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Ferrari S.p.A. v. JK Marketing, John Knapp

WIPO Case No. D2001-1003

Outcome
Transfer
Domain names
ferrari-shop.com
Complainant
Ferrari S.p.A.
Respondent
JK Marketing, John Knapp
Panelist
Bernhard F. Meyer-Hauser
Registrar
Register.Com
Decided
08 Oct 2001
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-1003.html

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ferrari S.p.A. v. JK Marketing

Case No. D2001-1003

1. The Parties

The complainant in this administrative proceeding is Ferrari S.p.A. ("Complainant"),

with its main business address at Via Abetone Inferiore 2, 41053 Maranello (province

of Modena), Italy. Complainant has duly authorized Mr. Massimo Introvigne, Studio

Legale Jacobacci e Associati, Corso Regio Parco 27, 10152 Torino, Italy, to

act as its legal representation.

According to Registrar's WHOIS database the respondent is JK Marketing ("Respondent"),

John Knapp, 3-4 Stewart Center, Brands Hatch, Fawham Kent DA3 8NG, UK.

2. The Domain Name and Registrar

The domain name at issue in this case is <ferrari-shop.com> ("Domain

Name"), registered with Register.Com ("Registrar"), Domain Registrar, 575 8th

Avenue, 11th Floor, New York, NY 10018, USA .

3. Procedural History

On August 7, 2001, a complaint ("Complaint") was submitted by e-mail to the

World Intellectual Property Organization Arbitration and Mediation Center ("WIPO

Center"), which, in return, transmitted the Acknowledgement of Receipt

of Complaint to Complainant on the same day.

On August 8, 2001, the WIPO Center requested a Registrar Verification. With

its Verification Response of the same day, the Registrar confirmed that the

disputed Domain Name was registered with Registrar.Com, Inc. and that Respondent,

JK Marketing, was the current registrant of the Domain Name. Andrew Holloway

of Cossax Software Ltd. in Kent, UK, was named as the administrative contact

for the Respondent. Furthermore the WIPO Center was informed by the Registrar,

that it did not receive a copy of the Complaint as required by the WIPO Supplemental

Rules for Uniform Dispute Resolution Policy ("the Policy"), paragraph 4(b).

The Complaint in hardcopy was received by the WIPO Center on August 9, 2001.

On August 10, 2001, a Complaint Deficiency Notification was sent to Complainant

with a request to cure within 5 days the deficiencies concerning paragraph 3(b)

of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules")

and paragraph 3(c) of the Supplemental Rules for Uniform Domain Dispute Resolution

Policy ("the Supplemental Rules").

In addition, an Amendment to Complaint was submitted to the WIPO Center by

e-mail on August 13, 2001, and was received in hardcopy on August 15, 2001.

On August 15, 2001, the appointed Case Manager transmitted the Notification

of Complaint and Commencement of Administrative Proceeding ("Commencement

Notification") to Respondent, setting a deadline as to September 4, 2001,

by which it could file a response ("Response") to the Complaint. The Commencement

Notification and Complaint was transmitted to Respondent by DHL courier service,

facsimile and e-mail. However, a DHL shipment airwaybill shows that the delivery

of these documents to Respondent, attempted by DHL courier service on August

20, 21, 22 and 29, 2001, failed and so did the facsimile transmission. This

failure of the physical transmission was either due to a (intentionally) incorrect

address registration or neglected updating of the WHOIS database. In both cases

the failure lies within the registrant's responsibility to be reachable and

to update the contact details shown in the registrar's WHOIS database. In other

words, it would have been Respondent's duty to provide the Registrar with its

valid address. Furthermore it is recorded, that the Complaint Deficiency Notification

mentioned below was successfully transferred by e-mail, proving, that at least

the communication by e-mail functioned properly. For all these reasons, it must

be concluded that the Complaint was duly transmitted to Respondent according

to paragraph 2(a) of the Rules. The Panelist finds that the WIPO Center has

discharged its responsibility under said paragraph to "employ reasonably

available means calculated to achieve actual notice to Respondent".

On September 5, 2001, Respondent received a Notification of Respondent Default

as it had failed to comply with the deadline indicated in the Commencement Notification.

A copy of the Notification of Respondent Default was forwarded to Complainant.

On September 25, 2001, the Parties were notified of the Appointment of Administrative

Panel and the Projected Decision Date as of October 8, 2001. The Administrative

Panel finds that it was properly constituted and appointed in accordance with

the Policy, the Rules and the Supplemental Rules.

4. Factual Background

The following facts and statements appear from the Complaint and its annexed

documents which have not been contested by Respondent:

Ferrari S.p.A. is a internationally well-known car manufacturer. In addition,

an important amount of different licensed FERRARI products such as toys, T-shirts,

jewellery, bags, watches, perfumes, electronic video games and stationary products

lead to sales in excess of LIT 35.5 billions per year. It is undisputed that

Complainant is and has been the owner of the world famous trademark FERRARI

for many years, and moreover the owner of several hundreds of trademarks, including

the word FERRARI, throughout the world. Besides the list of world-wide trademarks

FERRARI [doc. 1], copies of the following registrations have been submitted

with the Complaint:

- Italian registration No. 66132 [doc 2];

- CTM registration No. 161950 [doc. 2];

- U.S. registration No. 874164 [doc. 4];

- Japanese registration No. 565670 [doc. 5].

According to the WHOIS database, the disputed domain name <ferrari-shop.com>

was registered by Respondent on October 14, 2000 [doc. 6].

5. Parties’ Contentions

A. Complainant

Complainant contends that:

- the domain name <ferrari-shop.com> is confusingly similar with the

trademark FERRARI;

- Respondent has no rights or legitimate interests in respect of the Domain

Name;

- Respondent registered Domain Name in bad faith;

- the Domain Name is being used in bad faith;

- the Domain Name should be transferred to Complainant.

B. Respondent

Up to date, Respondent failed to submit a response to the WIPO Center. Thus,

Complainant's allegations are deemed to be non contested.

6. Discussion and Findings

Paragraph 4(a) of the policy directs that the Complainant must prove each

of the following:

"(i) that the Domain Name registered by the Respondent is identical or

confusingly similar to a trademark or service mark in which the complainant

has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of

the Domain Name; and

(iii) that the Domain Name has been registered and used in bad faith."

Identical or confusingly similar Domain Name: Policy 4(a)(i)

Complainant contends, that the domain name <ferrari-shop.com> is confusingly

similar with the trademark FERRARI.

In comparison with Complainant's trademark, the disputed Domain Name bears

the additional word "shop". However, the word "shop" is a generic term and therefore

not a distinctive element for a trademark. In addition, given the world-wide

reputation of FERRARI as a high-class sports and racing car, the trademark component

FERRARI clearly dominates the disputed Domain Name. Accordingly, Complainant

has correctly stated that the disputed Domain Name is confusingly similar to

its trademark FERRARI.

Respondent's Rights or Legitimate Interests in the Domain Name: Policy

4(a)(ii)

It is first convenient to recall that according to paragraph 4(c) of the Policy

a Respondent can establish its rights or legitimate interests in the Domain

Name if it shows the presence of any of the following circumstances:

"(i) before any notice to you [Respondent] 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 [Respondent] (as an individual, business, or other organization) have

been commonly known by the Domain Name, even if you have acquired no trade mark

or service mark rights; or

(iii) you [Respondent] 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."

Complainant maintains that Respondent has no rights or legitimate interests

in respect of the Domain Name, and in particular that:

a) there is no evidence of Respondent's 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;

b) Respondent has not been commonly known by the trade name or trademark FERRARI

or FERRARI SHOP;

c) any easily conceivable use Respondent may do of the Domain Name may only

be commercial, thus excluding the possibility of a non-commercial fair use.

There is no evidence whatsoever provided by Respondent, nor any further circumstances

set forth in paragraph 4(c) of the Policy, that would indicate any legitimate

use, rights or other interests of Respondent in respect of the disputed Domain

Name. The Panel therefore finds that Complainant has fulfilled its burden of

proof under paragraph 4(a)(ii) of the Policy.

Domain Name Registered and Used in Bad Faith: Policy 4(a)(iii)

The third element to be established by Complainant is that the Domain Name

has been registered and used in bad faith.

Paragraph 4(b) states the following four (non-exclusive) circumstances which,

if found to be present, are deemed to provide evidence of bad faith in registering

and using the Domain Name:

"(i) circumstances indicating that you [Respondent] have registered or

you [Respondent] 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 [Respondent] 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 [Respondent] have registered the Domain Name primarily for the purpose

of disrupting the business of a competitor; or

(iv) by using the Domain Name, you [Respondent] have intentionally attempted

to attract, for commercial gain, Internet users to your web site or other on-line

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 your location."

Complainant alleges that Respondent registered Domain Name in bad faith. There

seems to be no way, Respondent may not have been aware of the trademark FERRARI

given its widespread use and fame. Furthermore, Respondent was already known

by Ferrari's official in charge of the world wide coordination of anti-counterfeiting

activities for the protection of Complainant's trademarks. According to a letter

of July 12, 2001 [doc. 7], Respondent had produced stickers and patches

bearing non authorised reproductions of the FERRARI and PRANCING HORSE trademarks.

Complainant maintains that, since "being used in bad faith" is not limited

to positive actions, but includes passive holding, the Domain Name is being

used in bad faith. Respondent has not created an actual website corresponding

to the disputed Domain Name, nor has he made a clear offer to sell the Domain

Name for a specific amount.

It is accurate, that passive holding of a domain name may be sufficient to

constitute bad faith use, taking into consideration the overall context of Respondent's

behavior. This was ascertained in WIPO Case

No. D2000-0003, paragraphs 7.9 to 7.11, as well as in other WIPO Cases.

In the present case, it is a fact that Respondent's Domain Name is not being

used at all. Respondent has not contacted a host for its domain name <ferrari-shop.com>,

which means that there is not even a corresponding website "under construction".

In addition, Complainant's trademark is very well known and has a strong and

world wide reputation. Respondent cannot have ignored Complainant's trademark

at the time of registration and has failed to provide evidence of any good faith

use of the disputed Domain Name.

The Panel, in view of the facts mentioned above, concludes that Respondent's

passive holding of the disputed Domain Name constitutes bad faith use. The requirement

of paragraph 4(a)(iii) of the Policy has been sufficiently made out by the Complainant.

7. Decision

On the basis of the circumstances and facts discussed above, the Panelist decides

that the disputed Domain Name is identical to the registered trade mark in which

Complainant has rights, that the Respondent has no rights or legitimate interests

in respect of the Domain Name, and that the Respondent's Domain Name has been

registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panelist requires

that the disputed Domain Name <ferrari-shop.com> shall be transferred

to Complainant.

Bernhard F. Meyer-Hauser

Sole Panelist

Dated: October 8, 2001

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