The Complainant is Campagnolo S.r.l of Vicenza, Italy, represented by Giambrocono & C. S.p.A., Italy.
The Respondent is Pascal Arts / P. Arts of Aalsmeer, The Netherlands, represented by Charlotte Zentgraaff of The Netherlands. 2. The Domain Names and Registrar
The disputed domain names
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are registered with Ascio Technologies Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2013. On March 1, 2013 the Center received an informal communication by e-mail from the technical and billing contact of the disputed domain names. On March 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 7, 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 sent an email communication to the Complainant on March 7, 2013 requesting the withdrawal of the domain names with country code “.nl”. The Center sent another e-mail communication to Complainant on March 7, 2013 regarding the spelling of the registrant's name for some of the disputed domain names, and providing the registrant and contact information disclosed by the Registrar for all the disputed domain names. The Center sent another e-mail communication to Complainant on March 7, 2013 regarding the expiry of some of the disputed domain names. The Center sent a Complaint Deficiency Notification to Complainant on March 7, 2013. The Complainant filed an amended Complaint on March 11, 2013.
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 March 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 10, 2013. The Center sent on April 12, 2013 a communication to the Parties regarding the commencement of panel appointment process, as no formal response was received within the Response due date.
On May 7 and 8, 2013 the Center received Respondent's first and second informal communications after the commencement of panel appointment process.
On May 10, 2013 the Center received Complainant's first informal communication after the commencement of panel appointment process, with attached documents. On the same date the Center received a third informal communication from the Respondent as well as a second informal communication from the Complainant with enclosed documents.
On May 12, 2013 the Center received Respondent's fourth communication after the commencement of panel appointment process as a formal Response, with enclosed documents. On May 15, 2013 the Center received a third informal communication from the Complainant.
The Center appointed David J.A. Cairns, Massimo Introvigne and Willem J. H. Leppink as panelists in this matter on May 17, 2013. The Panel finds that it was properly constituted. Each member of 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.
On May 21, 2013 the Panel issued Panel Order No. 1 in the following terms (emphasis original):
“Dear Colleagues,
The WIPO Arbitration and Mediation Center confirmed the appointment of the Panel in this case on May 17, 2013.
The Panel notes the Respondent's response of May 12, 2013 (and also that the Complainant objects to the admission of this Response).
In the penultimate paragraph of the Response the Respondent states that “I request not to transfer the specified domain names to Campagnolo Srl. at costs to E-R-P, but de-block the specified domain names in a way that E-R-P can terminate them itself with the registrar.”
There is some confusion in this statement that the Panel wishes to clarify before continuing with the proceeding. The Respondent states that it does not wish to transfer the disputed domain names to the Complainant (“I request not to transfer the specified domain names to Campagnolo Srl...”) but nor does it wish to retain the disputed domain names itself. The Complainant does not in fact seek the transfer of the disputed domain names, but only their cancellation (see Complaint VII.13).
Further, where the Parties consent to the cancellation of some or all of the disputed domain names, then the Panel can order the cancellation of the disputed domain names without any adverse finding of lack of rights or legitimate interests or bad faith against the Respondent.
The Panel also notes in relation to the Respondent's statement that there is no power to award costs in this Administrative Proceeding.
Accordingly, the Panel requires by way of clarification of this proceeding that:
1. The Respondent communicates no later than Thursday May 23 whether it wishes to consent to the cancellation of some or all of the disputed domain names, or alternatively wishes to retain and defend the registration and use of all of the disputed domain names;
2. The Complainant may submit any comments on the Respondent's position no later than Monday May 27, 2013;
3. The Parties communications shall be strictly limited to this request from the Panel. Any additional comments on other matters will be rejected;
4. These communications shall be without prejudice to the determination of the Complainant's submission (in it emails to the center of May 10 and 13, 2013) that the Respondent's response was submitted late and should not be considered by the Panel.”
There were problems with the transmission of Panel Order Nº 1, so it was re-trasmitted to the Parties on May 27, 2013 (with a new dates in paragraphs 1 and 2 of Wednesday May 29, 2013 and Friday May 31, 2013 respectively). This amended Panel order Nº 1 was received by both Parties without problem, and both Parties responded within the time limits provided.
The Respondent's response to Panel Order Nº 1 on May 29, 2013 was as follows:
“Dear Case manager,
In accordance of below email, on behalf of the Respondent Mr. Arts, I can confirm the following question written by the panel:
The Respondent states that it does not wish to transfer the disputed domain names to the Complainant (“I request not to transfer the specified domain names to Campagnolo Srl...”) but nor does it wish to retain the disputed domain names itself.”
I hereby confirm the Respondent does not wish to retain the disputed domain names but requests the cancellation of the disputed domain names, which the Respondent already arranged for all the other (not disputed) registered domain names due to the fact E-R-P has no business agreement anymore with the company Campagnolo Sportswear Srl. (/Campagnolo Srl.) since the beginning of 2013.
The disputed domain names registered by Mr. Arts can be terminated/cancelled.”
The Complainant submitted the following comment on the same date:
“Dear Case Manager,
since the remedy requested in the filed Complaint was the cancellation of the disputed domain names, if Pascal Arts (E-R-P) accepts and undertakes to cancel all the domain subject to the present dispute, the Complainant hereby confirms that the Panel can order the cancellation of the disputed domain names without any adverse finding of lack of rights or legitimate interests or bad faith against the Respondent.” 4. Factual Background
The Complainant is the registered owner of the International Registration No. 172,502 for the trademark CAMPAGNOLO based on an Italian registration dated October 31, 1953; and the Community Trademark registration No. 002704641for the word mark CAMPAGNOLO, with registration date of March 1, 2006.
The Respondent has been a distributor of various products sold under the CAMPAGNOLO trademark pursuant to a Distributorship Agreement dated August 23, 2005 between the Respondent and Campagnolo Sportswear S.r.l, a related company of the Complainant. 5. Parties' Contentions A. Complainant
The Complainant in the Amended Complaint states that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. It states that all the disputed domain names, except the three “cswoutlet” disputed domain names, contain the word CAMPAGNOLO, which has no meaning in English and is totally identical to the trademarks owned by the Complainant. Additionally, the disputed domain names are very similar to the domain name “”, owned by the Complainant since 1996. The Complainant states that the trademark CAMPAGNOLO is protected by more than 120 trademark registrations consisting of or comprising the term CAMPAGNOLO in more than 50 countries including the Netherlands, the country of residence of Respondent. The addition of descriptive elements such as “sportswear”, “web”, “trainer”, “factory”, “outlet”, “store”, “service”, “fietskleding” (which means “cycling” in English), “shoe”, etc., does not avoid confusion on the part of the public but, on the contrary, falsely suggest a possible link between the trademark owner and the domain name owner.
The Complainant also states that the Respondent has no rights or legitimate interests in respect of the disputed domain names because the Respondent has never been, and is not currently, commonly known by the disputed domain names, nor its name consists in whole or in part in the denomination “Campagnolo”. Respondent does not hold any trademark or other right consisting in whole or in part in the denomination Campagnolo, which is the distinctive part of all the disputed domain names. Finally, “Campagnolo” is neither a common noun nor a common name in English. The Complainant also relies on the terms of a 2005 Distributorship Agreement between the Respondent and Campagnolo Sportswear S.r.l., a branch of the Complainant, and previous UDRP decisions.
The Complainant also states that the disputed domain names were registered and are being used in bad faith. The Complainant states that CAMPAGNOLO has become a well-known mark, and that the Respondent was perfectly aware of the fact that the Complainant owns exclusive rights of use, referring again to the Distributionship Agreement. The Complainant states that as regards the Respondent's use of the disputed domain names, three different classes of use can be distinguished. Firstly, there are the disputed domain names that are not used in connection with active web pages. Secondly, some of the disputed domain names are used by the Respondent apparently to sell products not only marked Campagnolo, but also from competitors of the Complainant. Thirdly, some of the disputed domain names are used in connection with an e-commerce website that apparently sells true Campagnolo products, but without disclosing the no-longer existing relationship between the Complainant and Pascal Arts, so that the visitors are led to believe that those are true and official Campagnolo web sites. The Complainant states that all these uses imply bad faith in the registration of the disputed domain names, as constituting blocking registrations (the first group); as “baits” for the potential customer, which are then offered products by the competitors of Campagnolo (the second group); or by misleading customers about the true nature of the websites, which are not official pages of the Complainant whilst appearing as official (the third group).
The Complainant requests that the disputed domain names be cancelled.
The Complainant also submitted that the Respondent's late filings not be considered by the Panel in reaching its decision. B. Respondent
The Respondent in its Response dated May 12, 2013 rejected the statements made in the Complaint.
The Respondent stated that the Distributorship Agreement had not been terminated for many years but in fact only ended in December 2012. The Respondent did not register any of the disputed domain names later than February 2012 and therefore did not register the disputed domain names in bad faith after the termination of the Agreement.
The Respondent states that he initiated a lot of marketing projects for the Campagnolo brand, which were highly acclaimed by the Complainant. The Respondent registered the disputed domain names to be used in the performance of these projects. The Respondent states that he never registered the disputed domain names in bad faith, or to block registrations, or for the purposes of 'bait-and-switch' selling. Instead, the Respondent worked together with the Complainant and never acted behind the Complainant's back.
The Respondent refers to a meeting on July 3, 2012 when current projects were discussed. The Respondent states that he produced a document entitled 'Portfolio' at this meeting which set out many of the disputed domain names registered by the Respondent. This meeting was well received by the Complainant, and the Respondent's registration of these disputed domain names was well known and accepted by the Complainant and Campagnolo Sportswear S.r.l.
However, shortly afterwards Campagnolo Sportswear S.r.l closed in an unexpected way. There were negotiations between the Parties over a settlement agreement, which included terms as to the transfer of the disputed domain names, but this agreement was never signed.
The Respondent states that he always acted in good faith or to save its good name in the Benelux area after the closure of Campagnolo Sportswear S.r.l in July 2012.
The Respondent denies that his web pages are stated to be “official” pages. The Respondent states that he never uses the word “official” or suggests he is linked to the Complainant or Campagnolo Sportswear S.r.l. Respondent states that he is using the websites to sell CAMPAGNOLO sportswear bought in good faith in April 2012. The Respondent states that he is not misleading any customer, and that it takes time to terminate operations in a way that customers will not suffer.
The Respondent states that “E-R-P is totally aware he is not an official seller anymore since January 2013, but is only reselling the items by the website he registered many years ago”.
In conclusion, the Respondent states that the Complaint consists of statements which are untrue in that it falsely suggests that the Respondent was registering the disputed domain names in bad faith and as official pages after the Distributorship Agreement had expired for many years. The Respondent states that this is false as demonstrated by the attachments to his Response. The Respondent concludes that “I request not to transfer the specified domain names to Campagnolo Srl. at costs of E-R-P, but de-block the specified names in a way E-R-P can terminate them itself immediately with the registrar”. 6. Discussion and Findings
The Panel is required to decide the Complaint on the basis of the statements and documents submitted, and in accordance with the Policy, the Rules and any rules and principles of law that it deems appropriate.
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements: (i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) that the Respondent's domain names have been registered and are being used in bad faith.
The Parties' responses to Panel Order No. 1 confirm that: (i) the Respondent consents to the cancellation of all of the disputed domain names; and (ii) on the basis of this consent, the Complainant “confirms that the Panel can order the cancellation of the disputed domain names without any adverse finding of lack of rights or legitimate interests or bad faith registration and use against the Respondent.”.
Paragraph 17 of the Rules provides that where “the Parties agree on a settlement, the Panel shall terminate the administrative proceeding”. Paragraph 17 envisages a settlement that the Parties can implement themselves without any intervention of the Panel, so that the only action required by the Panel is an order of termination. In this case, the Parties have not settled between themselves, but have individually indicated to the Panel that a particular solution (cancellation of all the disputed domain names without any adverse findings against the Respondent) is acceptable to them both. The mutual consent of the Parties in this proceeding presupposes and requires a decision of the Panel.
Paragraph 10(a) of the Rules requires the Panel to "conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules." Paragraph 10(c) of the Rules requires the Panel to “ensure that the administrative proceeding takes place with due expedition”. These powers enable the Panel to implement the solution mutually acceptable to the Parties. The Panel notes that these powers in paragraph 10 have been relied upon in other cases as a basis for implementing a unilateral consent to transfer the disputed domain names by the Respondent without any adverse finding on the merits, on the basis that this was the most appropriate and expeditious manner to terminate the proceeding (see The Cartoon Network LP, LLLP v. Mike Morgan,WIPO Case No. D2005-1132; Williams-Sonoma, Inc. v. EZ-Port,WIPO Case No. D2000-0207). A procedure applicable to a unilateral consent is, a fortiori, applicable to the mutual consent to cancellation on this case.
Therefore, and in accordance with paragraphs 10(a) and (c) of the Rules, the Panel finds that all of the disputed domain names be cancelled without any adverse findings of lack of rights or legitimate interests or bad faith registration and use against the Respondent. 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 names
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be cancelled.
David J.A. Cairns
Presiding Panelist
Massimo Introvigne
Panelist
Willem J. H. Leppink
Panelist
Date: May 31, 2013
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