The Complainant is Bormioli Rocco S.p.a., Italy, represented by Barzanò & Zanardo Milano S.p.A., Italy.
The Respondent is 程飞, China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2021. On December 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 2021, the Registrar 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 China ccTLD Dispute Resolution Policy (the “Policy”), the China ccTLD Dispute Resolution Policy Rules (the “Rules”), and the WIPO Supplemental Rules for China ccTLD Dispute Resolution Policy and China ccTLD Dispute Resolution Policy Rules (the “WIPO Supplemental Rules”).
In accordance with the Rules, Articles 5 and 6, and Articles 14 to 16, and the WIPO Supplemental Rules, Paragraph 4(d), the Center formally notified the Respondent in Chinese and English of the Complaint, and the proceedings commenced on January 11, 2022. In accordance with the Rules, Articles 17 and 49, the due date for Response was February 7, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 10, 2022.
The Center appointed Linda Chang as the sole panelist in this matter on February 18, 2022. 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, Article 29.
4. Factual BackgroundThe Complainant is an Italian glass manufacturer founded in 1825 and operates in the business areas of tableware and glass block.
The Complainant has trademark registrations for BORMIOLI ROCCO around the world including in China, for example, China Trademark No. G829769 registered in classes 6, 20, 21 and 34 on April 30, 2004.
The disputed domain name was registered on May 9, 2019, and resolves to a parking page to sell the disputed domain name.
On November 24, 2021, the Complainant sent a cease-and-desist letter to the Respondent. On November 29, 2021, the Respondent replied to the Complainant indicating that “the selling price is 2300 USD”.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name is identical to its BORMIOLI ROCCO trademark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name as the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.
The Complainant finally contends that the disputed domain name was registered and is being used in bad faith as the Respondent was well aware of the Complainant’s trademark at the time of registration and is trying to capitalize on the reputation of the Complainant’s trademark by diverting Internet users to his own website.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1 Language of the ProceedingIn accordance with Article 6 of the Policy, Article 8 of the Rules and Paragraph 18(a) of the WIPO Supplemental Rules, the language of the proceeding shall be Chinese, unless otherwise agreed by the Parties or determined by the Panel in exceptional cases. In this case, the Complainant requests that the language of the proceeding be English. Main arguments include: (1) the Complainant and its representatives could not understand Chinese; (2) the website associated with the disputed domain name displays contents in English; and (3) the disputed domain name is composed of Latin characters.
The Respondent did not comment on the Complainant’s language request.
Article 31 of the Rules further provides, inter alia, that in all cases, the Panel shall ensure that the Parties be treated with equality. It also provides that the Panel shall ensure that the proceedings take place with due expedition.
Based on the presented evidence, the Panel agrees that the Respondent should have knowledge of the English language. In order not to unduly delay the proceedings, the Panel determines under Article 6 of the Policy, Articles 8 and 31 of the Rules, and Paragraph 18(a) of the WIPO Supplemental Rules that the language of the proceeding in this case shall be English.
6.2 Substantive Issues A. Identical or Confusingly Similar to the Complainant’s Name or Mark in which the Complainant has Civil Rights or InterestsThe Panel is satisfied that the Complainant has trademark rights upon inter alia China Trademark No. G829769 BORMIOLI ROCCO, which is a figurative mark having both design and textual components. It is well established that the country code Top-Level Domain (“ccTLD”) suffix “.cn” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Hence the distinctive part of the disputed domain name is “bormiolirocco”.
The first element essentially involves comparing the (alpha-numeric) domain name and the textual components of the relevant mark since the design elements would be incapable of representation in domain names. In the current case, the Complainant’s China Trademark No. G829769 prominently features the text “Bormioli Rocco” while the design logo appears faintly compared to the text. The Panel finds it reasonable to disregard the design element for purposes of assessing identity or confusing similarity under the first element.
By comparison, the disputed domain name wholly incorporates the Complainant’s BORMIOLI ROCCO trademark with the ccTLD suffix “.cn”. The Panel determines that the disputed domain name is identical to the Complainant’s BORMIOLI ROCCO trademark.
B. Rights or Legitimate InterestsThe Panel is satisfied that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in respect of the disputed domain name. The burden of production on this element hence shifts to the Respondent. In this case, the Respondent did not submit a response to rebut the Complainant’s prima facie case.
The Complainant asserts that it has never authorized the Respondent to use its BORMIOLI ROCCO trademark or to register any domain names incorporating this trademark. According to the Complainant’s evidence, the Respondent resolves the disputed domain name to a parking page where the disputed domain name is offered for sale. The Panel holds that such use of the disputed domain name by the Respondent will not create any rights or legitimate interests on the Respondent because it does not represent a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Further, there is no evidence available to the Panel to show that the Respondent is commonly known by the disputed domain name.
Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered or Used in Bad FaithThe Complainant’s trademark is a very distinctive combination of two words, and was registered many years before the registration of the disputed domain name. The Panel finds it inconceivable that the Respondent was not aware of the BORMIOLI ROCCO trademark at the time of registering the disputed domain name. Knowledge of a corresponding trademark at the time of the registration suggests bad faith registration.
The Respondent is resolving the disputed domain name to a parking page where the disputed domain name is offered for sale. After receipt of the cease-and-desist letter from the Complainant, the Respondent had chosen to ignore the Complainant’s demands in the letter but offered to sell the disputed domain name at a price most likely in excess of the Respondent’s out-of-pocket expense of registering the disputed domain name. The Panel finds that the Respondent’s purpose for registering the disputed domain name is to sell the disputed domain name to the Complainant for potential unjustified benefits, which is indication of bad faith.
For the reasons above, the Panel concludes that the disputed domain name was registered and is being used in bad faith.
7. DecisionFor the foregoing reasons, in accordance with Articles 14 of the Policy and 40 of the Rules, the Panel orders that the disputed domain name
Linda Chang
Sole Panelist
Date: March 4, 2022