WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Ferrari S.p.A. v. ST Network International Limited Case No. DAE2009-0004 1. The Parties
The Complainant is Ferrari S.p.A. of Modena, Italy, represented by Studio Barbero, Italy.
The Respondent is ST Network International Limited of Jebel Ali, United Arab Emirates. 2. The Domain Name and Registrar
The disputed domain name is registered with AE Domain Administration (.aeDA). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2009. On October 12, 2009, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrar verification in connection with the disputed domain name. On October 19, 2009, AE Domain Administration (.aeDA) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on October 23, 2009. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Domain Name Dispute Resolution Policy for .ae (the “Policy” or “aeDRP”), the Rules for Domain Name Dispute Resolution Policy for .ae (the “Rules”), and the WIPO Supplemental Rules for Domain Name Dispute Resolution Policy for .ae (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 16, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 17, 2009.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on November 20, 2009. 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 a famous manufacturer of sports and luxury cars and has been active in Formula One motor racing since 1950. It is the owner of multiple registered trademarks throughout the world consisting of or including the word “ferrari”, the most pertinent of which to the present dispute are European Community registration No. 1616473 for the word mark FERRARI, registered November 27, 1998; and International registration no. 957688 for the word mark FERRARI WORLD registered February 6, 2008. The Complainant is presently collaborating with an entity named Aldar Properties PJSC in the creation of a theme park named “Ferrari World Abu Dhabi” which is due to open in 2010. The Respondent registered the disputed domain name on August 11, 2008. On October 5, 2009 the Respondent published a single page website at the disputed domain name entitled “Middle East Ferrari F1 Fans Forum”. 5. Parties' Contentions A. Complainant
The Complainant submits that it has been using the trademark FERRARI for more than sixty years and that the mark is known internationally. The Complainant asserts that the mark is not only known for vehicles but is also employed for additional products such as watches, apparel, computers, toys, bicycles and shoes via the Complainant's licensing programme. The Complainant notes that its FERRARI WORLD mark is soon to be linked to the forthcoming “Ferrari World Abu Dhabi” theme park.
The Complainant notes that it located its main website at the domain name from 2001 to March 2009 when it was replaced by the domain name and provides supporting evidence from a Ferrari publication and the Internet Archive. The Complainant states that it maintains more than thirty domain name registrations incorporating the FERRARI WORLD mark.
The Complainant asserts that the Respondent organization, ST Network International Limited, is the registrant of the domain name which is employed for a website offering “tickets and hospitality for every venue of the FIA Formula One World Championship”. The Complainant notes that a “links” page on this site provided a series of hyperlinks to Formula One teams including that of the Complainant.
The Complainant states that as the disputed domain name was inactive, the Complainant arranged for its web developers in Italy to contact the Respondent by email to indicate a possible interest in the disputed domain name with a view to ascertaining the Respondent's position. The Complainant notes that the Respondent replied that it would require a minimum offer in the region of USD 20,000 for the disputed domain name and states that in response to this, the Complainant's representatives issued a cease and desist letter to the Respondent, following which correspondence ensued between the Parties' legal representatives.
The Complainant argues that the essence of the Respondent's position as set out in the Respondent's representative's letters of July 30 and October 5 and 8, 2009 was that the Respondent had a right to register the disputed domain name because there was no trademark infringement, there had been no acts justifying a domain name dispute procedure, and that Ferrari is a common Italian name. The Complainant founds upon a statement from the Respondent's representative noting that “…the owner of our client is a motor racing enthusiast who also runs a reputable business. The domain is to be put to a proper and lawful use.” The Complainant notes that at no time did the Respondent's representative explain what this use would be. The Complainant characterises the web page published by the Respondent on October 5, 2009 as a “fake fans page” and submits that the site displayed a single fixed image which did not allow any interaction and included content “blatantly cut” from the news archive of a pre-existing forum.
The Complainant asserts that the disputed domain name is identical to a trademark in which it has rights. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant notes that the Respondent has not provided any evidence of use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute. The Complainant submits that the disputed domain name was inactive until after the Parties had entered into extensive correspondence via their legal representatives and that the Respondent is not a licensee, authorised agent of the Complainant or in any other way authorised to use the Complainant's trademarks. The Complainant asserts that there is no evidence showing that the Respondent has been commonly known by the disputed domain name as an individual, business or other organisation, or that Ferrari is the family name of the Respondent.
The Complainant asserts that the Respondent has registered the disputed domain name in bad faith. The Complainant submits that the Respondent cannot have been unaware of the Complainant and its trademarks at the date of registration of the disputed domain name in light of the well-known nature and longstanding use of the Complainant's FERRARI trademark, the Complainant's use of FERRARI WORLD as the address of its principal website since 2001, the Respondent's representative's statement that the Respondent's owner is a motor racing enthusiast and the Respondent's business activities in connection with the FIA Formula One World Championship.
The Complainant also points to the Respondent's awareness of the forthcoming “Ferrari World Abu Dhabi” theme park which will be opened in 2010, as demonstrated in correspondence with the Respondent's representative, and to the fact that the Respondent demanded USD 20,000 for the disputed domain name when approached by agents of the Complainant, being an amount well in excess of the Respondent's out of pocket costs regarding the disputed domain name.
Finally, with regard to bad faith use of the disputed domain name, the Complainant asserts that the disputed domain name was passively held for a lengthy period and points to the Respondent's failure in the correspondence between its representative and the Complainant's representative to provide a substantive explanation for the Respondent's actions in registering the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 6(a) of the Policy provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the disputed domain name 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 or is being used in bad faith.
Paragraph 6(c) of the Policy sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interests in the disputed domain name.
Paragraph 6(b) of the Policy sets out circumstances which, in particular but without limitation, if found the Panel to be present shall be evidence of the registration or use of the disputed domain name in bad faith. A. Identical or Confusingly Similar
The Complainant has demonstrated that it has rights in both the FERRARI and FERRARI WORLD trademarks, the latter of which is identical to the disputed domain name, bearing in mind the fact that the top level “.ae” portion of the disputed domain name may be disregarded for the purposes of comparison as is customary under the Policy. Likewise, the absence of white space in the disputed domain name may be disregarded as spaces are not permitted in domain names for technical reasons. Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 6(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant asserts that it has provided no permission to the Respondent to register a domain name incorporating the Complainant's trademark, that the Respondent has not provided any evidence of use of or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute and that accordingly the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel is satisfied that the Complainant has made a prima facie showing of the Respondent's lack of rights or legitimate interests. Furthermore, given the Respondent's incorporation in the disputed domain name of a trademark which is highly distinctive and referable to the Complainant, the Panel finds it difficult to conceive of any possible right or legitimate interest which the Respondent could have in the disputed domain name in the present circumstances. Accordingly, the burden shifts to the Respondent to prove that it has such rights and legitimate interests.
While the Respondent has chosen not to respond to the Complainant's contentions in this administrative proceeding its representative did engage in correspondence with the Complainant's representative before the Complaint was filed. The Panel notes that no explanation was tendered by the Respondent's representatives in that correspondence which might indicate any rights or legitimate interests on the Respondent's part. However, during the period when the Parties were corresponding, the Respondent published a one page website at the disputed domain name which had the appearance of being a “fans forum” relating to the Complainant's Formula One activities. While this might have provided some indication of the Respondent's intentions with regard to the disputed domain name, the Complainant has asserted that the site was “fake” as it consisted of a single image with content copied from another website.
The Panel notes that the website at the disputed domain name was only published after the date of the Complainant's cease and desist letter. In the Panel's view, without further explanation from the Respondent, this website does not of itself give rise to rights and legitimate interests. Furthermore, in light of the date of publication, the fans forum website may be pretextual; Advanced Sports Inc. v. Acme Internet Group, WhoisGuard, WIPO Case No. D2007-1631. The Respondent has not addressed the Complainant's contentions regarding the publication of the website either in the original correspondence between the Parties or in the present administrative proceeding. In these circumstances the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore met the requirements of paragraph 6(a)(ii) of the Policy. C. Registered or Used in Bad Faith
With regard to registration in bad faith, the principal inference for this finding under the Policy is that the Respondent selected the disputed domain name with the Complainant's trademark in mind. The Panel is satisfied that it is reasonable to draw such an inference in this case. The Complainant's FERRARI mark is well-known and its FERRARI WORLD mark has been used in connection with the Complainant's official website for a substantial period. Furthermore, the Respondent's representative indicated in correspondence that the Respondent's owner is a motor racing enthusiast and it is evident that the Respondent also operates a website which is connected to motor racing and indeed provides a hyperlink to the Complainant's Formula One racing team's own website. The Panel also takes into account the probability that at the time of registration the Respondent was aware of the Complainant's collaboration on the proposed “Ferrari World Abu Dhabi” theme park.
A possible indication of the Respondent's intent in registering the disputed domain name lies in the fact that the Respondent requested USD 20,000, being a sum greatly in excess of its out of pocket expenses, when approached by the Complainant's agents to discuss a possible sale of the disputed domain name. The Respondent has not contested its intention to sell the disputed domain name to the Complainant for the amount indicated, nor has it otherwise sought to explain its actions. In all of these circumstances, the Panel is satisfied that the Respondent registered the disputed domain name in bad faith and that the Complainant has therefore met the requirements of paragraph 6(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Andrew D. S. Lothian
Sole Panelist
Dated: November 25, 2009
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