The Complainant is Automobile Club di Brescia of Brescia, Italy, represented by Studio Legale Associato Barzano & Zanardo, Italy.
The Respondent is Eliahu Eweka of Colorado, Denver, United States of America ("USA"), self-represented. 2. The Domain Names and Registrars
The disputed domain names , , , and are registered with GoD, LLC. The disputed domain names and are registered with Uniregistrar Corp (GoD, LLC and Uniregistrar Corp collectively, the "Registrars").
, , , , , and are collectively referred to herewith as the "Disputed Domain Names". 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 9, 2018. On May 9, 2018, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On May 9, 2018, the Registrars transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on May 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 14, 2018. The Response was filed with the Center on June 14, 2018.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on June 22, 2018. 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 was founded in 1906 in Italy and was officially established under the new rules of Royal Automobile Club of Italy in 1926. Through its owned company 1000 Miglia S.r.l., the Complainant organizes the open-road endurance car race MILLE MIGLIA every year since it was first organized in 1927. The Complainant owns International, USA, and European Union ("EU") trade mark registrations for the MILLE MIGLIA and 1000 MIGLIA trade marks ("MILLE MIGLIA Trade Marks").
The Respondent is an individual based in the USA, who registered on February 5, 2018; on February 11, 2018; and on February 28, 2018; and on April 11, 2018. 5. Parties' Contentions A. Complainant
The Complainant's contentions can be summarized as follows:
(a) The Complainant owns the MILLE MIGLIA Trade Marks which cover more than 100 jurisdictions and has been organizing the MILLE MIGLIA car races through its subsidiary since 1927. The Disputed Domain Names were registered by the Respondent between February 5 and April 11 2018. All of the Disputed Domain Names are inactive and have been offered for sale. The Respondent has also registered , , , and which the Complainant has recovered prior to the filing of the Complaint.
(b) The Disputed Domain Names are identical or confusingly similar to the Complainant's MILLE MIGLIA Trade Marks. The domain names , , and are identical to the Complainant's earlier trade marks. The domain names and are confusingly similar as they only differ by one letter and two digits respectively. The mere incorporation of the trade mark in the domain name is sufficient to establish confusing similarity for the purposes of the Policy.
(c) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Disputed Domains are currently inactive, and their holding does not amount to a bona fide offering of goods and services, nor to a legitimate or noncommercial fair use. The Respondent is not commonly known by the Disputed the Domain Names, does not own MILLE MIGLIA or 1000 MIGLIA trade marks, and is not an authorized dealer, agent, distributor, wholesaler or retailer of the Complainant.
(d) The Respondent registered and is using the Disputed Domain Names in bad faith. The Respondent must have been aware of the MILLE MIGLIA and 1000 MIGLIA trade marks as they are well-known marks and have been registered worldwide, including in the US where the Respondent is based. The Respondent, in registering multiple domain names comprising of the Complainant's MILLE MIGLIA Trade Marks, indicates that he was well aware of the Complainant's rights in the MILLE MIGLIA Trade Marks, and thus can be seen as targeting a specific trade mark owner rather than as a legitimate holder of domain names for sale. The Respondent is not actively using the Disputed Domain Names, but offers them for sale through a third-party platform for prices higher than the costs for registration and maintenance of the Disputed Domain Names. The Respondent has registered almost one thousand domain names, some of which include famous trade marks, suggesting a pattern of cybersquatting. B. Respondent
The Respondent's contentions can be summarized as follows:
(a) The Disputed Domain Names are not identical or confusingly similar to the MILLE MIGLIA Trade Marks. bears no similarity to the Complainant's 1000 MIGLIA trade mark.
(b) MILLE MIGLIA and 1000 MIGLIA are common generic terms in use by organizations, businesses and individuals. There are 48 exact domain names matching with the Complainant's MILLE MIGLIA Trade Marks that are available for sale on S and more than 759 search results for "Mille Miglia" in LinkedIn. The phrase MILLE MIGLIA was in use more than half a century before the Complainant's usage. The Complainant is attempting to restrict or monopolize the usage of "Mille Miglia" or "1000 Miglia".
(c) As a domain name investor, the Respondent had a legitimate prior interest in the Disputed Domain Names, before offering to sell the names for a mutually agreeable price. Investing in domain names does not automatically amount to cybersquatting. Domain investing is a legitimate business, as long as the investor does not engage in illegal activities or infringe a trade mark.
(d) The Respondent has not offered for sale products or services identical or similar to the Complainant's products or services, has not displayed the Complainant's MILLE MIGLIA Trade Marks on websites, and has never displayed Ads on the Disputed Domain Names to mislead the Complainant's customers or monetize on the Complainant's MILLE MIGLIA Trade Marks. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the MILLE MIGLIA Trade Marks, based on its International, USA, and EU registrations.
The Disputed Domain Names and incorporate the Complainant's MILLE MIGLIA Trade Marks in their entirety. In making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the Top-Level Domain extensions, in this case ".cc", should generally be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762; A Inc., Amazon Technologies, Inc., Amazon Europe Core S.a.r.l. v. Koroush Amini,WIPO Case No. DIR2017-0007).
Further, it is a well-established principle that a domain name which contains a common or obvious misspelling of a trade mark will normally be found to be confusingly similar to that trade mark, where the misspelled trade mark remains the dominant or prominent element of the domain name (Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings,WIPO Case No. D2004-0971). Applied presently, the only difference between the Complainant's MILLE MIGLIA Trade Marks and and is the addition of the symbol "-", and the addition of the letter "s" in . Such variations add no distinctive element. Therefore , , and are visually, phonetically and conceptually confusingly similar to the Complainants' MILLE MIGLIA Trade Marks.
As to , while it is not identical to the MILLE MIGLIA Trade Marks, noting Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") (which states "in cases […] where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing"), the Panel finds confusing similarity.
The Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Section 2.1 of the WIPO Overview 3.0 states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainants registered and began using the MILLE MIGLIA Trade Marks many years before the Disputed Domain Names were registered by the Respondent, and the Complainants have never authorised the Respondent to use its trade marks. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to prove that it has rights or legitimate interests in the Disputed Domain Names.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Names by demonstrating any of the following:
(i) before any notice to them of the dispute, the Respondent's use of, or demonstrable preparations to use the Disputed Domain Names or a name corresponding to the Disputed Domain Names was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Names, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is 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 trade mark or service mark at issue.
The Disputed Domain Names have been inactive since registration and offered for sale at a range of USD 888 to 8,888. Such use of the Disputed Domain Names could not amount to use in connection with a bona fide offering of goods or services or legitimate noncommercial use of the Disputed Domain Names.
There is no evidence that the Respondent is commonly known by the Disputed Domain Names.
The Panel is also not convinced that the Respondent is making legitimate fair use of the Disputed Domain Names. This is based on the following:
(a) The Disputed Domain Names are confusingly similar to the Complainant's MILLE MIGLIA Trade Marks and carry a risk of implied affiliation with the Complainant.
(b) A reverse WhoIs search shows that the Respondent currently registered over 900 domain names (Annex 10 of the Complaint). The Policy at paragraph 4(b)(ii) and the WIPO Overview 3.0 at Sections 3.1.1, 3.1.2, and 3.2.3 address further the obligations of professionals such as the Respondent.
(c) The Respondent is offering the Disputed Domain Names for sale at a range of USD 888 to 8,888. Such amount is beyond the reasonable out-of-pocket expenses of the Respondent.
In light to the above, the Panel believes that the Respondent is attempting to take advantage of the Complainant's MILLE MIGLIA Trade Marks in order to generate profit, as such the Respondent cannot claim any legitimate interest or rights in the Dispute Domain Names.
The Panel finds that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Complainant has been using MILLE MIGLIA for its famous car races since 1927. The MILLE MIGLIA trade mark was first registered on June 8, 1993 and the 1000 MIGLIA trade mark was first registered on April 30, 2010, which is long before the Disputed Domain Names were registered by the Respondent. The Respondent's registration of the domains and on the same day (February 28, 2018); and and on the same day (April 11, 2018) cannot be a mere coincidence. Registering the Disputed Domain Names all within a month of each other and other domain names comprising of the Complainant's MILLE MIGLIA Trade Marks (e.g. , , , – recovered prior to this proceeding) can be seen as targeting the Complainant rather than as a legitimate holder of domain names for sale.
Moreover, the Respondent is offering the Disputed Domain Names for sale at an amount which is beyond the reasonable out-of-pocket expenses of the Respondent. The Panel believes that one of the Respondent's main motives for registering the Disputed Domain Names was to sell the Disputed Domain Names in order to make an unfair commercial gain.
Therefore, the Panel is of the opinion that the Respondent knew of the Complainant's MILLE MIGLIA car race and the MILLE MIGLIA Trade Marks when it registered the Disputed Domain Names, and it is inconceivable that the Respondent registered and is using the Disputed Domain Names for any other reason other than to sell it for profit or create a false impression that the Disputed Domain Name is associated with the Complainant in order to make an unfair commercial gain. This constitutes bad faith.
Lastly, it is also a well-established principle that registration of a domain name that is confusingly similar to a famous trade mark by any entity that does not have a relationship to that mark is itself sufficient evidence of bad faith registration and use (see Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163).
The Panel finds that paragraph 4(a)(iii) of the Policy is satisfied. 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 the Complainant.
Gabriela Kennedy
Sole Panelist
Date: July 6, 2018
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