The Complainant is Eclisse S.R.L., Italy, represented by Dr. Modiano & Associati S.p.A., Italy.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States / aras karga, Turkey. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2020. On September 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 17, 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 September 18, 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 amended Complaint on September 18, 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 the Respondent of the Complaint, and the proceedings commenced on September 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2020. The Center appointed Tobias Malte Müller as the sole panelist in this matter on October 30, 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 a company incorporated under the laws of Italy active in the field of sliding and pocket doors, door frames and locksmiths' goods of metal. It runs 10 subsidiaries worldwide, more than 30 representative offices, and 2,000 distributors in Italy. The Complainant is the registered owner of several trademarks throughout the world and particularly invokes the following trademarks: - Verbal European Union Trademark No. 000380931 ECLISSE filed on July 30, 1996, registered on November 18, 1998 for goods in class 6. - Figurative European Union trademark No. 008162018 with the verbal element CERCA FACILE 2 ECLISSE filed on February 19, 2009, registered on November 22, 2009 for goods and services in classes 6, 9, 20, 35, 38, 42. According to the Registrar’s verification response, the current registrant transferred the disputed domain name into its system on June 10, 2020. It results from the undisputed evidence provided by the Complainant that the disputed domain name resolves to a domain trading website where it is offered for sale for USD 988. 5. Parties’ Contentions A. Complainant Firstly, the Complainant points out that the disputed domain name is confusingly similar to the registered trademarks in which the Complainant has rights. In fact, the disputed domain name is almost identical to the trademark “CERCAFACILE2ECLISSE” and confusingly similar to the further trademark ECLISSE. The wording “cerca facile” meaning “find easily” in Italian. Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Complainant did not grant the Respondent any right to use the above trademarks. Furthermore, there is no evidence that the Respondent has trademarks or company activities registered under the ECLISSE and/or the “CERCA FACILE ECLISSE” brands. Finally, the disputed domain name has been held passively since its registration and is being offered for sale. Thirdly, in the Complainant’s view the disputed domain name was registered in bad faith, and is being used in bad faith under several aspects: The disputed domain name is advertised for sale to the general public at a price of USD 988. Furthermore, the Respondent is using the entire mark without plausible good faith use, is diverting Internet users and is passively holding the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs this 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”. Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled: (i) the disputed domain name is identical or confusingly similar to a trademark 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 has been registered and is being used in bad faith. The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has provided evidence that it is the registered owner of various trademark registrations consisting of the verbal elements ECLISSE and CERCA FACILE 2 ECLISSE, amongst others European Union trademark No. 000380931 ECLISSE (verbal) and European Union trademark No. 008162018 with the verbal element CERCA FACILE 2 ECLISSE (figurative). These trademarks predate the creation date of the disputed domain name, which is June 10, 2020. Many UDRP panels have found that a domain name is confusingly similar to a complainant’s trademark where it incorporates the complainant’s trademark in its entirety (e.g., F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainSource.com, Inc.,WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0464). This Panel shares this view and notes that the Complainant’s registered trademark ECLISSE is fully included in the disputed domain name. Furthermore, the Panel is also satisfied that the Complainant’s trademark registration CERCA FACILE 2 ECLISSE with design elements prima facie satisfies the requirement that the complainant show “rights in a mark” for further assessment as to confusing similarity (see section 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The verbal elements of this further mark are almost fully reflected in the disputed domain name (except for the figure “2”). Hence, this Panel finds that the disputed domain name is confusingly similar to both of the Complainant’s trademarks pursuant to the Policy, paragraph 4(a)(i). Policy paragraph 4(a)(i) is satisfied. B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name. First, the Panel notes that there is no evidence in the record or WhoIs information showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy. Furthermore, the Panel notes that there is no evidence in the record either showing that the Respondent might be making a noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue pursuant to paragraph 4(c)(iii) of the Policy. Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation (see section 2.5.1 of WIPO Overview 3.0). Furthermore, the Panel is satisfied that the registered trademarks ECLISSE and in particular CERCA FACILE 2 ECLISSE are distinctive so that it is unlikely that the Respondent wanted to fairly use the disputed domain name containing these marks entirely, or at least almost entirely (CERCA FACILE 2 ECLISSE). In addition, it results from the Complainant’s uncontested evidence that the disputed domain name resolves to a domain trading website where it is offered for sale for USD 988. Such use is clearly commercial, so that a noncommercial use is excluded from the outset. Finally, the Respondent did not submit any evidence of bona fide pre-Complaint preparations to use the disputed domain name. In particular, the Complainant’s uncontested allegations demonstrate that it has not authorized the Respondent’s use of its trademarks for registering the disputed domain name, which are confusingly similar. It is acknowledged that once the Panel finds a prima facie case has been established, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, in particular, but without limitation, be evidence of the disputed domain name’s registration and use in bad faith. One of these circumstances is that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name (paragraph 4(b)(i) of the Policy). It is the view of this Panel that the Respondent has actually registered the disputed domain name primarily for the purpose of selling it either to the Complainant or to third persons, in particular to one of the Complainant’s competitors, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name. According to the Complainant’s uncontested allegations and evidence, the Respondent is offering the disputed domain name for sale to the public for a price of USD 988. This Panel finds that this sum is most likely in excess of any out-of-pocket costs directly related to the disputed domain name (see Skyscanner Limited v. New Ventures Services, Corp.WIPO Case No. D2020-0498). In addition, this finding of bad faith registration and use is further supported by the further circumstances resulting from the case at hand, which are the following: (i) the Respondent’s failure to submit a response or to provide any evidence of actual or contemplated good faith use; (ii) the implausibility of any good faith use to which the disputed domain name may be put; (iii) the Respondent concealing its identity behind a privacy shield (see section 3.3 of the WIPO Overview 3.0). In the light of the above the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to 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, Tobias Malte Müller
Sole Panelist
Date: November 14, 2020
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