The Complainant is ERREA’ SPORT S.p.A. of Torrile-Parma, Italy, represented by Crea Avvocati Associati, Italy.
The Respondent is Protected, Protected, Shield Whois of Vstra Frlunda, Sweden. 2. The Domain Name and Registrar
The disputed domain name is registered with AB NameISP (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2018. On October 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 6, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 9, 2018, 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 November 12, 2018. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on November 14, 2018.
The Center verified that the Complaint together with the amended Complaints 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 November 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 15, 2018.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on December 26, 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 is a company organized under the laws of Italy founded in 1988. The Complainant manufactures and sells sports equipment and sportswear apparel with a focus on technical-athletic apparel. It uses the trade name “Errea” as well as the trademark ERREA as well as other associated trademarks such as ERREASPORT, ERREAPOINT, ERREASERVICE and ERREAFOOTBALL.
Based on the Complaint and its Annexes, the Complainant is regularly associated with well known sports clubs all over the world, including the English Premier League, and in a variety of sports including football, volleyball, basketball and Formula One racing. It has entered into sponsorship with a variety of sports clubs in many countries throughout the world, including in Sweden which is the country where the Respondent registered the disputed domain name.
In 2007 the Complainant became the first company in Europe operating in the team wear sector to obtain Oeko-Tex Certification. This certification, issued by the international institute that for more than 20 years has represented a global point of reference for research and testing in the field of textile ecology. Evidence on record supports the Complainant’s assertion that it enjoys revenue exceeding ten million EUR annually.
Annexes 11 and 12 of the Complaint shows that the Complainant has registered and used the following trademarks (among others)
Country/Territory
Registration No#.
Mark
In class(es)
Date of Filing/Registration
International Trademark
621285
ERREA
25
April 4, 1994
European Union (“EUTM”)
812891
ERREA
25
June 16, 1994
International Trademark
759602
ERREA
18, 25, 28
September 26, 2000
EUTM
7008477
ERREA
3, 9, 14, 16, 18, 25, 28, 35, 41
June 23, 2008
EUTM
9284191
ERREA
3, 9, 14, 16, 18, 25, 28, 35, 41
July 30, 2010
EUTM
10757243
ERREA
3, 9, 14, 16, 18, 25I, 26, 28, 35, 41
March 26, 2012
Based on Annex 13 of the Complaint, the Complainant has also registered the following domain names: , registered on February 4, 2011; registered on December 6, 2002; , registered on June 18, 2010; , registered on August 25, 2009; , registered on March 2, 2005; and , registered on November 19, 1996.
The disputed domain name was registered on May 29, 2006. 5. Parties’ Contentions A. Complainant
The Complainant seeks relief in the form of transfer of the disputed domain name to the Complainant in accordance with Paragraph 4(i) of the Policy, on the following grounds:
Firstly, the Complainant is universally recognized by the “Errea” trade name based on the ERREA trademark which it owns and the domain names it registered.
Secondly, the incorporation of the core part of the Complainant’s ERREA trademark is sufficient to establish that the disputed domain name is identical or confusingly similar to the Complainant’s trademark, and that there is “a considerable risk that the public will perceive the Respondent’s domain name [the disputed domain name] as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant”.
Thirdly, the Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain because, inter alia:
(a) Respondent is neither affiliated with the Complainant in any way nor was it authorized to use its trademarks or to register any domain name incorporating its trademarks;
(b) Respondent is not commonly known by the disputed domain name; and
(c) Respondent is not and has never used the disputed domain name.
Finally, the Complainant alleges that the Respondent had registered and used the disputed domain name in bad faith, because:
(a) at the point of registration, the Complainant had already achieved significant international renown with respect to its trademark, and the disputed domain name was registered despite such knowledge on the part of the Respondent;
(b) constructive notice of the rights of the Complainant by the Respondent can be presumed;
(c) the Respondent did not reply to a cease and desist letter dated October 12, 2018 to which Respondent did not reply;
(d) the disputed domain name resolves to a “non-real active and used” website and causes confusion in the minds of Internet users. Therefore, the Respondent intends to take advantage from the Complainant’s trademarks in the disputed domain name in order to capture consumer attention; and
(e) the passive holding of the disputed domain name containing the Complainant’s trademark is sufficient to establish bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Since the Respondent failed to file a Response, this administrative proceeding will decide on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and will draw appropriate inferences in accordance with paragraph 14(b) of the Rules.
The Complainant must demonstrate, and has the burden to prove, that each element of paragraph 4(a) of the Policy have been satisfied, in order to prevail. These are:
(a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of such disputed domain name; and
(c) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
This Panel is satisfied that the Complainant has duly proven it has rights in and to the ERREA trademark and that the disputed domain name is confusingly similar to the ERREA trademark and to the Complainant’s registered domain names.
The disputed domain name contains the whole of the Complainant’s ERREA trademark in a manner which forms the core part of the disputed domain name. UDRP jurisprudence provides that this renders the disputed domain name confusingly similar with the Complainant’s ERREA trademark.
The only difference between the disputed domain name and the Complainant’s trademark is the addition of the word “sport” and the word “Sweden”.
The addition of the word “sport”, does not prevent a finding of confusing similarity to the trademark of the Complainant. Indeed, this Panel is persuaded by the argument of the Complainant that such an addition affirms the confusion between the disputed domain name and the Complainant’s trademark, because the term “sport” is closely connected with the Complainant’s business and activities, which is the manufacture of sports equipment and technical apparel, and who is active and present in various sporting circles (see the analysis under the third element). See Revlon Consumer Products Corporation v. Sky Logic Europe CV,WIPO Case No. DCO2011-0016 and .
The addition of the word “sweden” clearly refers to Sweden, which would be a geographical term. It is well-settled and it has become part of the consensus view that such a geographical term does not make a domain name distinctive so as to escape a finding of confusing similarity. Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides that “[W]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” This Panel cites the consensus view with approval, and there is no reason to depart from it in this instant case.
Accordingly the Panel finds that the Complainant has met the requirements of paragraph 4(a)(i) of the UDRP. B. Rights or Legitimate Interests
It is well settled that the Complainant may put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to satisfy the requirement of UDRP paragraph 4(a)(ii). The burden of production then shifts to the Respondent to rebut that prima facie case. See section 2.1 of the WIPO Overview 3.0.
This Panel is satisfied with the evidence on record that supports the Complainant’s prima facie case. The prima facie indication in the evidence provided to the Panel is that there are no rights or legitimate interests in the disputed domain name, on the part of the Respondent. In particular, the Panel is satisfied that the Respondent is neither affiliated with the Complainant in any way nor was the Respondent authorized to use the Complainant’s trademarks or to register any domain name incorporating the Complainant’s trademarks.
There is no evidence whatever to suggest Respondent is commonly known by the name “Errea”, “Erreasport” or “Erreasportsweden” or any permutation of those names.
Moreover, this Panel accepts the evidence on record, and considering the nature of the disputed domain name and considering the nature of the disputed domain name, the Panel notes that the Respondent is not using and has never used the website that resolves when accessing the disputed domain name for a bona fide purpose. There is therefore no reason to believe that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name. See Wal-Mart Stores, Inc. v. WalMart Careers, Inc.,WIPO Case No. D2012-0285, .
Accordingly, the Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the UDRP. C. Registered and Used in Bad Faith
The Complainant has established that the disputed domain name is confusingly similar with its ERREA trademark. The Complainant has established that the disputed domain name resolved to an inactive web page. At the point of registration in 2006 of the disputed domain name, the Complainant had already achieved significant international renown, fame and notoriety with respect to its trademark and the “Errea” tradename, as demonstrated by the evidence on record.
The Panel agrees with the submission of the Complainant that where such rights exist in the home country of the registrant, the principles of constructive notice in that jurisdiction may fairly be applied, and the Respondent may be presumed to have notice of the trademarks. It would have been but a small effort to conduct a simple trade mark or even Internet search in order to establish the Complainant’s precedent rights in and to the ERREA trademark.
Since there is sufficient evidence to show that the brand name “Errea” and the trademark ERREA were used even in the country of registration of the disputed domain name and the presumed domicile of the Respondent, and noting the Complainant’s business and the use of the term “sport” in the disputed domain name, the Panel concludes that the disputed domain name was registered despite such knowledge on the part of the Respondent, and that constructive notice of the rights of the Complainant by the Respondent can be presumed. The registration of the disputed domain name was therefore made in bad faith. See Kate Spade, LLC v. Darmstadter Designs,WIPO Case No. D2001-1384 , a decision which is harmonious with this approach.
This Panel agrees with the Complainant that, given the confusing similarity with the Complainant’s ERREA trademark, the disputed domain name causes confusion in the minds of Internet users and that the Respondent intends to take advantage from the Complainant’s trademarks in the disputed domain name in order to capture consumer attention for some sort of commercial gain.
While there is no concrete evidence as to how the disputed domain name was intended to economically benefit the Respondent, paragraph 4(b) of the Policy contemplates that even inaction or passive use of the disputed domain name can constitute bad faith use. This Panel agrees with the citation of the Complainant of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, which suggests that passive holding or inaction of the Respondent amounts to bad faith use if the Complainant’s trademark has a strong reputation and is widely known (as evidenced by its substantial use in Sweden and in other countries), and if the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.
Passive holding further does not preclude an economic motivation. The consensus view, in section 3.2.1 of the WIPO Overview 3.0, holds that a domain name wholly incorporating the relevant mark plus a geographic term or one related to the complainant’s area of commercial activity, or a pure dictionary term (in this case both), are persuasive factors in determining the Respondent’s bad faith.
That the disputed domain name was registered years after the Complainant registered its domain names and trademark, and thus only after a period of time during which the Complainant had accumulated enormous business good will and trust in the ERREA trademark, strengthens the Complainant’s position that the registration and use of the disputed domain name by the Respondent cannot have been in good faith.
Accordingly, the Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii) of the UDRP 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 name be transferred to the Complainant.
Syed Naqiz Shahabuddin
Sole Panelist
Date: January 9, 2019
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