The Complainant is FERRARI S.p.A. of Modena, Italy represented by Studio Barbero, Italy.
The Respondent is Nathan Joseph of Alabama, United States of America. 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 February 21, 2012. On February 22, 2012, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On the same date, Moniker Online Services, LLC 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 the Respondent of the Complaint, and the proceedings commenced on February 24, 2012. According with the Rules, paragraph 5(a), the due date for Response was March 15, 2012. The Respondent did not submit any response. For that reason, the Center notified the Respondent’s default on March 19, 2012.
On March 22, 2012, the Center noticed that even though the Complaint was duly and successfully transmitted to the email addresses provided by the Registrar and the Complainant, and the Written Notice had also been successfully transmitted by courier to the physical addresses of the Respondent, it had not been copied to an e-mail address appearing in the Complaint. For this reason, the Center provided the Respondent with an additional four (4) days, in order to indicate to the Center whether it intended to participate in these proceedings. Accordingly, the due date for the submission of any Response, or the indication that the Respondent intends to submit any such Response, was set at March 26, 2012. The respondent did not submit any Response.
Consequently, after the above indicated date, the Center proceeded to the Panel Appointment and appointed Kiyoshi Tsuru as the sole Panelist in this matter on April 5, 2012. 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 one of the world leaders in the field of building top class sport and road cars. The Complainant is a company founded in Italy in 1947 and besides their current sports car lineup it has also approached a licensing strategy for their trademark FERRARI for being used on products in many classes all around the world. The FERRARI trademark has been associated with the construction of high quality vehicles for decades, and its name has been associated with motorsports, namely Formula 1, since its inception.
FERRARI as a trademark is valued at USD 3,591 million and is the 99th most valuable brand in the World accordingly to the InterBrand Best Global Brands List 2011 survey. Because of said background, FERRARI is a well-known trademark worldwide.
The Complainant is owner to a number of trademark registrations around the world, including the word FERRARI, for many years. These include representatively American registrations 862632 FERRARI (and device) in international class 12 for automobiles, and 1477586 FERRARI (and device) in international class 14 for watches.
The disputed domain name was first registered on June 11, 1997. By July 21, 2006, the WhoIs database for the disputed domain name was updated, and from that moment on it appears that the owner is Moniker Online Services, Inc. (Moniker). As it becomes apparent from Moniker’s communications, they are not actual owners to the disputed domain name, but rather a privacy system to avoid WhoIs records from becoming publicly available. On December 16, 2011, by request of the Complainant they released full WhoIs information for the disputed domain name, indicating Nathan, Joseph as the owner. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
- The domain name wholly incorporates the mark FERRARI and is, therefore, identical or confusingly similar to the Complainant’s mark FERRARI.
- The non-distinctive element “dealer” does not affect the confusing similarity. The Complainant cites precedents whereby similar Panels deemed the element “dealer” as non-distinctive, even more confusing (Furniture Brands International, Inc., Broyhill Furniture Industries, Inc., HDM Furniture Industries, Inc., Maitland-Smith Furniture Industries Inc. v. NC WEB SERVICES INC.,WIPO Case No. D2011-1029; General Motors LLC v. Link Comercial Corp,WIPO Case No. D2010-1463).
- The .com gTLD is merely instrumental, has no distinguishing capacity in the context of domain name, and does not alter the value of the trademark represented in the domain name (Telecom Personal, S.A., v. NAMEZERO.COM, Inc.,WIPO Case No. D2001-0015; Société Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri,WIPO Case No. D2002-0760).
- The Respondent has no rights or legitimate interests in respect with the disputed domain name, as he is not a licensee, authorized agent of the Complainant, or in any other way authorized to use the Complainant’s trademark FERRARI.
- The Respondent is not commonly known by the disputed domain name as an individual, business, or other organization.
- FERRARI is not the family name of the Respondent.
- The Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services.
- The disputed domain name was registered and is being used in bad faith, as it incorporates the Complainant’s trademark in its entirety.
- The disputed domain name is linked to a webpage where users may find a number of sponsored links to various third-parties’ websites, inter alia Complainant’s competitors.
- The Respondent has a long domain name registration history aimed at set up infringing websites publishing mainly pay-per-click advertisements (LEGO Juris A/S v. Nathan Joseph,WIPO Case No. D2011-1382; Surfboard Holding B.V. v. Mainstream Advertising Inc., Nathan Joseph,WIPO Case No. D2011-0685; Stanworth Development Limited v. Nathan Joseph, Mainstream Advertising,WIPO Case No. D2009-1258; National Geographic Society v. Moniker Privacy Services / Mainstream Advertising / MSA, Inc,WIPO Case No. D2008-0699; Teledyne Technologies Incorporated v. Mainstream Advertising,WIPO Case No. D2006-1316; Canadian Tire Corporation Limited v. Mainstream Advertising,WIPO Case No. D2006-1159).
- The Respondent has not answered the cease & desist letters sent to him by the Complainant.
- The use of a proxy registration service to avoid disclosing the name and coordinates of the real party in interest is also consistent with an inference of bad faith in registering and using the domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions and is in default. No circumstances explaining the default have been put forward. 6. Discussion and Findings
In accordance with the Policy, paragraph 4(a), the Complainant must prove 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.
In the administrative proceeding, the Complainant must prove that each of these elements are present.
As Respondent has failed to submit a Response to the Complainant’s contentions, the Panel may choose to accept as true all of the reasonable allegations of the Complaint, (Encyclopædia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487).
Therefore this Panel will decide the Complaint in accordance with paragraphs 14 (a) and (b) of the Rules. A. Identical or Confusingly Similar
The Complainant provided evidence of having acquired trademark rights upon the trademark FERRARI, both in its jurisdiction and the Respondent’s.
The FERRARI trademark is considered by this Panel as well-known on a global scale. Other panels have also conceded this category to the FERRARI brand (Ferrari S.p.A. v. Pierangelo Ferrari,WIPO Case No. D2001-1004; Ferrari S.p.A. v. JK Marketing,WIPO Case No. D2001-1003; Ferrari S.p.A. v. ASDAQ.com,WIPO Case No. D2004-0342; Ferrari S.P.A., Fila Sport S.P.A., v. Classic Jack,WIPO Case No. D2003-0085; Ferrari S.p.A v. Jim Paulos,WIPO Case No. D2008-1090; Ferrari S.p.A. v. Inter-Mediates Ltd.,WIPO Case No. D2003-0050; Ferrari S.p.A. v. ST Network International Limited,WIPO Case No. DAE2009-0004; Ferrari S.p.A. v. American Entertainment Group, Inc, WIPO Case D2004-0673; Ferrari S.p.A. v. Privacy LLC,WIPO Case No. D2010-0895; Ferrari S.p.A. v. Ms. Lee Joohee (or Joo-Hee),WIPO Case No. D2003-0882).
The disputed domain name is not identical to any of the Complainant’s marks. However, the disputed domain name does comprise the term “Ferrari” in its entirety with addition of the term “dealer” and the gTLD “.com”. This Panel must address whether the disputed domain name is “identical or confusingly similar” accordingly to the Policy, not to trademark legislation for a given country (Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party;WIPO Case No. D2000-1415).
A domain name is “identical or confusingly similar” to a trademark for purposes of the Policy when it includes the trademark or other confusingly similar terms, regardless of additional terms included in said domain name, i.e., when the domain name and the trademark are directly compared, they have confusing similarity (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
Other Panels have found the term “dealer” to be non-distinctive (Mul-T-Lock Ltd and Mul-T-Lock (UK) Ltd v. AES Security Systems,WIPO Case No. D2010-0773) and even have considered that it is more confusing for the consumer (Furniture Brands International, Inc., Broyhill Furniture Industries, Inc., HDM Furniture Industries, Inc., Maitland-Smith Furniture Industries Inc. v. NC WEB SERVICES INC.,WIPO Case No. D2011-1029).
Additionally, the gTLD .com is not a distinctive element to the domain name (Telecom Personal, S.A., v. NAMEZERO.COM, Inc,WIPO Case No. D2001-0015), but rather is an identification string that defines a realm of administrative autonomy, authority, or control on the Internet installed in the root zone of the name space at the highest level in the hierarchical Domain Name System. Hence, it is a merely functional term and does not provide with distinctiveness to any domain name.
Consequently, this Panel finds that the disputed domain name is confusingly similar to the trademark FERRARI owned by the Complainant. B. Rights or Legitimate Interests
The following are examples of circumstances where a Respondent may have rights or legitimate interests in a disputed domain name:
(i) before any notice of the dispute, the Respondent makes use of, or demonstrate to have done preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has not acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. (Policy, paragraph 4(c)).
According to the case file, including the submitted Complaint and its annexes, the Respondent did not make use of the disputed domain name in connection with a bona fide offering of goods and services before any notice of the dispute. On the contrary, the Respondent diverts users to third-parties websites and make a revenue out of sponsored links.
The Respondent did not prove to be commonly known by the domain name as an individual, business, or other organization. The Respondent did not demonstrate either that FERRARI is his family name.
Respondent has not submitted evidence to show the existence of use or preparations to use the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, Complainant’s Complaint, not contested by Respondent, shows that said Respondent is using the disputed domain name to divert Internet users to a website with links to competitors of Complainant, like Toyota, Ford, Nissan or VW. In this Panel’s view, this cannot be in good faith (The Paragon Gifts Holdings, Inc. v. Click Cons. Ltd,WIPO Case No. D2007-0304).
Diversion of Internet traffic by Respondent to other websites does not represent a use of the disputed domain name in connection with a bona fide offering of goods and services. Instead, the conduct of Respondent is aimed to generating revenues from advertised pay-per-click products (Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo,WIPO Case No. D2004-0990).
The Complainant asserts that the Respondent has no rights or legitimate interests in respect with the disputed domain name, as he is not a licensee nor authorized agent of the Complainant. The Respondent did not file any evidence to prove otherwise.
For the above reasons, this Panel concludes that the Respondent have no rights or legitimate interests in respect of the domain name. C. Registered and Used in Bad Faith
According to Paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the 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 you have engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to his/her/its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Complainant provided evidence of having trademark registrations in the United States of America since December 5, 1967. The disputed domain name was first registered on June 11, 1997. The owner of the disputed domain name acquired the same at least in 2007, but historical records provide with circumstantial evidence of acquisition of it possibly from 2005. Registration in the Respondent’s territory of the mark FERRARI constitutes constructive notice of the same. Respondent therefore had legal, if not actual, notice of Complainant’s mark prior to acquiring the disputed domain name.
Using a domain name to redirect Internet users to websites of competitors to the Complainant constitutes bad faith use under the Policy (E, Inc. v. Ult. Search, Inc.,WIPO Case No. D2001-1319; Arthur Guinness Son & Co. (Dublin) Limited and Diageo Ireland v. Denis Jalbert,WIPO Case No. D2003-0784).
Additionally, the case file contains evidence showing that the disputed domain name includes links to websites of some of Complainant’s competitors, where competing cars are offered, like AUDI, which proves that Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with Complainant’s mark FERRARI as to the source, sponsorship, affiliation or endorsement of the website. This conduct constitutes bad faith under paragraph 4(b)(iv) of the Policy (Owens Corning v. NA,WIPO Case No. D2007-1143).
The Respondent did not register the disputed domain name, but is the transferee of the same. While the Policy requires that the disputed domain name has been registered and is being used in bad faith, there is some basis for saying that the term "registration" extends beyond the original act of registration and covers subsequent acquisitions of the domain name (Dixons Group Plc v. Mr. Abu Abdullaah,WIPO Case No. D2000-1406).
The result of bad faith acquisition is equivalent to bad faith registration and is sufficient to fall within the scope of Paragraph 4(b)(i) of the Policy (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "M",WIPO Case No. D2000-0847).
For these reasons, this Panel finds that the Respondent acquired and uses the disputed domain name in bad faith. 7. Decision
Taking into consideration the Complainant’s compliance with all formal requirements for this domain name dispute proceeding, the Respondent’s default in submitting a Response, and after examining the factual evidence and legal contentions that were submitted, this Panel finds that all elements conform to the requirements provided by Paragraph 4(a)(i)(ii) and (iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name be transferred to the Complainant.
Kiyoshi Tsuru
Sole Panelist
Dated: April 19, 2012
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