The Complainant is SNAI S.p.A. of Porcari, Lucca, Italy, represented by Studio Legale Tonucci & Partners, Italy.
The Respondent is Domains By Proxy, LLC / Daniele Liquori of United States of America, and Italy, respectively. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2013. On January 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 19, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. On January 28, 2013, the Center provided the registrant and contact information disclosed by the Registrar, and requested the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 28, 2013.
The Center verified that the Complaint together with the amendment to 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 together with the amendment to the Complaint, and the proceedings commenced on January 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 18, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 19, 2013.
The Center appointed Nicoletta Colombo as the sole panelist in this matter on March 5, 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 an Italy-based company primarily engaged in the gaming and betting industry, established in 1990 and headquartered and licensed in Italy. It is listed on the Milan Stock Exchange and it is actually one of the biggest gambling provider in Italy, with more than 4,400 betting shops and betting corners spread across Italy.
The Complaint is the owner of the trademark SNAI since 1999 and it has been used without interruption.
The Domain Name was registered on March 20, 2008. The website was active and offer to the Internet users specific third parties’ products and services by means of a sponsored link in the specific sectors where the Complainant carries out its commercial activities. 5. Parties’ Contentions A. Complainant
The Complainant contends the following:
(a) the Domain Name is confusingly similar to the trademarks of the Complainant because:
- it reproduces the Complainant's trademarks in its entirety;
- the addition of the word “quote” in the Domain Name does not detract from associating it to the trademarks of the Complainant;
- using, together with the Complainant’s main trademark SNAI, the word “quote,” does not eliminate the visual and conceptual identity with the Complainant’s trademark also because this word means into Italian language “odds” (for horse races) and in general “betting quotes” which is directly connected to the service offered by the Complainant.
(b) The Respondent has no rights or legitimate interests in respect to the Domain Name because:
- the Complainant has never given to the Respondent any license or authorization to use the Complainant’s trademark;
- the Respondent has not been commonly known by the Domain Name and has not acquired any trademark or service mark rights in and to the Domain Name.
(c) The Domain Name was registered and is being used in bad faith because:
- it is unlikely that the Respondent was not aware of the Complainant's legal right to the SNAI mark at the time of the registration of the Domain Name;
- the Domain Name is not the only name which the Respondent can use to describe its business and the Respondent could have used any number of other domain names to describe its business;
- the Respondent attempts to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the website;
-the Respondent abusively exploits the high notoriety of the Complainant’s mark also to unfairly promote products and services offered by third parties, including products and services offered by direct competitors of the Complainant in the same gaming and betting sectors;
- the Respondent has abusively registered also the cc.tld (which is actually challenged by the Complainant before the national Registry) which is hold only to prevent the Complainant from reflecting its mark in the corresponding cc.tld domain name in lack of any rights or legitimate interests; so that the passive holding of the different domain name is an additional inference of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General
The Complaint was originally filed against Daniele Liquori, with the Annex 1 showing that on January 10, 2013 Daniele Liquori was the registrant of record as per publicly available WhoIs. Notwithstanding the fact that the Registrar confirmed that Domains By Proxy, LLC was the registrant, and that the Complainant subsequently amended its Complaint to identify Domains By Proxy, LLC as the Respondent in this case, the Panel finds it appropriate, given the evidence submitted in the original Complaint, to also treat Daniele Liquori as a Respondent in this case. B. Identical or Confusingly Similar
The Domain Name incorporates the word “snai” which constitutes the Complainant’s trademark and its company name.
The only difference between the Domain Name and the trademark of the Complainant is the addition of the word “quote”. The addition of the mentioned word does not add a distinctive element to the Domain Name and does not render them dissimilar to the trademark of the Complainant. Moreover, such addition increases the confusing similarity between the Domain Name and the Complainant’s trademark, because the term “quote” is simply strengthening the bond and relation with the SNAI trademark itself.
In fact the word “quote” means into Italian language “odds” (for horse races) and in general “betting quotes” (for betting in general). For what has been proved by the Complainant, SNAI mark is well-known because the betters – before betting – previously evaluate and consult the official SNAI’s quotes drafted for each sport, horse or non-sport event, as formally published. In this condition the adding of the word “quote” expands the connection of the Domain Name to the service offered by the Complainant.
Additionally, the Panel does not consider, when analyzing the identity or similarity, the suffix - in this case “.com” - because it is a necessary component of the Domain Name and does not give any distinctiveness (see i.e., Crédit Industriel et Commercial SA v. Name Privacy,WIPO Case No. D2005-0457).
There are numerous UDRP decisions stating that confusing similarity, for the purposes of the Policy, is established inter alia when a domain name wholly incorporates a complainant’s mark and only adds a generic word along with it (see i.e., F. Hoffmann-La Roche AG v. Bobik Marley,WIPO Case No. D2007-0694; Deceininck NV, Thyssen Polymer GmbH v. Beloussov Dimitriy,WIPO Case No. D2007-0347; Société des Bains de Mer et du Cercle des Etrangers à Monaco v. LaPorte Holdings, LLC.,WIPO Case No. D2005-0526).
Therefore the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. C. Rights or Legitimate Interests
The Complainant has several trademark registrations for SNAI, which is also its company name. Therefore it has been proven that the Complainant has rights in the SNAI trademark.
The Respondent has not filed any response in this case. There is a prima facie case made by the evidence provided to the Panel that the Respondent has no rights or legitimate interests in the Domain Name (Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Grande Media,WIPO Case No. D2007-0840; and UPIB, Inc. v. Texas Internet,WIPO Case No. D2004-0073).
Moreover, the Complainant has not licensed or otherwise permitted or authorized the Respondent to use its trademark SNAI, nor has the Respondent been authorized to register and use the Domain Name.
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in registering the Domain Name. D. Registered and Used in Bad Faith
The Respondent must have been aware of the existence of the SNAI mark owned and used by the Complainant. The Respondent must have been also aware that the trademark SNAI is a well-known trademark in the gaming and betting sector. Only someone who was familiar with the Complainant's mark and its activity would have registered the Domain Name inclusive of such mark and the word “quote” (see Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0850; AT&T Corp. v. Xinzhiyuan Management Consulting Co., Ltd.,WIPO Case No. DCC2004-0001; British Sky Broadcasting Group plc, v. Mr. Pablo Merino and Sky Services S.A,WIPO Case No. D2004-0131; and Deutsche Telekom AG v. Britt Cordon,WIPO Case No. D2004-0487).
There is no information as to the business activity of the Respondent that would justify the registration and the use of the Domain Name, nor is there evidence of any rights or legitimate interests in the Domain Name by the Respondent. The Panel finds that, in the absence of any rights or legitimate interests and in the absence of any contrary evidence from the Respondent, the Respondent’s registration of the Domain Name confusingly similar to the Complainant’s trademark was done in bad faith (see Accor v. Howell Edwin,WIPO Case No. D2005-0980; Ferrero S.p.A. v. Publinord S.r.l.,WIPO Case No. D2002-0395; Banca Sella S.p.A. v. Mr. Paolo Parente,WIPO Case No. D2000-1157; Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226). The use of the Domain Name as evidenced by the Complainant is also found to be in bad faith given the circumstance of this case discussed above.
Taken together with the fact that the Respondent has not filed any Response in this proceeding in support of any good faith registration or use, the Panel finds that the Complainant has demonstrated that the Domain Name has been registered and used 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 Domain Name be transferred to the Complainant.
Nicoletta Colombo
Sole Panelist
Date: March 19, 2013
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