WIPO Domain Name Decision DRO2025-0007 for pedrali.ro

ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Pedrali S.p.A. v. Thonet Design Srl, Companie Comercială Case No. DRO2025-0007 1. The Parties The Complainant is Pedrali S.p.A., Italy, represented by GriffeShield S.r.l., Italy. The Respondent is Thonet Design Srl, Companie Comercială, Romania. 2. The Domain Name and Registrar The disputed domain name (the “Disputed Domain Name”) is registered with ROTLD (the “Registry”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2025. On July 22, 2025, the Center transmitted by email to the Registry a request for registrar verification in connection with the Disputed Domain Name. On July 23, 2025, the Registry transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Registry confirmed the language of the registration agreement for the Disputed Domain Name as Romanian. In its original Complaint to the Center, the Complainant requested English to be the language of the proceeding. The Respondent did not submit any comment on the Complainant’s submission. 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 August 7, 2025. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2025. The Response was filed with the Center on August 27, 2025, in English and Romanian.
page 2 The Center appointed Gabriela Kennedy as the sole panelist in this matter on September 9, 2025. 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 one of Italy’s main industrial companies in the field of contemporary design furniture. Founded in 1963 in Brescia, the company specializes in the design and manufacture of chairs, tables, furnishing accessories and lighting. The Complainant owns various word and figurative trademarks for the PEDRALI mark globally. The relevant trademark registrations include, inter alia, the Italy Trademark Registration No. 0000907904 for in Class 20 registered on September 16, 2003, the European Union Trademark Registration No. 005603535 for in Class 20 registered on July 9, 2009, and the International Trademark Registration No. 1122500 for PEDRALI in Classes 11, 19, 20, and 24 registered on February 29, 2012 designated countries Australia, Japan, and the United States of America (the “Complainant’s Trademark”). The Complainant also owns numerous domain names that incorporate the PEDRALI mark, including . The Disputed Domain Name was registered on March 23, 2022, many years after the Complainant registered the Complainant’s Trademark. At the time of the filing of the Complaint and the rendering of this Decision, the Disputed Domain Name resolved to an inactive website. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Name. Notably, the Complainant contends that: (a) The Disputed Domain Name is identical to the Complainant’s Trademark. The Disputed Domain Name consists exclusively of the Complainant's Trademark, “pedrali”, together with the geographic Top-Level Domain “.ro”. (b) The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent is not an authorized dealer, agent, distributor wholesaler or retailer of the Complainant. The Complainant has not authorized the Respondent to include the Complainant’s Trademark or part of it in the Disputed Domain Name, or to make other use of its trademark or part of it in any manner whatsoever. The Respondent is not commonly known by the name “Pedrali” and there is no evidence to suggest that it holds any trademark or intellectual property rights corresponding to the Disputed Domain Name. As the Disputed Domain Name does not resolve to any active website or provide any content, there is no evidence that the Respondent has made any bona fide preparations to use the Disputed Domain Name in connection with a legitimate offering of goods or services. (c) The Respondent has registered the Disputed Domain Name and is using it in bad faith. Given the Complainant’s global business activity and recognition, including in Romania, the Respondent was fully aware of the existence of the Complainant and the Complainant’s Trademark. Further, the Respondent
page 3 contacted the Complainant on July 4, 2022 (a few months after the Respondent registered the Disputed Domain Name) proposing a commercial collaboration. The Complainant declined the proposed collaboration and did not provide any license, consent, or authorization for the Respondent to use the Complainant's Trademark in any form. The Respondent's choice to continue to retain the Disputed Domain Name without making any demonstrable use of it constitutes passive holding and is an indication of bad faith. The Respondent failed to respond to the Complainant’s requests for a voluntary transfer of the Disputed Domain Name which is further evidence of the Respondent’s bad faith. B. Respondent The Respondent contends that: (a) “Pedrali” as a surname and toponym: “Pedrali” is not an invented name, but a relatively common surname in northern Italy, especially in the Lombardy region. It is also a toponym (place name). This aspect is fundamental, as the rights to a domain name that contains a surname cannot be monopolized exclusively by a commercial entity. Any person with the surname “Pedrali” has the legitimate right to register a domain name for personal or professional use. (b) Absence of bad faith: It acquired the Disputed Domain Name without the intention of exploiting or creating confusion with the Pedrali brand. Proof of this is the fact that the website has been inactive, has not used or promoted the logo, products, or services of the Complainant. It has never tried to mislead consumers or profit from the brand's reputation. The only reason the Disputed Domain Name remained unused is due to personal plans, and not an intention to speculate. (c) The Disputed Domain Name was available to anyone: At the time it acquired the Disputed Domain Name, it was openly available for registration by any interested party. This indicates that there was no prior effort or demonstrated interest in securing or protecting the Disputed Domain Name within the Romanian market. Had there been a genuine desire to obtain the Disputed Domain Name, it could have been registered before the acquisition by the Respondent. The Respondent considers its right of ownership of the Disputed Domain Name to be legitimate and legal. The Disputed Domain Name has not been used abusively and it has not caused any harm to the Complainant's brand. The Complainant should not be able to claim its rights to a surname, denying the right of other people with the same name to use it. 6. Discussion and Findings Language of the Proceeding The language of the Registration Agreement for the Disputed Domain Name is Romanian. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Complaint was filed in English. The Complainant requested that the language of the proceeding be English for several reasons. The Complainant submits that the Respondent has previously demonstrated knowledge of English. In 2022, the Respondent contacted the Complainant via email to propose a commercial collaboration, and the entire email exchange was in English. The Complainant also submits that the English language is a common language in international legal and commercial matters, including UDRP proceedings, which is likely to be understood by both parties and their legal representatives. The Complainant also claimed that it is an internationally recognized company operating in multiple jurisdictions. Requiring the Complainant to translate all materials into Romanian would impose an unnecessary burden and cause delays in the proceedings, particularly since the Respondent has not expressly indicated a preference for Romanian as the language of the proceedings.
page 4 The Respondent did not comment on the Complainant’s request for the language of the proceeding be English, but it has sent a Response to the Center in both English and Romanian. In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1). The Panel is mindful of the requirement of paragraph 10(b) of the Rules which provides that in all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. The Panel observes that the Center has issued its case-related communications in both Romanian and English. The Respondent has chosen to participate in the proceedings by submitting a Response in both English and Romanian. Further, in ensuring fairness in the selection of language, the Panel shall take into consideration the parties’ level of comfortability with each language, as well as the expenses to be incurred and the possibility of delay in the proceedings if translation is required (See Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679). In the present case, the Panel notes that the Respondent appears to have the ability to understand English as the Respondent conducted email exchange with the Complainant in 2022 in English and has submitted a Response for the present proceeding in both English and Romanian. Furthermore, additional expenses will be incurred if the Complainant is required to submit documents in Romanian and the proceeding may otherwise proceed expeditiously in English. Moreover, the Respondent did not object to the Complainant’s request to use English as the language of the proceeding. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s Trademark and the Disputed Domain Name. WIPO Overview 3.0, section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the Complainant’s Trademark is reproduced within the Disputed Domain Name. Furthermore, it is well established that the country code Top Level Domain (“ccTLD”), “.ro” in this case, may be disregarded for the purposes of assessing confusing similarity under the first element. See section 1.11 of the WIPO Overview 3.0. Accordingly, the Disputed Domain Name is identical to the Complainant’s Trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7 The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a Disputed Domain Name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the
page 5 respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. The Respondent contends that the name “Pedrali” is a common surname and a toponym, and that any person with a surname “Pedrali” has the legitimate right to register a domain name incorporating such term for personal or professional use. However, the Panel notes that there is no evidence to show that the Respondent has trademark rights corresponding to the Disputed Domain Name, or that the Respondent is commonly known by the Disputed Domain Name. The Panel further notes the distinctiveness and worldwide reputation of the Complainant’s Trademark, and the fact that the Complainant has provided no license or authorization of any kind to the Respondent to use the Complainant’s Trademark or to apply for or use any domain name incorporating the Complainant’s Trademark. The Panel notes that at the time of rendering of this Decision, the Disputed Domain Name did not resolve to an active website with information on either a person with the surname “Pedrali”, or information about the toponym (see WIPO Overview 3.0, section 2.10.1); rather, it resolved to an inactive website, and the Respondent did not provide any information in its Response to suggest that the Respondent has made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. The fact that a person representing the Respondent reached out to the Complainant for a possible collaboration further supports the Panel’s findings. The Complainant’s Trademark is reproduced in its entirety in the Disputed Domain Name, which carries a risk of implied affiliation with the Complainant. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Respondent could not rebut the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that it is difficult to conceive of any plausible use of the Disputed Domain Name by the unaffiliated Respondent that would amount to good faith use. Also, as discussed above, the Respondent lacks any rights or legitimate interests in the Disputed Domain Name (see Washington Mutual, Inc. v. Ashley Khong, WIPO Case No. D2005-0740). Further, the Respondent has provided no evidence of its actual or contemplated good faith use of the Disputed Domain Name beyond stating that it remained unused due to personal plans (with no further elaboration on those plans). Panels have previously held that a finding of bad faith can be established where a complainant’s trademark is shown to be well-known or in wide use at the time of registration of the disputed domain name (see LEGO Juris A/S v. store24hour, WIPO Case No. D2013-0091). The Panel finds that the Respondent was likely aware of the Complainant and the Complainant’s Trademark when it registered the Disputed Domain Name, given the well-known and distinctive nature of the Complainant’s brand, evidenced by the various trademark registrations for the Complainant’s Trademark that was put into use before the Respondent registered the Disputed Domain Name. The Panel also notes that the Respondent had reached out to the Complainant to propose a collaboration a few months after the Respondent registered the Disputed Domain Name, and the
page 6 Complainant rejected such proposal and did not grant any licence, consent or authorization for the Respondent to use the Complainant's Trademark in any form. At the time of the filing of the Complaint and the rendering of this Decision, the Disputed Domain Name resolved to an inactive website. However, Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. Although panelists will look at the totality of the circumstances in each case, key factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant's trademark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement); and (iv) the implausibility of any good faith use to which the domain name may be put. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness and reputation of the Complainant’s Trademark, the composition of the Disputed Domain Name, the Respondent’s failure to provide any evidence of actual or contemplated good-faith use, and finds that in the circumstances of this case the passive holding of the Disputed Domain Name does not prevent a finding of bad faith under the Policy. The Panel finds that the Complainant has established the third element of the Policy. 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. /Gabriela Kennedy/ Gabriela Kennedy Sole Panelist Date: September 23, 2025


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