The Complainant is Piccole Trasgressioni di Nigrelli Antonino of Cento, Ferrara, Italy, represented by Studio legale Sirotti Gaudenzi, Italy.
The Respondent is Pubbliweb of Calafell, Spain. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2014. On May 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 23, 2014, 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. The Center sent an email communication to the Complainant on May 26, 2014 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 May 27, 2014.
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 May 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2014.
The Center appointed Daniel Kraus as the sole panelist in this matter on July 1, 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 registered the trademark PICCOLE TRASGRESSIONI on May 21, 2004 and had it renewed on January 22, 2010, for classes 6, 18, 20, 25, and 28. It registered the domain name on December 19, 2000. The Complainant’s website to which the domain name leads is an adult website with ads as well as advertising space.
The Respondent registered the Domain Name on September 6, 2012 and is using it for the same kind of services. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to the PICCOLE TRASGRESSIONI mark in which the Complainant asserts prior rights, that the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant therefore requests transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under the Policy, paragraph 4(a), in order to prevail, a complainant must prove the following three elements of a claim for transfer or cancellation of a respondent’s domain name:
(i) that the domain name is 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 the domain name; and
(iii) that the respondent’s domain name has been registered and is being used in bad faith.
Policy, paragraph 4(a). A. Identical or Confusingly Similar
The Domain Name is clearly identical or confusingly similar to the mark PICCOLE TRASGRESSIONI, in which the Complainant has trademark rights.
Therefore, the Panel finds that the Complainant satisfied the first element of its claim in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent may establish rights or legitimate interests in a domain name by proof of any of the following non-exclusive list of circumstances:
(i) before any notice to the respondent of the dispute, the respondent used, or made 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has not acquired trademark or service mark rights; or
(iii) the respondent is 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.
The Complainant alleges that it has not licensed or otherwise authorized the Respondent to use its PICCOLE TRASGRESSIONI mark in the Domain Name or any other manner, that the Respondent is not using the Domain Name for any bona fide offering of goods or services or any legitimate non-commercial or fair use, and that the Respondent is not commonly known by the Domain Name. For these reasons, the Complainant asserts that the Respondent has no rights or legitimate interests in the Domain Name.
The Respondent has not submitted any reply to the Complaint.
It is true that, as discussed in M, Inc. v. Dave Talebi,WIPO Case No. D2004-0409, the owner of a descriptive or generic trademark holds a right to exclude others that is far more circumscribed than if the mark is fanciful (see cases referred to in the above-mentioned decision, e.g., The Crown in Right of the State of Tasmania trading as "Tourism Tasmania" v. Gordon James Craven,WIPO Case No. DAU2003-0001 (); Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin,WIPO Case No. D2002-0635, ( and ) and cases cited in footnotes 5-7; Ciphergen BioSystems v. David Sabatini,WIPO Case No. D2002-0600 (). However, any intentional use of a competitor’s mark, even a weak mark, to attract, divert, or mislead the competitor’s customers is not legitimate use.
The Complainant has thus shown that the Respondent has no rights or legitimate interests in the Domain Name and satisfied the second element of its claim in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of a domain name in bad faith for the purpose of paragraph 4(a)(iii) above:
(i) circumstances indicating that the respondent has registered or 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 respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’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 respondent’s website or location or of a product or service on the respondent’s website or location.
In the Panel’s assessment of the available records, and on the balance of probabilities, the Respondent was aware of the Complainant’s PICCOLE TRASGRESSIONI mark and the Complainant’s website offering adult entertainment services when it registered the Domain Name. The Panel further considers that by using the Domain Name that resolves to an adult content website, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
The Panel also notes that the Domain Name currently redirects to another domain name . This might show, in the view of the Panel, that the Respondent is aware of the illegitimate use of a protected name.
In conclusion, the Panel holds that the Respondent has registered and is using the Domain Name 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.
Daniel Kraus
Sole Panelist
Date: July 14, 2014
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