The Complainant is Automobile Club di Brescia, Italy, represented by Barzanò & Zanardo Milano SpA, Italy.
The Respondent is Ye Li, 1600757, China. 2. The Domain Name and Registrar
The disputed domain name <1000miglia.ae> is registered with AE Domain Administration (.aeDA). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2020. On August 17, 2020, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrar verification in connection with the disputed domain name. On August 19, 2020, 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.
The Center verified that the Complaint satisfied the formal requirements of the UAE Domain Name Dispute Resolution Policy for – UAE DRP approved by .aeDA (the “Policy”), the Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (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 September 9, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2020. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on October 9, 2020.
The Center appointed Taras Kyslyy as panelists in this matter on October 19, 2020. 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, Automobile Club di Brescia, is an Italian public entity which holds numerous trademarks related to the sign 1000 MIGLIA, referring to a car race first organized in 1927. The Complainant organizes this race through its subsidiary 1000 Miglia srl.
The Complainant’s trademark portfolio includes the following registrations for the sign:
- European Union trademark registration No. 008299489, registered on September 2, 2010;
- United Arabian Emirates trademark registration No. 20270, registered on October 16, 2007.
The disputed domain name was registered on May 3, 2020 and resolves to a website containing pay-per-click links to third-party websites. 5. Parties’ Contentions A. Complainant
The disputed domain name is identical to the Complainant’s trademark. The prominent and central element of the Complainant’s trademark is composed by the wording 1000 MIGLIA, which is identical to the disputed domain name. The addition of a Top‑Level Domain (“TLD”) such as “.ae” in a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark.
The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not authorized the Respondent to include its well-known 1000 MIGLIA trademarks in the disputed domain name, nor to make other use of its trademarks in any manner whatsoever. The Respondent is not commonly known by the disputed domain name. The Respondent does not own 1000 MIGLIA trademarks which could grant him rights on the disputed domain name. The disputed domain name hosts a parking page comprising pay-per-click links to compete and capitalize on the reputation and goodwill of the Complainant’s trademark. The actual use of the disputed domain name is not providing any bona fide offer of goods and services. Parked pages comprising pay-per-click links support a finding of right or legitimate interest in the domain name only in exceptional circumstances: for example, if the links are related to the dictionary meaning of the word composing the domain name, or where the pay-per-click links are not predominant (blogs, forums, etc), which is not the case for the disputed domain name.
The disputed domain name was registered and is being used in bad faith. The reputation of the Complainant’s trademark makes it extremely disingenuous for the Respondent to claim that it was unaware that the registration of the disputed domain name would violate the Complainant’s rights. The disputed domain name is identical to the Complainant’s well-known trademark, which makes it highly probable that it was registered with the specific purpose of targeting the brand owner, and not for legitimate speculation. The Respondent has been involved in several UDPR proceedings in the past. Pay-per-click links generate “click through” revenues by attracting Internet users to the sponsored companies which, in exchange, will make payments for the receipt of that Internet traffic. In this case, the revenues are being made exploiting the Complainant’s trademark and this circumstance is an index of use in bad faith. It is clear that the disputed domain name attracts Internet users in consideration of the reputation of the trademark; and, consequently, the disputed domain name is very attractive for the sponsored companies. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in its 1000 MIGLIA registered trademark, which is fully incorporated in the disputed domain name.
The applicable TLD in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see, e.g., Accenture Global Services Limited v. Jack Martinez,WIPO Case No. DAE2018-0001). Thus, the Panel disregards the country-code Top-Level Domain (“ccTLD”) “.ae” for the purposes of the confusing similarity test.
For the purposes of the confusing similarity test design elements of the Complainant’s trademark are disregarded (see, e.g., Nakheel PJSC v. Shabina Ghani Aqeel,WIPO Case No. DAE2019-0003). Thus, the Panel disregards design elements of the Complainant’s trademark and finds the disputed domain name is identical to the Complainant’s trademark.
Considering the above the Panel finds the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 6(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel finds that the Complainant has rights in its registered trademark.
The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name, and in these circumstances, the burden of production shifts to the Respondent to bring forward relevant evidence of its rights or legitimate interests in the disputed domain name. (See, e.g., Nakheel PJSC v. Shabina Ghani Aqeel,WIPO Case No. DAE2019-0003).
Furthermore, the Respondent provided no evidence that it holds rights or legitimate interests in the disputed domain name.
The Respondent is not commonly known by the disputed domain name, which confirms lack of its rights or legitimate interests in the disputed domain name according to paragraph 6(c)(ii) of the Policy.
The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Accenture Global Services Limited v. Jack Martinez,WIPO Case No. DAE2018-0001).
The use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users (see, e.g., Bayer Aktiengesellschaft v. Lin Shen,WIPO Case No. DAE2012-0004). The Panel finds this applies in the present case.
Considering the above, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 6(a)(ii) of the Policy. C. Registered or is Being Used in Bad Faith
At the time of the registration of the disputed domain name the Respondent knew, or at least should have known, about the existence of the Complainant’s prior registered and known trademark, which confirms the bad faith (see, e.g., AGFA-Gevaert N.V. v. Salim Almuhairi,WIPO Case No. DAE2017-0006).
The Panel finds that the mere registration of the disputed domain name that is identical to the widely-known Complainant’s trademark by an unaffiliated entity such as the Respondent itself creates a presumption of bad faith. The Panel is convinced that the Complainant’s trademark is well established through long and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademark both in the Italy and internationally. Thus, the Panel finds that the disputed domain name identical to the Complainant’s trademark was registered in bad faith.
According to paragraph 6(b)(iv) 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 a domain name in bad faith: by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location. In this case, the disputed domain name confusingly similar to the Complainant’s trademark is used to capitalize on the Internet users’ efforts to find the Complainant and its services in particular in the United Arabic Emirates. The disputed domain name diverts these consumers to a gateway website that contains content that is wholly unrelated to the Complainant and provides links to unaffiliated third-party websites promoting third-party services. The Panel finds the above confirms the disputed domain name was registered and used in bad faith.
Considering the above, the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 6(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <1000miglia.ae> be transferred to the Complainant.
Taras Kyslyy
Sole Panelist
Date: November 2, 2020
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