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Arbitration and Mediation Center
Kelemata S.p.A. v. Mr. Bassarab Dungaciu
Case No. D2003-0849
1. The Parties
The Complainant is Kelemata S.p.A., Torino, Italy, represented by Studio Legale Jacobacci e Associati, Italy.
The Respondent is Mr. Bassarab Dungaciu, Alessandria, Italy.
2. The Domain Name and Registrar
The disputed domain name <kelemata.org> is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 28, 2003. On October 28, 2003, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On October 28, 2003, Register.com 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. The Center verified that 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 October 30, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 28, 2003.
Since the Complainant requested a single-member panel and the Respondent failed to submit a response, the Center appointed Nicoletta Colombo as the Sole Panelist in this matter on December 8, 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.
Having reviewed the Case File in this matter, this Administrative Panel concurs with the assessment by the Center that all requirements of the Policy and the Rules have been satisfied.
No further submissions were presented to the Panel and the Center.
4. Factual Background
The following uncontested facts are found by the Panel and established as true.
The Complainant Kelemata S.p.A. is one of the best known companies in Italy in the field of cosmetics. It has rights in numerous registered trademarks in Italy, as well as in many other countries (see Annex 1). The Complainant has been for many years the owner of the trademark KELEMATA and a search on the Google engine revealed 6.480 results for Kelemata, almost all concerning Complainant’s company and products (see Annex 4). The Panel notes that the registration of the disputed domain name by the Respondent was done after the registration dates of all of the above-referenced registrations owned by the Complaint.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Uniform Policy are applicable to the domain name subject of this dispute.
In relation to element (i) of paragraph 4(a) of the Policy, the Complainant contends that the domain name is not only confusingly similar to its registered trademarks and its trade name, but the domain name in dispute is simply identical.
In relation to element (ii) of paragraph 4(a) of the Policy, the Complainant contends that the Respondent has no rights or legitimate interests in respect to the domain name in particular because:
(i) 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;
(ii) the Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name Kelemata;
(iii) the Respondent links or has linked to the default page of different websites, which can be further navigated only by paying a fee and/or advertise or offer commercial services and therefore the Respondent is not making legitimate noncommercial or fair use of the contested domain name.
In relation to element (iii) of paragraph 4(a) of the Policy, the Complainant contends that evidence of bad faith registration and use is established by the following circumstances.
The Respondent at the time of the registration of the contested domain name was surely aware of the trade name and trademark KELEMATA which is well known in Italy where the Respondent is located; therefore the registration occurred in bad faith.
The bad faith of the Respondent is also demonstrated by the circumstance that he has registered other domain names identical to, or confusingly similar with well-known trademarks, such as "baumemercier.it" (see Annex 7).
Moreover, Respondent’s bad faith registration is confirmed also because he supplied in the Whois false information about his address and telephone number.
The fact that the Respondent uses the domain name in bad faith is also demonstrated by the circumstance that the default page of <kelemata.org> has been used to resolve in a pornographic page selling various services connected with pornography. Subsequently, probably when advised that Complainant was ready to act, Respondent substituted the pornographic page with a link to a "parking page" of its provider, "tin.it" where are sold the services of the provider (see Annex 6). Even in this circumstance the domain name is still used in bad faith.
Complainant requests the Panel to transfer the disputed domain names to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must assert and prove each of the following three elements:
(a) 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
(b) the respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name registered by the respondent has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the registered owner of a large number of registered trademarks
of the word "Kelémata" in Italy and in other countries, that
are distinctive and world well known trademark and trade name as also confirmed
by the decision in Kelemata S.p.A v. Hugo Bazzo, WIPO
Case No. D2003-0594. The trademark is included in its entirety into
the domain name under dispute with the exception of the acute accent on the
second "e". This omission is due to a technical reason, because, as every body
knows it is not possible to register a domain name with accents. An exhaustive
history of previous cases states that the registration as a domain name of a
trademark in its entirety is sufficient to establish that a domain name is identical
or confusingly similar to the Complainant's registered trademark.
There is no doubt that the domain name <kelemata.org> is confusingly similar to the trademarks and trade name of the Complainant. Therefore, the Panel finds that the Complainant has satisfied the first element in demonstrating abusive domain name registration and use.
B. Rights or Legitimate Interests
The Respondent has not filed any response in this case. There is no prima facie indication of any rights or legitimate interests on the part of the Respondent in the domain name and KELEMATA is the registered trademark and trade name of the Complainant.
The Respondent is domiciled in Italy where KELEMATA is a well-known and distinctive trademark and trade name. The Respondent knowingly registered the contested domain name that infringed the Complainant’s rights and must have been aware the disputed domain name corresponds to this trademark and trade name.
There is no evidence of the Respondent’s use of the disputed domain name in connection with bona fide offering of goods or services prior to the dispute. In particular the Respondent’s domain name, incorporating the Complainant’s trademark and trade name, has been used to link to the default page of different website, which can be further navigated only by paying a fee and/or advertise or offer commercial services.
Moreover, there is no evidence that the Respondent is commonly known by the domain name, even if he has not acquired any trademark rights, and also that he intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Finally, there is no relation, disclosed to the Panel, between the Respondent and the Complainant and the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use Complainant’s trademark and name under any circumstance.
Under these circumstances, the Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain name, and therefore it has been satisfied by the Complainant the second element in demonstrating abusive domain name registration and use.
C. Registered and Used in Bad Faith
The KELEMATA trademark and trade name are unquestionably well known and the trademark registrations of the Complainant date back to 1947, in Italy, and have been registered in many countries for decades. In the opinion of the Panel, it is impossible that the Respondent was not clearly aware thereof when he registered the contested domain name, also because the Complainant has its principal office in Italy where the Respondent is located.
The Respondent’s bad faith is further demonstrated by the false information
about his address and telephone number he provided to the registrar with which
the domain name is registered. The use of false contact information in Respondent’s
initial registration application is evidence that Respondent registered the
domain name in bad faith (See Chanel v. 1, WIPO
Case No. D2003-0218; Action Instruments, Inc v. Technology Associates,
WIPO Case No. D2003-0024; Wachovia Corporation
v. Peter Carrington, WIPO Case No. D2002-0775;
Royal Bank of Scotland Group v. Stealth Commerce, WIPO
Case No. D2002-0155; Oxygen Media, LLC v. Primary Source, WIPO
Case No. D2000-0362; Home Director, Inc. v. Home Director, WIPO
Case No. D2000-0111).
It should be noted that the Respondent has not presented any reasons, evidence or arguments of a legitimate interest in using or registering the disputed domain name.
Moreover the bad faith is also demonstrated by the circumstance that any Internet user with a legitimate interest in the Complainant’s products typing <kelemata.org> is linked to a "parking page" of the provider of the Respondent, "tin.it," where are sold the services of the provider. It remains undoubted that the Internet users are likely to be confused by the Respondent’s use of the Complainant’s trademark.
In the light of above this Panel believes that the Complainant has satisfied the third element in demonstrating abusive domain name registration and use.
In accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel finds that the Complainant has met its burden of proof. Accordingly, the Panel grants Complainant’s request that the domain name <kelemata.org> be transferred to the Complainant.
Dated: December 21, 2003