ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Compagnia Generale Telemar S.P.A. v. Jade Finance, Nitish Khanna Case No. D2023-4321 1. The Parties The Complainant is Compagnia Generale Telemar S.P.A., Italy, represented by MIIP MADE IN IP, France. The Respondent is Jade Finance, Nitish Khanna, Australia. 2. The Domain Name and Registrar The disputed domain name (the "Domain Name") is registered with NameSilo, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 18, 2023. On October 19, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 19, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (REDACTED FOR PRIVACY, See PrivacyGuardian.org) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 20, 2023, 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 October 23, 2023. 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 October 25, 2023. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 15, 2023. page 2 The Center appointed Jeremy Speres as the sole panelist in this matter on November 23, 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. 4. Factual Background The Complainant is an Italian company operating under the TELEMAR mark internationally, specialising in telecommunications and electronics services directed at the marine industry, including the yachting industry. The Complainant owns registrations for its TELEMAR trade mark in numerous jurisdictions, including Benelux Trade Mark Registration No. 0780651 TELEMAR (word) in classes 9, 37 and 38, registered on November 30, 2005, and Italian Trade Mark Registration No. 2015000082867 (word) in classes 9, 37, 38, registered on December 21, 2016. The Complainant owns numerous domain names incorporating its TELEMAR trade mark, at which it operates websites relating to its business, including registered on December 15, 2020. The Domain Name was registered on June 23, 2021, and resolves to a website entitled "TELEMAR YACHTING", ostensibly offering design, construction, finance and other services directed at the luxury yacht industry. 5. Parties' Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name. Notably, the Complainant contends that the Domain Name was registered and used in bad faith in order to take advantage of the Complainant's worldwide reputation for the Respondent's commercial gain by causing confusion amongst users as to an association with the Complainant. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trade mark and the Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("WIPO Overview 3.0"), section 1.7. Based on the available record, the Panel finds the Complainant has shown rights in respect of a trade mark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the entirety of the mark is reproduced within the Domain Name. Accordingly, the Domain Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms here, "-yachting", may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. page 3 Based on the available record, the Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognised that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has not rebutted the Complainant's prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Domain Name such as those enumerated in the Policy or otherwise. For the reasons discussed in relation to bad faith below, it is likely that the Domain Name was registered in order to take advantage of the Complainant's reputation in its mark. The Respondent's registration and use of the Domain Name in these circumstances cannot represent a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy and cannot confer rights or legitimate interests (Sistema de Ensino Poliedro Vestibulares Ltda., Editora Poliedro Ltda. v. Anonymize, Inc. / STANLEY PACE, WIPO Case No. D2022-1981). Based on the available record, the Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the Respondent has used the Domain Name for an offering ostensibly targeted at the luxury yacht industry. The Complainant's TELEMAR trade mark, which is wholly incorporated within the Domain Name, is well-known in the yachting industry. Internet searches for the Complainant's mark reveal results overwhelmingly relating to the Complainant. The mark has no generic or descriptive meaning that the Respondent might in good faith have sought to adopt, and the mark is highly specific to the Complainant. The Domain Name contains the Complainant's mark together with a term directly descriptive of the Complainant's industry. Moreover, the Domain Name is almost identical to the Complainant's domain name. It is therefore difficult to conceive of any good faith use of the Domain Name. This indicates bad faith under paragraph 4(b)(iv) of the Policy. WIPO Overview 3.0 at section 3.1.4. The Panel draws an adverse inference from the Respondent's failure to take part in the present proceeding where an explanation is certainly called for. WIPO Overview 3.0 at section 4.3. Based on the available record, the Panel finds that the Complainant has established the third element of the Policy. page 4 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: December 6, 2023
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