The Complainant is B&B Italia S.p.A., Italy, represented by NCTM Studio Legale Associato, Italy.
The Respondent is Privacydotlink Customer 3012558, United States of America / D.L. Webb, United States of America. 2. The Domain Name and Registrar
The Disputed Domain Name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2020. On August 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 11, 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 the Complainant on August 11, 2020, 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 amendment to the Complaint on September 8, 2020. The Center verified that the Complaint together with the amendment to 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 September 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2020. The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on October 13, 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 The Complainant is the owner of the trademark MAXALTO in connection with high-quality furniture and is manufacturing and selling its products as Maxalto Collection all over the world. The Complainant has been using the trademark MAXALTO continuously as from the mid-seventies and holds a considerable number of trade and service marks registrations in the world including International Registration No. 417959, registered on September 3, 1975, covering furniture in class 20. The disputed domain name was created on November 17, 2002. According to the current record, the Respondent appears to be a physical person. The Complainant submitted evidence that the Disputed Domain Name The Complainant asserts that the Disputed Domain Name The Complainant considers that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, mainly because the Complainant has neither licensed nor otherwise authorized the Respondent to use its marks or to apply for or use any domain name incorporating the trademark MAXALTO. The Complainant claims that the Respondent cannot assert that it has made or is currently making a legitimate noncommercial or fair use of the Disputed Domain Name. Finally, in addressing the question of registration and use of the Disputed Domain Name in bad faith, the Complainant observes that the Respondent is well aware of the Complainant’s trademark considering that the Respondent’s Disputed Domain Name resolves to a website having PPC links with competing furniture brands and products including links to the Complainant’s website. The Complainant claims that the Respondent must necessarily have known the Complainant’s trademark when registering the Disputed Domain Name. Therefore, the Complainant asserts that the Respondent has registered and is using the Disputed Domain Name in bad faith. The Complainant finally claims that the Respondent is using the Disputed Domain Name with the aim to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trademark and for the purpose of disrupting the Complainant’s business and targeting the Complainant’s trademark. Lastly, according to the Complainant, the fact that the Respondent used a privacy shield to hide its identity reinforces bad faith use of the Disputed Domain Name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6.1. Effect of the Default Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. As there are no exceptional circumstances for the failure of the Respondent to submit a formal Response, the Panel infers that the Respondent does not deny the facts asserted and contentions made by the Complainant. Therefore, asserted facts that are not unreasonable will be taken as true and the Respondent will be subject to the inferences that flow naturally from the information provided by the Complainant. Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441. 6.2. Discussion and Findings Pursuant to paragraph 4(a) of the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested: (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 respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires the Complainant to show that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. As indicated above, MAXALTO is the Complainant’s registered trademark since 1975 and the Complainant holds multiple registrations for MAXALTO all around the world. The Disputed Domain Name Consequently, the Panel finds that the Complainant has shown that the Disputed Domain Name is identical to a trademark in which the Complainant has rights and satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The onus is on the Complainant to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and it is then for the Respondent to rebut this case. The Panel accepts the Complainant’s submissions that the Respondent does not appear to be known by the Disputed Domain Name, has not used or made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services, is not making a legitimate noncommercial or fair use of the Disputed Domain Name, and has no consent from the Complainant to use its trademark. The Respondent has not filed a Response. In accordance with the established jurisprudence of the Policy, the burden of production on the Respondent’s rights or legitimate interests thus shifts to the Respondent to come forward with relevant evidence. The Complainant has made out its prima facie case under this element of the Policy and the Respondent has failed to rebut it. Accordingly, the Complainant succeeds in relation to the second element of the Policy. C. Registered and Used in Bad Faith At the time of registration by the Respondent of the Disputed Domain Name, which occurred in 2002, according to the claim of the Complainant (annex 1 of the Complaint) which is not contended by the Respondent, the Complainant’s trademark MAXALTO was a well-known trademark for a very long time. As the Complainant submits, it is inconceivable that the Respondent would not have known of the Complainant’s trademark. Moreover, the Panel notes that the Complainant’s trademark was registered in 1975, with a first use of the mark since the beginning of the seventies, i.e., well before the Disputed Domain Name was registered. The incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation, WIPO Case No. D2000-1568). It appears from the screenshot of the website at the Disputed Domain Name, which is again not contended by the Respondent, that the Disputed Domain Name resolves to a parking page with PPC links to several competing furniture brands and products. The Respondent has registered the Disputed Domain Name and has parked it to a page with PPC links to competing brands. It has long been held in UDRP decisions that parking of a domain name that incorporates a well-known trademark, even if the respondent itself may not have directly profited, does not necessarily prevent a finding of bad faith in line with the requirements of paragraph 4(a)(iii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.9 and 3.5. Based on the evidence submitted with the Complaint, the extensive use as well as the well-known character of the trademark MAXALTO and based on the fact that the Respondent did not provide any explanation as to how and why the Respondent has registered the Disputed Domain Name, it is unconceivable to this Panel that the Respondent was not aware of the Complainant’s trademark and its activity. Considering the distinctiveness and originality of the trademark MAXALTO, the Panel is convinced that the Respondent had the Complainant’s trademark in mind when registering the Disputed Domain Name. The above-mentioned use of the Complainants’ well-known trademark in the Disputed Domain Name for an intentional attempt to attract for commercial gain Internet users by creating a likelihood of confusion through suggesting source, sponsorship, affiliation or endorsement by the Complainant of the Respondent’s website, amounts to evidence of bad faith registration and use as per paragraph 4(b)(iv) of the Policy. Lastly, the Panel observed that the Respondent used a privacy shield. While the Respondent’s use of a privacy service will not in itself constitute bad faith under the Policy, the Panel may still take it into account and draw adverse inferences. The use of the privacy shield in this case together with other elements gives rise to the suspicion that the privacy shield was used to mask the identity of the true registrant and to obstruct proceedings commenced under the Policy. Therefore, the Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith. The Complainant has established 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 Emre Kerim Yardimci
Sole Panelist
Date: October 30, 2020
Full & Egal Universal Law Academy