WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Sant'Andrea S.p.A. v. Andy Picken Case No. D2009-0517 1. The Parties
The Complainant is Sant'Andrea S.p.A., of Novara, Italy, represented by Ermanno Ferrario, Italy.
The Respondent is Andy Picken, of Roseau, Denmark. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2009. On April 21, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On April 21, 2009, eNom 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 May 4, 2009 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 amendment to the Complaint on May 8, 2009. The Center verified that the Complaint together with the amendment to 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 May 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 4, 2009.
The Center appointed Isabelle Leroux as the sole panelist in this matter on June 12, 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 an Italian company which was created in 1920, specializing in the creation of machinery in the textile sector.
The Complainant progressively diversified its activities, and demerged the thermo-technical branch, which remained in the textile sector.
The rest of the company, known under the name Sant'Andrea since 1956, thus became specialized in the manufacturing of automatic oil burners, iron boilers and then air-conditioning units. It is at this time, according to the Complaint, that it started using “Sant' Andrea” as an unregistered trademark.
Nowadays, the Complainant is present all over the world, having more than 100 retailers and 250 technical assistance centers in Italy, as well as a lot of importers abroad.
The disputed domain name was registered on July 4, 1997. 5. Parties' Contentions A. Complainant
The Complainant claims that it has rights in the name Sant'Andrea as an unregistered trademark.
According to the Complainant, the fact that it does not have rights in a registered trademark does not prevent the application of the Policy, as it has already been found in several UDRP decisions that the Policy also applies to unregistered trademarks.
The Complainant asserts that SANT'ANDREA is an unregistered trademark as it has acquired enough goodwill and reputation in and to this name through the use of this name, so that the unregistered trademark would be clearly associated with the Complainant.
The Complainant demonstrates that the Complainant uses the unregistered trademark to designate its products and services, and notably through:
- the participation in national and international trade exhibitions since 1956;
- a broad network of sellers and agents;
- agents websites;
- publicity;
- price-lists since 1988.
The Complainant considers that is has reached the burden of proof described in the Policy in regards to its trademark rights.
In addition, the Complainant has registered and uses the following domain names:
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the domain name:
- the disputed domain name is not used by the Respondent according to a legitimate interest of offering to the public some goods and services;
- the Respondent is not commonly known under the name “Santandrea”;
- the Respondent does not lawfully use the domain name for non-commercial purposes;
- the Complainant did not grant a licence to the Respondent to use the trademark SANTANDREA, and the parties never had a contractual relationship.
Pursuant to the Complainant's argumentation, the Respondent could not have ignored the SANTANDREA trademark at the time the domain name was registered.
In addition, the domain name directs to a webpage maintaining hyperlinks containing the trademark SANTANDREA, which link to websites concerning the specific sector in which the Complainant develops its activity, such behaviour evidencing, according to the Complainant, that the domain name is used in bad faith.
Independently of the location of the Internet user, the domain name always contains links to the items “Santandrea Caldeia” or “Santandrea Boilers”, which, according to the Complainant, proves that the Respondent intentionally attempted to attract Internet users for commercial gain, by creating a likelihood of confusion with the trademark SANTANDREA.
The Complainant states that there is no need to evidence an active use in order to demonstrate a use in bad faith of a domain name, the sole “passive holding” constituting in itself a use in bad faith.
In any case, the Complainant asserts that the links appearing on the website accessible at “www.” are connected to different websites promoting or offering the products and services of immediate competitors of the Complainant.
According to the Complainant, the Respondent's main business activity would consist of the sale of domain names incorporating famous names or trademarks, and the Respondent would have already been involved in several domain name disputes.
Finally, according to the Complainant, the fact that the Respondent changed its details on the WhoIs database and changed Registrar shortly before the Complaint was filed, as well as the removal of all references to “Santandrea Caldaie”, shows the bad faith of the Respondent.
For all these reasons, the Complainant requests that the domain name be transferred. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Under Paragraph 4(a) of the Policy, the complainant has the burden of proving the following:
(i) That the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the Panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
If a respondent does not submit a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the rules, the Panel may draw such inferences from a respondent's failure to comply with the Rules (e.g., by failing to file a response), as the Panel considers appropriate. A. Identical or Confusingly Similar
The Complainant must first establish that there is a trademark or service mark in which it has rights. It is here that the first issue arises in the present case, for the Complainant concedes that it does not have a registered trademark or service mark with which the domain name is identical or confusingly similar.
However, the Complainant asserts that it has an unregistered trademark in the term SANTANDREA. A series of UDRP decisions have held and it is now well established that the Policy protects rights in unregistered trademarks (for example, see: Bennett Coleman & Co. Ltd. v. Steven S. Lafwani,WIPO Case No. D2000-0014, SeekAmerica Networks Inc. v. Tariq Masood and Solo Sings,WIPO Case No. D2000-0131, and the cases cited by the Complainant, Brisbane City Council v. Warren Bolton Consulting Pty Ltd.,WIPO Case No. D2001-0047 and Imperial College v. Christopher Dessimoz,WIPO Case No. D2004-0322).
However, the Panel will not automatically accept an unsupported assertion of unregistered trademark rights, but will examine the evidence which may establish that the Complainant holds rights in an unregistered trademark.
In accordance with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions 1, in cases where the complaint is based on unregistered trademark rights, the complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant's rights in a common law trademark in regards to the first element of the Policy. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction (See Uitgeverij Crux v. W. Frederic Isler,WIPO Case No. D2000-0575, Transfer Skattedirektoratet v. Eivind Nag,WIPO Case No. D2000-1314, Australian Trade Commission v. Matthew Reader,WIPO Case No. D2002-0786).
Answering this question is a matter of considering all of the evidence as to whether the Complainant has a trademark.
In the present case, the Panel finds that the Complainant has established that the name SANTANDREA has become a distinctive identifier associated with the Complainant or its goods and services. That is so for the following reasons: the Complainant has been selling its products worldwide under the name SANTANDREA since 1956, it has advertised extensively under that name, its products are recognized by consumers and the media, it has adopted the name as its company and business name, it has registered domain names using the term “Santandrea”, its publications use the name and it continues to spend large sums of money on advertising and promoting the name at exhibitions and conferences.
Just as importantly for present purposes, it uses the same name in promoting its business in the thermo-technical sector.
Additionally, there is no evidence to suggest that there is a company or business other than the Complainant that uses the name in the same area of industry as the Complainant.
The Panel is therefore satisfied that SANTANDREA is an unregistered trademark owned by the Complainant.
The next question is whether the domain name is identical or confusingly similar to the trademark. The answer is that it is. The disputed domain name consists, first of all, of the entirety of the trademark.
Secondly, the domain name does not have any additional words as part of it that detract from or minimize the effect and dominance of the trademark in the domain name.
Thirdly, the lack of apostrophe in the domain name is irrelevant and in any case insufficient to dismiss any likelihood of confusion between the trademarks, bearing in mind in addition that apostrophes cannot be included in domain names.
Accordingly, the Complainant has made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
It is evident from the record that the Respondent has not used the domain name for a bona fide offering of goods or services and that he is not commonly known by the name “Santandrea”.
At the date of the Complaint, the Respondent was not making a legitimate non-commercial or fair use of the domain name. The Panel considers that the Respondent's use of the domain name following the Complaint, for a website displaying a parking page with links towards websites of competitors of the Complainant, does not give rise to a right or legitimate interest therein, but rather quite the opposite.
In the circumstances, the Panel does not consider that there is any other basis on which the Respondent can claim to have any right or legitimate interest in the Domain Name. The Panel finds that the second requirement of the Policy is satisfied. C. Registered and Used in Bad Faith
Having reviewed the evidence provided by the Complainant, the Panel notes that the Respondent registered the domain name long after the Complainant's use of its unregistered trademark in commerce.
It results from the documents provided by the Complainant that the Respondent could not have likely ignored the rights in the unregistered trademark SANTANDREA at the time of the registration of the disputed domain name.
In the case at hand, it is clear that the Complainant has never authorized or licensed Respondent to use the Complainant's unregistered trademark SANTANDREA. Respondent does not contend either that is has been commonly known under the name SANTANDREA or has used the disputed domain name with a bona fide offering of goods or services.
Secondly, the Respondent changed its contact details and changed of Registrar shortly after the Complaint was filed with the Center. In addition, the Panel notes that all links to websites of competitors of the Complainant were removed once the Complaint was filed. This behaviour further supports a finding of use in bad faith of the domain name.
In accordance with paragraph 4(b)(i) of the Policy, these above constitutes evidence of registration and use of the domain name in bad faith. The Panel finds that this presumption is not displaced by any other evidence in the record. The Panel concludes that the domain name was registered and is being used in bad faith. The third requirement of the Policy is satisfied. 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.
Isabelle Leroux
Sole Panelist
Dated: July 2, 2009
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