The Complainant is Fiddiam SA of Howald, Luxembourg, represented by Office Freylinger S.A.., Luxembourg.
The Respondent is Tony Mancini, USDIET of Los Angeles, California, United States of America; N of Westchester, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2013. On December 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 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 December 16, 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 amended Complaint on December 17, 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 on December 20, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2014. The Respondent’s email communications were received by the Center on December 11, 2013 and January 3, 5 and 9, 2014 but no formal Response was received by the Center.
The Center appointed Joan Clark as the sole panelist in this matter on January 17, 2014. 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 the owner of Community Trademark No. 008789877 MAXVIRIL which was filed on December 31, 2009 and registered on July 13, 2010.
The Respondent is the registrant of the disputed domain name which was created on June 27, 2012 and is scheduled to expire on June 27, 2014. 5. Parties’ Contentions A. Complainant
The Complainant states it is a Luxembourg company specialized in the Internet sale of products, and that one of its main products is a product aimed for virility purpose, called MAXVIRIL. The Complainant states this product was developed in 2009 and is now a big success, highly recognized and appreciated by its users. The Complainant maintains that the disputed domain name is confusingly similar to the Complainant’s trademark.
The Complainant states that the Respondent is not a reseller or distributor of the Complainant, and maintains that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant contends that the disputed domain name was registered and is being used in bad faith, and requests that it be transferred to the Complainant. B. Respondent
The Respondent filed no official response, but did communicate with the Center by several emails, in which he confirmed that he was Tony Massini (which he later corrected to Mancini), owner of Maxvirilpro. He objected to the Complaint against him stating he was using his own ingredients and manufacturing in the United States and was selling on Amazon and eBay. He objected that the Complainant had not registered its name in the United States, stated that he had changed the label he was using and further stated that he did not want to incur any expense himself. 6. Discussion and Findings
Under Paragraph 4(a) of the Policy, for a Complaint to be successful, the Complainant must prove (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark 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
The first and prominent part, “maxviril”, of the disputed domain name is phonetically identical to the trademark of the Complainant. The said first and prominent part of the disputed domain name is, visually, confusingly similar to the Complainant’s Community Trademark MAXVIRIL, the registration for which shows the letters “M” and “V” in upper case, the letter ”X” in a special stylized form, and the remaining letters in lower case. The Panel finds that the addition of the suffix “pro”, presumably an abbreviation for “professional”, is a generic term which does not detract from the confusing similarity of the disputed domain name as a whole. The addition of the gTLD suffix, in this case “.com”, has been recognized in numerous UDRP decisions as not affecting the issue of identity or confusing similarity.
The panel is satisfied that the disputed domain name is confusingly similar to the trademark MAXVIRIL in which the Complainant has established it has rights, and the first condition for the Complaint to succeed has been satisfied. B. Rights or Legitimate Interests
The assertions in the Complaint that the Respondent has no rights or legitimate interests in the disputed domain name have cast the burden of proving otherwise on the Respondent. The Complaint states that to the best of the Complainant’s knowledge the Respondent is not commonly known by the disputed domain name, and further that the Complainant does not have any business with the Respondent, and that the latter is not a reseller or distributor of the Complainant. The Respondent has not filed a formal Response, but in the emails from the Respondent to the Center he seeks to justify the use of the disputed domain name by stating that he uses his own ingredients and manufactures in the United States, sells on Amazon and eBay, and has changed his label. It is thus clear that the products offered for sale and sold under the Respondent’s disputed domain name do not emanate from the Complainant. The offering of such goods under a domain name confusingly similar to the Complainant’s trademark is not bona fide for the purposes of paragraph 4(c)(i) of the Policy.
Also for the reasons set out below in relation to the third element of the Policy, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and the second condition for the Complaint to succeed has been satisfied. C. Registered and Used in Bad Faith
The Complaint contends that the disputed domain name was registered and is being used in bad faith. This has not been refuted by the Respondent, who has only asserted in emails to the Center that the Respondent uses his own ingredients, manufactures in the United States, sells on Amazon and ebay, and has changed his label. The Respondent has provided no explanation as to why he adopted a domain name the first and principal part of which is confusingly similar to the Complainant’s trademark.
The disputed domain name was created on June 27, 2012, subsequent to the filing of the Complainant’s Community Trademark on December 31, 2009 and the latter’s registration on July 13, 2010. There is no indication in the evidence before the Panel that the Respondent had used the disputed domain name before its creation in 2012. One of the main products of the Complainant is stated to be “a product aimed for virility purpose, called MAXVIRIL”, while the Respondent’s website describes Maxviril Pro as “un aphrodisiaque naturel pour homme”.
The creation of a confusingly similar domain name subsequent in time to the filing and registration of the Complainant’s unusual trademark, and the use thereof to describe a similar product, leads to a presumption that the disputed domain name was copied from the Complainant’s trademark. This is reinforced by the Respondent’s use on his web page of a stylized “X” in the disputed domain name similar while not identical to the stylized “X” appearing in the registration of the Complainant’s trademark. The Panel finds that the Respondent chose the disputed domain name with full knowledge of the Complainant’s trademark, in an effort to cause the Internet users to believe the disputed domain name is associated with the Complainant and its products, or at the very least in an effort to benefit from a confusingly similar enticing name to be used for a similar product, with a wilful disregard as to the confusion that would be caused between the Complainant and the disputed domain name.
The Panel finds that the disputed domain name was registered and is being used in bad faith, and the third condition for the Complaint to succeed has been satisfied. 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.
Joan Clark
Sole Panelist
Date: January 31, 2014
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