The Complainant is Fédération Internationale de l’Automobile (FIA) of Vernier, Switzerland, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
The Respondent is Whois Agent, Whois Privacy Protection Service Inc. of Kirkland, Washington, United States of America / Wilaiporn Rawanon of Chonburi, Thailand. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2016. On April 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 2, 2016, 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 3, 2016 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 on May 4, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 30, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 1, 2016.
The Center appointed Mihaela Maravela as the sole panelist in this matter on June 8, 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 is an international association gathering national Automobile Clubs, Automobile Associations, Touring Clubs, and National Federations for motoring and motor sport, with its office in Vernier, Switzerland.
The Complainant owns registered WRC marks dating to at least 2001.
The disputed domain name was registered on September 20, 2013. The disputed domain name resolves to a webstore selling clothing branded with the Complainant’s marks, as well with third party marks related to the automobile industry. 5. Parties’ Contentions A. Complainant
The Complainant shows that it was founded in 1904 as a non-profit organization and as an international association gathering national Automobile Clubs, Automobile Associations, Touring Clubs and National Federations for motoring and motor sport. The Complainant is the owner and organizer of the World Rally Championship (WRC). The WRC was first established in 1973 and is regarded as one of the most challenging and diverse motor sport disciplines. Clothing and further accessories are sold via the multi-brand WRC web shop and also on-event by retail partner Performance Clothing UK Limited on “”. The web shop delivers orders to customers in over 100 countries worldwide and provides an additional sales platform for WRC brand and team ranges. The on-site operation was launched in 2006.
The Complainant also alleges that the disputed domain name was registered and is being used for online sale of counterfeit sport clothing marked with WRC trademarks and other world famous right holders’ trademarks in motor sport branch such as Porche, Lexus, BMW, Jaguar, Hummer, Mercedes, Saab, Subaru, Renault, Peugeut, Pontiac, Ford or Mini. The website also presents news on WRC motor sport activities.
The Complainant contends that the disputed domain name is confusingly similar to its WRC trademark because the disputed domain name incorporates the entirety of the Complainant’s well-known trademark and merely a hyphen, the generic term “store” and the generic Top-Level Domain (“gTLD”) “com”. The Complainant argues that the addition of the word “store” to the disputed domain name causes the confusing similarity between the disputed domain name and the Complainant’s trademarks.
Moreover, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name since the Complainant has not licensed or otherwise permitted the Respondent to use any of the trademarks of the Complainant or any variations thereof, or use any domain name incorporating any of those trademarks or any variations thereof. The Respondent is not commonly known by the disputed domain name or the terms WRC or FIA World Rally Championship.
In addition, the Complainant argues that due to the long term use of the WRC trademarks in relation to FIA’s World Rally Championship events all over the world the WRC trademarks are well-known and there is no doubt that the Respondent had knowledge of the WRC trademarks at the time it registered the disputed domain name. The Respondent’s intent was to misleadingly divert the consumers looking for WRC related products and accessories to the website to which the disputed domain name resolves. The intention of the Respondent was to exploit the reputation of the FIA and its WRC trademarks. The Respondent is using the disputed domain name to create an impression of affiliation with the Complainant, its motor sport activity and WRC trademarks. By combination of the terms “wrc” and “store” the Respondent attempts to take benefit of Internet users seeking the Complainant’s original branded products, clothing and accessories to be bought online. Instead of finding the official WRC store, Internet users find an online shop selling counterfeit products, in no way related with the Complainant. Such use tarnishes the distinctiveness and repute of Complainant’s WRC trademarks. The Complainant concludes that the requirement of registration and use of the disputed domain name by the Respondent in bad faith is fulfilled for the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Noting the fact that the Respondent has not filed a Response, the Panel shall consider the issues present in the case based on the statements and documents submitted to the Panel by the Complainant.
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, paragraph 15(a) of the Rules.
Applied to this case, paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(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 Panel must find that the Complainant has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed. Here, the Complainant has demonstrated inter alia its ownership of European Union trademark WRC registered under number 2,487,841 and filed November 27, 2001. The Complainant’s trademark rights predate the registration of the disputed domain name (September 20, 2013).
As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name to the trademark. Here the disputed domain name includes a hyphen and the word “store” in addition to the WRC trademark.
The addition of a generic word to a trademark in a domain name will not avoid a determination that the domain name is confusingly similar to the mark. See Hoffmann-La Roche Inc. v. Lindy Shaw,WIPO Case No. D2008-0985. The fact that a domain name wholly incorporates a complainant's trademark may be sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. See Oki Data Americas Inc. v. ASD Inc.,WIPO Case No. D2001-0903.
In this case, apart from the gTLD “com”, the disputed domain name consists of the Complainant's trademark WRC and the term “store”. The Panel agrees with the opinion expressed by previous UDRP panels that the generic term “store” and the gTLD “.com” have no trademark significance and, thus, their presence in the disputed domain name does not avoid a finding of confusing similarity between the disputed domain name and the trademark (see Lilly ICOS LLC v. Mama Mia,WIPO Case No. D2006-0385; F. Hoffmann-La Roche AG v. Roelof Piersma,WIPO Case No. D2006-0225; Daniel Flachaire v. Raffaele Carofiglio,WIPO Case No. D2007-0163).
In the absence of any argument to the contrary from the Respondent, this Panel concludes that, on balance, the disputed domain name is confusingly similar to the Complainant’s trademarks. See also Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441.
It is well accepted by UDRP panels that a gTLD, such as “.com”, is typically ignored when assessing identity or confusing similarity between a trademark and a domain name.
The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice to it of the dispute, the respondent’s use 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) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) 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 burden of proof under paragraph 4(a)(ii) of the Policy is summarized in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), which states: “[…] 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 a 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 present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights. The Complainant has established that it is the owner of the WRC trademark and claims that the Complainant has not licenced or otherwise authorised the Respondent to use the WRC trademark. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “WRC” (see for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei,WIPO Case No. D2014-0957).
By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. See for a similar finding KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910.
Further, as discussed in section C below, the Panel also finds that the Respondent is not engaged in a bona fide offering of goods or services. There is also no evidence in the record that the Respondent’s use of the disputed domain name is a legitimate noncommercial or fair use.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
The fact that the disputed domain name is confusingly similar with the Complainant’s trademark WRC and that the said trademark has been used for a long period of time indicates not only that the Respondent was aware of the Complainant’s business and trademark at the time of registration, but also that it registered the disputed domain name to mislead Internet users into thinking it is some way connected, sponsored, endorsed by or affiliated with the Complainant’s services.
The Respondent provided no explanations for which he registered the disputed domain name.
As regards the use of the disputed domain name, the Complainant adduced evidence that the website to which the disputed domain name resolves is used for online sale of presumably counterfeit sport clothing marked with WRC trademark and other world famous right holders’ trademarks in motor sport branch. The website also presents news on the WRC motor sport activities. The Panel reviewed the website to which the disputed domain name resolves and found also the logo used on the Complainant’s official website. This shows in the Panel’s view that the website to which the disputed domain name resolves is used to create a likelihood of confusion as to Complainant’s affiliation with the site and offers for sale of presumably counterfeit replicas of Complainant’s goods. For a similar finding see IM Production v. Yan Si,WIPO Case No. D2015-1633.
This Panel agrees that even in the event that the Respondent offers genuine WRC goods (e.g. as a non-authorised reseller) rather than counterfeits, misleading Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business, or that the Respondent’s activities are approved or endorsed by the Complainant, indicates bad faith (see Swarovski Aktiengesellschaft v. ,WIPO Case No. D2013-1529; and also Swarovski Aktiengesellschaft v. bingbing chen,WIPO Case No. D2011-1524).
Additional factors considered by the Panel as indicative of bad faith registration and use of the disputed domain name include:
- the Respondent’s failure to respond to the Complaint and provide any evidence of bona fide registration and use (see Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications,WIPO Case No. D2001-0210);
- also, as noted above, the Panel has concluded that the Respondent had knowledge of the Complainant’s trademarks at the time of registration of the disputed domain name. The Respondent provided no explanations for which it registered the disputed domain name.
In the Panel’s view these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondent failed to bring evidence as to the contrary. Consequently, the Panel ascertains 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.
Mihaela Maravela
Sole Panelist
Date: June 22, 2016
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