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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ferrari S.p.A. v. Pierangelo Ferrari
Case No. D2001-1004
1. The Parties
The Complainant is Ferrari S.p.A. an Italian Corporation having legal seat in Via Abetone Inferiore 2, 41053 Maranello (province of Modena), Italy, represented by Mr. Massimo Introvigne and Mr. Fabrizio Jacobacci of Studio Legale Jacobacci e Associati.
The Respondent is Mr. Pierangelo Ferrari, an Italian individual having address in Via Roma 19, 20090 Segrate (province of Milano), Italy.
2. The Domain Name and Registrar
The domain name at issue is <ferrarishop.net>and the corresponding registrar with which the domain name is registered is Register.com, Inc., (hereinafter "Register.com"), 575 8th Avenue, New York, NY 10018, U.S.A.
3. Procedural History
The complaint was submitted via e-mail on August the 7, 2001, to the World Intellectual Property Organization Arbitration and Mediation Center (hereinafter the "WIPO Center").
On August 8, 2001, WIPO Center requested the Registrar, Register.com , pursuant to Paragraphs 2(a) and 4 of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "Rules"): (1) to confirm that a copy of the Complaint had been sent to Register.com by the Complainant; (2) to confirm that the domain name at issue was registered with Register.com, (3) to confirm that the person identified as the respondent is the current registrant of the domain name; (4) to provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es) available in the registrar's Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact); (5) to confirm that the Uniform Domain Name Dispute Resolution Policy (hereinafter the "Policy") applies to the domain name, and (6) to indicate the current status of the domain name.
On the same date Register.com replied that: (1) copy of the Complaint had not been sent to them by the Complainant; (2) Register.com was the Registrar of the domain name registration; (3) Pierangelo Ferrari was the current registrant providing the full contact details as requested (4) confirmed that UDRP was applicable to the domain at issue and the domain name registration <ferrarishop.net> was in "Active" status.
On August 10, 2001 WIPO Center requested the Complainant to amend the Complaint since:
1) it had not been submitted in one original and four copies;
2) the Complaint did not described the grounds on which it was made in accordance with paragraph 3(b)(ix) of the Rules. In particular, WIPO Center requested the Complainant to provide factual and legal grounds on the following elements:
a) whether before any notice to registrant of the dispute, there was any evidence of the registrant’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; or
b) whether the domain name registrant (as an individual, business, or other organization) had been commonly known by the domain name, even if the registrant has acquired no trademark or service mark rights; or
c) whether the registrant was 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.
An Amendment to Complaint was filed on August 13, 2001 (hard copy followed on August 15, 2001) and in light of the above and according to the documents filed with the Panel, the Complaint appeared to have been filed in accordance with the requirements of the Rules and of the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "Supplemental Rules"). The Panel finds that the payment was properly made and agrees with the WIPO Center’s assessment concerning the Complaint’s compliance with the formal requirements.
In accordance with paragraph 2(a) of the Rules, the Complaint was properly notified on August 15, 2001 to the Respondent who filed his Response on September 3, 2001. On September 18, 2001, the Parties were informed that in accordance with Paragraph 6(f) of the Policy an Administrative Panel consisting of a single Member had been appointed. The sole Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence and the date scheduled for the issuance of the Panel’s decision was set for October 8, 2001.
Finally, in accordance with Paragraph 11 of the Policy, since the Parties to the present administrative proceeding have not agreed otherwise, but both have actually filed their briefs in English, and since the registration agreement that relates to the domain name in question does not specify otherwise, the language of the administrative proceeding will be the language of the relevant registration agreement, i.e. English.
4. Factual Background
Complainant is an internationally well-known company in the field of cars, and the owner of several hundreds of trademarks including the word FERRARI throughout the world for many years. In addition to cars, sales of licensed products are in excess of Lira 35.5 billions per year. These products include toys, T-shirts, jewelry, bags, watches, perfumes, electronic video games, stationary products and several other items. It is further alleged that FERRARI is a famous trademark.
Ample evidence of representative trademarks was provided and the Panel notes that neither the Complainant’s allegations about fame and renown of the trademark FERRARI, nor the evidence provided in support were challenged by the Respondent and therefore the Panel takes the view that both are admitted by Respondent.
5. Parties’ Contentions
The Complaint is made on the basis that:
a) The domain name <ferrarishop.net> is confusingly similar with the trademarks FERRARI.
b) Respondent has no rights or legitimate interests in respect of the domain name. The circumstance that FERRARI is the last name of Respondent, "whereas he has admittedly no shop whatsoever (while the Ferrari company operates shops to sell its licensed products), is no evidence of good faith. In fact, Respondent has ended up registering <ferrarishop.net> as a domain name. ‘Ferrarishop’ obviously does not indicate to Internet users the family activities of Mr. Pierangelo Ferrari, but the ‘Ferrari shops’ operated by Complainant to sell its licensed products". According to the Complaint, "FERRARI and, by way of example, GUCCI, are relatively common last names in Italy. It would already be doubtful whether anybody whose last name is Ferrari or Gucci could register ferrari.net or gucci.net as domain names and seriously think that this does not create confusion with the world-famous trademarks FERRARI or GUCCI. If he or she registers <ferrarishop.net> or guccishop.net (without having any shop) it becomes obvious that the real intent is to create confusion with the trademark and the shops of the trademark owner"
Additionally, Complainant alleges that 1) apart from a link with the register.com Web site, there is no evidence of the 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, neither Respondent offers any goods or services whatsoever; 2) Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name FERRARI SHOP or FERRARISHOP, even if Ferrari is his last name; 3) the association between FERRARI and SHOP would seem to exclude any non-commercial or fair use of the domain name, nor is there any evidence of such use. Shops are, by definition, commercial establishments.
c) The domain name was registered and is used in bad faith. As to the first circumstance, Complainant states that "there is no way that Respondent, an Italian citizen, may not have been aware of the famous trademark FERRARI, and registration may only have occurred in bad faith; when it may be presumed that "the Respondent (…) knew of the renown of the Complainant’s trademarks", a finding of "opportunistic bad faith" is in order (Banca Sella S.p.A. v. Mr. Paolo Parente, case no. D2000-1157)."
On the question of use in bad faith when there is no actual Web page by Respondent, nor a clear offer to sell the domain name for a specific amount, Complainant indicates that there is now an entire body of significant precedents. Most of these quote the decision Telstra Corporation Limited v. Nuclear Marshmallows, case no. D2000-0003, which stated that "the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith". According to Complainant, "the distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept. Among the circumstances indicating that "passive holding" amounts to "use in bad faith", Telstra listed cases where "the Complainant’s trademark has a strong reputation and is widely known", and "it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law." Although in all the cases cited by Complainant the conclusion was that "passive holding" of a domain name may amount to use in bad faith, Complainant remarks that in <ferrarishop.net> case the holding is somewhat "active". Indeed, as shown in the enclosed documents at the URL <www.ferrarishop.net> one does not receive an error message, but opens a page directing to the Register.com site.
Finally, Complainant indicates that another reason for establishing that the domain name at issue falls within the "active holding" category would be also "evidenced by the fact that Respondent has offered the domain name on sale". Complainant enclosed an e-mail sent by Respondent to Ferrari’s trademark counsels, whose translation reads as follows: "At the moment I have no plans concerning this domain name which should have been used for a project which I never started. If your purpose is not limited to this information, and you wish to buy the domain name, we can talk about it".
According to the Respondent the main point of litigation is if he has - or has not - the right to use his family name, Ferrari (alone and\or in conjunction of other words), as domain name in Internet.
Respondent’s arguments in this regards can be grouped in two main material objections and one jurisdictional challenge (which will be discussed later on):
1. Lack of grounds about Complainant’s claims of exclusive right over FERRARI
According to the Respondent "in one corner we have a car factory that simply claims: "no one in the world is allowed to use the name ferrari" (by the way, this is not true because, for instance, in Italy there a well known wine-maker called ‘Ferrari’ and the car factory done nothing against him). In the other corner we have a person that would like to try to ‘do something’ on (or with) the Net, using his own personal name. Please remark that - at present time - the domain is simply hosted on a Register.com courtesy page." In addition, according to Respondent, Complainant’s claims are misplaced since "‘Ferrarishop’ itself it is not a trademark, so I’m allowed to use it - for legal purposes - without infringing any third part right under the doctrine of prior use".
2. Lack of evidence in regard to Respondent’s bad faith
Respondent notes that the domain at issue was registered on June 8, 2000, more than one year earlier than the commencement of the present procedure "without the car factory acted in such a way and without any attempt to sell the domain". According to Respondent, the Complainant’s inaction can only mean two alternative things: "that the car factory has known for a longtime about <ferrarishop.net>and that the car factory has de facto accepted the <ferrarishop.net> internet presence, or that the car factory was unaware of the existence of the <ferrarishop.net> domain and that the car factory did not pay any attention to this domain". Respondent believes that whatever alternative should be chosen, the result would always be the same: "there is no evidence of bad faith in the <ferrarishop.net> registration". Accordingly, the lack of bad faith would also exclude any Respondent’s intention "to prevent the trademark owner from using the mark in his own domain name, first because ‘ferrarishop’ it is not a trademark, second because [Respondent is] entitled to use it for the prior use and finally because [Respondent] has a constitutional right on the domain".
In addition Respondent argues that he never "made no action to ‘primarily disrupt a competitor business’ or ‘to intentionally attract, for commercial gain’ internet users creating confusion". In Respondent’s view " Italian law - the sole and the only I am bound to respect - unfair competition and trademark infringement needs to be well documented as actual damage and not as "mere possibility". This is not the case …[since] plaintiff has no proof of any damage suffered by the <ferrarishop.net> existence. He wasn’t able to show no financial losses, no user bogused or confused (sic), no loss of business and not - by the other side - some enrichment or any business activity of the defendant."
Finally , Respondent discusses the e-mail the Complainant received from him. On the one hand, Respondent tries to strike it out as inadmissible evidence since, in his view "the plaintiff would violated a private correspondence, since he has no right to publicly spread a personal message". But even if the evidence is admitted, Respondent contends that the real meaning would be "look, since my projects weren’t still started and even if I should change domain it wouldn’t make damage to me, I could even think to enter in some agreement with someone that is more interested in that." Respondent believes that in such a situation "we are light-year far from any Cybersquatting issue and I hope the court will acknowledge the correctness of my behavior".
5. Discussion and Findings
5.a Jurisdictional Issues
Before turning to the merits, the Panel must address Respondent’s motion to dismiss the proceeding on the ground that "under Italian law the right to personal identity is protected by Constitution as one of the fundamental ones belonging to an individual. One of the consequences of this strong protection is that it is forbidden to enter in (any kind of) agreement that involves personal name. A fortiori this is true for those agreements (as the one that allows someone to get a domain) that grant "private justice" the power to issue a decision about this matter". Furthermore, Respondent believes that "[it] is crucial to point out is that IP and trade-mark rights are "second level rights". Meaning that in the hierarchy of rights, the rights of person or individual (as the right to use his own name) come before (and are stronger protected) than IP and trade mark rights". Accordingly, Respondent believes that "UDRP and UDRP-like systems could not be allowed to handle the case, that instead should be filed under an Italian Court".
The Panel has looked into the Italian Constitution and has not found any "right to personal identity" framed in the terms alleged by the Respondent. Art. 22, the only one which actually makes reference to the right to personal name, says that "Nobody may be deprived for political reasons (emphasis added) …. of his/her the name". It does not seem that the Respondent has made any argument supporting a political intent from the Complainant and thus the Respondent’s claim is devoid of any merit.
As for the "private justice" the Panel rejects the argument by simply noting that Respondent was perfectly aware of the UDRP remedies when it freely decided to apply for the domain name. Respondent accepted it and now must live with it (see Playboy Enterprises International, Inc. v. Federico Concas, a.k.a John Smith, a.k.a. Orf3vsa, Case No. D2001-0745).
In any case, the Panel merely observes that Complainant has explicitly indicated (cf. §13 of the Complaint) as Court of mutual jurisdiction, the Courts of Italy where both Complainant and Respondent are located, and thus, in accordance with Rule 4k, Respondent has always the possibility to have this matter reviewed by the Court where he thinks jurisdiction is proper.
In light of the foregoing Respondent’s jurisdictional motion is dismissed
5.b The merits
According to Paragraph 4(a) of the Policy, in an administrative proceeding, the Complainant must prove that each of following three elements are present: (1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name was registered and is being used in bad faith.
1) The Panel believes that the domain name at issue is confusingly similar since make an unauthorized use in a distinctive manner of a trademark in which the Complainant has rights.
However, the Panel must remark that Complainant came very close to have its action dismissed for lack of discussion on their first element, which is, not at all, the puniest. Paragraph 4 (a) of the Policy explicitly places on the Complainant the burden of proving that the Domain Name is identical or confusingly similar to its trademark, in addition to proving its rights in said trademark. While the Panel is entirely satisfied that the latter circumstance was adequately proved, the Panel found that Complainant did not show, as it was required, that the domain name at issue is confusingly similar with its trademark: it is not enough to just to state that the domain name is confusingly similar to a trademark to prove that a likelihood of confusion may arise into Internet users and consumers at large.
The Panel believes in the theoretical correctness of what stated by Jazid, Inc. v. Michelle McKinnon v. Rennemo Steinar (E-resolution, case AF-0807): "it [is not] the burden of the Panel to seek further evidence (other than judicial knowledge) to sustain the parties’ allegations, as this may be disruptive of the arbitration process. Therefore, the burden rests on the parties to either support or sustain their allegations with the appropriate documentation whenever possible" (see also Benefitslink.com, Inc. v. Mike Haynes (NAF, case FA0007000095164: " It is not the role of the panel to conduct an independent investigation outside the materials submitted in the record.)
The Panel shares these views and the only reason it does not dismiss the case for failure to sufficiently plead the first element is because the Respondent actually admitted that the core of the controversy resolves around "his personal name", i.e. FERRARI, i.e. the trademark upon which Complainant owns rights, thus confirming that the inclusion of the term FERRARI in both the trademark and the domain name is of vital importance for the carrying out the function of the distinctive sign as an identifier in Internet.
Therefore, even though this Panel still firmly believes "that simply stating the reasons is not normally sufficient to meet the Complainant’s burden of proof ", as stated in earlier decisions (see Pomellato S.p.A v. Richard Tonetti, Case No. D2000-0493, Corneliani F.lli Claudio e Carlalberto Corneliani S.p.A. v. Corantos s.r.l., Case No. D2000-0759, Ermenegildo Zegna Corporation, Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex S.A v. Steven Shiekman, Case D2000-1375) the Panel finds it can distinguish from, although respecting the holding of, both Jazid, Inc and Benefitslink.com.
Indeed, by taking into account "all the material in the record", i.e. both submissions of Complainant and Respondent, it is possible for the Panel to find that since it is uncontested among the parties that the domain name at issue makes (an unauthorized) use of the trademark FERRARI in a distinctive manner, there is a high certainty that among users may arise a likelihood of confusion between the domain name <FERRARISHOP.NET> and the trademark FERRARI, also in view of the complete generic character of the term ‘shop’, a term which clearly makes reference to one of the possible activities within which the trademark FERARRI is put into use.
The Panel is aware that Respondent stated "… ‘Ferrarishop’ itself it is not a trademark, so I’m allowed to use it - for legal purposes - without infringing any third part right under the doctrine of prior use" however, the Panel is not bound to incorrect representation of the law made by either party, and, most of all, Panel in his analysis of the first element is not adjudicating the legitimacy of registration and use of the domain name, but rather is establishing whether or not the domain name is confusingly similar with a trademark upon which the Complainant claims to have exclusive rights. Complainant never affirmed to have rights on FERRARISHOP, so the objection is irrelevant.
Therefore, the Panel is satisfied that the first condition is met.
2) The Panel finds that the Respondent has neither rights nor legitimate interests in respect of the domain name.
It is a rather consolidated principle that the burden of proof in UDRP actions rests on the Complainant, and thus it is the Complainant’s burden to prove that the Respondent lacks any legitimate interest in the domain name. However, to mitigate what is, in essence , a probatio diabolica (it is always difficult to prove a negative fact) once the Complainant makes out a prima facie case of lack of legitimate rights to or interest in a domain name, the burden of production shifts to the Respondent, who must come forward with evidence of "use, or demonstrable preparations to use, the domain name," (cf. Anti Flirt S.A. and Mr. Jaques Amsellem v. WCVC, Case No. D2000-1553, Newman/Haas Racing v. Virtual Agents, Inc., Case D2000-1688, see also AFMA, Inc. v. Globemedia, Case D2001-0558).
Complainant has alleged, by reference to a number of circumstances (which Respondent has failed to deny in his reply) that Respondent has no legitimate interests in respect of the domain name at issue.
The Panel takes the view that the circumstances indicated by Complainant create a prima facie inversion of the burden of proof.
Respondent has not addressed any of the issues raised by Complainant. He did neither show that before any notice of the dispute, he had made 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 (as a matter of fact, Respondent is not even now making any commercial use of the domain name) ; nor that as an individual he was commonly known by the domain name; nor that he was making a legitimate noncommercial or fair use of the domain name. Respondent’s only argument was that his last name is FERRARI.
It is Panel’s view that this is not sufficient to prove the existence of rights or legitimate interests upon the domain name at issue. Respondent (who has never contested the actual renown of FERRARI trademark) might have registered his own full name if he was and is really interested in preserving his personal identity in Internet, but he choose not. Instead, Respondent, who, as admitted and noted by Complainant, does not engage in any commercial activity, choose to register a domain name which is a combination of his own name and a totally generic and ambiguous term as SHOP, which does not seem in any way justified under the factual circumstances but rather, in light of the fame and renown of FERRARI’s trademark and activities, seems preordinate to elicit into Internet users and consumers an immediate reference to Complainant’s activities.
Therefore, this Panel is satisfied that the second condition is met.
3) This Panel finds that the domain name was registered and is being used in bad faith.
In order to reach this conclusion the Panel examined separately two issues:
1) whether or not bad faith existed when the domain name was registered; and
2) whether or not the domain name was (and is) used in bad faith.
As far as the first issue is concerned, the Panel finds that Complainant has given enough and supported evidence of the recognition and renown which the name FERRARI has gained throughout the years in Italy, country where the Respondent resides.
In light of such recognition and taking into account that no rights or legitimate interests with respect to the name FERRARI could be established on the side of Respondent, the Panel believes that it is not credible that when Respondent applied for registration of the domain name at issue Respondent was not aware of Complainant’s rights over FERRARI. However, Respondent’s apparent belief that he was nonetheless entitled to register the domain name in view of Respondent’s last name is an issue that must be analyzed to determine whether or not such a belief may offset his knowledge of Complainant’s earlier rights.
In an earlier case, Zegnasuit (cited above) Respondent replied to Complainant he was not aware he was infringing, but the statement was not considered as sufficient, under the circumstances, to spell out bad faith by a unanimous three-member Panel. Yet, in Zegnasuit, Respondent did not have any credible reason to have adopted the domain name while, in the present, case Registrant’s last name is Ferrari. The Panel is therefore hesitant to apply the conclusions of Zegnasuit to the present case.
Nonetheless, the Panel cannot ignore that there is, however, another point of contact between Zegnasuit and FERRARISHOP: Zegnasuit’s registrant expressed its availability to turn over the domain upon payment of 125USD. Even in the present case, Respondent, who rather than merely denying his actual knowledge of being infringing, denies bad faith by affirming his right to register the domain name at issue, when contacted by Complainant’s representatives (who simply had inquired about Respondent’s intentions in regard to the domain name) expressed his willingness to negotiate the sale of the domain: "At the moment I have no plans concerning this domain name which should have been used for a project which I never started. If your purpose is not limited to this information, and you wish to buy the domain name, we can talk about it".
However, before weighing the relevance of this further point of contact, the Panel needs to address another objection raised by Respondent: the alleged inadmissibility as evidence of his e-mail to Complainant’s representatives.
According to Rule 10 d), the Panel shall determine the admissibility, relevance, materiality and weight of the evidence and in light of these general powers it is the Panel’s view that such an objection is unfounded.
First of all, the Panel notes that in no part of Respondent’s reply to Complainant’s representatives there was any explicit request for non-disclosure of, or for keeping confidential the content of the same reply. And even if a request for non-disclosure were assumed to have been implicitly contained in the mail, still Respondent would have accepted the risk of having the Complainant revealing the content without any recourse against it, unless between Respondent and Complainant’s representatives there had been an agreement to keep these matters confidential (see National Australia Bank Limited v Quality Systems Consulting – QSC Pty Ltd, Case No. D2000-0765).
In light of the foregoing, the Panel considers it perfectly appropriate to admit as evidence the reply sent by Respondent to Complainant’s representatives, and it is the Panel’s belief that Respondent’s proposal is illuminating and may help to adjudicate the bad faith issue. Indeed, even though Registrant might have felt entitled to register the domain <FERRARISHOP.NET> nonetheless, in light of the undisputed renown of the trademark FERRARI, the Panel believes it credible that he was actually well aware that by registering the domain name he might also get the chance of getting contacted by Complainant and obtain some valuable consideration, well in excess of the registration costs.
Evidence of this pre-existing state of mind, inconsistent with a bona fide attitude, is precisely evidenced by Respondent’s reply to Complainant’s representatives approach of January 17, 2001. In such an approach Complainant’s representatives merely sought to know (arguably since the domain name, although registered on June 8, 2000, after more than six months still continued to show a "coming soon" notice) what Respondent had in mind in respect to the domain name. Respondent, without any reason whatsoever (consistent with a bona fide attitude) instead to limit his reply to "At the moment I have no plans concerning this domain name which should have been used for a project which I never started" immediately exploited the situation showing his willingness, if not eagerness, to start negotiations aimed to conclude the sale of the domain name itself.
The Panel therefore feels that there was not a bona fide state of mind when registration of the domain name FERRARISHOP-NET took place.
The Panel needs now to address the second condition: that the domain name is used in bad faith. Actually, this second condition requires the analysis of two sub issues: whether or not there is use, and whether or not, assuming use, is in bad faith.
The Policy is silent as to what constitutes use (Paragraph 4(b) solely indicates that certain circumstances may be evidence of use in bad faith).
The Complainant remarks that a passive use (i.e. the mere occupation of the domain name in Internet without that any page is shown) has already been held to constitute use. Complainant cites at length previous decisions (Telstra Corporation Limited v. Nuclear Marshmallows , case no. D2000-0003, Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, case no. D2000-0021, Compaq Computer Corporation v. Boris Beric, case no. D2000-0042, InfoSpace.com, Inc. v. Tenenbaum Ofer, case no. D2000-0075 etc.). Yet, Complainant argues that in the present case Respondent is not making a passive use, but an active one: " By trying<www.ferrarishop.net> on a browser, one does not receive an error message, but opens a page directing to the Register.com". According to Complainant such redirecting would constitute active use.
On the question of use, Respondent merely states " Please remark that - at present time - the domain is simply hosted on a Register.com courtesy page".
The Panel finds that it is not necessary, under the circumstances, inquiring on what is passive or active use, since Respondent’s words constitute a clear and unequivocal admission of his awareness of and consent to actual use.
Respondent is very well aware that the Register.com courtesy web page offers to Internet’s user searching for the domain name <FERRARISHOP.NET> the option to go to "Related Search Links" provided for in the said web page.
Respondent cannot ignore that the Internet user does not know whether or not what appears is the result of a direct input from the domain name’s Registrant or simply a courtesy page. What objectively he/she sees is a page where commercial services are offered and thus may be led into believing that between the domain name and the services which are offered in the web page corresponding to the domain name there is a connection, an agreement of some sort.
But in the instant case there is more. In the web page corresponding to the domain name <FERRARISHOP.NET> the Internet user can actually link to other websites which, most intriguing of all, make reference not only to cars, but also luxury cars, i.e. precisely the kind of cars Complainant makes –as shown by simply clicking on the link "Luxury Cars") .
It appears evident therefore that there is use of the domain name and a use which makes an explicit reference to Complainant’s activities.
Whether or not such use is in bad faith must now be evaluated in light of all findings reached so far.
The list of circumstances set in paragraph 4(b) does not exhaust the Panel’s inquiry regarding the element of bad faith and many precedents have confirmed this principle (starting from Telstra Corporation, cited above).
It is the Panel’s view that Respondent’s behavior, in particular his unsolicited willingness to discuss sale of the domain name, combined with an actual use of the domain name which is both inconsistent with the name of the domain itself, and actually makes an open reference to the Complainant’s activities, as just shown, constitute evidence of continuing bad faith.
In light of the foregoing, the Panel is satisfied that also the third condition is met.
In light of the foregoing, the Panel finds that Respondent’s disputed domain name <ferrarishop.net> is identical to Complainant’s trademarks, that Respondent has no legitimate rights or interests in the disputed domain name, and that Respondent has registered and made use of the domain name in bad faith, and accordingly, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <ferrarishop.net>be turned over to Complainant.
Dated: October 1, 2001