The Complainant is Automobile Club di Brescia, Italy, represented by Barzanò & Zanardo Milano S.p.A., Italy.
The Respondent is Frans Heijstee, Heijstee Classic Cars, the Netherlands.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2020. On February 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 17, 2020, 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 February 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 18, 2020.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on April 2, 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 BackgroundThe Complainant is an Italian Public Entity that organizes through its owned company 1000 Miglia S.r.l. the car race MILLE MIGLIA which takes place every May since 1927. It is the owner, amongst others, of the following trademark registrations (Annex 4 to the Complaint):
- International Trademark Registration No. 776355 for MILLE MIGLIA, registered on July 19, 2001 and valid until July 19, 2021, in classes 3, 9, 12, 14, 16, 18, 25, 28, 33, 36, 38, 41 and 42; and
- European Union Trademark Registration No. 001519511 for MILLE MIGLIA, registered on April 2, 2001, in classes 9, 28 and 41.
The disputed domain name
The Complainant asserts to have been founded in 1906 in Italy, being in charge of organizing the classic and vintage cars race between Brescia and Rome, which presently congregates, as in 2014 for example, participants from 34 countries, attracting over 750,000 visitors from more than 170 countries to its website. The Complainant further states that official merchandise including footwear, is available at selected websites under the MILLE MIGLIA and 1000 MIGLIA trademarks.
According to the Complainant, the disputed domain name is confusingly similar with the Complainant’s trademark only differing by the addition of the “-” between the elements MILLE and MIGLIA which is insufficient to add distinctiveness thereto.
Also according to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent is not commonly known by the disputed domain name, not being an authorized dealer, agent, distributor, wholesaler or retailer of the Complainant, nor having the Complainant ever authorized it to include the well-known MILLE MIGLIA trademark in a domain name or any kind of use;
(ii) the Respondent, to the best of the Complainant’s knowledge, does not own MILLE MIGLIA formative trademarks; and
(iii) the disputed domain name is not being used in connection with a bona fide offering of goods or services or with a legitimate noncommercial or fair use.
The Complainant contends that the disputed domain name was registered in bad faith given the well-known status of its MILLE MIGLIA trademark throughout the world, and the Respondent’s offer for sale of the disputed domain name for USD 2,000.00 (Annex 2 to the Complaint) being a confirmation that the disputed domain name was registered by the Respondent with the sole intent of obtaining financial benefit by taking advantage of the Complainant’s well-known trademark, which is further corroborate by the lack of active use (passive holding) of the disputed domain name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain name.
A. Identical or Confusingly SimilarThe Complainant has established rights in the MILLE MIGLIA trademark, duly registered in several countries around the world (Annex 4 to the Complaint).
The Panel finds that the disputed domain name
Paragraph 4(c) of the Policy provides a non‑exclusive list of circumstances that indicate a respondent’s rights to or legitimate interests in a disputed domain name. These circumstances are:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has failed to invoke any of the circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden is still on the Complainant to first make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that the Respondent is not an authorized dealer, agent, distributor, wholesaler or retailer of the Complainant, not having the Complainant ever authorized it to include the MILLE MIGLIA trademark in a domain name or any kind of use.
In addition to that, the lack of any good faith use of the disputed domain which is being passively held, in addition to the offer for sale for an amount in excess of the out-of-pocket costs for registering it, does not characterize an evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
Also, the absence of any indication that the Respondent has rights in a term corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the Panel’s finding of the absence of rights or legitimate interests.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad FaithThe Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant who is the owner of a trademark relating to the disputed domain name or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark 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 has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The registration and use of the disputed domain name in bad faith can be found in the present case in view of the following circumstances:
(i) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name.
(ii) the Respondent offered the disputed domain for sale for the amount of USD 2,000 which is an amount in excess of out-of-pocket costs incurred in the registration of the disputed domain name;
(iii) the indication of what it appears to be a false address in the WhoIs data and, consequently, the Center not being able to have communications fully delivered to it.
(iv) considering the well-known status of the Complainant’s trademark, the nature of the disputed domain name (reproducing the Complainant’s trademark in its entirety), and the Respondent’s intention of unduly profiting from the value in the Complainant’s trademark, suggests rather a clear indication of the Respondent’s registration and holding of the disputed domain name in bad faith, with implausibility of any good faith use to which the disputed domain name may be put.
For the reasons stated above, the Respondent’s conduct amounts, in this Panel’s view, to bad faith registration and use of the disputed domain name.
7. DecisionFor 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
Wilson Pinheiro Jabur
Sole Panelist
Date: April 22, 2020