The Complainant is Fedrigoni S.P.A, Italy, represented by Dr. Modiano & Associati S.p.A., Italy.
The Respondent is Michael Nava, Domain Nerdz LLC, United States of America (“United States”).
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2021. On December 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 6 and 14, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 21, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 23, 2021.
The Center verified that the Complaint together with the amended 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 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 19, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 20, 2022.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on February 3, 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, paragraph 7.
4. Factual BackgroundThe Complainant, Fedrigoni S.p.A., is an incorporated business forming a joint stock company of Italian nationality with its principal place of business in Verona, Italy and is engaged in the production and sale of special papers for graphic use and self-adhesive products for labels, including those for the wine sector, in respect of which it states that it is the global leader. The Complainant is part of a group of companies having 130 years of history, which owns the FEDRIGONI and FABRIANO brands. Said group has 4,000 employees, 21 production centers and more than 25,000 products in its catalogue, which are distributed and sold in 132 countries worldwide. It reported consolidated revenues of EUR 1,315.2 million in 2020. The Complainant states that Fabriano paper has more than 750 years of history, and is the choice of millions of students and artists worldwide.
The Complainant maintains registered trademarks in respect of the word marks FABRIANO and FEDRIGONI, among others. The Complainant has registered corresponding domain names for its official websites “www.fabriano.com” and “www.fedrigoni.com”, and similar variants in respect of multiple country code Top-Level Domains. The Complainant’s registered trademarks cover a variety of different territories. For example, the Complainant is the owner of United States Registered Trademark no. 2460851 for the word mark FEDRIGONI, registered on June 19, 2001 in International Class 16 (paper and related products). The Complainant is also the owner of United States Registered Trademark no. 1557899 for the word mark FABRIANO, registered on September 26, 1989, also in International Class 16.
The disputed domain name
Little is known regarding the Respondent other than that it has a postal address in Las Vegas, Nevada, United States. It has not participated in the administrative proceeding. There is evidence before the panel suggesting that the Respondent is the registrant of various domain names consisting of identical representations or close typographical variants of third party trademarks. The Respondent has been the respondent in three cases under the Policy, two of which involve “.co” domain names. In each case, a finding of registration and use in bad faith was made against the Respondent.
5. Parties’ Contentions A. ComplainantIn summary, the Complainant contends as follows:
Identical or confusingly similarThe disputed domain name
The Respondent has no rights or legitimate interests in the disputed domain names. No agreement, authorization or license has been granted to the Respondent to use the Complainant’s trademarks. The registration or use of the Complainant’s marks makes it difficult to infer a legitimate use of the disputed domain names by the Respondent. There is no evidence that the Respondent has trademarks or company activities under the names “Fedrigoni” or “Fabriano”. At least until November 29, 2021, the websites at the URLs “www.fedrigoni.co” and “www.fabriano.co” each displayed a message that the corresponding disputed domain name was for sale for the sum of USD 1,988. The Complainant believes that the Respondent has neither made any bona fide use of the disputed domain names nor has ever been known under the names “Fedrigoni” or “Fabriano”. The Respondent has used a privacy shield service to register the disputed domain names and there is no information on the corresponding websites regarding its identity. It is difficult to find any legitimate explanation as to why the Respondent selected the names “Fedrigoni” or “Fabriano” for the disputed domain names. A growing number of panels take the position that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trademark rights and has used, without the authority of the complainant, a domain name identical to the complainant's trademark. This is even more true in the present case where the Respondent has registered not one, but two names perfectly identical to two of the Complainant’s trademarks.
Registered and used in bad faithThe Complainant is being hindered and penalised by the disputed domain names, which mislead Internet users and create a likelihood of confusion with the Complainant’s trademarks. The Complainant’s trademarks are not generic terms but are renowned marks that have been registered for many decades and used for over a century. The Respondent has knowingly chosen two domain names identical to two of the Complainant’s trademarks. Said trademarks are internationally renowned, and the Respondent could not have been unaware of these. This is confirmed, first, by previous cases under the Policy relating to the Complainant’s marks, secondly, by the fact that the Complainant has registered numerous domain names corresponding to or comprising its trademarks, thirdly, by the fact that the Complainant engages in massive advertising in respect of its trademarks, fourthly, by the fact that the Complainant’s marks represent the high quality of its products, and fifthly, by the fact that the Complainant has published company information on its official websites on the Internet since the year 2000.
The registration of a domain name which is identical to a complainant’s mark and a failure to respond to a complaint have both been accepted as factors giving rise to a finding of bad faith by previous panels under the Policy. The Respondent appears to have registered the disputed domain names with the main intent to sell these at a price that far exceeds its out-of-pocket registration fees. The Respondent has never received any authorization to sell products or services under the Complainant’s marks and the disputed domain names have never been used in good faith. The Respondent’s data appears neither in the WhoIs entry for the disputed domain names nor on the corresponding websites, and this is a further indication of bad faith registration and use.
The Respondent has already been the losing party in three proceedings under the policy in respect of having abusively registered domain names corresponding to the third party trademarks. Hundreds of domain names are linked to the Respondent’s email address, and apparently these are for sale. Among them are several domain names corresponding or typographically similar to renowned names and trademarks. On the balance of probabilities, the Respondent has registered and is using these domain names without any authorization from the owners of the corresponding trademarks. The Respondent’s pattern of conduct in this respect is a further indication of bad faith registration and use of the disputed domain names.
The inclusion of the Complainant’s marks in the disputed domain names makes it difficult to infer a legitimate use of these by the Respondent. There is no plausible explanation as to the Respondent’s selection, other than that it intended to trade on the goodwill of the Complainant’s marks. The Respondent’s use of the disputed domain names, namely, offering these for sale at a price far exceeding its out of pocket registration fees, takes unfair advantage of the Complainant’s trademarks and can be considered to be use in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsTo succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain names are 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 disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly SimilarThere are two parts to the inquiry under the first element of the Policy. The Complainant must demonstrate both that it has UDRP-relevant rights in one or more trademarks and that each of the disputed domain names is identical or confusingly similar to one of these trademarks. The Panel compares the trademarks concerned to each of the disputed domain names, typically in a straightforward side-by-side comparison, usually disregarding the Top-Level Domain, in this case “.co”, as required for technical reasons only.
The Panel is satisfied that the Complainant has established that it has UDRP-relevant rights in its FABRIANO and FEDRIGONI registered trademarks, as described in the factual background section above. Comparing these to the disputed domain names, it may be seen that each of the disputed domain names is alphanumerically identical in its Second-Level Domain to the corresponding registered trademark of the Complainant. The Respondent has not challenged the Complainant’s submissions as regards the first element assessment under the Policy.
In all the above circumstances, the Panel finds that each of the disputed domain names is identical to the Complainant’s corresponding trademark and that the Complainant has carried its burden in respect of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain names:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by a respondent, that such respondent has no rights or legitimate interests in the domain name concerned. In the present case, the Panel finds that the Complainant has made out such a prima facie case in respect of each of the disputed domain names by reference to its submissions that it has granted no permission to the Respondent to register or use its trademarks in a domain name, that there is no evidence of the Respondent having any trademarks or corporate activities under the disputed domain names, that the Respondent has made no bona fide use thereof and has not been known under the names “fedrigoni” or “fabriano”, and that the Respondent has used a privacy shield to conceal its identity while offering the disputed domain names for sale at a substantial price, which is likely to be in excess of its out-of-pocket registration costs.
The Complainant having made out such prima facie case, the burden of production shifts to the Respondent to bring forward evidence of its rights or legitimate interests in the disputed domain names. The Respondent has not participated in the administrative proceeding and accordingly has offered neither submissions nor evidence regarding any rights or legitimate interests in the disputed domain names which it might have had, and which might have rebutted the Complainant’s prima facie case. There is nothing in the present record which is suggestive of any reasonable rebuttal which the Respondent might have put forward, and the Panel accepts the Complainant’s submission that it is difficult to identify any legitimate explanation as to why the Respondent selected the names “fedrigoni” or “fabriano” for the Second-Level Domains of the disputed domain names. The most likely possibility is that the Respondent did so with intent to target the Complainant’s FEDRIGONI and FABRIANO trademarks unfairly. In the circumstances of the present case, such action could not confer rights or legitimate interests upon the Respondent in respect of either of the disputed domain names.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names and therefore that the Complainant has carried its burden in respect of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location”.
The Panel notes that the disputed domain names were registered by the Respondent exactly two weeks apart in September 2021. Given that each of the disputed domain names is identical to one of the Complainant’s well-known and long-established trademarks, this action cannot be regarded as coincidental, nor could it be argued reasonably in the circumstances of this case that the Respondent had registered the disputed domain names without any knowledge of the Complainant or its trademarks.
The Respondent has used each of the disputed domain names to point to an aftermarket website on which it has offered the respective domain name for sale at an amount considerably in excess of its likely out-of-pocket costs incurred in connection with its registration. No other use appears to have been made of the disputed domain names. Given the renown of the Complainant’s trademarks, the fact that each of the disputed domain names is identical to one of these, and the fact that the disputed domain names were registered in close proximity to one another, the Panel finds this to be a strong indication of registration and use in bad faith in accordance with paragraph 4(b)(i) of the Policy.
When the previous cases under the Policy are also factored into the equation, it appears probable to the Panel that the Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name and has engaged in a pattern of such conduct. In particular, two previous cases under the Policy show that the Respondent has registered and offered for sale “.co” domain names which are identical to the trademarks of others for amounts in excess of its likely out-of-pocket costs incurred in connection with such registration (see Actavis Group PTC ehf, Actavis Holdco US, INC. v. Michael Nava, Domain Nerdz LLC,WIPO Case No. DCO2021-0045 and Flowbird SAS (Parkeon) v. Michael Nava, Domain Nerdz LLC,WIPO Case No. DCO2020-0088). The Panel considers that the disputed domain names in the present case form part of this pattern.
The Respondent has failed to engage with the administrative proceeding, and accordingly has not answered the Complainant’s submissions regarding registration and use in bad faith, nor has the Respondent put forward any reasonable explanation for such registration and use which might have suggested any good faith motivation on its part. The Panel cannot conceive of any suitable explanation which the Respondent might have tendered in this matter. In all of these circumstances, the Panel considers that the Respondent is engaged in prototypical cybersquatting with regard to the disputed domain names.
Accordingly, the Panel finds that the disputed domain names have been registered and are being used in bad faith, and therefore that the Complainant has carried its burden in accordance with paragraph 4(a)(iii) of the Policy in respect of each of the disputed domain names.
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 names
Andrew D. S. Lothian
Sole Panelist
Date: February 11, 2022