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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
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.
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.
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
Dated: October 8, 2001