WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Superga Trademark S.A. v. Marco Sette Case No. D2008-2007 1. The Parties
The Complainant is Superga Trademark S.A. of Luxembourg, represented by Studio Legale Sindico Serantoni & Scannerini, Italy.
The Respondent is Marco Sette of Italy. 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 December 31, 2008. On January 5, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On January 5, 2009, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 proceedings commenced on January 8, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 2, 2009.
The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on February 18, 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.
4. Factual Background
The Complainant is part of an industrial group engaged in the manufacturing and marketing of shoes and accessories, having its principal place of business in Luxembourg.
The Complainant owns international registrations for the trademark SUPERGA, particularly, International Registration No. 167681, granted on March 9, 1953, in classes 7, 10, 11, 12, 17, 21, 24, and 25, extended to Italy, Austria, Benelux, Switzerland, Czech Republic, Germany, Spain, France, Hungary, Liechtenstein, Morocco, Monaco, Romania, Serbia and Slovakia; International Registration No. 188655, granted on November 10, 1955, in classes 1, 7, 10, 12, 16, 17, 20, 24 25, and 28, extended to Italy, Austria, Benelux, Switzerland, Germany, Spain, France, Croatia, Hungary, Liechtenstein, Morocco, Montenegro, Portugal, Romania, Serbia, Slovenia, Vietnam, among others.
Moreover, the Complainant owns Italian registrations for the trademark SUPERGA.
All of the above-mentioned registrations have claimed Italian basic applications.
The disputed domain name was registered on February 20, 2001.
5. Parties' Contentions A. Complainant
The Complainant contends the following:
The Complainant is part of an industrial group engaged in the manufacturing and marketing of shoes and accessories, having its principal place of business in Luxembourg.
The Complainant owns several trademarks including the term SUPERGA registered worldwide in connection with goods falling under different international classes, particularly 18 and 25, and has registered its SUPERGA mark inter alia in the United States, the European Union and in the major Asian and Oceania countries, all these registrations currently valid and subsisting.
The Complainant also contends that the trademark SUPERGA has been widely used worldwide since 1960 in connection with shoes, including Italy, where the Respondent appears to be located.
The Complainant has granted several licenses authorizing third parties to use the trademark SUPERGA.
The Complainant advertises its SUPERGA products in advertisements, press reviews, and catalogues, which were filed with the Complaint.
The disputed domain name is identical to the Complainant's trademark SUPERGA.
The Complainant also contends that the Respondent has no rights or legitimate interests in respect the disputed domain name.
The disputed domain name was both registered and is being used in bad faith.
In that connection, the Complainant contends that at the time the Respondent registered the disputed domain name, he already knew or at least should have known the existence of the trademark SUPERGA.
The disputed domain name is publicly offered for sale.
Finally, the Complainant contends that the Respondent has registered the disputed domain name to sell it to the owner of the trademark SUPERGA or to a competitor. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
For the Complaint to succeed in a UDRP proceeding, under paragraph 4(a) of the Policy, the Complainant must prove that:
(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.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The Complainant has proven to the Panel's satisfaction that it owns registrations for the trademark SUPERGA.
For the above, the Panel finds that the disputed domain name is identical to the Complainant's trademark SUPERGA, and therefore, the Complainant has succeeded on this first element under the Policy B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the second element that a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. Paragraph 4(c) of the Policy sets out various ways in which a respondent may demonstrate rights or legitimate interests in the domain name.
Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e. that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a prima facie showing of a respondent's lack of rights or legitimate interests in a domain name, the burden of proof shifts to the respondent. The respondent must then, to the panel's satisfaction, demonstrate its rights or legitimate interests in the domain name in order to refute the prima facie case.
The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests and so the burden of proof has effectively been shifted to the Respondent, who did not reply to the Complainant's contentions and therefore, has not made such a showing.
Furthermore, the Complainant has submitted relevant evidence showing that the disputed domain name is offered for sale1. Therefore, the Panel finds that such use cannot be considered a bona fide use, or fair or non-commercial use as set forth in paragraph 4(c)(iii) of the Policy.
Additionally, there is no evidence showing that the Respondent is commonly known as or identified by “superga”. Furthermore, there is no evidence showing that the Respondent operates a business or any other organization under the disputed domain name.
For these reasons, and in absence of a rebuttal by the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the domain name has been registered and is being used in bad faith.
The Policy in its paragraph 4(b) sets out various circumstances which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.
As above-referenced, the Panel finds that the Complainant owns international registrations for the trademark SUPERGA, including Italy, where the Respondent appears to be located.
Moreover, from the advertisements, press reviews, and catalogues, the Panel is persuaded of the Complainant's wide use of the trademark SUPERGA.
For the above, the Panel finds that the Respondent in all likelihood was aware of the Complainant and its trademark SUPERGA, when registering the disputed domain name which further evidences bad faith registration.
Moreover, and as above-mentioned, the Complainant has proved to the Panel's satisfaction that the disputed domain name is offered for sale.
This circumstance demonstrates that the Respondent intended, from the date of registration, to sell the disputed domain name. This conclusion is supported by an adverse inference drawn from the Respondent's failure to reply to the Complaint or dispute the Complainant's assertion regarding the primary purpose of the Respondent's registration and use of the disputed domain name i.e. to sell it to the owner of the trademark SUPERGA or a competitor.
For these reasons, the Panel finds that the Respondent both registered and uses the disputed domain name in bad faith, and that the Complainant has therefore made out the third element of its case. 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.
Miguel B. O'Farrell
Sole Panelist
Dated: February 25, 2009
1 In that connection, the Complainant filed a printout of the website “/superga/index.html”, in which it can be read domain for sale contact “[…]@”. It should be noted that the referred email address is the one that the Respondent listed when registering the disputed domain name (evidenced by the WhoIs Search). Moreover, the Complainant filed an email exchange between the Respondent using the referred email address offering the assignment of the disputed domain name to BasicNet S.p.a., who presented itself as the exclusive rights holder in connection with the use of the trademark SUPERGA.
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