The Complainant is A di Fontana Gabriele S.A.S., of Rimini, Italy, represented by Gabriele Fontana, Italy.
The Respondent is Bianco Arnaldo of Catanzaro, Italy, self represented; PrivacyP of Queensland, Australia. 2. The Domain Name and Registrar
The disputed 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 May 17, 2013. On May 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 18, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 23, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint.
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, and the proceedings commenced on May 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 18, 2013. No official Response was filed with the Center, however emails was received on May 23, May 28 and June 18, 2013.
The Center appointed Luca Barbero as the sole panelist in this matter on June 28, 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 engaged in the activity of web advertising for franchisors and commercial networks and is the owner of the Italian trademark registration No. 0001456468 for APRIREINFRANCHISING (word mark), filed on April 28, 2011 and registered on July 27, 2011, in class 35.
The Complainant operates a web site at “www.a”, which was registered on October 26, 2007 by one of the two associates of the Complainant.
The disputed domain name was registered by the Respondent on January 8, 2011. 5. Parties’ Contentions A. Complainant
The Complainant states that it has the exclusive right to use the trademark APRIREINFRANCHISING to identify its own activity, which has the aim of seeking new affiliates for its own clients, by advertising the latter on the web site “www.a”. The Complainant explains that its web site provides a series of advices to potential affiliates and advertises the company’s clients, namely the franchisor companies that give individuals the opportunity to affiliate to their network.
The Complainant informs the Panel that its web site was created in 2007 and asserts that it immediately became one of the leading tools for searching information related to the field of franchising and the companies operating in it. The Complainant highlights that, by the end of 2010, its company counted more than 150 clients, both in Italy and abroad, to which it successfully delivered its advertising services. The Complainant further asserts that, in January 2011, thanks to the investments made during the first three years of activity, to participations to expos and to an intense commercial activity, the web site “www.a” counted more than 45.000 visits each month.
The Complainant also states that it has been using APRIREINFRANCHISING to identify its activity since 2007 and that it is now widely recognized in the franchising sector as a distinctive sign of the
Complainant and of the type of services offered through the website “www.a”.
The Complainant contends that the disputed domain name is identical to the trademark APRIREINFRANCHISING because it incorporates the entirety of the trademark and merely adds the generic top level domain suffix “.info”.
The Complainant points out that the Respondent has no rights to, or legitimate interests in, the disputed domain name, as it does not own a prior trademark or a related business activity. The Complainant further asserts that the disputed domain name was registered by the Respondent with the unique purpose of wrongfully exploiting the Complainant’s name and trademark.
The Complainant states that, at the time of the registration of the disputed domain name, the Respondent knew very well the Complainant’s web site, brand and activity, since the disputed domain name was immediately redirected to a web site displaying the same contents as the ones published on the Complainant’s site “www.a”, as the written texts produced by the Complainant, as well as the client’s pages and the position of the contents, were duplicated. The Complainant, therefore, concludes, that the Respondent intentionally created a clone version of the Complainant’s web site that could mislead Internet users and potential clients.
The Complainant contends that, even today, the Respondent is making an illicit use of his brand in conducting its business activity, with the purpose of confusing and deceiving visitors and potential clients.
The Complainant tried to enforce its trademark rights by sending a cease and desist demand letter to the attention of the company WDC Srl, indicated on the Respondent’s web site, in which it requested the cease of any activity and of the Respondent’s illicit use of its brand.
The Complainant also states that the Respondent used a privacy shield and a Montenegro based company for the creation of its web site in order to make it more difficult to be traced in case of legal action.
As additional circumstances highlighting the Respondent’s bad faith, the Complainant points out that the Respondent is associate and project development manager of LS2 Srl, a company that manages the network of “SexxxyShop” brand stores, and was among the Complainant’s clients, benefiting from the Respondent’s services provided through the web site “www.a”, before and at the time of the registration of the disputed domain name. In view of the above, the Complainant states that the Respondent was well aware of the activities carried out by the Complainant and of the Complainant’s reputation.
The Complainant additionally highlights that, even today, the web site published at the disputed domain name shows texts copied from the Complainant’s web site. B. Respondent
As mentioned in the procedural section, the Respondent did not submit a formal Response, but sent emails to the Center in which it stated that the web site published at the disputed domain name is of its property and is operated by its company WDC Srl.
In that email, the Respondent points out that the web site is advertising franchising activities through “www.”, “” and other web sites.
The Respondent contends that “aprire in franchising” means "open a franchising" and asserts that the disputed domain name is one of the domain names it uses to advertise its activity internationally.
The Respondent states that the contents made available on the web site corresponding to the disputed domain name are authorized by companies that provided it with their approvals. The Respondent also confirms that it is promoting also its franchise Sexxxyshop on the web site published at the disputed domain name.
The Respondent also states that it already sued the Complainant and asserts that, should its web site be closed, it would seek compensation for damages since it has contracts for one and for three years with franchising companies. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
According to paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), if a complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.
In the case at hand, the Complainant has provided evidence of ownership of the Italian trademark registration No. 0001456468 for APRIREINFRANCHISING (word mark), filed on April 28, 2011 and registered on July 27, 2011, in class 35.
The Panel notes that the disputed domain name includes the trademark APRIREINFRANCHISING in its entirety, with the mere addition of the generic Top Level Domain “.info”, which, as stated in many decisions issued under the Policy, may be excluded from consideration as being a merely functional component of a domain name. See i.e. Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429, stating: “the specific top level of the domain name such as ‘net’ or ‘com’ does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”; and Chevy Chase Bank, F.S.B. v. Peter Ojo,WIPO Case No. D2000-1770, where it was found that “the accused domain name is legally identical to Complainant’s trade name CHEVY CHASE BANK.” See also, among others, Priority One Financial Services Inc. v. Michael Cronin, WIPO Case No. D2006-1499 and Laramar Group, L.L.C. v. XC2, WIPO Case No. D2006-0617.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is identical to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see 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; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581; Banco Itau S.A. v. Laercio Teixeira,WIPO Case No. D2007-0912; Accor v. Eren Atesmen,WIPO Case No. D2009-0701).
The Panel notes that the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademark.
While the Panel acknowledges that, as underlined by the Respondent, the Italian expression “aprire in franchising” means “open a franchise”, having carefully reviewed the evidence on records, the Panel is not persuaded that the Respondent has made a genuine, legitimate use of the disputed domain name without intention to trade off the Complainant’s rights.
The Panel finds that based on the documents and statements submitted by the Complainant, the Complainant has been using APRIREINFRANCHISING as a business identifier before the registration of the disputed domain name and the Respondent was very likely aware of it.
The Complainant has infact submitted copy of an invoice issued, on January 31, 2011, by the Complainant to the company LS2 SRL, of which the Respondent is partner, for promotional services of a Respondent’s franchise on the Complainant’s web portal “www.a”. The invoice, where the Complainant’s company name and trademark are featured prominently, refers to services rendered between November 1, 2010 and November 1, 2011. The Complainant stated that said invoice was related to the advertising activity of the Respondent’s franchise SexxxyShop, that, as also confirmed by the Respondent in his letter, is currently promoted through the Respondent’s web site “www.”.
In addition, according to the screenshots submitted by the Complainant and the historical web site records archived by A, the exact same text displayed on the Complainant’s web site before the registration of the disputed domain name has been reproduced on the Respondent’s web site “www.”, which promotes services identical to the ones offered by the Complainant.
As stated in Southwestern Association for Indian Arts, Inc. v. Indian Art of America and A. Mata,WIPO Case No. D2009-1774, “where a respondent registers a domain name consisting of “dictionary” terms because the respondent has a good faith belief that the domain name's value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest. See Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304. But the domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of any value corresponding to a trademark. Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964. See also Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,WIPO Case No. D2007-0062”.
Even though the Respondent is using the disputed domain name to advertise franchising services, the Panel, in the circumstances of this case, does not find that the use made by the Respondent constitutes either a bona fide offer of goods or services or a legitimate, noncommercial or fair use of the disputed domain name, as the evidence made available suggests that the Respondent, by registering and using a domain name identical to the Complainant’s domain name and trademark and by reproducing on its web site identical text displayed on the Complainant’s web site, intended instead to profit from the likelihood of association of the disputed domain name with the Complainant and its distinctive signs.
In view of the above and based on the evidence on records, the Panel also finds that the Respondent and its companies, the names of which do not correspond to, or contain, the expression “Aprireinfranchising”, are not commonly known by the disputed domain name or by a name corresponding to the disputed domain name.
In light of the above, the Panel finds that the Complainant has, on balance, satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the holder has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.
As mentioned in the sections above, the Complainant has submitted evidence showing that, despite the fact that the Italian trademark APRIREINFRANCHISING was filed after the registration of the disputed domain name, the Complainant’s services were provided under the trademark APRIREINFRANCHISING, also to the Respondent, well before that date. In addition, the contents made available on the Complainant’s site “www.a” before the registration of the disputed domain name have been thereafter reproduced by the Respondent on its own web site “www.”.
In view of the above and of the additional circumstances addressed in section 6B herein, the Panel finds that the registration of the disputed domain name, identical to the Complainant’s trademark, cannot be ascribed to a mere coincidence and was made by the Respondent in bad faith.
As to the use of the domain name in bad faith, the Panel finds that the above-described utilization of the disputed domain name shows that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the its own web site and to its web sites linked thereto, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the its web sites and of its services, according to paragraph 4(b)(iv) of the Policy.
In view of the above, the Panel finds that the disputed domain name was registered and is being 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 disputed domain name be transferred to the Complainant.
Luca Barbero
Sole Panelist
Date: July 19, 2013
Full & Egal Universal Law Academy