The Complainant is Cereal Docks S.p.A., Italy, represented by Studio Barbero, Italy.
The Respondent is Roger Williams, Austria. 2. The Domain Name, Registry and Registrar
The Registry of the disputed domain name is the European Registry for Internet Domains (“EURid” or the “Registry”. The Registrar of the disputed domain name is PDR Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2019. On June 14, 2019, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On June 19, 2019, the Registry transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 19, 2019, providing the registrant and contact information disclosed by the Registry, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 21, 2019.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 24, 2019. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was August 6, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 7, 2019.
The Center appointed Knud Wallberg as the sole panelist in this matter on August 15, 2019. 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 ADR Rules, Paragraph B(5). 4. Factual Background
The Complainant was founded in 1983 and is presently a leading Italian industrial group in the collection and processing of grains and oil seeds for foods, animal feeds, industrial uses and applications in the renewable energy sector. The group supplies, stores and trades agricultural raw materials.
The Complainant owns several registrations of the trademark CEREAL DOCKS including European Union Trademark Registration No. 13332903, CEREAL DOCKS & device filed on October 7, 2014 and registered on March 2, 2015 in classes 4, 29, 30, 31 and 40.
The Complainant has registered many domain names that are identical to or are encompassing the trademark CEREAL DOCKS under several different Top-Level Domains (“TLDs”) including , which is used to host the official website of the Complainant.
The Respondent registered the disputed domain name on November 27, 2018. The disputed domain name does currently not resolve to an active website, but has been used as email address as described below. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain name is identical to the mark CEREAL DOCKS in which the Complainant holds rights.
The Complainant further asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not related to the Complainant. The Respondent has no rights to nor is the Respondent commonly known by the name “Cereal Docks”. Also, the Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
Lastly, the Complainant asserts that the Respondent registered the disputed domain name in bad faith and has made use of the domain name in bad faith. The disputed domain name has thus been used to send emails from an email address using the disputed domain name, namely, “[...]@”, to existing suppliers to the Complainant. These emails purported to come from a genuine employee of the Complainant and concerned the amendment of invoices that allegedly was issued by the Complainant. By doing so the Respondent has clearly the attempted to defraud Internet users by operating a fraudulent phishing scheme. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to Article 22(1)(a) of the Commission Regulation (EC) No. 874/2004 (hereinafter, the “Regulation”), an ADR procedure may be initiated by any party where the registration is speculative or abusive within the meaning of Article 21. Article 21(1) of the Regulation, provides that a registered domain name shall be subject to revocation where it is identical or confusingly similar to a name in respect of which a right is recognized or established by national and/or Community law and where it:
(a) has been registered by its holder without rights or legitimate interests in the name; or
(b) has been registered or is being used in bad faith.
Article 22(11) of the Regulation states that “the ADR panel shall decide that the domain name shall be revoked, if it finds that the registration is speculative or abusive as defined in Article 21. The domain name shall be transferred to the complainant if the complainant applies for this domain name and satisfies the general eligibility criteria set out in Article 4(2)(b) of Regulation (EC) No 733/2002.”
This provision is reflected in Paragraph B(11)(b) of the ADR Rules, stating that the sole remedies available pursuant to an ADR proceeding where the respondent is the domain name holder in respect of which domain name the complaint was initiated shall be limited to revocation or to the transfer of the domain name to the complainant provided that it satisfies the eligibility criteria established for the registration of “.eu” domain names. A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or Community law
The Panel finds that the disputed domain name is identical (in the sense of the Regulation and ADR Rules) to the trademark CEREAL DOCKS because it contains the trademark in its entirety. The country code Top-Level Domain (“ccTLD”) “.eu” does not preclude a finding of confusing similarity or of identity, as in the present case.
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is identical to a name in respect of which the Complainant has rights, according to the first requirement of Article 21(1) of the Regulation and Paragraph B(11)(d)(1)(i) of the ADR Rules. B. Rights or Legitimate Interests
According to Article 21(2) of the Regulation and Paragraph B(11)(e) of the ADR Rules, any of the following circumstances, in particular but not limited to, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate a respondent’s rights or legitimate interests in a domain name:
(a) prior to any notice of the dispute, the respondent has used the domain name or a name corresponding to it in connection with the offering of goods or services or has made demonstrable preparations to do so;
(b) the respondent, being an undertaking, organization or natural person, has been commonly known by the domain name, even in the absence of a right recognized or established by national and/or Community law;
(c) the respondent is making a legitimate and noncommercial or fair use of the domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognised or established by national and/or Community law.
According to the Complainant, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark. In addition, the Respondent is not commonly known by the disputed domain name and the Respondent has not provided evidence of use of or demonstrable preparation to use the disputed domain name in connection with a bona fide offering of goods and services.
Further, given the circumstances of this case, the Panel is of the opinion that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this, and the way the Respondent has been using the disputed domain name (see below in Section C) does not support a finding of rights or legitimate interests. C. Registered or Used in Bad Faith
According to Article 21(1)(b) of the Regulation, a complainant is required to demonstrate that a domain name has been registered or used in bad faith.
Article 21(3) of the Regulation and Paragraph B(11)(f) of the ADR Rules provide a non-exhaustive list of circumstances which, if found by the Panel to be present, may be evidence of the registration or use of a domain name in bad faith:
(1) circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name to the holder of a name in respect of which a right is recognized or established by national and/or Community law, or to a public body; or
(2) the domain name has been registered in order to prevent the holder of such a name in respect of which a right is recognized or established by national and/or Community law, or a public body, from reflecting this name in a corresponding domain name, provided that:
(i) the Respondent has engaged in a pattern of such conduct; or
(ii) the domain name has not been used in a relevant way for at least two years from the date of registration; or
(iii) there are circumstances where, at the time the ADR Proceeding was initiated, the Respondent has declared its intention to use the domain name, in respect of which a right is recognized or established by national and/or Community law or which corresponds to the name of a public body, in a relevant way but failed to do so within six months of the day on which the ADR Proceeding was initiated;
(3) the domain name was registered primarily for the purpose of disrupting the professional activities of a competitor; or
(4) the domain name was intentionally used to attract Internet users, for commercial gain to the Respondents website or other on-line location, by creating a likelihood of confusion with a name on which a right is recognized or established, by national and/or Community law, or it is a name of a public body, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location of the Respondent; or
(5) the domain name is a personal name for which no demonstrable link exists between the Respondent and the domain name registered.
Given the distinctive nature of the mark CEREAL DOCKS, the lack of any explanation from the Respondent as to why it registered the disputed domain name, and the way that the disputed domain name has been used clearly indicates that the Respondent was aware of the CEREAL DOCKS mark when the Respondent registered the disputed domain name.
The Panel therefore finds that the disputed domain name was registered in bad faith.
The Respondent has used the disputed domain name as email address in what is clearly an attempt to conduct fraudulent activities for commercial gain, by creating a likelihood of confusion as to the source, affiliation, or endorsement of the Respondent’s activities with the Complainant.
In view of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith and the Panel thus that the requirements of Article 21(1) of the Regulation and Paragraph B(11)(d)(1)(ii) of the ADR Rules are met.
The Complainant has requested that the disputed domain name be transferred to them. Since the Complainant is an organization that is “established within the Community”, the Panel finds that the requirement of Article 4(2)(b) of Regulation (EC) No 733/2002 and therefore Paragraph 11(b) of the ADR Rules have been satisfied. 7. Decision
For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Knud Wallberg
Sole Panelist
Date: September 16, 2019
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