The Complainant is Valentino Rossi of Tavullia, Pesaro and Urbino, Italy, represented by Ufficio Brevetti Pedrini e Benedetti, Italy.
The Respondent is Oneandone Private Registration of Chesterbrook, Pennsylvania, United States of America (“United States”) / Mike Burton of Los Angeles, California, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with 1&1 Internet AG (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2017. On April 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 7, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 10, 2017, 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 amended Complaint on April 10, 2017.
The Center verified that the Complaint together with the amended Complaint (hereafter 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 April 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 2, 2017.
The Center appointed Nicholas Smith 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
The Complainant is an individual from Italy. The Complainant is a professional motorcycle racer and multiple MotoGP World Champion, having won 7 MotoGP championships between 2001 and 2009. The Complainant continues to be an active MotoGP racer and finished second in the 2016 MotoGP championship. The Complaint competes using the bike number 46 and is the owner of a professional MotoGP racing team known as “Sky Racing Team by VR46”, VR46 representing the Complainant’s initials and his motorcycle number.
The Complainant has held trade marks consisting of the letters (with very minor styling) VR|46 (the “VR|46 Mark”) since at least 2003 in the European Union, and 2006 in the United States. The VR|46 Mark is licensed by the Complainant to various companies that produce merchandise branded with the VR|46 Mark, associated with the Complainant.
The Domain Name, , was registered on October 21, 2016. It does not currently resolve to any website. The Complainant’s Sky Racing Team by VR46 uses the domain for its email accounts and recently has received emails from various motorcycle companies indicating that those companies were receiving emails from addresses ending in “@”, purporting to be from Sky Racing Team by VR 46, requesting that the motorcycle companies deliver high-value bikes to various locations. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s VR|46 Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the VR|46 Mark having registered the VR|46 Mark in 2003 in the European Union and later in various countries around the world.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use his marks. The Respondent does not use the Domain Name for a bona fide purpose or legitimate noncommercial purpose as the Domain Name has never redirected to an active site, other than initially re-directing to the official website of the Complainant. Such use does not grant the Respondent rights or legitimate interests in the Domain Name.
The Domain Name was registered and is being used in bad faith. The Domain Name is being used to create emails that target motorcycle companies by pretending to be the Complainant’s Sky Racing Team by VR46 and ask those companies to supply high value motorcycles for free. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the VR|46 Mark, having registrations for the VR|46 Mark as a trade mark in the European Union and the United States, the location of the Respondent.
The Domain Name consists of the VR|46 Mark with the addition of the word “team” and the deletion of the vertical bar between “vr” and “46”. The Panel finds that neither of these changes prevents a finding of confusing similarity between the VR|46 Mark and the Domain Name. An individual viewing the Domain Name may be confused into thinking that the Domain Name would refer to a site run by the Complainant or the Complainant’s Sky Racing Team by VR46. The Panel finds that the Domain Name is confusingly similar to the Complainant’s VR|46 Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate non-commercial 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))
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the VR|46 Mark or a mark similar to the VR|46 Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Rather it appears from the evidence submitted by the Complainant that the Respondent is using the Domain Name to create spoof emails, passing itself off as the Complainant’s Sky Racing Team by VR46 and seeking to mislead motorbike companies to mistakenly transfer high value motorcycles to it. Such conduct is fraudulent and is not a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. (Policy, paragraph 4(b))
The Panel finds that it is likely that the Respondent was aware of the Complainant at the time the Domain Name was registered. The Domain Name has been used to create email accounts from which the Respondent sends emails purporting to be the Complainant’s Sky Racing Team by VR46. Furthermore the VR|46 Mark is a coined mark with no descriptive meaning. The Respondent does not provide, nor is it apparent to the Panel, any reason why the Domain Name was registered other than by reference to the Complainant. The registration of the Domain Name in awareness of the Complainant and any rights it had at the time in the VR|46 Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Respondent is using the Domain Name to send spoof emails seeking to mislead motorcycle companies into supplying high-value products to presumably the Respondent on the misapprehension that they are dealing with the Complaint’s Sky Racing Team by VR46. Such conduct is deceptive, illegal and in previous UDRP decisions has been found to be evidence of registration and use in bad faith, see, The Coca-Cola Company v. Marcus Steiner,WIPO Case No. D2012-1804. The Panel, noting that the circumstances set out in Policy, paragraph 4(b) are not exhaustive, finds that the Respondent is using the Domain Name in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under 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 Domain Name, , be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: May 22, 2017
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