Complainant is Mangusta S.r.l. of Lucca, Italy, represented by Studio Legale Caneva & Associati, Italy.
Respondent is Miguel Sancho of Barcelona, Spain. 2. The Domain Name and Registrar
The disputed domain name is registered with DirectNIC Ltd.. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2011. On July 11, 2011, the Center transmitted by email to DirectNIC Ltd. a request for registrar verification in connection with the disputed domain name. On July 12, 2011 DirectNIC Ltd. 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 Respondent of the Complaint, and the proceedings commenced on July 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 9, 2011.
The Center appointed Daniel Kraus as the sole panelist in this matter on August 17, 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
Complainant is the owner of an international trademark MANGUSTA for boats and yachts. Mangusta S.r.l. develops, builds and sells boats all over the world since about 75 years, including under license. Complainant registered several trademarks containing the word “Mangusta”, including in particular the International trademark N° 589104 filed on August 18, 1992 for Class 12 and the Community trademark N° 004920492 filed on February 23, 2006 for Class 12.
Respondent seems to be administrator of the company Pon Charter s.l. and rents boats in Ibiza, Spain, using the domain name . Respondent has no relationship with Complainant and has no permission from Complainant to use any of latter trademarks. Respondent registered the disputed domain name on December 31, 2010. 5. Parties’ Contentions A. Complainant
Complainant asserts that Respondent’s registration and use of the domain name violates Complainant’s rights in the registered trademark MANGUSTA. Complainant alleges that is confusingly similar to and incorporates an unauthorized use of the MANGUSTA trademark, and that the only differences between the trademark and the disputed domain name are the addition of the word “boat” as well as the suffix “.com”.
Complainant alleges that Respondent has no legitimate interest in the domain name because Respondent has no trademark rights in, or license to use the MANGUSTA trademark. Besides, Respondent has no right to such a trademark himself.
Complainant also contends that the disputed domain name has been registered and is being used in bad faith. In support of this assertion, Complainant argues that the disputed domain name was registered to create confusion among consumers, attracting people to the disputed domain name thanks to the fact that the MANGUSTA trademark is well-known to potential clients of boat rentals. Further, although Complainant has tried to find an amicable resolution to the dispute, Respondent answered he just wanted to “make a small website with one of our mangustas for charter . We are not using the name yet and we don’t want to make a bad use. If you said that we can’t use this domain is ok, but if you want the domain or the transfer you have to pay for it as we paid to buy it”. Although Complainant had tried to contact Respondent several times, no further communication took place as Respondent did not answer anymore. Last but not least, the disputed domain name refers to a site parked with a pay-per-click system where a series of sponsored links are displayed, linking to competing websites. B. Respondent
The Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the “Policy”) have been satisfied:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and used in bad faith. A. Identical or Confusingly Similar
There can be no question that the disputed domain name is confusingly similar to Complainant’s MANGUSTA trademark for purposes of the Policy. Respondent’s domain name incorporates in its entirety the Mangusta trademark, which is registered internationally and within the European Union and thus is entitled to a presumption of validity (Eauto, L.L.C. v. Triple S. Auto Parts,WIPO Case No. D2000-0047). As numerous prior panels have held, the fact that a disputed domain name wholly incorporates Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy, despite the addition of other words to such marks (PepsiCo, Inc. v. Whois Privacy Protection Service, Inc., Abdulah Shmre,WIPO Case No. D2011-0016; LEGO Juris A/S v. Phoenix Productions, WIPO Case No. D2010-0798). The addition of descriptive, generic terms to a trademark is not a distinguishing feature and does not avoid likelihood of confusion (see for example Revlon Consumer Products Corporation v. Mike Iser and WhoisGuard,WIPO Case No. D2010-1370; LEGO Juris A/S v. Private, Registration / Dohe Dot,WIPO Case No. D2009-0753). The addition of the top-level domain “.com” does not have any impact on the overall impression (see, for example, Deutsche Telekom AG v. Maggie Eliger,WIPO Case No. D2008-0173).
The Panel considers that in the present case, the disputed domain name is confusingly similar to Complainant’s trademark. B. Rights or Legitimate Interests
This case raises the question of whether a personal company which has no relation with a trademark holder is allowed to use its trademark in a domain name leading to a company’s website offering for sale or for rent products of said trademark.
Paragraph 4(c)(i) of the Policy provides that a use is legitimate if, prior to commencement of the dispute, Respondent used the domain name or a name corresponding to the disputed domain name in connection with the bona fide offering of goods or services. Here, Respondent is not an authorized MANGUSTA dealer but rents, amongst yachts from other producers and bearing other trademarks, boats bearing the MANGUSTA trademark. The issue before the Panel, then, is whether Respondent’s offerings may be characterized as bona fide.
To be bona fide the offering must meet several requirements. Those include, at the minimum, the following (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903):
Respondent must actually be offering the goods or services at issue (see e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306);
Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods (see Nikon, Inc. v. Technilab,WIPO Case No. D2000-1774);
The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents (see e.g., Houghton Mifflin Co. v. The Weatherman, Inc.,WIPO Case No. D2001-0211; R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton,WIPO Case No. D2000-1201; Easy Heat, Inc. v. Shelter Products,WIPO Case No. D2001-0344).
Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name (see e.g. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr,WIPO Case No. D2000-1525).
In the present case Respondent’s conduct does not meet these conditions. Respondent is not an authorized seller or renter of MANGUSTA boats, he also intends to rent boats from other trademarks and does not at all disclose its relationship with the trademark or the owner. On the contrary, the domain name leads to some confusion within the eyes of the potential client who would go on the website. Further, Respondent’s website leads to a so-called parking website leading to pay-per-click domain names. This is not considered as a legitimate use of a domain name. For all these reasons, the Panel considers that Respondent has no rights or legitimate interest in the disputed domain name . C. Registered and Used in Bad Faith
The disputed domain name refers to a website where the websites of companies in direct competition with Complainant were listed, offering products and services similar to those designated in the registration of marks MANGUSTA of Complainant. This use allows Respondent to take advantage of the reputation of Complainant’s trademark and constitutes an act of unfair competition at the expense of Complainant. The fact that the disputed domain name leads to pay-per-click sites in which are displayed or, at least at some point were displayed, a series of sponsored links to competing websites, demonstrates the bad faith of Respondent and his will to benefit from the reputation of Complainant’s trademark (see for example Carrefour v Karim Bousba,WIPO Case No. D2010-0856; Compart AG v. C / Vertical Axis, Inc.,WIPO Case No. D2009-0462).
The fact that Respondent maintained the infringing website even after Complainant’s objections is another indication of bad faith (see, for example, Compagnie Generale des Etablissements Michelin v. Vaclav Novotny,WIPO Case No. D2009-1022).
Finally, the fact that Respondent proposes to sell the incriminated domain name to Complainant may be an evidence of bad faith, in particular when the offer is made for a price which is significantly higher than the documented expenses directly related to the domain name itself (see e.g. Fendi Adele S.r.l. v. Mark O'Flynn,WIPO Case No. D2000-1226). In the present case, one price suggested by Respondent in an email communication exchange between the parties during this administrative proceeding was Euro 3000, which would appear to be significantly higher than the usual cost of registering a domain name.
In any event, in view of all other Complainant’s assertions, there is a reasonable degree of certainty which allows the Panel to conclude that Respondent has used and registered the domain name in bad faith. 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 Complainant.
Daniel Kraus
Sole Panelist
Dated: August 31, 2011
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