The Complainant is Campagnolo S.r.l., of Vicenza, Italy, represented by Giambrocono & C. S.p.A., Italy.
The Respondent is Moniker Privacy Services of Pompano Beach, Florida, United States of America / Janice Liburd, Porchester Partners, Inc. of Panama, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2011. On June 7, 2011, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On June 8, 2011, Moniker Online Services, LLC 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 June 14, 2011 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 June 15, 2011.
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 June 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 7, 2011.
The Center appointed Alexandre Nappey as the sole panelist in this matter on July 18, 2011. 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
CAMPAGNOLO S.r.l (hereafter “the Complainant”) designs wheels and components for racing bikes and distributes them in over 30 countries worldwide under the trademark FULCRUM. The Complainant is based in Italy since 2004.
The FULCRUM trademark is registered since at least 2001 in Italy.
Today, the Complainant holds various trademark rights around the world, some of which are cited in the Complaint:
- Italian word trademark FULCRUM registered on January 5, 2001 under n°844674 for products in class 12;
- International word trademark FULCRUM registered on April 26, 2001 under n°763 703, for products in class 12, designating among others Australia, Denmark, United Kingdom of Great Britain and Northern Ireland, Japan, Austria, Benelux, China, Germany, Russian Federation;
- United States (“U.S.”) word trademark FULCRUM registered on February 6, 2001 under n°2609896 claiming products in class 12.
The Complainant is operating a website under the domain name registered on April 23, 2004.
The disputed domain name was registered on March 18, 2010 and is currently used to provide sponsored links. 5. Parties’ Contentions A. Complainant
According to the Complainant, the disputed domain name is composed by the words “fulcrum” and “wheel”, the latter being a common word designating the products marketed by Complainant under the trademark combined with that word in the disputed domain name.
Furthermore, the disputed domain name is almost identical with the main domain name used by Complainant, i.e., (adding an “s” for the plural of the common word “wheel”). Therefore the Complainant contends that the disputed domain name is confusingly similar to the Complainant’s prior trademark FULCRUM.
The Complainant further asserts that the Respondent has not been commonly known by the disputed domain name. The Respondent should be considered as having no right or legitimate interests in respect of the disputed domain name. It is not making a legitimate noncommercial use or fair use of the disputed domain name.
Lastly, the Complainant claims that the disputed domain name has been registered and is being used in bad faith, being merely a typosquatting of the trademark FULCRUM and the main domain name of the Complainant, and considering that the Respondent is not making more than offering sponsored links.
The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate 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.
However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.
Having consideration to the parties’ contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel’s findings on each of the above mentioned elements are the following. A. Identical or Confusingly Similar
First, the Panel is satisfied that the Complainant owns registrations of the FULCRUM trademark, in various countries, including the U.S.
The disputed domain name is not identical with the FULCRUM trademark, but does incorporate this trademark entirely, adding the common word “wheel” and the plural “s”.
The Panel is of the opinion that the mere addition of the plural form of the word wheel, describing the main products of the Complainant, to the inherently distinctive mark FULCRUM, does not negate a confusing similarity between the disputed domain name and the trademark.
See previous decisions in similar cases:
Just Wheels & Tires Co. d/b/a TSW Alloy Wheels v. Covanta Corporation / DNS Admin,WIPO Case No. D2009-1242:
“The Panel further finds that the Domain Name is confusingly similar to this mark [TSW], from which it differs only in the addition of the word ‘wheels’, which describes the Complainant's principle product, and the generic top level domain suffix. The Panel considers that many Internet users would assume that the Domain Name was registered by the Complainant to promote its business of selling wheel products under the mark TSW.”
Apple Inc. v. Private Whois Service,WIPO Case No. D2011-0929:
“The disputed domain name is confusingly similar to the IPOD trademark for the following reasons: (i) IPOD is an invented word and is inherently distinctive; (ii) The addition of the letter ‘s’ does not create a new or distinctive word; rather it creates a plural and so emphasises the IPOD trademark; (iii) IPOD and ‘ipods’ are visually and aurally similar and could easily be confused (see Playboy Enterprises International, Inc. v. Tom Baert,WIPO Case No. D2007-0968).
Therefore the addition of the plural ‘s’ does not avoid a confusing similarity between the IPOD trademark and the disputed domain name, and so the first element of the Policy is satisfied.”
Therefore, the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Complainant contends that it has no connection or affiliation with the Respondent, who are not licensed or otherwise authorized to use or apply for any domain name incorporating the Complainant’s trademarks.
The Respondent has not alleged any facts or elements to justify prior rights or legitimate interests in the disputed domain name.
The Respondent does not appear to make any legitimate use of the disputed domain name for noncommercial activities.
The Panel finds therefore that the Complainant has made out a prima facie case that the Respondent does not have any right or legitimate interest in the disputed domain name. The Respondent being in default, has not challenged any of the contentions submitted by the Complainant.
Consequently, the Panel finds for the Complainant in terms of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) Circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark, or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Circumstances showing that the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) Circumstances showing that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) The Respondent has, by using the disputed domain name, intentionally attempted to attract, for commercial gain, Internet users to its website or other online 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 website or location.
The Respondent has failed to invoke any circumstance that could demonstrate that it did not register and use the disputed domain name in bad faith.
The Complainant has provided evidence that the FULCRUM mark has been registered years before the disputed domain name was registered in March 2010. The fact that the disputed domain name is combining the FULCRUM mark with the word WHEEL, that describes exactly the products manufactured by Complainant shows that the Respondent should have been aware of the Complainant when he applied for the registration of the disputed domain name (see: F. Hoffmann-La Roche AG v. Nikolaj Brakoveckij,
WIPO Case No. D2011-0791 “The Panel holds that the Respondent has registered the disputed domain name in bad faith. In the circumstances, the Respondent must have known about the Complainant’s products and should have been aware of the trademark of the Complainant.”)
The Panel finds further that the disputed domain name appears to be used to attract Internet users to a website to generate pay-per-click revenue. The disputed domain name resolves to a website, which is mainly a landing page displaying sponsored links to websites offering products sold by the Complainant and its competitors. This is likely to result in commercial gain for the Respondent. In this regard, the Panel is of the view that the use of the disputed domain name in such a manner is indicative of use in bad faith: see Barclays Bank PLC v. Domain Management,WIPO Case No. D2011-1016).
For the above reasons, the Panel finds that the disputed domain name was registered and used in bad faith. The Panel therefore finds for the Complainant in relation to paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Alexandre Nappey
Sole Panelist
Dated: August 11, 2011
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