The Complainant is Calligaris S.p.A., Italy, represented by Perani Pozzi Associati, Italy.
The Respondent is Arthur Groves, United States of America (“United States” or “USA”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2021. On April 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 2021, 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 April 12, 2021, 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 April 15, 2021. 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 April 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 7, 2021. The Respondent sent an informal communication on May 15, 2021 offering settlement. The Complainant did not request suspension of the proceeding. The Center appointed Knud Wallberg as the sole panelist in this matter on May 17, 2021. 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 Founded in 1923 the Complainant is a leading Italian furnishing company, which currently manufactures and distributes worldwide chairs, tables, beds, sofas, storage units, and furnishing accessories. The Complainant is the holding company of the Calligaris Group, which has operating subsidiaries in USA, Japan, Russian Federation, and France and has five manufacturing plants. The Complainant employs 600 people worldwide and distributes its products in 100 countries. The Complainant is the owner of the number of registrations of the trademark CALLIGARIS including, but not limited to – European Union Trade Mark registration No. 000024323, CALLIGARIS, filed on March 12, 1996, and registered on April 20, 1998, for goods in class 20, and International Trademark registration No. 1005683 CALLIGARIS, registered on April 20, 2009, for goods and services in classes 8, 11, 20, 21, 24, 27, and 35. The registration covers the United States, China, Russian Federation and many other countries. The Complainant is also the owner several domain names that contain the CALLIGARIS mark including The Respondent registered the disputed domain name The Complainant asserts that the disputed domain name at issue is confusingly similar to the Complainant’s registered and well-known trademark CALLIGARIS, as it exactly reproduces such distinctive sign, with the mere addition of the descriptive word “group”. The Complainant further asserts that the Respondent has not been authorized by the Complainant to register or to use the disputed domain name. Furthermore, the Respondent has no rights on the disputed domain name, which does not correspond to the name of the Respondent, nor does the Respondent use the disputed domain name in any fair or noncommercial manner. Finally, the Complainant asserts that the disputed domain name was registered and is used in bad faith. The Complainant’s trademark CALLIGARIS is thus distinctive and well known, especially in the furniture sector, and the fact that the Respondent has registered a domain name that is confusingly similar to this mark indicates that the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name. In addition, the present circumstances indicate 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, since the disputed domain name has been offered for sale through the Registrar for the amount of USD 16,000. B. Respondent The Respondent did not reply to the Complainant’s contentions. However, the Respondent sent the following mail to the Center on May 15, 2021: “Hello: According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Paragraph 4(a) of the Policy directs that a complainant must prove each of the following: (i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. A. Identical or Confusingly Similar The Panel finds that the disputed domain name is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark CALLIGARIS. The disputed domain name contains the mark in its entirety with the addition of the word “group” as suffix. The generic Top-Level Domain (“gTLD”) “.com” is a standard registration requirement and as such is disregarded under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name. B. Rights or Legitimate Interests According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark. Further, given the circumstances of this case, the Panel is of the opinion that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In the email to the Center quoted above, the Respondent seems to admit this, and the fact that the Respondent offers the disputed domain name for sale clearly does not support a finding of rights or legitimate interests. Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain names in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances, which shall be evidence of registration and use in bad faith: (i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or (ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or (iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location. Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith. Given the circumstances of the case, in particular the distinctive nature of the Complainant’s mark CALLIGARIS and the extent of use and reputation of the Complainant’s trademark, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and its trademarks. The Panel therefore finds that the disputed domain name was registered in bad faith. The disputed domain name has been offered for sale on the Registrar’s website, and since the Respondent has not filed a formal response in the matter or otherwise explained the reasons for the registration of the disputed domain name, the Panel finds that it is more likely than not that the Respondent registered the disputed domain name solely for the purpose of selling or otherwise transferring the disputed domain name to the Complainant against payment of a sum that exceeds the out-of-pocket costs directly related to the registration of the disputed domain name. The Complainant has thus furnished evidence that the disputed domain name is offered for sale for USD 16,000. In light of the above and noting that the disputed domain name incorporates a well-known trademark, that no formal response has been filed, that the disputed domain name is offered for sale for a sum that clearly exceeds the out-of-pocket costs directly related to the registration of the disputed domain name and considering all the facts and evidence, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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 Knud Wallberg
We have no desire to contest this dispute and have tried to transfer the Calligarisgroup.com domain to calligaris. Please facilitate transfer uncontested. […]” 6. Discussion and Findings
Sole Panelist
Date: June 1, 2021
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