Complainant is Automobile Club di Brescia, Italy, represented by Barzanò & Zanardo Milano SpA, Italy.
Respondent is Registration Private, Domains By Proxy LLC, United States of America (“United States”) / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2020. On February 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 27, 2020, 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 Complainant on March 4, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 4, 2020. 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 Respondent of the Complaint, and the proceedings commenced on March 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 1, 2020. On April 15, 2020, the Center sent a communication regarding Notification of Complaint to the Parties, inviting Respondent to comment by April 20, 2020. Respondent did not comment. The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on May 8, 2020. 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 Complainant is the owner of the MILLE MIGLIA and 1000 MIGLIA trademarks. Every year, during the month of May, Complainant’s wholly owned company 1000 Miglia S.r.l. organizes a car race called MILLE MIGLIA. This event was first organized in 1927. MILLE MIGLIA is an open-road endurance race for production cars covering a distance of one thousand miles from Brescia to Rome round trip. The MILLE MIGLIA race took place in Italy 24 times from 1927 to 1957 as an open-road endurance race. Since 1977, the MILLE MIGLIA has been transformed into a regular race for classic and vintage cars, and the participation is limited to models produced no later than 1957. Among the participants, many celebrities take part each year. In 2014, participants came from 34 countries, the race staff numbered approximately 3,000 people and the race was covered by more than 1,500 accredited journalists and photographers from 30 countries. Complainant operates a website at “www.millemiglia.it”, which is its primary presence on the Internet for global promotion. Complainant’s website receives over 750,000 visitors every year from more than 170 countries, with more than 4 million pages viewed. Complainant owns numerous Italian, European Union and International trademarks including the marks MILLE MIGLIA and 1000 MIGLIA, covering more than 100 jurisdictions and including the following marks: MILLE MIGLIA European Union Trade Mark registration No. 001519511 registered on April 2, 2001 Previous UDRP panelists have found the MILLE MIGLIA mark to be famous or well-known. See, for example, Automobile Club di Brescia v. Li Fanglin,WIPO Case No. D2015-0975 and Automobile Club di Brescia v. Whoiscontactsprotection.com / Saral Ltd,WIPO Case No. D2017-0159. Complainant also owns over 80 domain names comprising the MILLE MIGLIA trademark using various Top-Level Domains (“TLDs”) and actively uses the trademark on several social networks, such as Facebook, Twitter, YouTube, etc. Complainant also uses the marks in various domain names to commercialize its Official Merchandise under the MILLE MIGLIA and 1000 MIGLIA trademarks (see “www.millemigliastore.com"; “www.millemigliashop.com”). The disputed domain name was registered on June 17, 2019 and is linked to a website containing promotional links and/or pay-per-click links. 5. Parties’ Contentions A. Complainant Complainant contends that the disputed domain name is confusingly similar to Complainant’s trademarks, that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests with respect to the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. Paragraph 15(a) of the Rules instructs the Panel to decide a complaint “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. A. Identical or Confusingly Similar Complainant has demonstrated that it has rights in the trademarks MILLE MIGLIA and 1000 MIGLIA in connection with car races and associated merchandise. The disputed domain name incorporates Complainant’s mark MILLE MIGLIA in its entirety and adds the word “mini” and two hyphens. The addition of the term “mini” and two hyphens does not prevent a finding of confusing similarity under the first element of paragraph 4(a) of the Policy. Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark. B. Rights or Legitimate Interests Complainant contends that Respondent is not affiliated with or connected to Complainant in any way. Complainant’s internal policies prohibit dealers, agents, distributors, wholesalers or retailers from registering or using MILLE MIGLIA as trademarks or domain names. There is no evidence that Respondent has been commonly known by the disputed domain name or that it has any rights that might predate Complainant’s rights in its MILLE MIGLIA trademark. Respondent has not made, and is not making, a legitimate noncommercial or fair use of the disputed domain name. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name previously resolved to a third party website that displayed links related to products based on Complainant’s MILLE MIGLIA race, and currently resolves to a third party website that has no relation to Complainant or its MILLE MIGLIA race. The Panel finds that Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Complainant’s MILLE MIGLIA and 1000 MIGLIA marks are well-known. Thus, it is highly likely that Respondent was aware of Complainant’s trademark rights at the time Respondent registered the disputed domain name. The disputed domain name previously resolved to a webpage with pay-per-click links. Some of the links promoted the sale of books related to Complainant’s well-known race event. Currently the disputed domain name resolves to a third party webpage which has nothing to do with Complainant or its well-known race. The record indicates that Respondent had actual knowledge of Complainant’s trademark rights prior to registering the disputed domain name and that Respondent registered and uses the disputed domain name for commercial gain by intentionally creating a likelihood of confusion with Complainant’s marks. Accordingly, the Panel finds that Respondent has registered and used the disputed domain name in bad faith. 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 Lynda J. Zadra-Symes
MILLE MIGLIA International registration No. 776355 registered on July 19, 2001
Sole Panelist
Date: May 22, 2020
Full & Egal Universal Law Academy