Complainants are Colorobbia Italia SPA and Colorobbia Holding SPA, Italy (together the “Complainant”) represented by Gino Rabbene, Italy.
Respondent is Super Privacy Service LTD c/o Dynadot, United States of America / Chen Hui, Gname, Singapore.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2021. On October 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 19, 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 October 22, 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 October 27, 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 November 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 22, 2021.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on December 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 BackgroundComplainant is comprised of companies that belong to the Colorobbia Group, a group of companies based in Italy that manufacture goods and provide services relating to the ceramics industry. The first company of the Colorobbia Group was first founded in 1921, and the first company of the group that included the term “colorobbia” was founded in 1937.
Complainant owns over 60 trademarks globally in numerous jurisdictions for “COLOROBBIA” or for marks containing the term “colorobbia”. Sample trademark registrations for Complainant include:
- COLOROBBIA (in color), Italy Reg. No. 1459073, registered on September 21, 2011;
- COLOROBBIA, Canada Reg. No. 445,599, registered on July 28, 1995; and
- COLOROBBIA, United Kingdom Reg. No. 1556971, registered on November 4, 1994.
Complainant owns the domain name
The disputed domain name was registered by Respondent on February 21, 2021. At the time of the filing of the Complaint and currently, the disputed domain name resolves to a website in Chinese that directs users to follow additional links to participate in various lotteries and online gambling.
5. Parties’ Contentions A. ComplainantAccording to Complainant, the disputed domain name is identical or confusingly similar to Complainant’s COLOROBBIA trademark in which Complainant has rights as demonstrated through its cited registrations. Complainant asserts that the disputed domain name incorporates the COLOROBBIA trademark in its entirety and that the addition of a descriptive term to Complainant’s trademark, namely the Italian word “gruppo”, does not eliminate the confusing similarity.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant states that Complainant owned the disputed domain name from 2006 until the registration lapsed on December 13, 2020 due to an error. Complainant states that Respondent has never been assigned, licensed, or otherwise authorized to use Complainant’s COLOROBBIA mark and that there is no relationship between Complainant and Respondent. Complainant advises that, according to Complainant’s knowledge, Respondent has never been known by the disputed domain name and does not have any trademark rights in the disputed domain name. Complainant contends that, as the Colorobbia Group’s first company was established a century ago and now contains 29 companies located in 18 different countries, as detailed at the website “www.gruppocolorobbia.it/en”, it is impossible that Respondent was unaware of Complainant at the time of registration of the disputed domain name. Complainant argues that Respondent’s use of the disputed domain name to provide lotteries and online games, through a website that does not always work, does not represent fair use, but creates a false and misleading sense of affiliation between Complainant and Respondent for the purpose of Respondent’s financial gain. Accordingly, Complainant asserts that Respondent has not met any criteria for demonstrating rights or legitimate interests in the disputed domain name.
Complainant asserts that its COLOROBBIA trademark is known globally and is registered in numerous countries, and is a strong and distinctive mark. Complainant reiterates that Complainant has no relationship with Respondent and that Complainant has never granted Respondent the right to register the disputed domain name, and contends that, accordingly, there is no reasonable explanation for Respondent’s choice to register the disputed domain name. Complainant states that the website content associated with the disputed domain name, the provision of services for lotteries and online gaming, is entirely unrelated to Complainant’s business, and that the disputed domain name creates a likelihood of confusion with Complainant, particularly due to the inclusion of the Italian word “gruppo” with the COLOROBBIA trademark. Complainant contends that Respondent’s purpose in registering the disputed domain name, after it had been owned by Complainant for 14 years and was only not renewed due to an error, was to prevent Complainant from recovering its domain name so that Respondent could use the disputed domain name to exploit Complainant’s reputation to attract users to Respondent’s website. Complainant also states that Respondent used a privacy service to conceal its identity. For all of these reasons, Complainant contends that the disputed domain name has been registered and is being used in bad faith.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsUnder paragraphs 5(e) and 14(a) of the Rules, the effect of a default by a respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
A respondent’s default does not by itself satisfy a complainant’s burden of proof and is not necessarily an admission that the complainant’s allegations are true. See section 4.3 of the WIPO Overview of WIPO Panel AccoViews on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340.
A. Identical or Confusingly SimilarA national or international trademark registration is prima facie evidence that the holder has the requisite rights in the registered mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it owns numerous registrations for the COLOROBBIA trademark, as referenced above. Therefore, Complainant has established that it has rights in the COLOROBBIA trademark.
The remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the TLD in which the domain name is registered) is identical or confusingly similar to Complainant’s mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Id.
Here, the disputed domain name incorporates the COLOROBBIA trademark in its entirety, with the addition of the descriptive Italian word “gruppo” before the term “colorobbia”. This variation does not prevent a finding of confusing similarity between the disputed domain name and the mark. See Covanta Energy Corporation v. Domains By Proxy, LLC / Peter Allen, Covantaholdingcorporation,WIPO Case No. D2018-0285.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to its COLOROBBIA mark.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in the disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP.
Paragraph 4(c) of the Policy lists the ways that Respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, respondent’s 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) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is 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 trade mark or service mark at issue.
Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that Respondent is not an assignee or licensee of Complainant and that Respondent has no other business relationship with Complainant. Complainant has contended that Respondent is not commonly known by the disputed domain name and that there is no evidence that Respondent has established trademark rights in the disputed domain name. Respondent is using the disputed domain name to host a website that directs the user to participate in lotteries and online gaming. Accordingly, Respondent is using the disputed domain name for commercial purposes, without any evidence that Respondent has established a business with a name that corresponds to Complainant’s COLOROBBIA trademark. Prior UDRP panels have found that use of a complainant’s trademark in a disputed domain name that resolves to a website directing users to online gambling content does not give rise to rights or legitimate interests in the disputed domain name. See International Business Machines Corporation v. Chen Hui, Gname,WIPO Case No. D2021-0240.
Therefore, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad FaithIn this case, bad faith can be found in the registration and use of the disputed domain name. Complainant provided evidence of its registration and widespread use of the COLOROBBIA trademark prior to Respondent’s registration of the disputed domain name, as well as Complainant’s prior registration of the disputed domain name before the registration lapsed due to an administrative error. Therefore, Respondent was likely aware of Complainant and its rights in the COLOROBBIA trademark when it registered the disputed domain name. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Moreover, noting that Complainant is a group of Italian companies and that the disputed domain name contains the descriptive term “gruppo”, which means “group” in Italian, the disputed domain name’s construction reinforces the Panel’s view that Respondent was likely aware of Complainant at the time registering the disputed domain name.
Respondent is using the disputed domain name to host a website in Chinese that prompts users to participate in lotteries and online gaming (gambling). Prior UDRP panels have found that such a use of a complainant’s trademark, when there is no other legitimate business interest in the disputed domain name, constitutes bad faith because this use capitalizes upon a complainant’s goodwill and reputation for unauthorized financial gain. See International Business Machines Corporation v. Chen Hui, Gname,WIPO Case No. D2021-0334.
For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name was in bad faith.
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
Brian J. Winterfeldt
Sole Panelist
Date: December 16, 2021