WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Panariagroup Industrie Ceramiche Spa v. Belize Domain WHOIS Service Lt Case No. D2009-1109 1. The Parties
The Complainant is Panariagroup Industrie Ceramiche Spa, Italy, represented by Studio Turini, Italy.
The Respondent is Belize Domain WHOIS Service Lt, United States of America (“USA”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Intercosmos Media Group d/b/a directNIC.com (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2009.
The Center transmitted its request for registrar verification to the Registrar on August 18, 2009. The Center also noted that the Domain Name was in the redemption period; pointed out that under paragraph 3.7.5.7 of the ICANN Expired Domain Deletion Policy, the Complainant must have the option of renewing or restoring the registration under the same commercial terms as the registrant; and asked the Registrar to confirm whether the Domain Name was available for direct registration or renewal by the Complainant and, if so, to indicate the steps which should be taken.
The Registrar replied the same day, confirming that the Domain Name was in the redemption period and stating that if the Complainant wished to redeem the Domain Name, it should contact the writer. The Center forwarded this information to the Complainant the following day.
The Complainant subsequently informed the Center by email on September 14, 2009, that no agreement had been reached between the parties and that the Domain Name was no longer in the redemption period. The Complainant requested a resumption of the proceeding.
The Center sent a further request for registrar verification to the Registar on September 15, 2009. The Registrar replied the same day, stating that it had received a copy of the Complaint; that it was the registrar and the Respondent was the registrant of the Domain Name; that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to the Domain Name; that the Domain Name was active, paid in full and would expire on June 21, 2010; that it would remain locked during this proceeding; and that the registration agreement was in English and provided that it was governed by the laws of the Cayman Islands. The Registrar also provided the contact details in respect of the Domain Name on its Whois database and did not dispute that the registration agreement contained a submission to the jurisdiction at its principal office.
The Center verified that the Complaint satisfied the formal requirements of the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 16, 2009. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 6, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 7, 2009.
The Center appointed Jonathan Turner as the sole panelist in this matter on October 9, 2009. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules. 4. Factual Background
The Complainant has registered or applied to register various logos comprising the names “LEA” and “lea ceramiche” as trademarks in respect of ceramic material for flooring and coverings in the European Union and Italy. The Complainant also registered the domain name in 2001.
The Domain Name was registered on June 21, 2005 and was directed at the time of the Complaint to a parking web page containing various links to other websites. 5. Parties' Contentions A. Complainant
The Complainant contends that it has rights in trademarks containing the words “lea” and “leaceramiche”. It also states that its marks are very famous and were very famous before the Respondent registered the Domain Name. It notes that “lea” is a fantasy name and the significant part of its marks, while “ceramiche” means “ceramics” and describes its products. It submits that the Domain Name is identical to its marks.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name, pointing out that the Respondent has not used the Domain Name in connection with a bona fide offering of goods or services; that the Respondent is not commonly known by the Domain Name; and that the Respondent is not making any legitimate or non-commercial use of the Domain Name.
The Complainant further alleges that the Domain Name was registered and is being used in bad faith, for the purposes of selling or transferring it to the Complainant or a competitor of the Complainant; preventing the Complainant from reflecting its mark in a corresponding Domain Name; and attracting Internet users to the Respondent's website for commercial gain by creating a likelihood of confusion with the Complainant's mark as to the source, affiliation, sponsorship or endorsement of third party goods or services promoted on the Respondent's website.
The Complainant also points out that a number of findings of bad faith registration and use have been made against the Respondent in other cases under the UDRP. B. Respondent
As stated above, the Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (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.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent's default as it considers appropriate. This includes the acceptance of plausible evidence of the Complainant which has not been disputed. A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered rights in marks which comprise the name “LEA”. Although the Complainant has also applied to register a logo comprising the name “lea ceramiche”, it appears that this application has not yet been granted.
The Panel is satisfied that the Domain Name is confusingly similar to the Complainant's registered marks comprising the name “LEA”, since its second level domain consists of the principal part of these marks together with a term descriptive of the products for which they are registered.
The first requirement of the UDRP is satisfied. B. Rights or Legitimate Interests
The Panel finds that the Respondent does not have rights or legitimate interests in respect of the Domain Name. The Respondent's use of the Domain Name for a parking page does not constitute a bona fide offering of goods or services such as to confer rights or legitimate interests for the purpose of paragraph 4(c)(i) of the UDRP; nor is it a legitimate non-commercial or fair use of the Domain Name for the purpose of paragraph 4(c)(iii) of the UDRP. It is also evident that the Respondent is not commonly known by the Domain Name.
The second requirement of the UDRP is satisfied. C. Registered and Used in Bad Faith
The Panel notes that the second level domain of the Domain Name consists of the principal part of the Complainant's logo and a term descriptive of the Complainant's products in the Complainant's language; that the Domain Name is identical to the country-code domain name previously registered by the Complainant, apart from the top level domain suffix; and that the Respondent is not using the Domain Name except for a parking page, even though it was registered in 2005.
In the Panel's view, the only logical explanation for the Respondent's conduct is that the Domain Name was registered primarily for the purpose of sale to the Complainant at a profit, by denying the Complainant the possibility of registering a domain name in the .com top level domain reflecting its mark and corresponding to its country-code domain name unless it purchased the Domain Name from the Respondent.
In accordance with paragraph 4(b)(i) of the UDRP, this finding constitutes evidence of bad faith registration and use. There is no evidence in the file displacing this presumption. The Panel accordingly concludes that the Domain Name was registered and is being used in bad faith. The third requirement of the UDRP 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.
Jonathan Turner
Sole Panelist
Dated: October 22, 2009
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