Complainant is Technogym S.p.A., Italy, represented by Iusgate, Italy.
Respondent is Ammar Abu Karsh, Technogym Gaza, Palestine.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2021. On September 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 8, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 November 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 2, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 8, 2021.
The Center appointed Clive L. Elliott, Q.C. as the sole panelist in this matter on December 15, 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 BackgroundComplainant was founded in 1983. It is an Italian joint-stock company having its registered address in Cesena, Italy. It has over 2 thousand employees and 14 branches in Europe, the United States of America, Asia, Middle East, Australia, and South America, and provides products, services, and digital solutions in the fields of fitness and wellness. Complainant was an Official Supplier for the Tokyo 2020 Olympic Games. It has been an official supplier for the last seven Olympic Games.
Complainant has been the registered owner of the TECHNOGYM trade mark (“Complainant’s Mark”) since 1983. Complainant has international trade mark registrations as set out below:
Mark Jurisdiction Registration No Registration DateTECHNOGYM (and design)
International
645 891
August 2, 1995
TECHNOGYM (and design)
International
508 094
November 17, 1986
TECHNOGYM
International
866 986
February 18, 2005
Complainant has been using worldwide the domain name “Technogym.com” in commerce since 1995 (Complainant’s domain name).
According to the publicly available WhoIs, the Domain Name was registered on March 25, 2021. The Domain Name resolves to a page reproducing Complainant’s Mark and promoting competing services.
5. Parties’ Contentions A. ComplainantComplainant asserts that the Domain Name is confusingly similar to Complainant’s Mark, (and Complainant’s domain name), as it incorporates Complainant’s Mark in its entirety, with the addition of the geographic term “gaza”.
Complainant contends that the Domain Name resolves to a website in the Arab language, and also partially in English, promoting and offering fitness services. Complainant further contends that in several internal web pages, Complainant’s Mark is accompanied by an ornamental element represented by a stylized drawing of a cat, coloured in yellow on a dark background. Complainant argues that Respondent’s website contains the same or similar wording, colours, and design elements as those used by Complainant. Complainant further notes that some of Respondent’s web pages show Complainant’s Mark affixed over several non-original fitness exercise machines, giving the false impression that such equipment is part of Complainant’s original products, while they are not.
Complainant asserts there is no relationship with Respondent and Respondent has never received any authorization or approval by Complainant to use Complainant’s Mark. Complainant further asserts that there is no evidence that Respondent has been commonly known by the Domain Name.
It submits that Respondent has registered the Domain Name in bad faith to trade on the fame of Complainant, by suggesting an association with Complainant where there is none. Complainant submits that Respondent is exploiting Complainant’s reputation to divert customers/Internet users to generate income through illicit means.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarAs noted above, Complainant was founded in 1983, employs over 2 thousand people and operates in a number of countries around the world. It provides a range of goods and services in the fitness and wellness area. Complainant’s Mark, TECHNOGYM, has been registered since 1983.
The Domain Name is confusingly similar to Complainant’s Mark. The Domain Name incorporates Complainant’s Mark TECHNOGYM in its entirety, with the addition of the geographic term “gaza”. According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “in cases where a domain name incorporates the entirety of a trade mark or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. In addition, section 1.8 of the WIPO Overview 3.0 makes it clear that the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) does not prevent a finding of confusingly similarity.
Accordingly, the first ground under the Policy is made out.
B. Rights or Legitimate InterestsComplainant submits that Respondent lacks rights or legitimate interests in the Domain Name, as Complainant has not given Respondent authority to use Complainant’s Mark. Further, Complainant asserts that Respondent’s website contains design features and other elements similar to Complainant’s website and in addition that Respondent is providing fitness services in a manner which is likely to create the false impression that Respondent’s equipment is part of Complainant’s original products, contrary to the fact.
Respondent has registered a domain name which contains Complainant’s Mark. Further, absent permission or authorisation to use Complainant’s Mark, along with Respondent’s failure to respond to Complainant’s allegations, the Panel concludes that the use of the Domain Name by Respondent is likely to result in consumers being confused into believing that the Domain Name is connected to or associated with Complainant. The Panel considers that this conduct is likely to mislead or deceive consumers into believing they are accessing Complainant’s website, contrary to the fact.
The Panel finds that the Domain Name was not registered and has not been used for any legitimate or fair purpose. Accordingly, the second ground under the Policy is made out.
C. Registered and Used in Bad FaithAs previously noted, Complainant submits that Respondent has registered the Domain Name in bad faith to trade on Complainant’s fame by suggesting an association with Complainant and in doing so Respondent is exploiting Complainant’s reputation to divert customers/Internet users to generate income through illicit means.
Given Complainant’s long-standing use of Complainant’s Mark, the exact replication of the Mark in the Domain Name and throughout the website to which it resolves, and the fact that Respondent is allegedly engaged in the same general area of activity as Complainant, it is difficult (particularly in the absence of any argument from Respondent) to identify a basis upon which Respondent’s registration and use of the Domain Name would not be in bad faith.
On that basis, the Panel is satisfied that Complainant has established the third ground under the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Clive Elliott Q.C.
Sole Panelist
Date: January 12, 2022