The Complainant is Automobile Club di Brescia of Brescia, Italy, represented by Barzanò & Zanardo Milano S.p.A., Italy.
The Respondent is Julia Weissmuller of Stubenberg, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2018. On December 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 24, 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 January 8, 2019, 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 January 10, 2019.
The Center verified that the Complaint together with the amended 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 January 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 5, 2019.
The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on February 20, 2019. 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 Automobile Club di Brescia, is an Italian public entity. Together with its owned company 1000 Miglia S.r.l., every year they organize the famous car race “Mille Miglia” which takes place in May (round trip Brecia-Rome), which took place for the first time in 1927.
The Complainant is the proprietor of multiple registrations for the trademark 1000 MIGLIA worldwide which have been applied for and registered many years before the Respondent registered the disputed domain name, including the following:
(i) 1000 MIGLIA (device) European Union (“EU”) Registration No. 001519503, filed on February 21, 2000 and registered on April 2, 2001, for goods and services in classes 9, 28, 41;
(ii) 1000 MIGLIA International Registration No. 534874, registered on February 10, 1989, for goods in classes 14;
(iii) 1000 MIGLIA EU Registration No. 009071473, filed on April 30, 2010 and October 12, 2010, for goods in classes 14.
The Complainant owns many domain names containing the trademark MILLE MIGLIA which are active on several social networks, such as Facebook, YouTube and Twitter.
Several of such domain names are used by the Complainant to trade its official merchandise, which includes goods identified by the trademarks MILLE MIGLIA or 1000 MIGLIA.
The Respondent registered the disputed domain name on April 6, 2018, which seems currently inactive. 5. Parties’ Contentions A. Complainant
The Complainant claims that the disputed domain name is confusingly similar to the trademark 1000 MIGLIA in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name, which has been registered and is used by the Respondent in bad faith.
More specifically, the Complainant asserts that the Respondent is not generally known by the disputed domain name and has not acquired any trademark or service mark rights in connection therewith, nor is the Respondent affiliated to the Complainant who has not authorized the Respondent to use the trademark 1000 MIGLIA in connection with a website nor for any other purpose.
The Complainant sustains that while the disputed domain name is currently not active, in the recent past led to a website which promoted Ravenna’s stage of the MILLE MIGLIA / 1000 MIGLIA race and included links promoting other kind of goods for which, it is very probable that the owner of the disputed domain name received revenues. These circumstances exclude any kind of legitimate use of the disputed domain name.
The Respondent’s prior use of the disputed domain name was clearly in bad faith since it exploited the Complainant’s trademarks in order to promote the sale of other goods the nature of which could also impact negatively on the reputation of the 1000 MIGLIA trademarks.
Finally, the Complainant requests the Panel to order the transfer of the disputed domain name to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
(i) The disputed domain name is 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 name; and
(iii) The disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights in the trademark 1000 MIGLIA.
The standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the domain name to determine whether the domain name is confusingly similar to the trademark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.
In this case the disputed domain name contains the Complainant’s trademark 1000 MIGLIA in its entirety. In the Panel’s opinion the addition of the geographic word “ravenna” is not sufficient to avoid a finding of confusing similarity.
As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), in cases where the domain name incorporates the entirety of a trademark the domain name will normally be considered confusingly similar to that mark.
Furthermore, the word “ravenna” is the name of the Italian city Ravenna in Emilia Romana which could easily be perceived as related to one of the stops of the Mille Miglia race which takes place in a large part of the Italian territory and thus affirming the connection with the Complainant.
For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain (“TLD”) as it is viewed as a standard registration requirement (section 1.11.1 of WIPO Overview 3.0). Thus, for the test for confusing similarity of this first prong the Panel shall disregard the “.com” included in the disputed domain name.
The Panel finds that the disputed domain name is confusingly similar to the trademark 1000 MIGLIA in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, 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 domain name, without intent for commercial gain, to misleadingly divert consumers.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of the WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some relevant evidence of rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant submits that it has never granted the Respondent with the right to use or register the trademark 1000 MIGLIA as a domain name or for any other reason.
The Panel considers that the Respondent’s recent past use of the disputed domain name cannot be considered a bona fide offering but rather an attempt to capitalize on the reputation and goodwill of the Complainant’s mark or otherwise mislead Internet users.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complaint also succeeds on the second prong. C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent must have been aware of the Complainant’s trademark 1000 MIGLIA when it registered the disputed domain name on April 6, 2018.
In previous UDRP proceedings panelists have considered the MILLE MIGLIA trademarks to be well known. “The fame of the MILLE MIGLIA Mark makes it extremely disingenuous for the Respondent to claim that it was unaware that the registration of the Disputed Domain Names would violate the Complainant’s rights.” (see Automobile Club di Brescia v. Li Fanglin,WIPO Case No. D2015-0975); “[T]his Panel concludes that the Respondent could not have possibly been oblivious to the existence of the Complainant’s trademark at the time of registration of the disputed domain name.” (Automobile Club di Brescia v. W / Saral Ltd,WIPO Case No. D2017-0159).
The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the disputed domain name is also a significant factor to consider that the disputed domain name was registered in bad faith (as stated in section 3.2.1 of WIPO Overview 3.0).
In view of the overall circumstances of this case, Respondent’s so called “passive holding” of the disputed domain name does not prevent a finding of bad faith. Particularly, in the light of the fame of the Complainant’s mark, the failure of the Respondent to submit a response and to provide any evidence of actual or contemplated good faith use and, above all, the implausibility of any good faith use to which the disputed domain name may be put. (See section 3.3 of WIPO Overview 3.0 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Clearly, considering the past use of the disputed domain name the Respondent has registered the disputed domain name intentionally to attempt to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s widely used mark as to the source, sponsorship, affiliation, or endorsement. This amounts to bad faith under paragraph 4(b)(iv) 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 name be transferred to the Complainant.
Miguel B. O'Farrell
Sole Panelist
Date: March 6, 2019
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