The Complainant is Automobile Club di Brescia, Italy, represented by Barzanò & Zanardo Milano SpA, Italy.
The Respondent is Tom Gorman, Group Incorporated, United States of America.
2. The Domain Name and RegistrarThe disputed domain name <1000miglia.events> is registered with GoDaddy.com, LLC., (the “Registrar”).
3. Procedural HistoryThe Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 9, 2021, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on September 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 6, 2021.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on October 13, 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 an Italian entity that organizes with its affiliate 1000 Miglia S.r.l. the MILLE MIGILIA car race.
The race started back in 1927 and is a Brescia-Rome round trip of approximately a thousand miles.
The Complainant is the owner of a number of 1000 MIGLIA trademarks in different jurisdictions. As such:
(i) 1000 MIGLIA (device) European Union (“EU”) Registration no. 001519503, registered on April 2, 2001, for goods and services in classes 9, 28, and 41;
(ii) 1000 MIGLIA EU Registration no. 009071473, registered on October 12, 2010, for goods in class 14.
(iii) 1000 MIGLIA International Registration no. 534874, registered on February 10, 1989, for goods in class 14;
The 1000 MIGLIA trademark is to be considered well known for the purposes of the UDRP.
The disputed domain name was registered on April 14, 2021, and redirects to a Pay-Per-Click (“PPC”) webpage.
5. Parties’ Contentions A. ComplainantThe Complainant alleges that the disputed domain name fully incorporates Complainant´s trademark. Therefore, the disputed domain name is to be considered confusingly similar to the 1000 MIGLIA trademark.
The addition of the generic Top-Level Domain (“gTLD”), <.events>, must be disregarded when assessing the first element.
With respect to the second element, the Complainant asserts that it has never authorized the Respondent to use its trademarks in any manner. Besides, the Respondent is not commonly known by the disputed domain name and the Respondent does not own trademark rights over the term “1000miglia” which in any case could grant rights on the disputed domain name.
Further, the Complainant points out that the current use of the disputed domain name is in connection to a PPC website. Such use is to be deemed an attempt to capitalize Complainant’s trademark goodwill. Accordingly, there is no bona fide offering nor a legitimate o fair use of the disputed domain name.
Finally, the Complainant affirms that being 1000 MIGLIA a well-known trademark, it would be disingenuous for the Respondent to deny previous knowledge of the trademark and the violation of the Complainant´s rights.
In respect to the use of the disputed domain name, the Complainant refers again to the PPC scheme. While the links are automatically generated, the finding of bad faith is met. The Complainant is fully convinced that the links are used to exploit the 1000 MIGLIA trademark for commercial purposes as the Respondent presumably receives revenues in each click.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a 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 was registered and is being used in bad faith.
There are no exceptional circumstances within paragraph 5(e) of the Rules to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”. This dispute resolution procedure is accepted by the disputed domain name registrant as a condition of registration
A. Identical or Confusingly SimilarThe Complainant has showed evidence to be the owner of several 1000 MIGLIA trademarks in different jurisdictions. It is a fact that the disputed domain name incorporates the 1000 MIGLIA trademark. The Panel looks at the 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 trademark, …, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. Accordingly, the Panel finds that the disputed domain name is identical to the Complaint’s trademark 1000 MIGLIA.
For such assessment the Panel notes that it is well established that gTLDs, in this case “.events”, are typically irrelevant to the consideration of identity or confusing similarity between a trademark and a domain name.
Therefore, the first requirement is met under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsAs mentioned above the Respondent failed to lodge a response. Thus, the Panel looks at WIPO Overview 3.0, section 2.1, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name”.
Upon the evidence recorded in the file, the Panel finds that the Complainant has made out a prima facie case. As such, the Complainant has never authorized the Respondent to use the 1000 MIGLIA trademark whatsoever, the Respondent is not commonly known by the disputed domain name and, and the Respondent is not the owner of trademark rights over the term “1000 miglia”.
Besides, the use of a PPC scheme in the corresponding website is an attempt to capitalize on the Complainant’s trademark and goodwill. Such use is not legitimate for the purposes of the UDRP. See Merck Sharp & Dohme Corp. v. Domain Administrator, PrivacyGuardian.org / George Ring, DN Capital Inc. WIPO Case No. D2017-0302.
The Panel also notes that the disputed domain name identical to a trademark, which carries with it a high risk of implied affiliation with the Complainant. It is an accepted principle that the use of a domain name suggesting affiliation cannot be “legitimate”. See The Procter & Gamble Company v. Whoisguard, Inc. / Enzo Gucci, Xtremcare, Tony Mancini, USDIET, USDIET Ltd, WIPO Case No. D2016-1881.
Having the Respondent not submitted any allegations and/or evidence to rebut the Complainant’s prima facie case, the Respondent has failed to come forward with relevant evidence to rebut the Complainant’s prima facie case.
Accordingly, the Complainant is deemed to have satisfied the second element under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithWhile the UDRP provides with non-exclusive scenarios as evidence of a respondent’s bad faith, the Panel notes the following circumstances are determinative if the registration of the disputed domain name was or not in bad faith: (i) the identity between the 1000 MIGLIA trademark and the disputed domain name; (ii) the Respondent’s likely knowledge of the complainant’s rights; (iii) the distinctiveness of 1000 MIGILIA trademark: (iv) the failure of the Respondent to present evidence for registering the disputed domain name.
Being that as it is, the Panel comes to the conclusion that the disputed domain name was registered in bad faith. That is to say the Respondent knew or should have known about Complainant’s trademark prior the registration of the disputed domain name, and the incorporation of 1000 MIGLIA trademark in the disputed domain name is by no means coincidental.
Besides, the record reflects the Respondent’s use of the disputed domain name to attract internet users to the Respondent’s website to purportedly generate PPC advertising revenues. Such use is to be considered in bad faith. See The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC, WIPO Case No. D2009-0057.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of 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 disputed domain name, <1000miglia.events>, be transferred to the Complainant.
Manuel Moreno-Torres
Sole Panelist
Date: October 27, 2021