The Complainant is Servizi Consortili Smeralda S.p.A., Italy, represented by Studio Legale Giovannelli Bianconi, Italy.
The Respondent is Tabarka 4.0 Srls, Italy.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2021. On September 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 3, 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 September 20, 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 amended Complaint on September 24, 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 the Respondent of the Complaint, and the proceedings commenced on September 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2021.
The Center appointed Andrea Mondini as the sole panelist in this matter on November 24, 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 BackgroundThe Complainant is a wholly owned subsidiary of the “Consorzio Costa Smeralda”, an Italian consortium founded in the sixties by Prince Karim Aga Khan to develop a costal area in northern East of Sardinia, Italy, which is known for white sand beaches, golf clubs and exclusive hotels. The Complainant was established in 1984 with the purpose of managing the trademark COSTA SMERALDA and providing marketing and promotional activities in the fields of tourism and leisure.
The Complainant owns numerous trademark registrations, including Italian trademark No. 181814 COSTA SMERALDA filed in all classes on February 17, 1966, and registered on September 22, 1966, and European Union trademark COSTA SMERALDA No. 000161828 filed in numerous classes on April 1, 1996, and registered on October 26, 1998. Both trademarks have been duly renewed.
The Complainant also holds several domain names, including the domain name
The disputed domain name was registered on July 20, 2017, and resolves to a website stating “Costa Smeralda Luxury Sport” promoting sport and entertainment services also in connection with hotels.
5. Parties’ Contentions A. ComplainantThe Complainant contends as follows:
Italian case law has repeatedly recognized that the name “COSTA SMERALDA” is not a geographic indication but a coined, fanciful name that enjoys trademark protection.
The disputed domain name is confusingly similar to the COSTA SMERALDA trademark in which the Complainant has rights, because it incorporates this trademark in its entirety, and the addition of the words “luxury” and “sport” is not sufficient to avoid confusing similarity.
The Respondent is not commonly known by the disputed domain name and has no rights or legitimate interests in respect of the disputed domain name. There is no business or legal relationship between the Complainant and the Respondent. The Respondent has not been licensed or otherwise authorized by the Complainant to use this trademark.
The disputed domain name resolves to a website promoting sport and entertainment services also in connection with hotels, which shows that the Respondent is making commercial use of the disputed domain name in the same field of activity as the Complainant.
The disputed domain name was registered and is being used in bad faith because it is obvious that the Respondent had knowledge of both the Complainant and its well-known trademark at the time it registered the disputed domain name, since the Respondent offers services in that region. By using the disputed domain name, the Respondent is intentionally attracting Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of the Respondent’s website.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsAccording to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the 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 SimilarThe Panel is satisfied that the Complainant owns a trademark registration for its COSTA SMERALDA trademark.
The Panel notes that the disputed domain name incorporates in its entirety the COSTA SMERALDA trademark. The addition of the words “luxury” and “sport” does not prevent a finding of confusing similarity under the Policy, paragraph 4(a)(i). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
For these reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark COSTA SMERALDA.
The first element of paragraph 4(a) of the Policy has been met.
B. Rights or Legitimate InterestsThe Complainant states the Respondent is not commonly known by the disputed domain name and that the Complainant has no relationship of any kind with the Respondent and has not licensed or otherwise authorized the Respondent to use the trademark COSTA SMERALDA. The Panel does not see any contrary evidence on the case file.
The Complainant has also shown that disputed domain name resolves to a website making commercial use of the disputed domain name in the same field of activity as the Claimant. Furthermore, previous UDRP panels have held that a disputed domain name consisting of a trademark plus additional terms cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See WIPO Overview 3.0, section 2.5.1. The Panel notes that “COSTA SMERALDA” is not a geographic indication, which anyone would be free to use, but a coined, fanciful name that enjoys trademark protection (as recognized by Italian case law, see Court of Appeal of Rome of April 19, 2004).
In the view of the Panel, the Complainant has succeeded in raising a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. For its part, the Respondent failed to provide any explanations as to any rights or legitimate interests.
Therefore, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name.
The second element of paragraph 4(a) of the Policy has been met.
C. Registered and Used in Bad FaithThe Complainant has shown to the satisfaction of the Panel that its trademark COSTA SMERALDA is well-known.
In the view of the Panel, noting the composition of the disputed domain name and the fact that the Respondent purports to offer competing services in that region, it is inconceivable that the Respondent could have registered the disputed domain name without knowledge of the Complainant and the Complainant’s trademark. In the circumstances of this case, this is evidence of registration in bad faith.
The disputed domain name resolves to a website promoting sport and entertainment services also in connection with hotels, which shows that the Respondent is making commercial use of the disputed domain name in the same field of the Complainant’s activity. By using the disputed domain name this way, the Respondent is intentionally attracting, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of the Respondent’s website in the sense of paragraph 4(b)(iv) of the Policy.
The Panel thus finds that the disputed domain name was registered and is being used in bad faith.
The third element of paragraph 4(a) of the Policy has been met.
7. DecisionFor 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
Andrea Mondini
Sole Panelist
Date: December 7, 2021