ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Fedrigoni S.P.A v. paul goodrich Case No. D2022-4154 1. The Parties The Complainant is Fedrigoni S.P.A, Italy, represented by Modiano & Associati S.p.A., Italy. The Respondent is Paul Goodrich, United States of America ("United States"). 2. The Domain Name and Registrar The disputed domain name (the "Domain Name") is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 3, 2022. On November 3, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 4, 2022, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and its 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 November 18, 2022. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 16, 2022. The Center appointed Jeremy Speres as the sole panelist in this matter on January 9, 2023. 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. page 2 4. Factual Background The Complainant is an Italian company with its principal place of business in Verona, Italy. It produces and sells paper for graphic use and self-adhesive labels for the wine sector, with over 130 years' use of its FEDRIGONI mark. That mark has been recognised as being well known by prior UDRP panels (see Fedrigoni S.P.A. v. Kai Hung Wang, PLASTECH INDUSTRIAL CO., WIPO Case No. D2019-2422). The Complainant's FEDRIGONI mark is registered in numerous jurisdictions, including in the Respondent's jurisdiction of the United States under trade mark registration no. 2460851 FEDRIGONI in class 16, with registration date June 19, 2001. The Complainant owns and uses various domain names incorporating its mark, including , which was registered in 1997. The Domain Name was registered on August 22, 2022. As at the date of drafting of the Complaint and this Decision, the Domain Name did not resolve to any website. 5. Parties' Contentions A. Complainant The Complainant contends that the Domain Name is confusingly similar to its FEDRIGONI mark, that the Respondent has no rights or legitimate interests in the Domain Name, and the Domain Name was registered and used in bad faith under the doctrine of passive holding in light of the fame of the Complainant's mark and the Respondent's history of cybersquatting. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar It is well established that where a domain name consists of a misspelling of a trade mark such that the mark is recognisable, as in this case, the domain name is confusingly similar. This includes substitution of similarappearing characters (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") at section 1.9). Numerous UDRP panels have found that the substitution of the letter "i" for the letter "I", as in this case, does not avoid a finding of confusing similarity (see LinkedIn Corporation v. Daphne Reynolds, WIPO Case No. D2015-1679). As the Domain Name is virtually identical to the Complainant's mark, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant's unrebutted evidence establishes that its FEDRIGONI mark was registered and well known long prior to registration of the Domain Name. The Domain Name is virtually identical to the Complainant's mark and the Complainant has certified that the Domain Name is unauthorised by it. The Respondent has provided no explanation as to why it chose the Domain Name. There is no semantic value to the Domain Name which the Respondent might, in good faith, have sought to adopt. There is no evidence of use of the Domain Name for a bona fide offering of goods or services or any legitimate noncommercial or fair use. Thus, there is no evidence that any of the circumstances set out in paragraph 4(c) of the Policy, nor any others which might confer rights or legitimate interests upon the Respondent, pertain. The Complainant has satisfied paragraph 4(a)(ii) of the Policy by virtue of having made out an unrebutted prima facie case (WIPO Overview 3.0 at section 2.1). page 3 C. Registered and Used in Bad Faith Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos as in this case) to a well-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith (WIPO Overview 3.0 at section 3.1.4). Linguistically the Domain Name does not make sense other than as referring to the Complainant's mark, which is well known, has no generic meaning and is highly specific to the Complainant. A Google search for the Complainant's mark reveals results overwhelmingly relating to the Complainant. The Respondent did not respond to the Complaint. As such, there is no plausible explanation for the Respondent's choice of the Domain Name other than as targeting the Complainant. The Respondent has been implicated in cybersquatting by two prior UDRP panels: Groupe Lactalis v. paul goodrich, WIPO Case No. D2022-2429; and Morgan Stanley v. paul Goodrich, Forum Claim No. FA2204001993946. The Panel has also independently established that the Respondent has been the registrant of over 260 domain names, many of which appear to target well-known brands. The Respondent is clearly a serial cybersquatter and this case would appear to be a continuation of that pattern. The fact that the Domain Name does not resolve to any website does not prevent a finding of bad faith under the doctrine of passive holding; all the factors that panels typically consider under that doctrine, apart from concealing of identity, favour the Complainant (WIPO Overview 3.0 at section 3.3). The Complainant has satisfied paragraph 4(a)(iii) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, , be transferred to the Complainant. /Jeremy Speres/ Jeremy Speres Sole Panelist Date: January 20, 2023
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