The Complainant is Automobile Club di Brescia, Italy, represented by Barzanò & Zanardo Milano SpA, Italy.
The Respondent is Bobby Ang, Malaysia, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2019. On August 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 8, 2019, the Registrar 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 August 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2019. On August 18, 2019, the Respondent sent an informal email communication to the Center consenting to transfer the disputed domain name to the Complainant. On August 20, 2019, the Center sent an email communication to the Complainant providing an opportunity for the Complainant to request suspension in order to explore possible settlement. The Complainant did not request suspension of the proceedings therefore the Center proceeded to appoint the Panel.
The Center appointed David Taylor as the sole panelist in this matter on September 26, 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 is an Italian public entity. Since 1927, the Complainant has organized open-road endurance automobile races. The original races took place between Brescia and Rome, with the return trip covering approximately 1,000 miles, from which the race derived its Italian name “Mille Miglia” (or “one thousand miles” in English). Since 1977, the Mille Miglia race has transformed into a regularity rally for vintage and classic cars.1 No models produced after 1957 may participate in the race. The Mille Miglia events serve to combine sport, culture, tourism and performances, showcasing a selection of Italy’s historic locations. Many apply to participate in the Mille Miglia race, but few are selected, with some 2,570 applications and only 435 cars selected for the 2014 race.
The Complainant is the owner of a substantial portfolio of MILLE MIGLIA trademarks, registered in various jurisdictions around the world, including the following:
- European Union Trade Mark Registration No. 001519511, MILLE MIGLIA, registered on April 4, 2001;
- International Trademark Registration No. 776355, MILLE MIGLIA, registered on July 19, 2001; and
- Malaysian Trademark Registration No. 01011502, MILLE MIGLIA, registered on August 30, 2001.
The Complainant owns the domain name from which it operates its official website, as well as a number of domain names comprising its MILLE MIGLIA trademark registered under various generic Top‑Level Domains (“gTLDs”) and country code Top-Level Domains.
The Respondent is an individual who appears to be based in Malaysia.
The disputed domain name was registered on November 22, 2016. The disputed domain name does not appear to have been used in connection with any active website since its registration. At the time of this decision, the disputed domain name resolves to a default parking page provided by the Registrar.
On March 13, 2019, a representative of the Complainant contacted the Respondent to ask whether the Respondent would be willing to sell the disputed domain name and, if so, for how much. After several reminders, the Respondent replied on June 26, 2019, offering to sell the disputed domain name for EUR 20,000. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to its MILLE MIGLIA trademark in that the only difference between the disputed domain name and the Complainant’s trademark is the omission of the letter “l” from the element “mille” making up the Complainant’s trademark. The Complainant asserts that this is a clear case of typosquatting as the disputed domain name contains an obvious misspelling of the Complainant’s trademark.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that the disputed domain name is inactive. The Respondent is therefore not making use of the disputed domain name in connection with a bona fide offering of goods or services. The Complainant further asserts that the Respondent, who has no authorization to use the Complainant’s trademark or any business relationship with the Complainant, is not commonly known by the disputed domain name. To the best of the Complainant’s knowledge, the Respondent does not own any trademark rights in “mile miglia” or similar. Nor is the Respondent using the disputed domain name for any legitimate noncommercial or fair use.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. According to the Complainant, the MILLE MIGLIA trademark was well known all over the world, including in Malaysia, at the time that the disputed domain name was registered. The Complainant asserts that the disputed domain name was registered for the sole purpose of selling the disputed domain name to the Complainant or a competitor of the Complainant for profit. Finally, the Complainant submits that the Respondent’s passive holding of the disputed domain name would not prevent a finding of bad faith use of the disputed domain name.
The Complainant requests transfer of the disputed domain name. B. Respondent
The Respondent did not file any substantive reply to the Complainant’s contentions. In an informal communication to the Center on August 18, 2019, the Respondent consented to the transfer of the disputed domain name to the Complainant. The Respondent added:
“I do not have any intention to use the domain apart from buying it for fun seeing that it was available.” 6. Discussion and Findings 6.1. Preliminary Matter: The Respondent’s Consent to Remedy
In his email of August 18, 2019, the Respondent gave clear consent to the transfer of the disputed domain name to the Complainant. At the same time, the Respondent has in effect denied having registered the disputed domain name in bad faith.
Notwithstanding the Respondent’s consent to transfer the disputed domain name to the Complainant, in light of the Respondent’s implied denial of bad faith registration of the disputed domain name the Panel considers it appropriate to proceed to a decision on the merits. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.10. 6.2. Substantive Matters
In order to prevail in its Complaint, the Complainant must prove, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in 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 finds that the Complainant has shown that it holds rights in the MILLE MIGLIA trademark, details of which are provided in the factual background section above.
Prior UDRP panels have held that a domain name which consists of a common, obvious or intentional misspelling of a trademark is considered to be confusingly similar to the relevant mark for the purposes of the first element; see WIPO Overview 3.0, section 1.9. The disputed domain name reproduces the Complainant’s trademark in its entirety, save for the omission of one letter “l” from the element “mille” of the Complainant’s trademark and the omission of the space between the words comprising the Complainant’s trademark. Despite these minor differences, the Complainant’s trademark is readily recognizable in the disputed domain name and remains phonetically identical to the Complainant’s trademark. The gTLD “.com” may be disregarded for the purposes of assessing identity or confusing similarity under the first element; see WIPO Overview 3.0, section 1.11.1.
The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
As noted in WIPO Overview 3.0, section 2.1:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
There is no evidence of any active use of the disputed domain name, other than to resolve to a default parking page provided by the Registrar.
The Complainant has not consented to the Respondent’s registration of the disputed domain name. The Parties are not in any form of business relationship that would confer rights on the Respondent to make use of the Complainant’s trademark in a domain name or otherwise. The Respondent is not making use of the disputed domain name in connection with any bona fide offering of goods or services, nor is there any legitimate noncommercial or fair use of the disputed domain name. There is no evidence to support a finding that the Respondent is commonly known by the disputed domain name.
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not come forward with evidence to rebut the Complainant’s prima facie case.
In light of the above, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant has provided a detailed description of its history of operating automotive races, dating back to the 1920s. The Complainant has since generated substantial reputation and goodwill in its MILLE MIGLIA trademarks, which are closely associated with the vintage car race operated by the Complainant today. The Complainant has provided evidence of a substantial body of trademark registrations used in connection with the Complainant’s activities in the automotive sector, all of which predate the registration of the disputed domain name by several or more years. Noting the high degree of similarity between the Complainant’s trademark and the disputed domain name, the Panel finds that the Respondent likely had the Complainant’s trademark in mind when registering the disputed domain name. Further noting the Respondent’s attempt to sell the disputed domain name for EUR 20,000 when approached by a representative of the Complainant, the Panel infers that the Respondent registered the disputed domain name for the purpose of selling the disputed domain name to the Complainant, who is the owner of the MILLE MIGLIA trademark, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name, amounting to bad faith registration pursuant to paragraph 4(b)(i) of the Policy.
It is well established that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. In the present case, the Panel considers the Complainant’s trademark to be both distinctive and well known in connection with the Complainant’s automotive activities, there is no evidence of any actual or contemplated good-faith use of the disputed domain name on the part of the Respondent, and the Panel cannot conceive of any plausible good-faith use to which the disputed domain name could be put that would not have the effect of creating confusion with the Complainant’s trademark; see WIPO Overview 3.0, section 3.3 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant has satisfied 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 name be transferred to the Complainant.
David Taylor
Sole Panelist
Date: October 10, 2019
1 A “regularity rally” is a type of motorsport rally with the object of driving each segment of a defined course, often on public roads, at a specified average speed.
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