WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ferrari S.p.A. v. American Entertainment Group, Inc
Case No. D2004-0673
1. The Parties
The Complainant is Ferrari S.p.A., of Maranello (Province of Modena), Italy, represented by Studio�Legale Jacobacci�e�Associati, Italy.
The Respondent is American Entertainment Group, Inc, C/O Mascioli, Alexander, of�Norwalk, Connecticut, United�States�of�America.
2. The Domain Name and Registrar
The disputed domain name is registered with Network�Solutions,�LLC.
3. Procedural History
The Complaint was filed with the WIPO�Arbitration and Mediation�Center (the�“Center”) on August�24,�2004. On August�24,�2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On August�27,�2004, Network�Solutions,�LLC 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. The Center 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 notified the Respondent of the Complaint, and the proceedings commenced on September�1,�2004. In accordance with the Rules, paragraph�5(a), the due date for Response was September�21,�2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September�22,�2004.
The Center appointed Knud Wallberg as the sole panelist in this matter on September�29,�2004. 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
Complainant is an internationally-known company in the field of cars and the owner of several hundreds of trademarks including the word FERRARI throughout the world, including but not limited to:
- Italian registration No. 666132
- CTM registration No. 161950
- U.S. registration No. 874164
FERRARI is also the distinctive part of Complainant’s company name.
5. Parties’ Contentions
A. Complainant
(1) The Domain Name is Identical or Confusingly Similar to a Trademark in which Complainant has Rights
The domain name is confusingly similar to the trademark FERRARI. Adding the generic indication “owner” to FERRARI does not change this assessment.
(2) Respondent has No Rights or Legitimate Interests in the contested domain name
Upon information and belief, Respondent has no rights or legitimate interests in respect of the domain name. Respondent is not an authorised distributor or retailer within the Ferrari network but, by registering the domain name and using it as described in the Complaint, Respondent suggests that it is associated with Ferrari.
The domain name was at a certain point used to redirect to a car rental website from which Ferrari cars were for rent as were a number of other brands of cars. Even if the cars were legitimately for rent, this does not give the respondent the right to use the trademark as part of his domain name. Respondent could have managed a legitimate online business under a different domain name.
Further, Respondent has neither been known by the name Ferrari or Ferrariowner in the normal course of business, nor is there any evidence of bona�fide or non commercial use of the domain name by Respondent.
(3) Respondent Registered and is Using in Bad Faith
According to the Complainant, it is not possible that Respondent was not aware of the famous trademark FERRARI, and registration of the domain name may only have occurred in bad faith. When it may be presumed that “the Respondent (…) knew of the renown of the Complainant’s trademarks”, a finding of “opportunistic bad faith” is in order. Referenvce is made to Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No.�D2000-1157; Veuve Clicquot Ponsardin v. The Polygenix Group Ltd., WIPO Case No.�D2000-0163 and Parfums Christian Dior v. Javier Garcia Quintas and C, WIPO Case No. D2000-0226.
The domain name was at a certain point used to redirect to a car rental website from which Ferrari cars were for rent as well as other brands of cars. The domain name is now inactive but, as stated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.�D2000-0003, and several subsequent decisions, passive holding can constitute bad faith.
The Complainant has requested the Administrative Panel to issue a decision by which the contested domain name is transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph�4(a) of the Policy lists three tests which a complainant must satisfy in order to succeed. The complainant must satisfy that:
(i) the 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 such domain name; and
(iii) the domain name has been registered in bad faith and is being used in bad faith.
6.1 Identical or confusingly similar to a trademark or a service mark
Respondent’s domain name contains Complainant’s trade mark, and distinctive trademark element FERRARI. There is thus a significant visual and phonetic similarity between Respondent’s domain name and Complainant’s trademark. Complainant’s mark is registered and used in the country of residence of the Respondent, and must be considered to be a well-known mark there.
Complainant’s trademark is the most distinctive part of the contested domain name, and the addition of the term “owner”, is not deemed sufficient to prevent the risk of confusion.
Thus, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s trademark FERRARI.
6.2 Rights or legitimate interests in the domain name
The Panel has considered the allegation by the Compliant as to the lack of rights or legitimate interests of the Respondent in respect of the domain name at issue. The Complainant’s prima facie case has not been contested by the Respondent.
Since Respondent has no association with Complainant or Complainant’s business, and since there are no indications that Respondent could have bona�fide interests in relation to the registration and use of the contested domain name, the Panel finds that the Respondent has no rights or legitimate interests in the name.
6.3 Registration and use in bad faith
Complainant’s allegations with regard to the Respondent’s registration and use of the domain name in bad faith have not been contested by the Respondent because of his default.
Complainant’s trademark is well-known and Respondent undoubtedly knew about it when registering the contested domain name. Said domain name would most likely not have been registered if it were not for Complainant’s trademarks.
Respondent’s registration of the domain name at issue, and continuous use of the same, appears to be an attempt to exploit the fame and goodwill of Complainant’s trademarks by attracting the public to his website or other websites for commercial gain.
The domain name is currently inactive. As has been stated in several UDRP decisions, inactivity or passive holding can in specific cases be regarded as “use” in bad faith within the meaning of Paragraph�4(a)(iii) of the Policy. The fact that the domain name was at some stage used actively to direct to a website for car rental services can be regarded as further evidence of use in bad faith under paragraph 4(b)(iv) of the Policy.
The Panel therefore finds that the Respondent has registered and is using the domain name at issue 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 domain name be transferred to the Complainant.
Knud Wallberg
Sole Panelist
Dated: October�10,�2004
Full & Egal Universal Law Academy