WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Ferrari S.p.A. v. Privacy LLC Case No. D2010-0895 1. The Parties
The Complainant is Ferrari S.p.A. of Modena, Italy, represented by Studio Barbero, Torino, Italy.
The Respondent is Privacy LLC of Cayman Islands Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with CSL Computer Service Langenbach GmbH d/b/a J. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2010. On June 2, 2010, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba J a request for registrar verification in connection with the disputed domain name. On June 7, 2010, CSL, Computer Service Langenbach GmbH d/b/a J 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, together with annexes 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 June 8, 2010. In accordance with the Rules, Paragraph 5(a), the due date for the Respondent's Response was June 28, 2010. The Respondent did not submit any response by the due date. Accordingly, the Center notified the Respondent of the default on June 29, 2010 and the consequences of a default.
On June 30, 2010, the Respondent e-mailed the Center that it had responded. On July 12, 2010, the Center by e-mail acknowledged the Respondent's e-mail, again advising the Respondent that no response as provided for under the Rules and the Supplemental Rules, had been received. The Center further advised that the case would proceed with the appointment of a Panel and if a response was received in the future that it would advise the Panel and that it will be at the discretion of the Panel to consider it.
The Center appointed John E. Kidd as the sole panelist in this matter on July 14, 2010. 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.
Having reviewed the communication records, the Panel finds that the Center has discharged its responsibilities under paragraph 2(a) of the Rules “to employ reasonably available means calculated to achieve actual notice of Respondent.” In the view of the Panel, the proper procedures have been followed and it may issue its decision based upon the documents submitted in accordance with the Policy, the Rules and Supplemental Rules without the benefit of a response from the Respondent.
As of the date of this decision, no response by the Respondent has been received at the Center. In light of the Respondent's failure to submit a response, the Panel, pursuant to the Rules may draw such inferences, including adverse inferences, as it considers appropriate. See William H. Cosby, Jr. v. Sterling Davenport,WIPO Case No. D2005-0756. 4. Factual Background
The following facts asserted by Complainant have not been challenged or otherwise contested by the Respondent. The Panel has carefully reviewed the Complainant's evidence and by the Respondent's default, the evidence is held to be true.
The Complainant is a company founded in Maranello, Italy in 1947 by Enzo Ferrari who rebuilt his previously existing car manufacturing plant destroyed during World War II. The Complainant asserts that it has always manufactured vehicles at its current plant and since 1950 has been involved as a main priority in supporting car racing teams to compete in Formula One racing.
The Complainant also asserted that it has been the only car racing team to compete in all world championships that have taken place. Its record of accomplishments in Formula One racing includes 210 wins, 203 pole positions, 219 fastest lap, 581 podiums and 16 contractor's titles.
The Panel finds that the Complainant also has a commercial history outside of Formula One and is one of the world leaders in the field of top class sport and road car construction.
The Complainant is the owner of 11 community and international trademark registrations for various name and fanciful versions of the mark FERRARI in over 16 classes for various goods and services. The mark is also involved in a worldwide licensing strategy for motorsports and commercial products, for example watches, apparel, computers, toys, bicycles and shoes sold in flagship stores and other selected stores all over the world.
The Complainant has also registered over 250 domain names that use the mark FERRARI in various combinations with other indicia, including the acronym “f1” in the Internet domain name system.
The unchallenged evidence establishes that the Complainant has been using the mark FERRARI in connection with its business activities in Italy, as well as in many other countries in the world for over sixty years. Furthermore, the Complainant assets that the mark FERRARI has been supported by intensive advertising campaigns worldwide and the Complainant has invested a substantial amount of time and resources to promote and advertise the mark FERRARI and its associated products and services through television and other media.
The Complainant also asserts that Ferrari S.p.A. has over 3,000 employees and commercializes its vehicles in over 100 countries. In addition, according to Interbrand Best Global Brands List 2008, the mark FERRARI alone is worth U.S. $3,527 million and it is ranked No. 92 among the most valuable trademarks in the world and in the 2009 list it was ranked No. 88 with the same evaluation. Forbes magazine in August 2010 has rated FERRARI as No. 1 in team value for motorsports.
In light of the above, the Panel finds that the mark FERRARI is undisputedly a well-known trademark worldwide of significant value to the Complainant. 5. Parties' Contentions A. Complainant
The Complainant contends that in order to further protect its mark FERRARI on the Internet, the Complainant has registered over one thousand domain names consisting of or comprising of the words “ferrari” and “f1” such as , , , , (including variations thereof) as domain names under several different TLDs.
The Respondent has registered the domain name in dispute, without authorization of the Complainant and the domain name in dispute, at the time of this decision, is redirecting the user to the website where Internet users can find a number of sponsored links to various websites.
The Complainant further contends that the Respondent's website content has changed over time and on the parking page were initially published various sponsored links relating to financial and job hunting services, hotel and airline reservations.
The Complainant also contends that on May 5, 2010, the domain name under dispute was pointing to a webpage displaying various racing car images and a number of alleged links to FERRARI and by selecting the banners advertised at the bottom of the page that the Respondent is publishing on “www.” Internet users were and still are redirected to third parties' websites actually promoting the sale of goods and services of others.
As soon as the Complainant became aware of such a registration and use of the domain name in dispute, it advises that it instructed its authorized representative to pursue all the necessary actions aimed at reclaiming the disputed domain name. The Complainant asserts it is going to launch in the next days a new project centered on Ferrari and the Formula One World. For this reason the reclaim of the domain name , has become particularly urgent.
The authorized representative, before initiating any legal action, attempted to contact the Respondent, also using the telephone number indicated in the WhoIs report.
Because of the persistent absence of reply from the Respondent, the Complainant's authorized representative has contacted via email the Registrar again on May 24, 2010, asking for updates on the matter and requiring confirmation, once again, about the data published on the WhoIs official database report.
The Complainant's authorized representative received in copy on May 26, 2010 the following communication sent from the Registrar to the registrant:
To Whom It May Concern:
The domain is registered on your behalf at JOKER.COM
We got a complaint about the domain [] which accuses you of unlawful use of that domain.
According to the T&C you agreed on which says:
§5b. The customer is obliged to ensure to the best of knowledge and belief that registration and subsequent direct or indirect use of the domain do not infringe third-party rights and warrants that no such rights are infringed.
Unfortunately we did not receive any response from you within 14 days that you contacted the third party and solved the case.
We have therefore put the domain in status “hold.” This makes the domain currently not reachable.
Respectfully
J
udrp@j
Following the above message, the Respondent, at last addressed on May 26, 2010 to the Registrar and, in copy, to the Authorized representative the following communication, using the email address published in the WhoIs report:
To Whom It May Concern I have every right to use this domain. Now please reactivate my domain.
The Complainant through its authorized representative then sent a final reminder of the cease and desist letter on the same date, in order to give a final chance to the Respondent to avoid the present proceeding by voluntarily transferring the domain name to the Complainant and communicating the Complainant's intention of submitting an official complaint before the Center.
The Respondent merely addressed to the Complainant's authorized representative the same email previously sent.
Due to the persistent deactivation of the domain name and consequent deletion of the website, the Respondent sent another email to the Registrar and in copy to the Complainant's authorized representative, which was as follows:
Mersedeh,
I have replied to the complaint. Please unlock my domain.
Thanks in advance, Katarzyna
The Respondent signed the email using another name, different from the one that had always appeared to be the name of the sender in the previous emails. In light of the merely interlocutory reply received from the Respondent, the Complainant's authorized representative sent a new and final email, requesting more details on the alleged rights affirmed in the first Respondent's email and on the true identity as follows:
Dear Ms. Perry,
I note that you have stated to the Registrar that you… “have every right to use this domain” requesting to unlock the domain name and its reactivation.
Could you please let us know to which rights you are referring to? Could you also indicate why the communication herein was signed Katarzyna while the address of the sender is Anne Perry?
In absence of your detailed reply by 48 hours we will be forced to protect the intellectual property rights on the mark FERRARI and proceed with the following steps indicated in our cease and desist letter, including filing the complain according to UDRP and consider additional procedures to reclaim the damages caused by your conduct.
Regards,
Instead of giving the explanation required, the Respondent answered threatening the Complainant's authorized representative.
In light of the Respondent's behavior described above it appeared clear to the Complainant that the Respondent did not have any right or legitimate interests in the disputed domain name and that was registered and used in bad faith. B. Respondent
The Respondent offered no rebuttal and did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the domain name in dispute registered by the Respondent is confusingly similar to trademarks in which Complainant has rights, as shown in the trademark registrations provided herein in Annex 3 and domain name registrations in Annex 4 of the Complaint.
It is well established, that the addition of generic words to a trademark is insufficient in itself to remove the confusing similarity between the trademark and the domain name in dispute. Among many decisions in F. Hoffmann-La Roche AG v. Ric Deleon,WIPO Case No. D2006-0135 about the domain name the panel found that “the domain name in this case is similar to the Complainant's trademark because it uses the precise trademark name which has no general meaning and two generic words in common usage.” As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety into a domain name in dispute, here FERRARI is sufficient to establish that the domain name is identical or confusingly similar to the Complainant's registered trademark. See Rhino Entertainment Company v. DomainS, Inc.,WIPO Case No. D2006-0963. Also, the mere addition of a generic word to a registered trademark either as a prefix or suffix has consistently been deemed insufficient to avoid confusingly similarity. Internet users have every right to expect that, when they select a domain name, they will find themselves looking at a site of the owner or someone licensed by the Complainant to use its trademark. In this case, that is not true.
Now for the above reasons and in line with other WIPO UDRP cases, the Panel concludes that the domain name in dispute is confusing similar to the Complainant's mark FERRARI.
Moreover, the Panel notes, in the present case, the confusing similarity is particularly close because of the suffix used in combination with the Complainant's mark FERRARI. The suffix “fl” is the acronym of “Formula 1,” which is also one of the many activities undertaken with success by the Complainant and for which the Panel has found the Complainant is well known.
In the similar case Ferrari S.p.A. v. Ms. Lee Joohee (or Joo-Hee), WIPO Case No. D2003-0882, the panel found that “[t]he disputed Domain Name as registered by the Respondent comprises the Complainant's well known registered trademark FERRARI in combination with the widely recognized acronym f1, which stands for Formula One, being a category of motor racing with which FERRARI is popularly associated. The Panel finds that in the present instance the prefix f1 is highly relevant to Complainant's image an reputation. The Panel finds on the facts that the disputed Domain Name is confusingly similar to the Complainant's trademark in terms of Paragraph 4(a)(i) of the Policy.”
The Panel also finds that the top level “.com” is merely instrumental to the use in Internet and does not exclude confusion, as found i.a. in Telecom Personal, S.A. v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; Société Générale and Fimat International Banque v. Lebonon Index/la France DN and Elie Khouri,WIPO Case No. D2002-0760.
In light of the above, the Panel concludes that the domain name in dispute is confusingly similar to the prior registered trademark in which the Complainant has rights, and the requirements of paragraph 4(a)(i) of the Policy has been established and satisfied by the Complainant. B. Rights or Legitimate Interests
The Respondent has not provided the Panel with any evidence of its use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute. The domain name in dispute is presently pointed to a website consisting in a page displaying links and sponsored banners which generates revenues via the pay-per-click system to the Respondent. In the Panel's opinion this tarnishes the Complainant's mark FERRARI.
The Panel also finds that there is no evidence that the Respondent has ever engaged at any time in any legitimate business under the Complainant's trademark. To the contrary, the Panel finds that it appears the Respondent has been using the domain names in dispute to redirect Internet users to another website. The Panel finds that this demonstrates conduct contrary to legitimate business or to legitimate non-commercial or fair use of the domain name in dispute.
Similarly, the Panel finds that the use of the disputed domain name via a redirection of the web page currently on line where services of third parties are advertised and sponsored banners are published is not to be considered a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain.
The Panel concludes that such use can be considered neither as a bona fide offering of goods or services nor as a legitimate noncommercial or fair use of the disputed domain name. Such willful conduct clearly shows, to the contrary, that the Respondent was not interested in using the domain name in dispute, in connection with any legitimate purpose See Manheim Auctions Inc. v. Whois ID Theft ProtectionWIPO Case No. D2006-1044; F. Hoffmann-La Roche AG v. Titan Net,WIPO Case No. D2006-0424.
There is no evidence of any relationship between the Respondent and the Complainant and the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant's mark FERRARI under any circumstances. The Panel finds that the Respondent has no rights or legitimate interest in the domain name in dispute.
Finally, the Panel views the Respondents failure to respond or provide any evidence of circumstances of the type specified in Paragraph 4(c) of the Policy, after proper notice, as further evidence that the Respondent has no rights or interest in the domain name in dispute.
The Panel therefore concludes that the Respondent has no rights or legitimate interests in respect of the domain name in dispute, according to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
As to the assessment of the Respondent's bad faith at the time of registration, in light of the fact that the mark FERRARI is well-known used worldwide and in particular intensively used also in the United Kingdom, whose the Grand Cayman are an Overseas Protectorate, the Respondent could not have possibly ignored the existence of the Complainant's prior trademark registration.
The Panel also finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant's trademark rights at the time of registration of the domain name in dispute.
Under the facts of this case, the Panel cannot envision any plausible good faith basis upon which the Respondent could have concluded that it was free to register and use the domain name in dispute.
The Panel concludes that the Respondent has used the Complainant's well-known mark FERRARI in an effort to divert Internet traffic intended for the Complainant and with bad faith to profit from the mark by diverting traffic to its own sites or to sites that pay for the traffic. In the Panel's opinion, the Respondent's actions are an attempt to take a free ride on the Complainant's investment and to cash in on the confusion the domain name in dispute might cause.
The Panel finds that the Respondent registered and used the domain name in dispute to trade on the Complainant's goodwill and has decided that such conduct where the Respondent sought or realized commercial gain is further evidence of the Respondent's bad faith as stated in many previous UDRP decisions such as Deutsche Telekom AG v. Gary Seto,WIPO Case No. D2006-0690; Zinsser Co. Inc., Zinsser Brands, Co. v. Henry Tsung,WIPO Case No. D2006-0413; Volvo Trademark Holding AB v. Unasi, Inc.WIPO Case No. D2005-0556; Cox Radio, Inc. v. Domain Administrator,WIPO Case No. D2006-0387; Gianfranco Ferré S.p.A. v. Unasi Inc.,WIPO Case No. D2005-0622; L'Oreal, Biotherm, Lancome Parfums et Beauté & Cie v. Unasi, Inc.WIPO Case No. D2005-0623; Scania CV AB (Publ) v. Unaci, Inc.WIPO Case No. D2005-0585.
The Panel also notes that the Complainant's unchallenged allegations that the Respondent registered the domain name in dispute providing fake identity data, trying to generate the impression that a Privacy Shield was being used; moreover, the telephone number indicated in the WhoIs is corresponding to a home address of a person who claimed to be completely unaware of the registration of such domain name. Such behavior in the view of the Panel is a clear indication of the bad faith intentions of the Respondent. See Fifth Third Bancorp v. Secure WhoIs Information Service,WIPO Case No. D2006-0696.
As stated in The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services,WIPO Case No. D2007-1438. “The provision of incomplete contact information to the privacy service and the concealment of the underlying registrant upon the institution of a UDRP proceeding are indicia of bad faith.”
Along the same lines, see Steelcase Development Corporation v. Admin, Domain, WIPO Case No. D2005-1352, Oxygen Media, LLC v. Primary Source,WIPO Case No. D2000-0362, §6A; Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0772, where the panel found that the use of false contact information constitutes a further indication of bad faith.
In view of the above, the Panel finds that the domain name in dispute has been registered and used in bad faith, according to paragraph 4(a)(iii) of the Policy. 7. Decision
For all of the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name in dispute be transferred to the Complainant.
John E. Kidd
Sole Panelist
Dated: July 25, 2010
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