Complainant is Artsana S.p.A., Italy, represented Perani Pozzi Tavella, Italy.
Respondent is Mehdi Ordooei, Islamic Republic of Iran. 2. The Domain Name and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2020. On June 5, 2020, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Domain Names. On June 6, 2020, IRNIC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 11, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2020. On July 2, 2020, the Center notified Respondent’s default. The Center appointed Marina Perraki as the sole panelist in this matter on July 14, 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 Background Complainant is an Italian company specialized in healthcare and baby care, that trades – among others – under the trademark CHICCO for infant care products. Complainant has about 5,000 employees and holds 21 active branches (12 of which are in Europe) and six production units in the European Union. Complainant’s products are distributed in over 100 countries throughout the world, with more than 300 CHICCO sales points. Complainant had EUR 1,442 million in turnover recorded in 2016. Complainant is the owner, among others, of the following trademark registrations for CHICCO: - International trademark registration No. 1318052 CHICCO (word), registered on January 21, 2016, for goods in international classes 3, 5, 6, 8, 9, 10, 11, 12, 16, 18, 20, 21, 24, 25, 28, and 35, designating also Islamic Republic of Iran; and - International trademark registration No. 1331148 CHICCO (logo), registered on February 16, 2016, for goods in international classes 3, 5, 6, 8, 9, 10, 11, 12, 16, 18, 20, 21, 24, 25, 28, and 35, designating also Islamic Republic of Iran. Per the Complaint, Complainant is also the owner of, inter alia, the following domain names incorporating its CHICCO trademark: The first Domain Name On September 19, 2019, Complainant sent a cease and desist letter to Respondent to which Respondent did not reply. 5. Parties’ Contentions A. Complainant Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Names. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Names: (i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and (iii) the Domain Names have been registered or are being used in bad faith. A. Identical or Confusingly Similar Complainant has demonstrated rights through registration and use on the CHICCO mark. The Panel finds that the Domain Names are confusingly similar to the CHICCO trademark of Complainant. The Domain Names incorporate the trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-15251 ). The words “baby” and “bebe” which are added in the first and the second Domain Names, respectively, do not avoid a finding of confusing similarity (Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin,WIPO Case No. D2015-0135; WIPO Overview 3.0, section 1.8). The country code Top-Level Domain (“ccTLD”) “.ir” is disregarded, as ccTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn,WIPO Case No. D2017-0275). Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Names, among other circumstances, by showing any of the following elements: (i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or (ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Names, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names. Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Names. As per Complainant, Respondent was not authorized to register the Domain Names. Respondent did not demonstrate, prior to the notice of the dispute, any use of the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services. Complainant demonstrated that the Domain Names resolve to the Website, which reproduces the trademarks, graphics and layouts of Complainant’s official website “www.chicco.com”. The use of a domain name which intentionally trades on the fame of another and suggests affiliation with the trademark owner cannot constitute a bona fide offering of goods or services (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,WIPO Case No. D2000-0847; WIPO Overview 3.0, section 2.8). The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Names. Complainant has established Policy, paragraph 4(a)(ii). C. Registered or Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Names in “bad faith”: (i) circumstances indicating that Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Names; or (ii) that Respondent has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Names, provided that Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel concludes that Respondent has registered and used the Domain Names in bad faith. As per the Complaint, Complainant’s CHICCO trademark is well known for infant care products. Because the CHICCO mark had been widely used and registered at the time of the Domain Name registrations by Respondent, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Names (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc.,WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net,WIPO Case No. D2000-0226). As regards bad faith use of the Domain Names, Complainant has demonstrated that the Domain Names were used to create a website, which prominently displays Complainant’s registered logos and official website layout, thereby giving the false impression that it is operated by Complainant or a company affiliated to Complainant or an authorised dealer of Complainant. The Domain Names operate by intentionally creating a likelihood of confusion with Complainant’s trademark and business as to the source, sponsorship, affiliation or endorsement of the website it resolves to. This can be used in support of bad faith registration and use (Oculus VR, LLC v. Sean Lin,WIPO Case No. DCO2016-0034; and WIPO Overview 3.0 , section 3.3 and 3.4 ). The Panel considers the following factors: (i) the reputation of Complainant’s mark, (ii) the failure of Respondent to submit a response, and (iii) the implausibility of any good faith use to which the Domain Names may conceivably be put, given that, as Complainant has demonstrated, the Domain Names resolve to a website which gives the false impression that it is operated by Complainant. Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Names in bad faith. Complainant has established Policy paragraph 4(a)(iii). 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 Domain Names Marina Perraki 1 The Panel follows prior decisions under the irDRP and, given the similarities between the irDRP and UDRP, finds it appropriate to refer to UDRP jurisprudence, including reference to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). See Inter IKEA Systems BV (IISBV) v. Mohammadreza Mohammadian,WIPO Case No. DIR2018-0003.
Sole Panelist
Date: July 28, 2020
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