The Complainant is riposa AG of Bilten, Switzerland, represented by MathisLegalzone, Switzerland.
The Respondent is CDN Properties Incorporated of Panama City, Panama, represented by Weblegal, Italy. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2012. On November 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 2012, the Registrar 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 December 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 26, 2012. The Response was filed with the Center on December 21, 2012.
The Center appointed Michael J. Spence as the sole panelist in this matter on January 11, 2013. 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 a Swiss manufacturer of bedding products which has operated under the Swiss trade mark RIPOSA since 1980. The Complainant distributes its products in Switzerland. The Respondent operates the disputed domain name as a “parked” domain name, which includes links to third-party web sites that are automatically generated. These include links to the web sites of companies that the Complainant regards as competitors. The disputed domain name was first registered in 2003. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical to its registered trade marks; that the use of the disputed domain name to direct users to third-party web sites, including those of competitors of the Complainant, does not give rise to rights or legitimate interests in the disputed domain name, and that the Respondent has made no other use of the disputed domain name; and that the registration or use of the disputed domain name was in bad faith, as evinced by the fact that the Respondent acquired the disputed domain name from a third party when a dispute was imminent, a type of “cyberflight”. B. Respondent
The Respondent contends that the Complainant’s trade marks either consist in the word “riposa” together with some figurative element or, as a word mark, are invalid in that they consist of a purely descriptive common word, the Respondent contends that the word “riposa” corresponds to the Italian declination of the verb “riposare”, which is the equivalent of the English verb “to rest”, and synonymous of “to sleep; to lie”, and it is evocative of beds and mattresses; that “the use and even trade in generic and highly descriptive domain names is a well established legitimate business” which can, and in this case does, give rise to rights or legitimate interests in the disputed domain name; that the Respondent has no direct control of the advertising links enlisted in the Respondent’s “parked domain name”; and that the disputed domain name has not been the subject of “cyberflight” but that, on the contrary, by offering to buy the disputed domain name and then commencing this dispute, the Complainant is engaging in a type of “reverse domain name hijacking”. 6. Discussion and Findings A. Identical or Confusingly Similar
There can be little doubt that the disputed domain name contains the Complainant’s registered word mark in its entirety. Moreover, the UDRP is not the place to determine the validity of national trade mark registrations.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
It is for the Complainant to establish, at least prima facie, that the Respondent has no rights or legitimate interests in the disputed domain name (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110). This task is rendered more crucial in cases, such as the present one, in which the Complainant’s trade mark consists of a common generic word in Italian, such as “riposa”, particularly a trade mark of only at best national reputation. The registration and trade in domain names containing generic words can constitute a legitimate use of them, and the Complainant has provided insufficient evidence to rebut the Respondent’s assertion that such use gives rise to a right or legitimate interest in the disputed domain name in this case. This is particularly true because of the length of time for which the disputed domain name has been registered. For these reasons it has failed to discharge even its prima facie burden of establishing that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent’s contention that the links at its website are automatically generated need not be treated as relevant in this decision because it might be anticipated that any website operating under a domain name “riposa” could legitimately offer mattresses and other sleep related products for sale. Therefore, even if the links on the website were deliberately chosen by the Respondent, the use of the disputed domain name for the promotion of products of which it is essentially descriptive could still give rise to rights or legitimate interests in the name.
The Panel therefore finds that the Complainant has failed to establish the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Given its finding on the second element of paragraph 4(a) of the Policy, the Panel does not need to make a finding on the third. However, it is difficult to identify, on the face of either the Complaint or Response, sufficient evidence to establish a claim of either “cyberflight” or “reverse domain name hijacking” as the parties have contended. 7. Decision
For the foregoing reasons, the Complaint is denied.
Michael J. Spence
Sole Panelist
Date: January 12, 2013
Full & Egal Universal Law Academy