Complainant is Trasporti Internazionali Agenzia Marittima Savino Del Bene S.p.A. of Florence, Italy, represented by Colin & Partners S.r.l., Italy.
Respondent is Marwa Yousri, Maro Web of Alexandria, Egypt. 2. The Domain Names and Registrar
The Disputed Domain Names and are 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 March 14, 2017. On March 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On March 16, 2017, 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 March 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 13, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 20, 2017.
The Center appointed Richard W. Page as the sole panelist in this matter on May 8, 2017. 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 owns two trademarks SAVINO DEL BENE. Savino Del Bene, the founder whose name is homonymous with the name of Complainant, started in Florence, Italy, at the beginning of the 1900s. The company’s early focus was to develop freight forwarding services primarily toward the United States of America. Today Complainant has evolved into a global logistics provider with a worldwide network, specialized in supply chain management, offering services for ocean, air and surface transportation
Complainant is now a global operator with over 3,200 employees, 148 company branches, 67 subsidiary offices and with support to over 150 select correspondents.
Complainant is the owner of international trademark registrations, including International Trademark Registration No. 805451, filed on May 29, 2003 in class 39 “Transport agency services” and designating also Egypt, which had been duly renewed and remains in force and European Union Trademark Registration No. 770867, filed on March 13, 1998 in class 39 “Services of a transport agency” and duly renewed and remaining in force.
The Complainant claims rights in “SDB” Marks contain an acronym for “Savino Del Bene” and has been used in trade by Complainant since its constitution. In fact, many companies within Complainant are named “SDB,” for example SDB Benelux S.A. is the company of Complainant parenting the Savino Del Bene Egypt branch. Moreover, Complainant has registered and used many domain names using the acronym “SDB” such as: , , and for identifying some of Complainant’s branches. Hereinafter, SAVINO DEL BENE and SDB are referred to collectively as the “SDB Marks”.
The Disputed Domain Names were registered in April 2005 and June 2008. The Disputed Domain Names currently resolve to the website of Savino Egypt Tropex Group offering competing services to those of Complainant’s. 5. Parties’ Contentions A. Complainant
Complainant contends that the SDB Marks are world famous in the field of global logistics, with a very widespread reputation.
Complainant further contends that the Disputed Domain Names and are confusingly similar to Complainant’s SDB Marks. In fact, is composed of Complainant’s SDB Mark, while is composed of the distinctive part of Complainant’s SAVINO DEL BENE Mark “SAVINO,” both with the addition of the suffix “Egypt.”
“SDB” is identical to the acronym for “Savino Del Bene,” and the acronym has been used in trade by Complainant since its constitution, reaching a very widespread reputation in the field of global logistics.
Complainant further contends that “Savino” is an Italian personal name, a foreign word for non-Italian speakers, and Italian is not a commonly known language in Egypt. Therefore, there may be a particular risk of confusion among Internet users whose first language is not Italian, given also that “savino” is the first part of the SAVINO DEL BENE Mark (which is the more recognizable and memorable part of any trademark) and that the SDB Marks are famous worldwide in the field of global logistics.
Lastly, the suffix “Egypt” increases the likelihood of confusion because it indicates a geographical reference where Complainant has one of its offices (and registered and uses its SDB Marks), specifically in Cairo, Egypt.
Complainant further contends that this gives rise to an expectation as to what is to be found at the Disputed Domain Names. In fact, reasonably prudent Internet users may think that Complainant registered the Disputed Domain Names for its commercial/marketing purposes in Egypt, believing that the website identified with the Disputed Domain Names were Complainant’s site for Egypt. When the average Internet user enters the Disputed Domain Names into a browser, they will have a legitimate expectation the website will have some connection to Complainant.
Complainant alleges that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. Complainant has no relationship whatsoever with Respondent and has never authorized Respondent to register and/or use the Disputed Domain Names or any other domain name, including the SDB Marks. There is no indication that Respondent has been commonly known by the Disputed Domain Names. There is no evidence of Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Names or a name corresponding to the Disputed Domain Names, in connection with a bona fide offering of goods or services.
Complainant argues that Respondent is not making a legitimate non-commercial or fair use of the Disputed Domain Names, without intent for commercial gain or to misleadingly divert consumers or to tarnish the SDB Marks. Respondent is Maro Web, which is a web agency, providing hosting solutions and web design services. Therefore, it is evident that Respondent is registering domain names for creating and managing the connected websites of his clients.
Complainant further argues that the Disputed Domain Names currently resolve to the website of Savino Egypt Tropex Group, a logistics company whose chairman Mr. K. Adib used to be an employee of Complainant from 2001-2008, specifically the Director of the Company Savino Del Bene Egypt, Complainant’s Egyptian branch. Moreover, as corroborated below, Mr. K. Adib has been found guilty of violation of Complainant’s trademarks by the Egypt Cassation Court. In fact, with the final decision declared orally on October 19, 2016 (but not yet available in writing), the Egypt Cassation Court confirmed the decision of the Egypt Economic Court, ruling for the cancellation of the word “savino” from the adverse party trade name and for cancellation of Egypt Trademark Registration No. 275518 “KSE SAVINO EGYPT.”
Complainant alleges that the Disputed Domain Names have been registered since 2005, specifically on April 7, 2005 and on June 15, 2008, and were registered in bad faith. In fact, Respondent knew that the Disputed Domain Names infringe Complainant’s trademark rights. First and foremost, because Complainant’s SDB Marks are world famous in the field of global logistics with a very widespread reputation.
Moreover, as already pointed out, Respondent in this proceeding is Maro Web; a web agency, providing hosting solutions and web design services. Complainant alleges that Respondent is registering domain names for creating and managing the connected websites of its clients. Therefore, it is reasonable to assume that Respondent was introduced to register and use the Disputed Domain Names by a client, who is the holder of the website reached by typing the Disputed Domain Names: Savino Egypt Tropex Group of Mr. K. Adib.
Mr. K. Adib knew of the SDB Marks and Complainant’s domain names. Firstly, because of the employment relationship with Complainant. Moreover, since 2003, prior to the registration of any of the Disputed Domain Names, the Savino Del Bene Headquarters, using the email address “@” has been instructing is Egyptian Office, in the person of Mr. K. Adib, to gather information for protection of Complainant’s IP portfolio in Egypt.
However, after ending employment relationship with Mr. K. Adib, Complainant discovered that its previous employee, even while still working for Complainant, registered in Egypt, company names, domain names and trademarks confusingly similar to the SDB Marks. It is evident that Mr. K. Adib instructed the agency, Maro Web, to register and use the Disputed Domain Names for his company’s website, in order to disrupt the business of Complainant, and intentionally attempting to attract for commercial gain Internet users to its website, by creating a likelihood of confusion with the SDB Marks, as to the source, sponsorship, affiliation or endorsement of the logistics services provided by Mr. K. Adib. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “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.”
Respondent is not obliged to participate in this domain name dispute proceeding, but when he fails to do so, asserted facts that are not unreasonable can be taken as true and Respondent is be subject to the inferences that flow naturally from the information provided by Complainant. See, Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441.
Even though Respondent has failed to file a response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See paragraph 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i) that the Disputed Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,
ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
iii) that the Disputed Domain Names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
Complainant contends that it has numerous registrations of the SDB Marks, including International Trademark Registration No. 805451, filed on May 29, 2003 in class 39 “Transport agency services” and designating also Egypt, which had been duly renewed and remains in force and European Union Trademark Registration No. 770867, filed on March 13, 1998 in class 39 “Services of a transport agency” and duly renewed and remaining in force.
Prior UDRP decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the SDB Marks are inherently distinctive. Respondent has the burden of refuting this assumption. See, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047.
The Panel is satisfied that Complainant holds rights in SDB established through use as evidenced in the Complaint for purposes of the Policy.
Respondent has not contested Complainant’s allegations. Therefore, the Panel finds that, for purposes of this proceeding, Complainant has enforceable trademark rights in the SDB Marks.
Complainant contends that the Disputed Domain Names and are confusingly similar to Complainant’s SDB Marks pursuant to paragraph 4(a)(i) of the Policy. Complainant explains that the Disputed Domain Names are composed of the distinctive parts of the SDB Marks: “SDB” and “savino” with the addition of the geographical suffix “Egypt.”
Respondent has not contested the assertions by Complainant that the Disputed Domain Names are confusingly similar to the SDB Marks.
Numerous UDRP decisions have recognized that incorporating a trademark or its distinctive parts in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark. Complainant further argues that when the Disputed Domain Names incorporate an entire trademark with only the addition of a common word like “Egypt,” they are still confusingly similar to the trademark as the addition of a geographical identifier does not eliminate the likelihood of confusion. See, Hoffmann-LaRoche AG v. P Martin,WIPO Case No. D2009-0323; Dixons Group Plc. v. Mr. Abu Abdullaah,WIPO Case No. D2001-0843; V&S Vin & Sprit AB v. Ooar Supplies,WIPO Case No. D2004-0962; Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign,WIPO Case No. D2004-0206; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L.,WIPO Case No. D2008-0792.
Based upon this evidence, the Panel finds that the Disputed Domain Names are confusingly similar to the SDB Marks pursuant to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Names pursuant to the Policy, paragraph 4(a)(ii).
Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights or legitimate interests in the Disputed Domain Names. Paragraph 2.1 of the WIPO Overview 2.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Names. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or legitimate interests in the Disputed Domain Names:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Names or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Names, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant has no current relationship with Respondent and has never authorized Respondent to register and/or use the Disputed Domain Names or any other domain name, including the SDB Marks. There is no evidence of Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Names or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services. Complainant alleges that Respondent is directing the Disputed Domain Names to the website of Mr. K. Adib who is an ex-employee and competitor of Complainant. Such actions do not constitute a bona fide offering of goods or services.
Complainant has alleged that neither Respondent or Respondent’s client Mr. K. Adib are commonly known by “SDB,” “savino” or any other words associated with Complainant. Mr. K. Adib’s company name is Savino Egypt Tropex Group. The Egyptian courts have stripped the company of its right to use “savino” and therefore any use of “savino” by Savino Egypt Tropex Group is not a legitimate use in this proceeding.
Complainant argues that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain or to misleadingly divert consumers or to tarnish the SDB Marks. Respondent is Maro Web, which is a web agency, providing commercial hosting solutions and web design services. Therefore, it is evident that Respondent is registering domain names for creating and managing the connected websites of his clients for profit.
The Panel finds that Complainant has sustained its burden of showing a prima facie case that Respondent lacks rights to or legitimate interests in the Disputed Domain Names.
Respondent has not contested the allegations of Complainant.
The Panel sees no evidence in the file which controverts Complainant’s prima facie case. Therefore, the Panel rules that Complainant has prevailed on paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Disputed Domain Names in bad faith in violation of the Policy, paragraph 4(a)(iii).
The Policy, paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of Disputed Domain Names:
(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Names registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Names; or
(ii) you [Respondent] have registered the Disputed Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Disputed Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Names, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the SDB Marks as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.
Complainant alleges that the Disputed Domain Names have been registered since as early as 2005 and that Respondent had actual knowledge that the Disputed Domain Names infringe Complainant’s SDB Marks. Respondent is providing hosting and web design services to Mr. K. Adib who is an ex-employee of Complainant and has been found in an Egyptian legal action to have infringed the SDB Marks. Mr. K. Adib is also a current competitor of Complainant.
Mr. K. Adib knew of the SDB Marks and Complainant’s domain names. Firstly, because of the previous employment relationship with Complainant. Moreover, since 2003, prior to the registration of any of the Disputed Domain Names, the Savino Del Bene Headquarters, using the email address “@” has been instructing its Egyptian Office, in the person of Mr. K. Adib, to gather information for protection of Complainant’s IP portfolio in Egypt.
However, after ending any employment relationship with Mr. K. Adib, Complainant discovered that its previous employee, even while still working for Complainant, registered in Egypt, company names, domain names and trademarks confusingly similar to the SDB Marks.
The Panel accepts as reasonable the inference that Mr. K. Adib instructed the agency, Maro Web, to register and use the Disputed Domain Names for his company’s website, in order to disrupt the business of Complainant, and intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the SDB Marks, as to the source, sponsorship, affiliation or endorsement of the logistics services provided by Mr. K. Adib.
Respondent has not contested these contentions or inferences.
Based upon the evidence presented by Complainant, the Panel finds that Complainant has shown the necessary elements of paragraphs 4(b)(iii) and (iv) and has proved the requirements of paragraph 4(a)(iii) 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 Names, and , be transferred to Complainant.
Richard W. Page
Sole Panelist
Date: May 22, 2017
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