Complainant is Bialetti Industrie S.p.A. of Coccaglio, Italy, represented by Jacobacci & Associati, Italy.
Respondent is Onno Brantjes, Stichting Taxaceae of Arnhem, the Netherlands, self-represented. 2. The Domain Names and Registrar
The disputed domain names , and (the “Disputed Domain Names”) are registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2016. On July 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On the same date, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2016. In accordance with paragraph 5(b) of the Rules, the Response due date was extended until August 14, 2016. The Response was filed with the Center on August 12, 2016.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on August 22, 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
Complainant, Bialetti Industrie S.p.A., is an Italian Company that produces and markets household appliances. Complainant is the holder of several trademarks, which contain the word “bialetti”, including:
- European Union trademark registration No. 6732424 for BIALETTI (word), filed on March 6, 2008, registered on May 19, 2010, in classes 7, 8, 9, 11, 20, 21 and 30;
- European Union trademark registration No. 6732531 for BIALETTI (word and device), filed on March 6, 2008, registered on January 22, 2009, in classes 7, 8, 9, 11, 20, 21 and 30.
Complainant uses its BIALETTI trademark in the market of products for making coffee, like the traditional coffee pots, electric coffee pots, electric machines for espresso coffee, and a range of coffee in capsules.
Respondent is the license holder of a Haitian trade mark for the word mark BIAL ETTI, filed on June 25, 2014, and registered on November 6, 2014 in class 2.
Respondent is the current holder of the Disputed Domain Names , and , all registered on April 9, 2014. The Disputed Domain Names resolve to the same website stating “en construction”.
On April 21, 2016, Complainant sent a cease and desist letter to Respondent, requesting the transfer of the Disputed Domain Names.
On June 20, 2016, a purported representative of Respondent replied, arguing that Respondent did not infringe any of the intellectual property rights of Complainant. 5. Parties’ Contentions A. Complainant
Complainant considers that the Disputed Domain Names are confusingly similar to trademarks and service marks in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. According to Complainant, i) there is no evidence of Respondent’s use of, or demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services; (ii) Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name BIALETTI; (iii) there is no noncommercial fair use of the domain names. Finally, Complainant claims that the Disputed Domain Names were registered and are used in bad faith. Complainant argues that Respondent took advantage, through what is either a company who has coincidentally registered in Haiti BIAL ETTI for paints or a company related to Respondent, of the local legislation in Haiti, allowing for quick registration of trademarks without examination. Rather than constituting a legitimate interest, these trademark registrations are further evidence of bad faith, according to Complainant. B. Respondent
Respondent considers it has rights and legitimate interests in the “bial etti” name, and that it needs the Disputed Domain Names to be able to offer products to consumers in Haiti. According to Respondent, both parties have rights and legitimate interest in the Disputed Domain Names, and the principle of first-come, first-served applies. Finally, Respondent argues it did not register nor use the Disputed Domain Names in bad faith. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
i. the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
iii. the Disputed Domain Names have been registered and are being used in bad faith.
The Panel will deal with each of these requirements in turn. A. Identical or Confusingly Similar
To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has clearly established that there are registered BIALETTI trademarks in which Complainant has rights.
The Panel notes that the Disputed Domain Names , and incorporate Complainant’s BIALETTI trademark in its entirety. The Panel is of the opinion that the addition of generic Top-Level Domain (“gTLD”) can be disregarded when comparing the similarities between a domain name and a trade mark (see Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck,WIPO Case No. D2014-0206; Zions Bancorporation v. Mohammed Akik Miah,WIPO Case No. D2014-0269). Therefore, the Panel considers the Disputed Domain Names to be identical to Complainant’s BIALETTI trademark.
Accordingly, Complainant has made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
It is established case law under the Policy that it is sufficient for Complainant to make a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain names in order to place the burden of rebuttal on Respondent (see Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Panel notes that Respondent has not apparently been commonly known by the Disputed Domain Names, that Respondent’s use and registration of the Disputed Domain Names was not authorized by the Complainant, and that there are no indications that a connection between Complainant and Respondent existed.
However, Respondent seems to have acquired a license in the Haitian trademark BIAL ETTI for paints. Respondent argues it wants to focus on products and services related to electric domestic appliances, such as coffee machines, among other things. According to Complainant, that explains the relevance of the domain name registrations in the gTLDs “.coffee”, “.kitchen” and “.cooking”.
However, the registration of a trademark which corresponds to a disputed domain name does not necessarily establish respondent rights or legitimate interests in that domain name for the purpose of the second element of the UDRP. For example, panels have generally declined to find respondent rights or legitimate interests in a domain name on the basis of a corresponding trademark registration where the overall circumstances demonstrate that such trademark was obtained primarily to circumvent the application of the UDRP (see Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”, WIPO Case No. D2000-0847, ; Chemical Works of Gedeon Richter Plc v. Covex Farma S.L.,WIPO Case No. D2008-1379, inter alia; British Sky Broadcasting Group Plc. and British Sky Broadcasting Limited v. Global Access,WIPO Case No. D2009-0817, ).
In the case at hand, Respondent is based in the Netherlands, where Complainant’s trademark has a certain reputation, and it is highly unlikely that Respondent was not aware of Complainant’s widely known trademark when it registered the Disputed Domain Names and when it obtained a license to a trademark in Haiti. The Disputed Domain Names were registered before Respondent’s licensor applied for trademark registration in Haiti. Moreover, Respondent has provided no evidence whatsoever of “use in commerce” or any preparations for the use in commerce in Haiti or elsewhere of the trademark BIAL ETTI.
The Panel determines that Respondent’s license for the Haitian trademark BIAL ETTI does not establish that Respondent was known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy, nor does it otherwise establish that Respondent has rights or legitimate interests in the disputed domain names.
In addition, the Panel is of the opinion that Respondent is not “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” (Policy, paragraph 4(c)(iii)).
In view of the foregoing, the Panel considers that Complainant has also made out the second of the three elements that it must establish. C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities both that the Disputed Domain Names were registered in bad faith and that they are being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
In the instant case, the Panel finds that Respondent must have had knowledge of Complainant’s rights in the BIALETTI trademark at the moment it registered the Disputed Domain Names, since Complainant’s trademark is a widely known trademark. Complainant has valid trademarks and offers products in the Netherlands, where Respondent is located. The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks).
Respondent is not using the Disputed Domain Names. According to the Panel, the passive holding of the Disputed Domain Names may amount to bad faith when it is difficult to imagine any plausible future active use of the Disputed Domain Names by Respondent that would be legitimate and not infringing Complainant’s well-known mark or unfair competition and consumer protection legislation (see Inter-IKEA v Polanski,WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh,WIPO Case No. D2000-0438; Telstra Corporation Limited v. Nuclear Marshmallows, supra). The fact that a complainant’s trademark has a strong reputation and is widely used and the absence of evidence whatsoever of any actual or contemplated good faith use are further circumstances that may evidence bad faith registration and use in the event of passive use of domain names (Telstra Corporation Limited v. Nuclear Marshmallows, supra).
In the present case, the Panel is of the opinion that Complainant’s BIALETTI trademark is widely known, which makes it difficult to conceive any plausible legitimate future use of the Disputed Domain Names by Respondent. Even if Respondent had legitimate plans to develop a business in paints in Haiti, there would have been no need for Respondent to register domain names that are identical to Complainant’s trademark in gTLDs that relate directly to Complainant’s business.
In view of the above, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Names were registered and are 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 Names, , and , be transferred to Complainant.
Flip Jan Claude Petillion
Sole Panelist
Date: September 5, 2016
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