark SPARCO.
That ambiguity is not fatal to the Complaint. Paragraph 10(d) of the Rules relevantly provides that the Panel shall determine the materiality and weight of the evidence. Under that paragraph, the Panel finds that Sparco S.p.A. has rights in the registered trademark SPARCO, which it is in the process of obtaining from its prior legal entity Sparco S.r.l. The Complainant has stated that it has such rights and, in accordance with paragraph 3(b)(xiv) of the Rules, has certified that this statement is accurate. Panels have consistently determined that, in the absence of a Response, the statements made in the Complaint may be treated as true (for example, Matsushita Electric Industrial Co., Ltd., v. O Eunjung, WIPO Case No. D2001-1400).
Further, paragraph 4(a)(i) of the Policy does not require that there be a registered mark, although of course registration more clearly demonstrates a complainant�s rights. In this case, the Complainant has rights in the trademark which it clearly uses, both in relation to goods and as its trade name.
SPARCO is the distinctive element of the Complainant�s trademark. The addition of the letters "srl" in the domain name merely identify the former legal nature of Sparco S.p.A., and so do not distinguish the domain name from the mark. Rather, the inclusion of those letters strongly reinforces an association with the Complainant�s mark.
The domain name is therefore confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant states that there is no evidence that would support the Respondent�s rights or legitimate interests in the ways set out in paragraph 4(c)(i)-(iii) of the Policy.
In particular, the Complainant states that:
- there is no 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;
- the Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name SPARCO or "Sparco S.r.l.";
- the Respondent�s domain name links to the default page of a website, which can be further navigated only by paying a fee. Hence, its use is commercial, and any possibility of a non-commercial fair use is excluded.
In this way, the Complainant has established a prima facie case that the Respondent has no relevant rights or legitimate interests in the domain name. The burden is then on the Respondent to establish the contrary. No Response has been filed.
Accordingly, the Complainant has established that the Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
The Complainant states that the Respondent registered the disputed domain name in bad faith. The Complainant refers to previous Panel decisions, involving similar facts to the present case, to support that contention. More recent examples referred to in the Complaint include Southern California Edison Company v. John Simms (WIPO Case No. D2002-0369), Wachovia Corporation v. Peter Carrington (WIPO Case No. D2002-0775), and Six Continents Hotels, Inc. v. Seweryn Nowak (WIPO Case No. D2003-0022).
Paragraph 4(b)(iv) of the Policy provides (in part) that there is evidence of bad faith registration and use where, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant�s mark as to the source, sponsorship, affiliation, or endorsement of its website. The majority of previous cases referred to by the Complainant involved a finding of bad faith under this paragraph of the Policy.
Similarly, in this case the Complainant identifies a number of matters that provide evidence of bad faith under paragraph 4(b)(iv) of the Policy.
It is clear that the Respondent had an intention to attract Internet users to its site by creating a likelihood of confusion with the Complainant�s mark. The title banner of the window in which the Respondent�s site appears refers to "Girls of the Sparco Racing Team," although the website itself has no relationship with the mark SPARCO. The Complainant has provided evidence that its trademark is registered in a large number of countries. The Complainant also states that its trademark is commonly associated with racing car products and that it sponsors a famous racing car team. These facts provide strong evidence that the Respondent knew of the Complainant�s mark and intended to attract Internet users by creating confusion with it.
It is also clear that the Respondent operates for commercial gain. The content of the Respondent�s site is only further accessible if payment is made.
In addition to these matters demonstrating bad faith under paragraph 4(b)(iv), it appears that the Respondent provided false or incorrect registration details for the disputed domain name. The Center sent notification of the Complaint and commencement of this administrative proceeding to the WhoIs details for domain name provided by the Respondent. It appears that all emails sent to the Respondent were unsuccessful. The notification sent by post was returned to the Center as undeliverable. The Complainant also provided evidence that the WhoIs address details for "Paratiba, Chile" are false, as there is no municipality in Chile known as "Paratiba." Consistently with similar cases, the provision of false contact details suggests registration and use in bad faith.
Accordingly, the domain name has been registered in bad faith and is being used in bad faith.
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 disputed domain name, , be transferred to the Complainant, Sparco S.p.A.
James A. Barker
Sole Panelist
Dated: September 17, 2003
Full & Egal Universal Law Academy