The Complainant is Technogym S.p.A., Italy, represented by Iusgate, Italy.
The Respondent is Giancarlo di Bennardo, Italy.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 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. Also on the same day, 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 November 21, 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 November 22, 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 December 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2022. Aside from an informal communication in Italian on December 23, 2021, the Respondent did not submit formal any response. Accordingly, the Center notified the Commencement of Panel Appointment Process on January 17, 2022.
The Center appointed Luca Barbero as the sole panelist in this matter on January 21, 2022. 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 joint stock company founded in 1983 and provides products, services and digital solutions in the fields of fitness and wellness.
The Complainant has over 2,200 employees and 14 branches in Europe, the United States of America, Asia, Middle East, Australia and South America, is currently the Official Supplier for the Tokyo 2020 Olympic Games and has also been the official supplier for the last seven Olympic Games: Sydney 2000, Athens 2004, Turin 2006, Beijing 2008, London 2012, Rio 2016 and PyeongChang 2018.
The Complainant is the owner of several trademark registrations for TECHNOGYM, including the following, as per trademark certificates submitted as Annex 6 to the Complaint:
- International Trademark registration No. 645891 for TECHNOGYM (figurative mark), registered on August 2, 1995, in classes 9, 10, 28, 35, 41 and 42;
- International Trademark registration No. 508094, for TECHNOGYM (figurative mark), registered on November 17, 1986, in classes 25, 28, 29, 30 and 32;
- International Trademark registration No. 866986, for TECHNOGYM (word mark), registered on February 18, 2005 in classes 9, 28 and 41;
- Italian Trademark Registration No. 0000655062, for TECHNOGYM (figurative mark), filed on March 28, 1995 and registered on August 2, 1995 in classes 9, 10, 28, 35, 41 and 42.
The Complainant is also the owner of the domain name
The disputed domain name
The Complainant contends that disputed domain name
With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent was in no way authorized or licensed by the Complainant to use the trademark TECHNOGYM in or as part of the disputed domain name, nor was he in any way bound by any contractual, commercial or economic relationship with the Complainant.
Moreover, the Complainant points out that the disputed domain name is pointed to a website where the disputed domain name is being offered for sale along with other domain names incorporating well-known trademarks. The Complainant also informs the Panel that, on October 19, 2021, the Respondent sent an email to the Complainant (copy of which has been submitted as Annex 9 to the Complaint), in which the Respondent offered the disputed domain name for sale and highlights that, in light of such correspondence, it is clear that the Respondent registered the disputed domain name with the sole purpose of selling or renting it to the Complainant in excess of of the documented out-of-pocket costs directly related to the disputed domain name.
The Complainant further asserts that, considering the trademark TECHNOGYM is well-known and has to date enjoyed considerable goodwill in many territories worldwide, it is highly unlikely that the Respondent, who is based in the native country of the trademark TECHNOGYM, was unaware of the Complainant at the time of registering the disputed domain name.
In addition, according to the Complainant, the Respondent, by having targeted the Complainant’s trademark, has not used the disputed domain name in connection with a bona fide offering goods or services or any legitimate noncommercial or fair use, having the Respondent registered the disputed domain name being aware of the Complainant’s rights and with the sole intention to profit from the registration of the disputed domain name at the expense of the Complainant.
With reference to the circumstances evidencing bad faith, the Complainant indicates that, considering the trademark TECHNOGYM is globally recognized and well established with reference to products, services and solutions in the fields of fitness and wellness, that the trademark has been used since 1983 and that the disputed domain name is identical to TECHNOGYM, the Respondent undoubtedly registered and used the disputed domain name with the Complainant’s trademark in mind.
The Complainant emphasizes that, considering the Respondent appears to operate in the domain name business, when registering the disputed domain name, he should have ensured such disputed domain name would not infringe or otherwise violate the rights of any third party, according to paragraph 2 of the Policy and as recognized in prior decisions concerning the concept of “willful blindness”, which is considered as a basis for finding bad faith.
The Complainant underlines that the Respondent’s bad faith was also highlighted by the fact that, about one month after the registration of the disputed domain name, the Respondent sent the Complainant an email communication containing an unsolicited offer to purchase/rent the disputed domain name.
Moreover, the Complainant points out that the Respondent concealed his identity in the public Whois records and failed to supply identification data related to the broker operating the website to which the disputed domain name resolves.
Furthermore, the Complainant highlights that the Respondent’s passive holding of the disputed domain name does not prevent a finding of bad faith.
Lastly, the Complainant indicates that he opted not to reply to the Respondent’s email communication to avoid any involvement in the Respondent’s self-evident fraudulent conduct or unfair and illegitimate behavior.
B. RespondentOn December 23, 2021, the Respondent sent an informal email communication to the Center, in reply to the Complainant’s contentions, stating that the disputed domain name was not registered illegally as it was attributed to him as assignee by ICANN, on a “first come first served” basis and that requesting the (even temporary) assignment of a “free” domain name is not illegal even if the same contains a name protected by third-party trademark rights.
The Respondent also contends that the disputed domain name is in breach of no rule whatsoever as it has been regularly registered and is not redirecting to any particular website that may contain products or services which may be attributed to a specific brand or trademark.
The Respondent concludes that, as shown on the website “dgbroker.cloud” to which the disputed domain name resolves, the disputed domain name is currently on sale and can be purchased by anyone and, should it be of interest, he would be open to negotiations, but if not, he would prefer if his personal information were to be kept private.
6. Discussion and FindingsAccording to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the 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 SimilarThe Panel finds that the Complainant has established rights over the trademark TECHNOGYM based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as Annex 6 to the Complaint.
As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity 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.
In the case at hand, the Complainant’s trademark TECHNOGYM is entirely reproduced in the disputed domain name, with the mere addition of the gTLD “.cloud”, which is commonly disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0).
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is identical to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
In the case at hand, the Complainant has made a prima facie case and the Respondent has failed to raise any convincing circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademark.
Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed domain name, has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that he intends to make a legitimate, noncommercial or fair use of the disputed domain name and the Respondent has not provided in its informal communication to the Center any convincing evidence to the contrary.
Indeed, based on the records, the Respondent has pointed the disputed domain name to another website under his control, where he has been offering the disputed domain name for sale along with domain names incorporating third-party trademarks. Moreover, the Respondent sent an unsolicited communication to the Complainant offering the disputed domain name for sale (Annex 9 to the Complaint). Therefore, it is clear that the Respondent did not register the disputed domain name for use in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, being evident the Respondent’s intent to derive profits from the sale of the disputed domain name, identical to the trademark TECHNOGYM, to the legitimate trademark owner, i.e. the Complainant.
Moreover, the Panel finds that the disputed domain name, being identical to the Complainant’s trademark, carries a high risk of implied affiliation (section 2.5.1 of the WIPO Overview 3.0).
Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithFor the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.
The Panel finds that, in light of i) the prior registration and use of the Complainant’s trademark TECHNOGYM in connection with the Complainant’s products and services in the fields of fitness and wellness, ii) the well-known character of the trademark, especially in Italy, where the Respondent is based and iii) the identity of the disputed domain name with the Complainant’s trademark, the Respondent very likely registered the disputed domain name having the Complainant’s trademark in mind.
Moreover, in view of the notoriety of the Complainant’s trademark, the Panel finds that the Respondent acted in opportunistic bad faith at the time of registration, since the disputed domain name is so obviously connected with the Complainant that its selection by the Respondent, who has no connection with the Complainant, suggests the disputed domain name was registered with a deliberate intent to create an impression of an association with the Complainant.
According to Section 3.1.1 of the WIPO Overview 3.0., if “the circumstances of the case indicate that the respondent’s intent in registering the disputed domain name was to profit from or otherwise exploit the complainant’s trademark, panels will find bad faith on the part of the respondent. While panel assessment remains fact-specific, generally speaking such circumstances, alone or together, include: (i) the respondent’s likely knowledge of the complainant’s rights, (ii) the distinctiveness of the complainant’s mark, (iii) a pattern of abusive registrations by the respondent, (iv) website content targeting the complainant’s trademark, e.g., through links to the complainant’s competitors, (v) threats to point or actually pointing the domain name to trademark-abusive content, (vi) threats to ‘sell to the highest bidder’ or otherwise transfer the domain name to a third party, (vii) failure of a respondent to present a credible evidence-backed rationale for registering the domain name, (viii) a respondent’s request for goods or services in exchange for the domain name, (ix) a respondent’s attempt to force the complainant into an unwanted business arrangement, (x) a respondent’s past conduct or business dealings, or (xi) a respondent’s registration of additional domain names corresponding to the complainant’s mark subsequent to being put on notice of its potentially abusive activity. Particularly where the domain name at issue is identical or confusingly similar to a highly distinctive or famous mark, panels have tended to view with a degree of skepticism a respondent defense that the domain name was merely registered for legitimate speculation (based for example on any claimed dictionary meaning) as opposed to targeting a specific brand owner”.
In the case at hand, the Panel finds that, in light of the content of the correspondence sent by the Respondent to the Complainant (Annex 9 to the Complaint), of the redirection of the disputed domain name to a web page offering the same for sale – along with additional domain names encompassing third-party trademarks – and of the content of the informal communication sent by the Respondent to the Center after the filing of the Complaint, the Respondent – who describes himself as a domain broker - clearly registered disputed domain name, identical to the Complainant’s trademark TECHNOGYM, for the primary purpose of deriving profit from its sale to the Complainant, in all likelihood for an amount presumably in excess of the mere out-of-pocket costs directly related to the disputed domain name.
The Respondent is reminded that, according to paragraph 2 of the Policy, by applying to register a domain name, each registrant represents and warrants that the registration of the domain name will not infringe upon or otherwise violate the rights of any third party, acknowledging that it is the registrant’s responsibility to determine whether a domain name registration infringes or violates someone else’s rights.
Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and has been using the disputed domain name in bad faith according to 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
Luca Barbero
Sole Panelist
Date: February 4, 2022