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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Criosbanc v. Berta de Patton
Case No. D2001-1290
1. The Parties
The Complainant in this administrative proceeding is Criosbanc, a company organized under Italian law, located 125, Via Montegrotto at 35038 Torreglia, Padova, Italy and represented by Jacobacci & Partners, with offices at 9, Via Berchet, 35131 Padova, Italy, hereinafter the "Complainant".
The Respondent is Berta de Patton, Veracruz Trading Ltd, with address at P.O Box 3174, Read Town, Tortola, British Virgin Island, hereinafter the "Respondent".
2. Domain Name and Registrar
The domain name at issue is <criosbanc.com> hereinafter the "Domain Name". The registrar is Register.com Inc. with whom the Domain Name was registered on October 4, 2000.
3. Procedural History
The WIPO Arbitration and Mediation Center, hereinafter "the Center" received the Complainant's complaint by email on October 24, 2001, and by hardcopy with the exhibits on October 26, 2001.
On October 29, 2001, the Center transmitted the Acknowledgement of Receipt of Complaint to the Complainant by email.
On October 31, 2001, the Center transmitted via email to Register.com, Inc. a request for Registrar Verification relating to this case. On November 5, 2001, Register.com, Inc. transmitted via email to the Center its Verification Response, confirming that the Domain Name is registered with Register.com, that the Respondent is the current registrant of the Domain Name and that the administrative contact corresponds to the Respondent's details. It also confirmed that the ICANN Uniform Dispute Resolution Policy (the Policy) is applicable, that the Domain Name registration status is "Active", that the language used at the time of registration was English and that the jurisdiction location was New York.
However, the Respondent in the Complaint was not properly identified as described in the Verification Response.
On November 15, 2001, the Center requested the Complainant to amend the Respondent of the Domain Name.
On November 22, 2001, the Center received by email the Complainant's amendment to the complaint and in the hardcopy on November 27, 2001.
On November 28, 2001, the Center verified that the complaint satisfies with the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution (the Supplemental Rules).
On November 28, 2001, the Center transmitted to the Respondent and the administrative contact the Notification of Complaint and Commencement of the Administrative Proceeding (the Notification) via post/courier, fax and email and copied the Notification to the Complainant by email.
The Center advised that the Response was due by December 18, 2001.
On December 20, 2001, having received no Response from the Respondent, the Center issued to the email address of both parties a Notification of Respondent Default.
On January 7, 2002, in view of the Complainant’s designation of a single panelist, the Center invited Mr. Geert Glas to serve as a panelist and transmitted to him the Request for Declaration of Impartiality and Independence and a Statement of Acceptance.
Having received on January 8, 2002, Mr. Geert Glas' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted on January 10, 2002, to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date by e-mail, in which Mr. Geert Glas was formally appointed as the Sole Panelist. The Projected Decision Date is January 24, 2002. The Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore the Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules and the verifiable facts but without the benefit of any Response from Respondent.
4. Factual Background
The Complainant is since 1976, active in the business of commercial refrigeration under the commercial name "criosbanc".
In 1988, the Complainant registered 'criosbanc' as an Italian trademark.
Since 1994, it has registered the trademark "criosbanc" in various countries such as, among others, Argentina, Brazil, Colombia, Great Britain, Paraguay, United States, Benelux, Germany, Spain, France.
All theses trademarks have been registered for goods of class 11 (i.e. refrigerator cells, refrigerators, refrigerating apparatus and cells).
The Complainant has also registered the domain name <criosbanc.it> on October 12, 1999, <criosbanc.org> on May 14, 2001, and <criosbanc.net> on May 12, 2001.
On October 4, 2000, the Respondent registered the Domain Name with Register.com.
On May 31, 2001, the Complainant sent to the Respondent a cease and desist letter requiring him to transfer the Domain Name. This letter remains unanswered.
The webpage linked to the Domain Name proposes the Domain Name for sale, and after a short time is redirected to the website at www.afternic.com which is in the business of domain name registering and sale.
5. Parties Contentions
The Complainant contends that the Domain Name is identical to its trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name because it has not licensed or otherwise permitted the Respondent to use its trademark, because the Respondent is not commonly known by the name 'criosbanc' and is not making a legitimate non-commercial or fair use of it.
The Complainant contends that the Respondent has registered the Domain Name in bad faith since the Respondent has obviously chosen a domain name consisting of the Complainant's trademark to create confusion with the Complainant's trademark. It states that its trademark is a made up word that the Respondent could not have chosen for a domain name without knowing about the Complainant's trademark. The Complainant also contends that the Respondent is in the business of domain names selling and that is has registered the Domain Name for the sole purpose of selling it to the Complainant. In order to confirm this allegation, it says that the Respondent is offering for sale many other domain names (such as <bergamin.com', <greggio.com>, <zanolini.com>, <givas.com>) all identical to trademarks and/or company's names owned by Italian companies having their headquarters in the same region as the Complainant. It also contends that the lack of reaction from the Respondent shows its bad faith.
Respondent has not contested the allegations of the Complaint and is in default.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles the Administrative Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Applied to this case, Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the Domain Name registered by the Respondent is identical or confusingly similar to the trademark in which the Complainant has rights; and,
(2) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and,
(3) that the Domain Name has been registered and is being used in bad faith.
a. Identity or Confusing Similarity
The Domain Name is identical to the Complainant's numerous trademark registrations.
The Administrative Panel therefore finds that the Domain Name is identical to the Complainant's trademark and finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
b. Rights or Legitimate Interests
The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating its trademark.
Moreover, by not filing a Response, the Respondent has failed to invoke any circumstance which could indicate the existence of any right or legitimate interest he would have in the Domain Name. Moreover, as "criosbanc" is an arbitrarily chosen name without any inherent meaning, any such legitimate right or interest is unlikely to exist. Therefore, the Panel finds that the requirement of Paragraph 4(a)(ii) of the Policy is satisfied.
c. Registration and Use in Bad Faith
When registering the Domain Name, the Respondent knowingly and purposefully chose a name which is identical to Complainant's trademark.
Indeed, the choice of the Domain Name by the Respondent is very unlikely to have resulted from a mere coincidence, especially in view of the fact that the Complainant's trademark is a made up word without any inherent meaning.
By doing so, the Respondent intentionally created a situation which is at odds with the legal rights and obligations of the parties.
It is evident for the Panel that the Respondent was acting with the intention to sell the Domain Name to the Complainant or to a competitor for valuable consideration on excess of its out-of-pocket costs. Indeed, the Domain Name leads the visitor to a webpage that features the following:
criosbanc.com, this Domain is for Sale at Afternic.com
Minimum offer: $5000.
Last offer: none
After a short while, this page is redirected to another one related to the website at www. afternic.com. This website proposes to back-order the domain name you need. The fact of registering domain names in view of selling them afterwards (for example to the owners of new companies urgently searching for a well-sounding domain name) does not constitute per se a bad faith activity. It however becomes a bad faith activity when it is likely that the domain name owner knows he is registering a trademark of a third party. This is clearly the case here.
Moreover, the Complainant has established that domain names corresponding to the trade names and/or trademarks of other companies in the same geographic area as the Complainant, are also offered for sale online by the Respondent. It appears from this fact to the Panel that the Respondent is in the business of acquiring domain names and of selling them for profit. Indeed, it is unlikely that the Respondent could come up with a legitimate use for the approximately 50 domain names identical to trademarks and/or trade names that it has registered. Therefore, the Panel concludes that the Respondent is in the business of domain names grabbing and is acting with evident bad faith towards the Complainant.
The Respondent is in default to respond in this proceeding, thereby failing to invoke any element or circumstance which could indicate the good faith nature of his registration and use of Domain Name. As a consequence, the Respondent has failed to demonstrate any bona fide use of the Domain Name.
Considering the lack of interest of the Respondent in the Domain Name, in the defense of his rights and interests as to the Domain Name and the above facts, the Administrative Panel finds that the Complainant has met its burden under Paragraph 4(a)(iii) of the Policy and that the Respondent has registered and used the Domain Name in bad faith.
In light of the foregoing, the Administrative Panel decides that the Domain Name registered by the Respondent is identical to the Complainant's trademarks, 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 Administrative Panel requires that the registration of the Domain Name <criosbanc.com> be transferred to the Complainant.
Dated: January 24, 2002