Complainant is Ceramiche Refin S.p.a., Italy, represented by Bugnion S.p.A., Italy.
Respondent is whoisproxyprotection@whoisproxyprotection.com, Domain Administrator, Cayman Islands, United Kingdom. 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 26, 2021. On April 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 27, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 28, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on April 28, 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 Respondent of the Complaint, and the proceedings commenced on April 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 20, 2021. The Center appointed Robert A. Badgley as the sole panelist in this matter on May 26, 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 Complainant is a manufacturer of ceramic tiles and related products. Complainant holds the Italian registered trademark REFIN CERAMICHE (Reg. No. 0000873109 registered on August 8, 2002), as well as trademark registrations in numerous other European jurisdictions (Reg. No. 792816 registered on August 8, 2002). Complainant has owned the domain name The Domain Name was registered on December 18, 2002. It is not clear from the record whether Respondent has owned the Domain Name since 2002 or acquired it at some later date. The Domain Name resolves to a parking page which announces that the Domain Name is for sale. As of April 29, 2021, which is three days after the Complaint in this proceeding was filed, Respondent’s website also featured several hyperlinks, under headings including “Homes for Sale”, “Redfin Realty”, and “Debt Management”. Before the Complaint was filed in this proceeding, Respondent’s website was essentially identical, but it also featured hyperlinks under the headings “Stone Tiles” and “Tiles”. These hyperlinks led the Internet user to another page at Respondent’s website, which featured hyperlinks to a number of specific tile manufacturers unrelated to Complainant. In email correspondence between December 15 and 17, 2020, Complainant communicated with the aftermarket domain name sales representative of the Registrar. The entire exchange is not contained in the record, but at one point the Registrar sales representative conveyed to Complainant the following message: “We will need to be in the thousands of dollars for me to take it to the owner. It is unfortunate we were unable to come to an agreement. If things change dramatically on your end please contact me.” 5. Parties’ Contentions A. Complainant Complainant contends that it has established all three elements required under the Policy for a transfer of the Domain Name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name: (i) the 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 in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel concludes that Complainant has rights in the trademark REFIN CERAMICHE through registration demonstrated in the record. The Panel also concludes that the Domain Name is confusingly similar to Complainant’s mark. The Domain Name entirely incorporates the fanciful word REFIN, which is the dominant portion of the mark, and omits the Italian word “ceramiche” (“ceramics” in English). The dominant and distinctive portion of Complainant’s mark is clearly recognizable within the Domain Name, notwithstanding the omission of the word “ceramiche”. Complainant has established Policy paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements: (i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or (ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not come forward in this proceeding to articulate and prove its bona fides, if any, with respect to the Domain Name. Notwithstanding Respondent’s silence in the face of this Complaint, we know that Respondent registered, at some point in time but after Complainant had established trademark rights in REFIN CERAMICHE, the Domain Name. We also know that Respondent’s website contained some hyperlinks (under “Tiles” and “Stone Tiles”) which led the Internet user to a page with further links to companies who, like Complainant, also sell tiles and related products. We also know that Respondent’s hyperlinks also included “Redfin Realty”, which is an established name in the real estate sector (and “Redfin” is almost identical to “Refin”). In addition, we know that, despite not responding formally,1 after the Complaint in this proceeding was filed, Respondent removed the hyperlinks “Tiles” and “Stone Tiles” from its website. We also know that Respondent advertised on its website that the Domain Name was for sale. Finally, we know that, upon inquiry from Complainant, Respondent evidently conveyed (through the Registrar’s aftermarket sales representative, and Respondent has not come forward to suggest this was an unauthorized or unknown agent) the news that it would not sell the Domain Name unless the sale price were “in the thousands of dollars”. Under these circumstances, the Panel concludes that it is more likely than not that Respondent registered the Domain Name with awareness of, or at minimum given the links posted prior to notice of this dispute an indifference to, Complainant’s REFIN CERAMICHE trademark. The Panel reaches this conclusion because of the hyperlinks, discussed above, to “Tiles” and “Ceramic Tiles”. The Panel finds, based on the record before it and on a balance of probabilities, that Respondent registered the Domain Name in order to derive pay-per-click revenue engendered through potential consumer confusion between the Domain Name and Complainant’s mark, with the ultimate aim of selling the Domain Name to Complainant at a price well in excess of Respondent’s out-of-pocket costs associated with the Domain Name. Such conduct clearly does not vest Respondent with any legitimacy vis-à-vis the Domain Name. Complainant has established Policy paragraph 4(a)(ii). C. Registered or Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”: (i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or (ii) that Respondent 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 Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel concludes that Respondent has registered and used the Domain Name in bad faith. The Panel incorporates its discussion above in the “rights or legitimate interests” section. On that basis, the Panel finds that Respondent targeted Complainant’s trademark and that Respondent’s use of the Domain Name is in bad faith within the above-quoted Policy paragraphs 4(b)(i) and 4(b)(iv). Complainant has established Policy paragraph 4(a)(iii). 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 Domain Name Robert A. Badgley 1 The Panel notes for completeness that the Center received a message from the Uniregistry registrar (acquired by GoDaddy) that the notification of complaint information was successfully delivered to the registrant.
Sole Panelist
Date: June 7, 2021
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