The Complainant is Campagnolo S.r.l of Vicenza, Italy, represented by Giambrocono & C. S.p.A., Italy.
The Respondent is Internet Brands of Georgetown, Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed 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 January 18, 2016. On January 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 19, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 10, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 11, 2016.
The Center appointed Torsten Bettinger as the sole panelist in this matter on February 17, 2016. 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 produces bicycle components and is the owner of more than 130 trademark registrations consisting of or comprising the term “Campagnolo” in more than 50 countries, including:
- Community trademark registration no. 2704641, registered on March 1, 2006;
- US trademark registration no. 0983176, registered on May 7, 1974;
- US trademark registration no. 1941994, registered on December 19, 1995;
- US trademark registration no. 2266421, registered on August 3, 1999;
- US trademark registration no. 2622768, registered on September 24, 2002.
The disputed domain name was registered on January 6, 1998, and according to the Registrar was registered to the Respondent at least since January 24, 2014. At the time the Complaint was filed, the disputed domain name directed to a so-called “parking page” with sponsored links to bicycle parts, including Campagnolo bicycle parts, bicycle tools, and bicycle repair shops. The Panel visited the website connected to the disputed domain name on February 21, 2016, and observed that the sponsored links have been removed. 5. Parties’ Contentions A. Complainant
The Complainant states that each of the three elements of paragraph 4(a) of the Policy is satisfied.
With regard to the first element of the Policy, the Complainant states that the disputed domain name is substantially identical to its registered CAMPAGNOLO mark, adding only the suffix “usa” and ignoring the generic Top-Level Domain (“gTLD”) “.com,” since is not taken into account in assessing identity or confusing similarity.
Concerning the second element of the Policy, the Complainant notes that the Respondent is not entitled to use the disputed domain name for the relevant territory and has never been, and is not currently, commonly known by the disputed domain name. The Complainant further notes that the Respondent does not hold any trademark or other right consisting in whole or in part in the denomination CAMPAGNOLO, and that CAMPAGNOLO is neither a common noun nor a common name.
Finally, with regard to the third element of the Policy, the Complainant notes that the website which the disputed domain name directs to is a “parking” site, and accordingly the Respondent receives revenue via referral fees. The Complainant further claims that the disputed domain name was used intentionally to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark. The Complainant further notes that the use of the disputed domain name in connection with a commercial website constitutes evidence of bad faith registration and use under the Policy, and that bad faith can be inferred even if the sponsored links were provided by the Registrar. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors usually considered in trademark infringement. See F. Hoffmann-La Roche AG v. P Martin,WIPO Case No. D2009-0323; BWT Brands, Inc and British American Tobacco (Brands), Inc v. NABR,WIPO Case No. D2001-1480; and Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698. The Policy simply requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of the trademark CAMPAGNOLO as evidenced in the annexes to the Complaint.
The disputed domain name incorporates the Complainant’s trademark in its entirety. The incorporation of a trademark in its entirety into a domain name may often be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark, Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works,WIPO Case No. D2005-0941.
The Panel finds that Internet users would interpret the addition of the letters “usa” in the domain name as a reference to the United States of America (“United States”). The Panel finds that the addition of a geographic description such as “usa” is insufficient to distance the domain name from the Complainant’s trademark: See PepsiCo, Inc v. Kieran McGarry,WIPO Case No. D2005-0629 and Volvo Trademark Holding AB v. SC-RAD Inc.,WIPO Case No. D2003-0601.
The Panel further finds that the addition of gTLDs such as “.com” may be disregarded when determining whether the disputed domain name is confusingly similar to the complainant’s trademark, see PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189.
The Panel thus finds that the disputed domain name is confusingly similar to the Complainant’s CAMPAGNOLO mark and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. However, it is the consensus view among UDRP panels that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name. See Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
In this case, the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant confirms that it has not licensed or authorized the Respondent to use its CAMPAGNOLO mark in any fashion and that there is no connection between the Respondent and the Complainant. At the time the Complaint was filed, the disputed domain name was used to direct Internet users to a parking website offering links to products competing with those of the Complainant, from which the Respondent apparently derived commercial benefit (either directly or via referral fees). The use of a domain name to garner revenue on the basis of Internet user confusion, through the incorporation of a complainant’s trademark, does not constitute a bona fide commercial offering for the purposes of the Policy. See Harry Winston Inc. and Harry Winston, S.A. v. Harry Pluviose,WIPO Case No. D2010-0210 and La Quinta Worldwide, L.L.C. v. VALUE-DOMAIN COM/Value Domain,WIPO Case No. D2012-0005.
The Respondent has failed to submit proof of any rights or legitimate interests in the disputed domain name and to reply to the Complainant’s contentions. Therefore, the Panel finds that there is no evidence to suggest that the Respondent has any rights or legitimate interests in any trademarks or service marks which are identical, similar or related to the disputed domain name.
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not provided any evidence of its rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) is also satisfied. C. Registered and Used in Bad Faith
The Complainant has maintained registered rights in CAMPAGNOLO mark in the United States since as early as 1974.. The disputed domain name differs from the Complainant’s trademark only by the addition of a geographic indicator and in the selection of the top-level extension, indicating that the Respondent was likely aware of the potential for Internet user confusion. Therefore, in the Panel’s view, it is more probable than not that the Respondent was aware of the Complainant at the time it selected the disputed domain name for registration.
As noted above, the disputed domain name resolved to a parking page with sponsored links related to the Complainant’s activities. Thus, the Respondent has presumably derived either sales profits or referral revenue via this website. Such activity constitutes evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy. See La Quinta Worldwide, supra.
Accordingly, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy has also been met. 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.
Torsten Bettinger
Sole Panelist
Date: February 22, 2016
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