Complainant is Heineken Italia S.p.A. of Pollein, Italy, represented by Perani Pozzi Associati - Studio Legale, Italy.
Respondent is xiongmiao of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2016. On October 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 29, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center regarding the Registrar information, the Complainant filed an amendment to the Complaint on November 2, 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 Respondent of the Complaint, and the proceedings commenced on November 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 24, 2016.
The Center appointed Yijun Tian as the sole panelist in this matter on November 30, 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, Heineken Italia S.p.A., is a company incorporated in Pollein, Italy. Established in 1864, it is a renowned company representing the Italian branch of Heineken NV, the number one brewer in Europe and the number three brewer by volume in the world. It has operations in over 70 countries, and has an internationally and entrepreneurial team of over 85,000 employees (see Annex D to the Complaint).
Complainant has exclusive rights in multiple trademarks incorporating its BIRRA MORETTI mark. Complainant is the exclusive owner of the registered BIRRA MORETTI mark globally (Annex F to the Complaint), including European Union trademark registration No. 39917, since September 11, 1998 and International trademark registration no. 817097 covering China, since September 22, 2003. Complainant also owns a few domain names containing BIRRA MORETTI mark, such as , and .
Respondent is xiongmiao of Beijing, China. The disputed domain name was registered on June 3, 2016, long after the BIRRA MORETTI marks were registered. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is identical to the BIRRA MORETTI mark in which Complainant has rights.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that the disputed domain name was registered and is being used in bad faith.
Complainant requests that the disputed domain name be transferred to it. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the BIRRA MORETTI marks acquired through registration. The BIRRA MORETTI mark has been registered worldwide, including European Union trademark registration (since September 11, 1998) and International registration covering China (since September 22, 2003).
The disputed domain name comprises the BIRRA MORETTI mark in its entirety. The disputed domain name only differs from Complainant’s trademarks by the generic Top-Level Domain (“gTLD”) suffix “.xyz” to the BIRRA MORETTI marks. This does not eliminate the identity or at least the confusing similarity between Complainant’s registered trademarks and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states:
“The applicable top-level suffix in the domain name (e.g., “.com”) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark”. (paragraph 1.2).
Thus, the Panel finds that the gTLD suffix “.xyz” is not sufficient to negate the confusing similarity between the disputed domain name and the BIRRA MORETTI marks.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;
(ii) the fact that Respondent has commonly been known by the disputed domain name; or
(iii) legitimate noncommercial or fair use of the disputed domain name.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
Complainant has rights in the BIRRA MORETTI mark, including European trademark registration (since September 11, 1998) and International registration covering China (since September 22, 2003). According to Complainant, it operates in over 70 countries, and has an internationally and entrepreneurial team of over 85,000 employees.
Moreover, Respondent is not an authorized dealer of BIRRA MORETTI branded products or services. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “birra moretti” in its business operation or the use of the BIRRA MORETTI marks on its website (without disclaimer or other clarifying details). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the BIRRA MORETTI mark or to apply for or use any domain name incorporating the BIRRA MORETTI mark;
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. The disputed domain name was registered on June 3, 2016, which is long after the BIRRA MORETTI marks became widely known. The disputed domain name is identical or confusingly similar to Complainant’s BIRRA MORETTI mark;
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was providing the links to Complainant and its competitors through the website resolved by .
The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds also taking into consideration the Panel’s findings below, that Complainant has established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product or service on Respondent’s websites or location.
The Panel concludes that the circumstances referred to in paragraphs 4(b)(iii) and (iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.
a) Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the BIRRA MORETTI marks with regard to its products or services. Complainant has registered its BIRRA MORETTI marks internationally, including International registration covering China. According to Complainant, it operates in over 70 countries, and has an internationally and entrepreneurial team of over 85,000 employees (as introduced above). Moreover, the website at the disputed domain name provides the links to Complainant and its competitors.
Respondent would likely not have provided the links to Complainant and its competitors on the website if it was unaware of BIRRA MORETTI’s reputation. In other words, it is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain name.
The Panel therefore finds that the BIRRA MORETTI mark is not a mark that a trader would randomly adopt for the purpose other than to create an impression of an association with Complainant (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s BIRRA MORETTI-branded products or services.
b) Used in Bad Faith
Complainant has adduced evidence to prove that by using the confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website”.
To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
Given the widespread reputation of the BIRRA MORETTI marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves. In other words, Respondent has through the use of the disputed domain name created a likelihood of confusion with the BIRRA MORETTI marks. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepage of the disputed domain name, potential Internet users are led to believe that the website at is either Complainant’s site or the site of an official authorized agent of Complainant, which is not the case.
Moreover, according to Complainant, Respondent is using the website resolved by the disputed domain name to provide the links to Complainant and Complainant’s competitors (as introduced above). The Panel therefore concludes that the disputed domain name is being used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use the disputed domain name, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complaint fulfils the third element of paragraph 4(a) of the Policy. 7. Decision
For all 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 Complainant.
Yijun Tian
Sole Panelist
Dated: December 9, 2016
Full & Egal Universal Law Academy