The Complainant is Automobile Club di Brescia of Brescia, Italy, represented by Barzanò & Zanardo Milano SpA, Italy.
The Respondent is Just Bathroomware Pty Limited, an Australian incorporated company having an address in Xinyu, China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2018. On June 12, 2018, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the Domain Name. On June 12, 2018, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On June 25, 2018, the Complainant filed an amended Complaint to address an administrative formality.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (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 June 26, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 17, 2018.
The Center appointed Alan L. Limbury as the sole panelist in this matter on July 19, 2018. 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 organizes the internationally famous one thousand mile motor vehicle road race in Italy, the Mille Miglia, introduced in 1927. It is the registered proprietor of several MILLE MIGLIA and 1000 MIGLIA word and formative trademarks, including International Trademark 1000 MIGLIA, No. 534874, registered on February 10, 1989 and subsequently renewed, designating inter alia Australia under the Madrid Protocol.
The Complainant has licensed providers of merchandise related to the race, including Chopard, which is authorized to sell watches under the trademark 1000 MIGLIA.
The Domain Name was registered in the name of the Respondent company on December 24, 2017. It resolves to a website containing links to other websites relating to several sectors, including watches.
According to the WhoIs extract, the Domain Name Registrant’s contact name is Mr. Liqun Wang. Mr. Liqun Wang was the respondent in Automobile Club Di Brescia v. Wang Liqun, WIPO Case No. D2017-1792, decided on November 9, 2017, in which the domain name was ordered to be transferred to the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant says the Domain Name is confusingly similar to its MILLE MIGLIA trademarks and that the Respondent has no rights or legitimate interests in respect of the Domain Name, which was registered and is being used in bad faith.
As to legitimacy, neither Wang Liqun nor the Respondent are authorized dealers, agents, distributors, wholesalers or retailers of the Complainant. The Complainant has not authorized the Respondent to include its well-known 1000 MIGLIA trademark in the Domain Name, nor to make any other use of its trademark in any manner whatsoever. The Complainant is unaware of any evidence tending to demonstrate that the Respondent is commonly known by the Domain Name, as individuals, business, or other organization. Neither Wang Liqun nor the Respondent own 1000 MIGLIA formative trademarks which would give them rights in the Domain Name. These considerations exclude the possibility that the Respondent is commonly known by the Domain Name. The use of the Domain Name does not amount to a bona fide offering of goods and services nor to a legitimate or fair use of the Domain Name.
As to bad faith registration, the Domain Name contains a very well-known third party’s trademark without the holder’s authorization. The fame of the 1000 MIGLIA trademark makes it extremely disingenuous for the Respondent to claim that it was unaware that the registration of the Domain Name would violate the Complainant’s rights. The Domain Name was registered well after the Complainant obtained its registrations for the 1000 MIGLIA trademarks, including in Australia where the Respondent is based.
Proof of bad faith registration is sufficient to comply with the three requirements of the Policy.
Nonetheless, bad faith use of the Domain Name is demonstrated by the fact that the pay-per-click (“PPC”) links on the Respondent’s website redirect Internet users to webpages active in fields, some of which are competitive with the Complainant’s activities (i.e. watches).
Further, the Respondent owns a large number of domain names and has been involved in several UDRP cases relating to domain names identical to third parties’ trademarks. B. Respondent
As mentioned, the Respondent did not submit any response. 6. Discussion and Findings
Paragraph 15(a) of the Rules provides: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires the Complainant to prove, on the balance of probabilities, each of the following three elements:
(i) the Domain Name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered or has subsequently been used in bad faith.
The Respondent is not obliged to participate in this proceeding under the Policy, but since it has failed to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the Complainant. See Harness Racing Australia v. Acronym Wiki Pty Ltd,WIPO Case No. DAU2011-0007. A. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s trademark 1000 MIGLIA and the inconsequential suffixes “”, which may be disregarded. Accordingly, the Domain Name is identical to the Complainant’s International Trademark 1000 MIGLIA, No. 534874.
The Complainant has established this element. B. Rights or Legitimate Interests
As has been determined in Uniform Domain Name Dispute Resolution Policy decisions cited by the Complainant, the Panel finds that the 1000 MIGLIA trademark is distinctive and very well-known. The Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show that it does have rights or legitimate interests in the Domain Name. See TeamViewer GmbH v. Nigel Burke,WIPO Case No. DAU2012-0027, citing Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited,WIPO Case No. D2004‑0753. The Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant has established this element. C. Registered or Subsequently Used in Bad Faith
The distinctiveness and well-known character of the Complainant’s 1000 MIGLIA trademark make it highly unlikely that the Respondent was unaware of that mark when registering the Domain Name.
The Domain Name was registered in the name of the Respondent on December 24, 2017, a few weeks after the decision on November 9, 2017 inWIPO Case No. D2017-1792, in which the domain name was ordered to be transferred from the Respondent’s contact person, Mr. Liqun Wang, to the Complainant. These circumstances lead the Panel to conclude that the Respondent, through its contact person, was actually aware of the Complainant and its 1000 MIGLIA mark when it registered the Domain Name and that the Domain Name was registered by the Respondent, an entity with no connection to or permission from the Complainant, in bad faith for the purpose of unfairly trading off the reputation of the Complainant’s mark.
The Panel also finds that, by using the Domain Name to promote watches, being merchandise of the kind promoted by the Complainant through its licensee Chopard, the Respondent intentionally attempted to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website and of the products on that website. Under paragraph 4(b)(iv) of the Policy, this constitutes evidence of both bad faith registration and bad faith use for the purposes of paragraph 4(a)(iii).
The Complainant has established this element. 7. Decision
For all 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.
Alan L. Limbury
Sole Panelist
Date: July 20, 2018
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