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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Basic Trademark S.A. v. Antares S.p.A.

Case No. D2007-1771

1. The Parties

The Complainant is Basic Trademark S.A., of Luxembourg.

The Respondent is Antares S.p.A., of Parma, Italy.

2. The Domain Name and Registrar

The disputed domain name <robedikappa.org> is registered with Tucows, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2007. On December 4, 2007, the Center transmitted by email to Tucows, Inc. a request for registrar verification in connection with the domain name at issue. On December 5, 2007, Tucows, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 December 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 27, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2007.

The Center appointed Philippe Gilliйron as the sole panelist in this matter on January 8, 2008. 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 the right-holder of numerous trademarks ROBE DI KAPPA, both verbal and figurative, on a worldwide basis.

The Complainant in particularly holds the figurative trademark ROBE DI KAPPA in classes 1 to 42 in Italy since July 23, 1981.

The trademark ROBE DI KAPPA is licensed to more than hundred licensees, including in Italy where it has been heavily used for several years in the fashion industry.

The Complainant further holds the domain names <robedikappa.com> and <robedikappa.eu>.

The domain name <robedikappa.org> was registered on June 28, 2007 by the Respondent.

On September 7, 2007, the Respondent sent an e-mail to the Complainant, informing the latter that it had received a request from the Republic of China to purchase the domain name, but was ready to give priority to the Complainant in return for an amount to be negotiated between the parties.

The Respondent still holds the domain name, which is offered for sale at “www.sedo.com” for an amount of Euro 10,000.

5. Parties’ Contentions

A. Complainant

The Complainant first asserts that the domain name <robedikappa.org> is identical to the trademark ROBE DI KAPPA in which it has rights.

It further considers that the Respondent has no rights or legitimate interests in respect of the domain name at dispute as it “has never used nor has title to use ROBE DI KAPPA as a denomination, company name, trademark, service mark, distinctive sign”.

The Complainant finally affirms that the disputed domain name was registered and is being used in bad faith for the following reasons:

First of all, the Respondent’s bad faith would be evidenced by the fact that it offered to sell the domain name to the Complainant and threatened to sell it to a Chinese company in case of refusal in an e-mail of September 7, 2007. The Complainant adds that, at the time of the filing of the Complaint, the domain name <robedikappa.org> was still available for sale at the price of Euro 10,000 at “www.sedo.com”.

Secondly, the registration of the domain name at dispute should be considered as evidence of bad faith per se, considering the fame and distinctiveness of the Complainant’s trademark. According to the latter, the ROBE DI KAPPA trademark is a distinctive mark without any meaning and the use of the word “robe di kappa” can only refer to the trade mark of the Complainant.

Thirdly, the exchange of e-mails between the parties would clearly demonstrate that the Respondent knew that the registration of the domain name <robedikappa.org> without the authorization of the Complainant would constitute bad faith.

Finally, considering the reputation of its trademark and the absence of any legitimate interest from the Respondent, the Complainant concludes that “the primary purpose of the Respondent’s domain name registration is to disrupt the business of the Complainant”.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

In view of the Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to the Rules, paragraphs 5(e), 14(a) and 15(a) and will draw such inferences as it considers appropriate pursuant to the Rules, paragraph 14(b).

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) 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

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

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

A. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant proved to be the right-holder of numerous trademarks containing the word “robe di kappa” on a worldwide basis, including in Italy where the Respondent is located. The domain name <robedikappa.org> being identical to the Complainant’s trademark, the Panel finds that the Policy, paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(b)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the domain name.

In Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, the panel stated: “Where a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Subsequent panels have developed a consensus view that where the complainant makes a prima facie case that the respondent has no rights or legitimate interests, it falls to the respondent to show circumstances establishing such rights or legitimate interests. See e.g. paragraph 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions and cases cited therein.

Based upon the evidence brought by the Complainant and the heavily use of the trademark ROBE DI KAPPA in Italy over years, it is clear that Respondent was aware of the existence of Complainant’s trademark, as evidenced by the fact that Respondent itself contacted the Complainant to offer the domain name for sale. The Complainant has therefore made a prima facie case, and the Respondent does not bring any evidence that would demonstrate any right or legitimate interests in the domain name as the Respondent did not file a Response. More specifically, the Respondent does not demonstrate that:

(i) before any notice to it of the dispute, it used or made 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 is commonly known by the domain name, even if it 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 consumers or to tarnish the trademark or service mark at issue.

Consequently, the Panel considers the Policy, paragraph 4(a)(ii) to be fulfilled.

C. Registered and Used in Bad Faith

For a Complaint to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).

To have registered the domain name in bad faith, the Respondent first must have been aware of the existence of the Complainant. Such obviously is the case here as demonstrated above.

The Panel is persuaded from the circumstances in this case that the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant for an amount greatly in excess of any documented out-of-pocket costs incurred by the Respondent and directly related to the domain name. The Respondent’s unsolicited offer to sell this domain name to the Complainant, with the threat that he otherwise would sell it to an undisclosed alleged Chinese company, is compelling evidence of the Respondent’s bad faith under paragraph 4(b)(i) of the Policy.

This sole circumstance would already enable the Panel to consider Policy, paragraph 4(a)(iii) to be satisfied.

The Respondent’s bad faith is nevertheless confirmed by the fact that it deliberately parked <robedikappa.org> on a portal website to generate “click-through” commissions, in accordance with conventional practice when customers reach a site through a link on a portal. As stated by a prior panel, “[u]se for a portal linking to websites of the Complainant’s competitors is […] one which seeks to profit from confusion with the Complainant”. (Humana Inc. v. Domain Deluxe, WIPO Case No. D2005-0231). Consequently, the Panel considers that the Respondent intentionally intends to attract Internet users to its site by creating a likelihood of confusion with the Complainant’s ROBE DI KAPPA mark.

Consequently, the Panel considers Policy, paragraph 4(a)(iii) to be satisfied.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <robedikappa.org> be transferred to the Complainant.

Philippe Gilliйron
Sole Panelist

Dated: January 23, 2008