The Complainants are Brand Trading Company S.A. of Luxembourg, Luxembourg (“Brand Trading Company”) and Astroway Ltd of Hong Kong, China (“Astroway”), represented by Office Freylinger S.A., Luxembourg.
The Respondent is Valentina Luti of Saline di Volterra, Italy. 2. The Domain Name and Registrar
The disputed domain name is registered with Ascio Technologies Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2015. On May 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 22, 2015, 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 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 26, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 15, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 16, 2015.
The Center appointed Mladen Vukmir as the sole panelist in this matter on June 18, 2015. 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 Panel has determined the following non-contested facts:
(i) the disputed domain name was created on July 16, 2014 (Annex 1 to the Complaint);
(ii) the Respondent is the registrant of the disputed domain name (Annex 1 to the Complaint and confirmed by the Registrar);
(iii) Brand Trading Company is the owner of a number of TARA trademark registrations registered in the class 45 for various services relating to tarot cards, providing horoscope and astrology information, horoscope castings, including provision of such services via Internet, as listed and evidenced in the Complaint and Annex 3 to the Complaint, particularly, Trademark Country Reg. No. Registration Date Class(es)
TARA (word)
Argentina
2.564.812
April 25, 2013
45
TARA (word)
Australia
1469595
January 12, 2012
45
TARA (word)
Brazil
831116978
October 29, 2014
45
TARA (word)
Canada
TMA884,602
August 22, 2014
45
TARA (word)
United States of America
4,226,420
October 16, 2012
45
TARA (word)
South Africa
2012/30331
November 8, 2012
45
TARA (word)
European Union
009684887
June 30, 2011
45
TARA (word)
Mexico
1310591
September 11, 2012
45
(iv) by means of the Trademark License Agreement dated November 11, 2011 (Annex 4 to the Complaint), Brand Trading Company as the licensor granted Astroway as the licensee with the exclusive right to use respective Brand Trading Company’s TARA trademarks for personal and social services rendered by others to meet the needs of individuals; horoscope casting; clairvoyant services; clairvoyant services at distance and related services, for the territories of Argentina, Brazil, Canada, Europe, Hong Kong, China, Mexico and the United States of America;
(v) Astroway is the owner of the domain name which was first created on September 9, 2008 and which incorporates Brand Trading Company’s TARA trademark. The Panel determined this fact by inspecting the publicly available WhoIs records.
It should be noted that a part of the materials (Annexes) submitted by the Complainant along with the Complaint are in Italian language (e.g., the comparison of websites – Annex 5 to the Complaint). Although the language of the subject proceedings is English, the Panel was nevertheless in a position to review and take into consideration said materials in Italian because of the Panel’s knowledge of the Italian language. 5. Parties’ Contentions A. Complainant
The Complainants, essentially, assert that:
Brand Trading Company is the owner of a number of TARA trademarks registered worldwide in class 45 for various services relating to tarot cards, providing horoscope and astrology information, horoscope castings, including provision of such services via Internet. Brand Trading Company has granted a license to Astroway to use its’ TARA trademarks for the services defined in the respective Trademark License Agreement. Astroway uses the licensed TARA trademark for clairvoyant and related services via the website under the domain name .
The disputed domain name is identical or at least confusingly similar to Brand Trading Company’s TARA trademark since: it incorporates the same TARA trademark entirely; TARA trademark is located at the beginning of the disputed domain name which makes it predominant element of the same; TARA trademark is divided from the remainder of the disputed domain name, i.e. the word “chiaroveggenza” by an hyphen which makes it clearly distinguishable; the word “chiaroveggenza”, which means clairvoyance in Italian is completely generic, descriptive and thus devoid of distinctive character, and as such is not sufficient to avoid confusing similarity; the generic Top-LevelDomain (“gTLD”) suffix “.org” does not affect the domain name for the purpose of determining the confusing similarity.
The Respondent has neither rights nor legitimate interests in respect of the disputed domain name. To support this claim, the Complainants invite the Panel to consider that: the trademark searches performed by the Complainants have shown that the Respondent has not registered any trademarks; the Respondent has registered the disputed domain name on July 16, 2014 and in this short time it cannot be assumed that it has become commonly known by the same domain name; Respondent is neither licensed nor authorized to use the TARA trademark by the Complainants nor is there any business relationship between the Respondent and the Complainants; the Respondent is not making the noncommercial or fair use of the disputed domain name as it offers clairvoyance services commercially and the disputed domain name is identical to the website operated by Astroway under the domain name , the respective gTLD suffix being the only difference; the design of the Respondent’s website operated under the disputed domain name is highly similar to the website operated by Astroway under the domain name , copying the text, but also the pictures and even the legal notice.
The Respondent has registered and is using the disputed domain name in bad faith, in light of the following: the quasi-identity between the two websites, namely the identical second level domain name “tara-chiaroveggenza”, the similar design of the website, copying parts of Astroway’s website, all indicate that the Respondent had knowledge of the Complainants and their business, and that the Respondent therefore acted with the intention to disrupt the business of the Complainants as its competitors, or intentionally attempted to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants’ mark and website as to 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. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Procedural Issues: Consolidation of the Complaint A. Consolidation of the Complaint
Panels in earlier UDRP cases have articulated principles governing the question of consolidation, i.e. whether a complaint filed by multiple complainants may be brought against (one or more) respondents (see paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
Under the same paragraph 4.16 of the WIPO Overview 2.0, these criteria encompass situations in which (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants’ individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation; or in the case of complaints brought (whether or not filed by multiple complainants) against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. In order for the filing of a single complaint brought by multiple complainants or against multiple respondents which meets the above criteria to be accepted, such complaint would typically need to be accompanied by a request for consolidation which establishes that the relevant criteria have been met. The onus of establishing this falls on the filing party/parties, and where the relevant criteria have not been met, the complaint in its filed form would not be accepted. Relevant decisions in this regard are: NFL Properties, Inc. inter alia v. Rusty Rahe,WIPO Case No. D2000-0128, ; Fulham Football Club (1987) Limited, v. Domains by Proxy, Inc./ Official Tickets Ltd,WIPO Case No. D2009-0331, ; MLB Advanced Media, The Phillies, Padres LP v. OreNet Inc.,WIPO Case No. D2009-0985, ; Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof,WIPO Case No. D2009-1661, ; Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281, .
As a matter of general principle, this Panel supports the position of panels in previous UDRP matters that it should be possible for a single complaint to be brought by multiple complainants. Especially, since the Policy and Rules do not explicitly prohibit consolidation of multiple complainants. This Panel, also finds the criteria for such consolidation established by earlier UDRP panels to be suitable and well-adjusted to the purpose of the UDRP to fight the cybersquatting swiftly and efficiently. Nevertheless, this Panel shares the opinion of the UDRP panel expressed in Fulham Football Club (1987) Limited, et al. v. Domains by Proxy, Inc. / Official Tickets Ltd,WIPO Case No. D2009-0331 whereby the aforementioned criteria must be applied judiciously and depending upon the circumstances of particular cases may require the exercise of panel’s discretion in adapting it as appropriate.
Therefore, the question is whether the criteria for consolidation of complainants established by earlier UDRP panels are met in the matter at hand, i.e. (i) whether the Complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants' individual rights in a similar fashion; and whether (ii) it would be equitable and procedurally efficient to permit the consolidation.
This Panel holds that both of the aforementioned criteria for consolidation of complainants are met in the subject matter.
In this Panel’s view, the two Complainants in this matter – Brand Trading Company and Astroway – have a common grievance against the Respondent. Namely, the two Complainants have a common legal interest in trademark rights over the TARA trademark on which the Complaint is based: Brand Trading Company as the owner and licensor of said trademark and Astroway as the licensee with the exclusive right to use the same trademark for personal and social services rendered by others to meet the needs of individuals; horoscope casting; clairvoyant services; clairvoyant services at distance and related services, for the territories of Argentina, Brazil, Canada, Hong Kong, China, Mexico, the United States of America and Europe where the Respondent apparently resides. It is a consensus view under the UDRP that a licensee of a trademark is in most circumstances considered to have rights in a trademark under the UDRP (see paragraph 1.8 of the WIPO Overview 2.0).
Such findings of the Panel are in line with findings of panels in earlier UDRP matters which have found that the most obvious case of multiple complainants having a common grievance against a single respondent is where the complainants have a common legal interest in the rights on which the complaint is based, with the simple example of this being the case where the multiple complainants have a shared interest in a trademark, such as may exist between a licensor and a licensee. E.g., Fulham Football Club (1987) Limited, et al. v. Domains by Proxy, Inc. / Official Tickets Ltd, supra.
Furthermore, the Panel does not see any apparent reason why it would not be equitable or procedurally efficient to permit consolidation of complainants in this matter. Especially since the two Complainants are linked through a commercial agreement under which they have shared interest over TARA trademark on which the Complainant is based; the Complainants made clear the mutual relationship in relation to said trademark rights; and are represented by the same authorized representative. Therefore, this Panel finds that it would be equitable and procedurally efficient to permit the consolidation of the Complainants.
The Complainants did not include a separate request for consolidation in the Complaint. However, the Panel holds, that this should not be an obstacle for allowing the consolidation of the Complainants in this matter. Namely, in the Panel’s view, the fact that the Complainants have submitted one Complaint, shows their intention for consolidation, while the existence of relevant conditions for consolidation can be established from the Compliant and Annexes to the same.
Having in mind the aforesaid, the Panel finds that Brand Trading Company and Astroway may be joined as complainants in this matter. 6.2 Substantive Elements of the Policy
The Panel now proceeds to consider this matter on the merits in light of the Complaint, the lack of the Response, the Policy, the Rules, the Supplemental Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to the disputed domain name, each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Primarily, the Panel emphasizes that under general consensus view, the mere fact of ownership of a registered trademark by the complainant is generally sufficient to satisfy the threshold requirement of having trademark rights (see paragraph 1.1 of the WIPO Overview 2.0). Moreover, it is a consensus view that a licensee of a trademark is in most circumstances considered to have rights in a trademark under the UDRP (see paragraph 1.8 of the WIPO Overview 2.0).
The Complainants have submitted sufficient evidence to show that they are the owner/licensee of a number of TARA trademarks worldwide, including one Community Trademark, registration of which is valid also in Italy, where the Respondent appears to reside.
Moreover, it is well established that the threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the disputed domain name to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain name, with the addition of common, dictionary, descriptive or negative terms typically being disregarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP typically involves a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name (see paragraph 1.2 of WIPO Overview 2.0).
The disputed domain name consists of three parts: the word “tara”, a hyphen and the word “chiaroveggenza”.
After performing the straightforward visual and aural comparison, it is evident to this Panel that the disputed domain name incorporates the Complainants’ TARA trademark in its entirety without any modifications, and that the same TARA trademark of the Complainants is clearly recognizable as such within the disputed domain name.
The Panel must further answer the question, whether adding the hyphen and the word “chiaroveggenza” to the word “tara” is sufficient to prevent the confusing similarity of the disputed domain name with the Complainants’ TARA trademark.
The hyphen as the second part of the disputed domain name is in this Panel’s opinion insignificant and does little to avoid confusing similarity of the disputed domain name with the Complainants’ TARA trademark. It should be noted that a number of UDRP panels in previous cases found the hyphen to be insufficient to overcome the confusing similarity of the domain names consisting of the trademark, one or more hyphen/s followed by one or more generic term/s (e.g., see Swarovski Aktiengesellschaft v. Swarovski AG,WIPO Case No. D2010-2139; Swarovski Aktiengesellschaft v. jianxin ou aka jianxinou,WIPO Case No. D2010-2022; Swarovski Aktiengesellschaft v. Domain Privacy Group Inc. / George Tzikas,WIPO Case No. D2010-2067; and Swarovski Aktiengesellschaft v. Bruce Bush,WIPO Case No. D2012-0628).
With respect to the above, this Panel upholds the Complainants’ contention that the term “chiaroveggenza” (meaning “clairvoyant” in Italian) is generic and non-distinctive, and that used by the Respondent in combination with the Complainants’ TARA trademark in the disputed domain name is insufficient to prevent a finding of confusing similarity. What is more, in this Panel’s view, adding said generic word may, in fact, reinforce consumer confusion as to the connection between the Complainants’ TARA trademark and the disputed domain name. It would be entirely reasonable for Italian consumers (to which the disputed domain name obviously speaks to) seeking information regarding the Complainants and their business to type the word “chiaroveggenza” in addition to the word “tara”.
Therefore, in this Panel’s view, it is reasonable to conclude that the Respondent most likely did not intend to distinguish the disputed domain name from the Complainants’ trademark by adding the generic term “chiaroveggenza” (meaning “clairvoyant” in Italian) to the Complainants’ TARA trademark when creating the disputed domain name. To the contrary, in this Panel’s opinion, it is very likely that the Respondent’s intention was for the disputed domain name to trade on the renown of the Complainants’ trademark. The presence of the Complainants’ TARA trademark in the disputed domain name certainly bears weight as a signal to the potential customers and the disputed domain name would likely benefit from the same. The latter especially, if one bears in mind that the term “chiaroveggenza” (meaning “clairvoyant” in Italian) by itself has no distinctive character, and as such can be considered as a common/generic term.
It should be noted, that prior UDRP panels have found confusing similarity in several earlier cases based on the circumstances involving domain names comprised of a well-known trademark and a generic term. Confusing similarity was found in those instances because the term added was not powerful enough to overcome the strong mental association created by the trademark itself. See the generally adopted panel views under paragraph 1.9 of the WIPO Overview 2.0, and particularly, Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437; America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004; Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Viacom International Inc. v. Frank F. Jackson and Nancy Miller,WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet Ltd.,WIPO Case No. D2000-0275; Société Air France v. R Blue,WIPO Case No. D2005-0290; SANOFI AVENTIS v. ProtectF/RegisterF,WIPO Case No. D2006-1272; F.Hoffmann-La Roche AG v. Avieltech Consultant,WIPO Case No. D2007-0930. Also, see the numerous UDRP decisions cited by the Complainant: Swarovski Aktiengesellschaft v. PrivacyP Domain Admin / Trade Out Investments Ltd,WIPO Case No. D2011-1522; Swarovski Aktiengesellschaft v. Christine Jil,WIPO Case No. D2011-0981; Swarovski Aktiengesellschaft v. liu ji,WIPO Case No. D2011-0353; Swarovski Aktiengesellschaft v. Marzena Marzena,WIPO Case No. D2011-0980; Swarovski Aktiengesellschaft v. shenglin fan,WIPO Case No. D2012-0170; Swarovski Aktiengesellschaft v. Kimi DeLuca,WIPO Case No. D2007-0252; Swarovski Aktiengesellschaft v. Zhang Yulin,WIPO Case No. D2009-0947; and See Siebel Systems, Inc v. Implementation Services Group, Inc., WIPO Case No. D2002-1070.
Regarding the applicable gTLD “.org” suffix in the disputed domain name, it is a consensus view that it is usually disregarded under the confusing similarity test (see paragraph 1.2 of the WIPO Overview 2.0).
For all the foregoing reasons, the Panel finds that the Complainants have satisfied the requirement set forth in paragraph 4(a)(i) of the Policy, i.e. has proven that the disputed domain name is confusingly similar to their TARA trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
“(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The consensus view of UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy is summarized in paragraph 2.1 of the WIPO Overview 2.0, whereby: “[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. […]”.
In the subject matter case, the Respondent is in default, hence, the Panel has evaluated the arguments and evidence submitted by the Complainants’ and finds that the Complainants have made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Namely, the Complainants have established that they are the owner/licensee of a number of TARA trademark registrations in various jurisdictions around the world, as well as that they have used the same trademark on the market and the Internet, primarily through the website available under the domain name owned by one of the two Complainants.
The Panel observes that there is neither any relation, disclosed to the Panel nor otherwise apparent from the records, between the Respondent and the Complainants, nor does it arise that the Complainants have ever licensed or otherwise permitted the Respondent to use their TARA trademark, or to apply for or use any domain name incorporating the same trademark.
Furthermore, there is no evidence that the Respondent has been commonly known by the disputed domain name or has been using the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers.
In this Panel’s view, from the evidence presented by the Complainants, it can be safely concluded that the Respondent deliberately chose to include the Complainants’ TARA trademark in the disputed domain name, in order to achieve commercial gain by misleadingly diverting consumers, and that such use cannot be considered as a legitimate noncommercial or fair use. Especially if one takes into the account that the content of the disputed domain name is identical to the Complainants’ domain name (the only difference being the respective gTLD suffix), as well as that the content of the website operated by the Respondent under the disputed domain name is very similar to the Complainants’ website, copying entire portions of the text, but also the pictures and even the legal notice. Therefore, it is not likely that the Respondent’s choice of words in the disputed domain name was random.
Accordingly, the Panel finds that the requirements set forth in paragraph 4(a)(ii) of the Policy have been fulfilled by the Complainants’ making the prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and by the Respondent’s failing to produce any arguments or evidence to the contrary. 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 respondent 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 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 its 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.
Owing to a lack of Response or any other evidence to the contrary, the Panel accepts the Complainants’ arguments substantiated by evidence that, at the time of registration of the disputed domain name, the Respondent was in bad faith, since the Respondent must have been aware of the Complainants, their TARA trademark and business.
In this regard, the Panel notes that the Respondent registered the disputed domain name, which is almost identical to the earlier domain name owned by one of the two Complainants (the only difference being the respective gTLD suffix). Furthermore, from the evidence submitted by the Complainants (Annex 5 to the Complaint), it is evident that that on the website operated under the disputed domain name the Respondent offers almost identical services as offered on the website of the Complainants available under the domain name . The two websites are also very similar in overall appearance, structure and colours used. What is more, it is evident that the Respondent copied part of the text, pictures and even the legal notice from the Complainants’ website. Therefore, it is not likely that the Respondent was not aware of the Complainants and their business. The Respondent must have been aware of the risk of deception and confusion that would result from the registration of the disputed domain name and the posting of the content of the website linked thereto.
Therefore, the Panel finds that, by registering and using the disputed domain name, the Respondent has intentionally attempted to attract Internet users to the Respondent’s website, for commercial gain by creating a likelihood of confusion with the Complainants’ trademark and business as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or the service on the Respondent’s website.
For the above reason, the Panel finds the provisions of paragraph 4(b)(iv) of the Policy to be applicable in this case, since that the Respondent’s registration and use of the disputed domain name interferes with the Complainants’ business and Internet users might be misled about the source, sponsorship, affiliation, or endorsement of the Respondent’s website. See, e.g., the following decisions issued by panels in earlier UDRP proceedings:
(i) PepsiCo, Inc. v. Ali Khan,WIPO Case No. D2004-0292: “The fact that the Respondent elected to register a domain name substantially comprising the “PEPSI” trademark indicates that it was a deliberate act to mislead consumers into believing there was a connection with the Complainant”;
(ii) Sanofi v. PrivacyP / ICS Inc.,WIPO Case No. D2012-1293: “[…] previous UDRP decisions have found bad faith at the time of registration to exist where a domain name is so obviously connected with such a well-known trademark that its very use by someone with no connection with the trademark suggests opportunistic bad faith (LEGO Juris A/S v. Reiner Stotte,WIPO Case No. D2010-0494; and Sanofi-aventis v. Nevis Domains LLC,WIPO Case No. D2006-0303)”.
Given the above, the Panel determines that the disputed domain name has been registered and is being used bad faith and that the Complainant fulfilled the third element under paragraph 4(a) of the Policy. 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 Brand Trading Company S.A.1
Mladen Vukmir
Sole Panelist
Date: July 2, 2015
1 The Panel notes that the Complainants requested transfer of the disputed domain name, but did not specify to which Complainant. The Panel orders that the disputed domain name be transferred to the Complainant, Brand Trading Company S.A., as this appears to be in line with previous UDRP cases (see, e.g., “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. Posers/Philip Cox,WIPO Case No. D2011-1142, where it was stated that transfer should be ordered only to the complainant who has a trademark entitlement, and The Avenue, Inc. and United Retail Incorporated v.Chris Guirguis doing business as Lighthouse Web Design and/or Cannibal, and Sam Guirguis,WIPO Case No. D2000-0013, where the panel ordered transfer to the trademark owner in a case involving the trademark owner and the licensee as complainants.
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