WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Campagnolo S.r.l. v. VELO-IRK.ru Case No. D2008-1775 1. The Parties
The Complainant is Campagnolo S.r.l., of Vicenza, Italy, represented by Giambrocono & C. S.p.A., Italy.
The Respondent is VELO-IRK.ru, of Irkutsk, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2008. On November 19, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On November 19, 2008 GoD, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 21, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 24, 2008. The Center verified that the Complaint together with the amended 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 proceedings commenced on November 26, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 17, 2008.
The Center appointed Adam Samuel as the sole panelist in this matter on December 23, 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. 4. Factual Background
The Complainant owns United States of America (“U.S.”) trademark registration nos. 0983176, 1941994, 2266421 and 2622768 for the word CAMPAGNOLO, in connection with bicycle products and accessories. The first dates back to 1974. 5. Parties' Contentions A. Complainant
What follows are the Complainant's contentions. It does not follow that the Panel accepts all or part of them.
The domain name is composed by the words CAMPAGNOLO and “russia”. While the latter generically refers to a country, the former is absolutely identical (among others) to the trademarks owned by the Complainant: notably U.S. trademark registration nos. 0983176, 1941994, 2266421 and 2622768.
The addition of “russia” does not avoid confusion on the part of the public but, on the contrary, falsely suggest a possible link between the Complainant and the Respondent, as if the latter was somehow entitled to use the disputed domain for the Russian Federation, which it is absolutely not.
The Respondent has never been, and is not currently, commonly known by the disputed domain name, nor does its name consist in whole or in part in the denomination CAMPAGNOLO or is its business in any way connected with the Complainant's products in the Russian Federation. The Respondent does not hold any trademark or other right consisting in whole or in part in the denomination CAMPAGNOLO, which is the only distinctive part of the disputed domain name. Finally, “Campagnolo” is neither a common noun nor a common name.
The Respondent is not making a legitimate noncommercial or fair use of the domain names. The domain name is currently used to provide links through a so-called “parking service”, which allows him to earn money by attracting Internet users (Complaint Annex10) thanks to the worldwide goodwill of the CAMPAGNOLO trademark.
Domain parking or landing services cannot be considered as “use in connection with a bona fide offering of goods or services”.
The disputed domain name was registered and is currently used “intentionally to attract, for commercial gain, Internet users to the Respondent's website 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 website or location or of a product or service on the Respondent's web site or location”. The Respondent earns money through the mentioned parking service provided by GoDaddy, Inc., leveraging on the Complainant's trademark. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Under the Policy, the complainant must prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(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. A. Identical or Confusingly Similar
The disputed domain name consists of the Complainant's trademark, a hyphen, the name of a country and “.com”. The trademark concerned has no normal meaning. The addition of a country's name does not render the disputed domain name any less confusingly similar to the trademark. It tends to indicate that the disputed domain name is concerned with the exploitation of the trademark in the country identified. As the panel said concerning the addition of “-” to a trademark name in Arla Foods amba v. hem, WIPO Case No. D2008-0378:
The distinctive element of the domain name is identical to the Complainant's ARLA trademark. The hyphenated suffix “russia” could indicate a branch or other activity of ARLA. Although the Complainant is based geographically in Denmark and Sweden and will undoubtedly be most widely known by the ARLA trademark in those countries, it has also established trading links in Central Europe and through a distributor in St. Petersburg, Russia. The Panel is in no doubt that the disputed domain name is confusingly similar to the Complainant's ARLA trademark and, consequently, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy.
For these reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests
There is no evidence that the Complainant has authorized the Respondent to use its trademark. The Respondent has not asserted any rights or legitimate interests in that name.
For these reasons, on the basis of the available evidence, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant's trademark is distinctive and has no ordinary meaning. The Complainant has asserted that the Respondent registered and is using it in bad faith. The Respondent has not replied. All this suggests that the Respondent registered the disputed domain name knowing of the Complainant's rights in connection with its trademark and has continued to hold it as such. Registering and keeping a domain name knowing that it infringes the Complainant's trademark without having a reason for doing so is itself registration and use in bad faith.
It is impossible to know the motives of the Respondent in all this in view of its lack of response to the Complaint. It would appear that it has registered the disputed domain name for one or more of the following reasons: to disrupt the Complainant's business by diverting customers seeking the Complainant's products for sale in the Russian Federation to the disputed domain name, to earn revenue through the website to which the domain name would be diverting users looking for the Complainant's website or to persuade the Complainant to buy the disputed domain name for more than his out-of-pocket expenses.
For all these reasons, the Panel concludes that the domain name in question was registered and 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 domain name be transferred to the Complainant.
Adam Samuel
Sole Panelist
Date: January 6, 2009
Full & Egal Universal Law Academy