Sparco Srl v. Mr. Alexander Albert W. Gore / Ukrainian Cat. University

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sparco Srl v. Mr. Alexander Albert W. Gore / Ukrainian Cat. University

Case No. D2003-0448

1. The Parties

The Complainant is Sparco Srl, Torino, Italy, represented by Studio Legale Jacobacci e Associati, Italy.

The Respondent is Mr. Alexander Albert W. Gore / Ukrainian Cat. University, Lviv Rudno, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <sparcosrl.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 11, 2003. On June 11, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On June 17, 2003, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 26, 2003. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 15, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 7, 2003.

The Center appointed Brigitte Joppich as the Sole Panelist in this matter on August 19, 2003. 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 an Italian company in the field of accessories for cars and sport clothing. The company is internationally well known particularly through its sponsorship of Formula One racing teams and events. Sparco Srl is the owner of numerous trademarks including the word SPARCO throughout the world, inter alia:

Mark

Country

Registration

No.

Priority

SPARCO

and

device

Italy

335748

May 2, 1983

SPARCO

Italy

717542

July 16, 1997

SPARCO

and

device

International

Registration,

extended,

inter

alia,

to

Ukraine

478132

May 2, 1983

Srl is the Italian abbreviation of the equivalent of a limited liability company.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in the Policy, paragraph 4(a), are given in the present case, i.e.,

(i) the domain name is confusingly similar to the trademarks in which the Complainant has rights and is virtually identical to the trade name Sparco Srl;

(ii) the Respondent has no rights or legitimate interests in respect of the domain name:

- the Respondent has never been commonly known by the domain name or by any trade name similar to Sparco Srl;

- the Respondent has no rights in a trademark, a trade name SPARCO or "Sparco Srl";

- the Respondent is not making a legitimate non-commercial or fair use of the domain name.

(iii) the domain name was registered and is being used by the Respondent in bad faith:

- the registration of a domain name obviously connected with a well-known name by someone with no connection to this name suggests opportunistic bad faith;

- the association between "Sparco" and "Srl" in the domain name constitutes additional evidence of Respondent’s intention to refer to the Italian company which owns the trademark SPARCO and trades under the name Sparco Srl;

- Respondent engages in a pattern of preventing owners of trademarks from reflecting their trademarks in a corresponding domain name as he has registered other domain names corresponding to internationally well-known Italian trademarks, for example <astispumante.net>, <elenamiro.net>, <ferrari-scuderia.net>, <nutellaferrero.com>, <zegnaermenegildo.net> and <lanerieagnona.net>. This is additional evidence of bad faith registration as well as bad faith use;

- the default page of <sparcosrl.com> resolves in a pornographic page in Italian language, selling various services connected with pornography. The Respondent attracts, for commercial gain, customers not looking for an adult sex site to his website;

- Respondent uses mouse-trapping effects to prevent Internet users from leaving his website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under the Policy, paragraph 4(a), the Complainant must prove that each of the following three elements are present:

(i) the domain name is identical or confusingly similar to a trademark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The domain name <sparcosrl.com> is confusingly similar to the SPARCO trademarks owned by the Complainant as the additional term "srl" is merely an abbreviation of the Italian legal form of the company "Società a Responsabilità Limitata" and therefore is descriptive. This term is not an adequate criterion for differentiation. In addition, the global top-level domain name identification ".com" has no distinctive function.

The Complainant

has therefore

satisfied

the requirements

of the Policy,

paragraph 4(a)(i).

B. Rights

or Legitimate

Interests

The Policy,

paragraph 4(c),

sets out

three illustrative

circumstances

as examples,

which, if

proved by

the Respondent,

shall demonstrate

his rights

to or legitimate

interests

in the domain

name for

purposes

under the

Policy,

paragraph 4(a)(ii),

i.e.,

(i) before

any notice

to the Respondent

of the dispute,

the use

by the Respondent

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) the

Respondent

(as an individual,

business

or other

organization)

has been

commonly

known by

the domain

name, even

if the Respondent

has acquired

no trademark

or service

mark rights;

or

(iii) the

Respondent

is making

a legitimate

noncommercial

or fair

use of the

domain name,

without

intent for

commercial

gain to

misleadingly

divert customers

or to tarnish

the service

marks at

issue.

The Respondent

has not

proved any

of the above-mentioned

circumstances.

To the Panel’s

knowledge,

the domain

name can

neither

be derived

from the

Respondent’s

personal

name nor

the name

or the nature

of a business

operated

by him,

nor is the

Respondent

commonly

known by

the domain

name, which

was not

used in

connection

with a bona

fide

offering

of goods

and services

nor in any

legitimate

non-commercial

or fair

content.

The Panel

therefore

sees no

rights of

the Respondent

to or legitimate

interests

in the domain

name and

finds that

the Complainant

has satisfied

the requirements

of the Policy,

paragraph 4(a)(ii).

C. Registered

and Used

in Bad Faith

The Policy,

paragraph 4(b),

sets out

four illustrative

circumstances,

which for

purposes

of the Policy,

paragraph 4(a)(iii),

shall be

evidence

of the registration

and use

of the domain

name in

bad faith,

including,

"(ii) the

Respondent

has 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 he

engaged

in a pattern

of such

conduct;

or

"(iv) by

using the

domain name,

the Respondent

has intentionally

attempted

to attract,

for commercial

gain, Internet

users to

its website

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 the Respondent’s

website

or location

or of a

product

or service

on its website

or location."

When the

Respondent

registered

the domain

name he

must have

been aware

of the presence

of the Complainant’s

company

as he registered

a domain

name identical

to Complainant’s

trade name

including

the abbreviation

"Srl."

Furthermore,

as the Complainant

has rights

in a trademark

covering

the territory

of the Ukraine,

the Panel

finds that

there is

also evidence

of Respondent’s

knowledge

of Complainant’s

trademarks.

Finally,

the Respondent’s

use of the

domain name

for a website

in Italian

language,

the language

of the country

where the

Complainant

has its

principal

seat, is

additional

evidence

of his knowledge

of Complainant’s

rights.

Therefore,

the Panel

finds that

the domain

name was

registered

in bad faith.

The Respondent

has registered

numerous

domain names

identical

or confusingly

similar

to well-known

Italian

trademarks.

Thereby

he prevents

the owners

of the corresponding

trademarks

from reflecting

their marks

in these

domain names.

This, in

the Panel’s

view, is

evidence

that the

Respondent

engages

in a pattern

of such

conduct

under the

Policy,

paragraph 4(b)(ii),

and therefore

uses the

domain name

in bad faith.

The domain

name is

also used

to divert

traffic

intended

for the

Complainant’s

website,

using a

domain name

that is

the same

as the trademarks

of the Complainant

to link

to a pornographic

website.

Thereby,

the Respondent

attempts

to attract

Internet

users to

his website

by creating

a likelihood

of confusion

with Complainant’s

trademarks.

As some

services

under the

domain name

are offered

for payment,

the Panel

assumes

that this

attempt

was made

for commercial

gain, as

set out

in the Policy,

paragraph 4(b)(iv).

The Respondent

is using

"mouse-trapping"

techniques

to prevent

customers

from leaving

the website

under the

domain name.

In connection

with pornographic

content

this has

already

been found

to reinforce

bad faith

use in former

decisions.

Therefore

the Panel

finds that

the Complainant

has satisfied

the requirements

of the Policy,

paragraph 4(a)(iii).

7. Decision

For all

the foregoing

reasons,

in accordance

with the

Policy,

paragraph 4(i),

and the

Rules, paragraph 15,

the Panel

orders that

the domain

name <sparcosrl.com>

be transferred

to the Complainant.

Brigitte

Joppich

Sole Panelist

Dated:

August

22, 2003