The Complainant is Automobile Club di Brescia of Brescia, Italy, represented by Barzanò & Zanardo Milano SpA, Italy.
The Respondent is Azura Abendroth of Heidelberg, Germany. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with 1API GmbH (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 19, 2017. On December 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 21, 2017, 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 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 December 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 18, 2018.
The Center appointed Sir Ian Barker as the sole panelist in this matter on January 26, 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 is an Italian "public entity" which owns the Italian company, 1000 Miglia SRL. The two companies jointly organize the famous car race called Mille Miglia, meaning one thousand miles, which takes place every May in Italy. First organized in 1927, the race is an open-road endurance car race traveling on a round trip from Brescia to Rome, a distance of one thousand miles. The race has become internationally famous.
The Complainant owns trademark registrations for MILLE MIGLIA (the "MILLE MIGLIA Mark") worldwide, including the following:
- European Union Trademark Registration No. 001519511 for MILLE MIGLIA, registered on April 2, 2001, in classes 9, 28 and 41;
- International Trademark Registration No. 776355 for MILLE MIGLIA, registered on July 19, 2001, in classes 3, 9, 12, 14, 16, 18, 25, 28, 33, 36, 38, 41 and 42;
The Complainant registered the domain name in 1998, as well as some 80 additional domain names containing its MILLE MIGLIA Mark. The Complainant features on several social networks.
The Complainant uses domain names incorporating its trademarks to sell commercial merchandise, such as footwear.
The Disputed Domain Name was registered by the Respondent on March 8, 2017. It leads to a pay-per-click ("PPC") page directing to a website containing links to other websites for various sectors including clothing.
The Complainant forwarded a cease and desist letter to the Respondent on December 15, 2017 which met with the response "€3,500 and transfer now" on December 17, 2017.
Previous UDRP panels have held that the MILLE MIGLIA Mark enjoys a wide reputation. For example, Automobile Club di Brescia v. W / Saral Ltd,WIPO Case No. D2017-0159; and Automobile Club di Brescia v Li Fanglin,WIPO Case No. D2015-0975.
The Respondent owns many domain names. The Respondent has been involved in at least three other cases under the Policy involving well-known trademarks: Bayerische Motoren Werke AG (BMW) v. Alice Collier, Ye Genrong, Azura Abenroth, Wang Liqun,WIPO Case No. D2015-1781; Boehringer Ingelheim Pharma GmbH & Co. KG v. Azura Abendroth,WIPO Case No. DTV2015-0003; and Sopra Steria Group v. Azura Abendroth,WIPO Case No. D2017-0414. 5. Parties' Contentions A. Complainant
The Disputed Domain Name is identical to the trademarks in which the Complainant has rights.
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and has not shown that Paragraph 4(c) of the Policy applies to the Respondent.
The Disputed Domain Name is registered and is being used in bad faith as is shown by:
(a) the "click-through" website which redirects to selling merchandise in competition with that sold by the Complainant;
(b) the Respondent's offer to sell the Disputed Domain Name for EUR 7,500;
(c) the Respondent's failure to comply with the cease and desist letter.
(d) the Respondent's previous involvement with registering domains using well-known trademarks. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
To be successful, the Complainant must prove that each of the three elements is present (paragraph 4(a) of the Policy). A. Identical or Confusingly Similar
The Complainant has established rights in the MILLE MIGLIA Mark based on both longstanding use as well as its numerous trademark registrations worldwide for the MILLE MIGLIA Mark.
The fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identical status for purposes of the Policy. Six Continent Hotels, Inc. v. The Omnicorp,WIPO Case No. D2005-1249 (quoting Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).
The first element of paragraph 4(a)(i) of the Policy has been established. B. Rights or Legitimate Interests
The Complainant gave the Respondent no authority of any sort to reflect its trademarks in a domain name.
Paragraph 4(c) of the Policy could have applied to the registration of the disputed domain name, had one of its three provisions been demonstrated in this case. However, the Respondent has chosen not to invoke paragraph 4(c), and the Complainant has met its burden. The Complainant's claim that it gave the Respondent no authority is not challenged by the Respondent.
The Panel finds that the Complainant has established a prima facie case and the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. Therefore, paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Policy identifies the following circumstances as evidence of registration and use of the Disputed Domain Name in bad faith:
(i) The Respondent registered or has acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the Complainant who is the owner of the trademark or service mark, for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) The Respondent registered the Disputed Domain Name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product on the Respondent's website or location.
The Respondent must have known of the MILLE MIGLIA Mark prior to registering the Disputed Domain Name. The fame of the MILLE MIGLIA Mark makes it extremely implausible for the Respondent to claim unawareness that the registration of the Disputed Domain Name would violate the Complainant's rights.
It is reasonable to infer from the circumstances of this case that the Respondent registered the Disputed Domain Name to disrupt the Complainant's business and to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's MILLE MIGLIA Mark.
The website offers PPC links related to the Complainant's activity. It can be inferred that the Respondent registered and is using the Disputed Domain Name for the specific purpose of trading on the name and reputation of the Complainant and its MILLE MIGLIA Mark.
The registration of the Disputed Domain Name, identical to the Complainant's famous MILLE MIGLIA Mark, by a Respondent who has no relationship to that mark is sufficient evidence of bad faith registration and use.
The Respondent's bad faith can further be inferred from its lack of reply to the cease and desist letter sent to the Respondent prior to the commencement of this proceeding. (See, Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications,WIPO Case No. D2001-0210). The Respondent's reply underscores this inference.
This appears to be not the first time that the Respondent has been involved in UDRP cases such as the aforementioned Bayerische Motoren Werke AG (BMW) v. Alice Collier, Ye Genrong, Azura Abenroth, Wang Liqun, supra. The Respondent along with others, registered a domain name that contained a registered trademark of a well-known brand. The trademark owner brought a UDRP proceeding against these individuals and the domain name was transferred to the complainant. Such a pattern of behavior is yet further evidence of bad faith registration and use of the Disputed Domain Name by the Respondent.
The third element of paragraph 4(a)(iii) of the Policy has been established. 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 Disputed Domain Name, be transferred to the Complainant.
Sir Ian Barker QC
Sole Panelist
Date: February 9, 2018
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