Complainant is Terme dei Papi S.p.A., Italy, represented by Società Italiana Brevetti S.p.A., Italy.
Respondent is Super Privacy Service LTD c/o Dynadot / kim, Republic of Korea. 2. The Domain Name and Registrar
The Disputed Domain Name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2021. On May 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 23, 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 Complainant on May 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 amended Complaint on June 1, 2021. 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 June 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 24, 2021. The Center appointed Richard W. Page as the sole panelist in this matter on July 2, 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 an important and well-known thermal center and hotel, with a monumental swimming pool of over 2,000 square meters, located in the city of Viterbo in Italy. Complainant, which every year since 1983 has hosted tourists from every part of the world, is one of the oldest spas in Italy and its thermal waters have been known since Etruscan times. In addition to thermal and beauty treatments, Complainant also sells a line of cosmetics made from Terme dei Papi’s thermal water. Complainant owns Italian registration No 0001438279 for TERME DEI PAPI registered on March 25, 2011. Complainant registered the The Disputed Domain Name was registered September 19, 2020, and it is being used for a website with Pay-Per-Click (“PPC”) links. 5. Parties’ Contentions A. Complainant Complainant contends that it has trademark rights in the TERME DEI PAPI Mark, in the domain name Complainant further contends that the Disputed Domain Name is confusingly similar to its TERME DEI PAPI Mark because the Disputed Domain Name incorporates the entirety of the TERME DEI PAPI Mark. Complainant further contends that the generic Top-Level Domain “gTLD “.com” does not mitigate such confusing similarity. Complainant asserts that Respondent is not known and cannot be known by the Disputed Domain Name, because only Complainant has rights in the TERME DEI PAPI Mark and Complainant has not given permission to Respondent to use the TERME DEI PAPI Mark. Complainant further asserts that Respondent has registered and used the Disputed Domain Name in order to attract current and potential customers of Complainant. Complainant further asserts that the Disputed Domain Name resolves to a parking page that contains PPC links to goods and services offered by third parties in the same market sector as Complainant (namely, hotels, wellness centers, and beauty and cosmetics products), which links are in Italian. Complainant further asserts that there is no evidence of Respondent’s use of the Disputed Domain Name in connection with a bona fide offering of goods and services. Complainant further asserts that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain, as the Disputed Domain Name points merely to an inactive website with PPC links. Complainant further asserts that Respondent’s use of a parking page that is built on and around the TERME DEI PAPI Mark dos not establish rights of legitimate interests and cannot constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant alleges that Respondent has registered and used the Disputed Domain Name in an effort to divert Internet users away from Complainant’s business to its own. Complainant further alleges that this is prima facie evidence 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 Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.” Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Paragraph 4(a) of the Policy directs that Complainant must prove each of the following: i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the TERME DEI PAPI Mark in which Complainant has rights; and, Complainant contends that it has trademark rights in the TERME DEI PAPI Mark, including Italian registration No 0001438279 granted on March 25, 2011 for goods and services in Classes 3, 5, 29, 43 and 44. Section 1.2.1 of the WIPO Overview 3.0 states that registration of a trademark is prima facie evidence of Complainant having enforceable rights. Respondent has not contested Complainant’s rights in the TERME DEI PAPI Mark. Therefore, the Panel finds that Complainant has enforceable trademark rights for purposes of this proceeding. Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the TERME DEI PAPI Mark pursuant to paragraph 4(a)(i) of the Policy. Complainant further contends that the Disputed Domain Name is confusingly similar to its TERME DEI PAPI Mark because the Disputed Domain Name incorporates the entirety of the TERME DEI PAPI Mark. Complainant further contends that the gTLD “.com” does not mitigate such confusing similarity. See Section 1.7 of the WIPO Overview 3.0 says that inclusion of the entire trademark in a domain name will be considered identical or confusingly similar. Also see Section 1.11.1 of the WIPO Overview 3.0 instructs that gTLDs such as “.com” may be disregarded for purposes of assessing identity or confusing similarity. The Panel finds that under these criteria the Disputed Domain Name is identical to the TERME DEI PAPI Mark and that Complainant has satisfied the elements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy. Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or legitimate interests in the Disputed Domain Name: (i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed 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 Disputed 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 Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Complainant asserts that Respondent is not known by the Disputed Domain Name and Complainant has not given permission to Respondent to use the TERME DEI PAPI Mark. Complainant further asserts that Respondent has registered and used the Disputed Domain Name in order to attract current and potential customers of Complainant. Complainant further asserts that the Disputed Domain Name resolves to a parking page that contains PPC links to goods and services offered by third parties in the same market sector as Complainant (namely, hotels, wellness centers, and beauty and cosmetics products), which links are in Italian. Complainant further asserts that there is no evidence of Respondent’s use of the Disputed Domain Name in connection with a bona fide offering of goods and services. Complainant further asserts that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain, as the Disputed Domain Name points merely to a parking website with PPC links. Complainant further asserts that Respondent’s use of a parking page that is built on and around the TERME DEI PAPI Mark dos not establish rights of legitimate interests and cannot constitute a bona fide offering of goods or services or a legitimate nonnoncommercial or fair use. The Panel finds that Complainant has set forth a prima facie case and that the burden shifts to Respondent to disprove Complainant’s allegations. Respondent has not contested Complainant allegations. Therefore, the Panel finds that Complainant has satisfied the elements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy. Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name: (i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the TERME DEI PAPI Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or (ii) you [Respondent] have registered the Disputed 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 you have engaged in a pattern of such conduct; or (iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the TERME DEI PAPI Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product. The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. See, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (“Telstra”). In addition to these criteria, other factors alone or in combination can support a finding of bad faith. Section 3.1.4 of the WIPO Overview 3.0 instructs that identity or confusing similarity (particularly domain names incorporating the mark) to a famous or well-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See Section 3.3 of the WIPO Overview 3.0 considers the implausibility of any good faith use to which the domain name may be put to support a finding of bad faith. Another factor found to support a finding of bad faith is Respondent’s knowledge of Complainant’s mark when Respondent registered the Disputed Domain Name. Complainant has alleged, without refutation, that Respondent had actual knowledge of the TERME DEI PAPI Mark. Complainant alleges that Respondent has registered and used the Disputed Domain Name in an effort to divert Internet users away from Complainant’s business to its own. Complainant further alleges that this is prima facie evidence that the Disputed Domain Name was registered and is being used in bad faith. Complainant further alleges facts which support (i) its TERME DEI PAPI Mark being well-known, (ii) the implausibility of any good faith use of the Disputed Domain Name and (iii) Respondent’s actual knowledge of Complainant’s trademark rights The Panel finds that Complainant has shown the required elements of paragraph 4(b)(iv) of the Policy, plus additional elements of (i) its TERME DEI PAPI Mark being well-known, (ii) the implausibility of any good faith use of the Disputed Domain Name and (iii) Respondent’s actual knowledge of Complainant’s trademark rights. Therefore, the Panel finds that Complainant has shown the necessary elements 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, Richard W. Page
ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,
iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Sole Panelist
Date: July 11, 2021
Full & Egal Universal Law Academy