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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Alcantara S.p.A. v. Asia pacific construction

Case No. D2008-0846

1. The Parties

Complainant is Alcantara S.p.A., Milan, Italy, represented by Fusi Testa Cottafavi Canu Law Firm, Italy.

Respondent is Asia pacific construction, Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <alcantarafabric.com> is registered with Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2008. On June 3, 2008, the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the domain name at issue. On June 4, 2008, Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 6, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 27, 2008.

The Center appointed Bernhard Meyer-Hauser as the sole panelist in this matter on July 7, 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

Alcantara S.p.A., according to Complainant, is an Italian company established on November 22, 1972. It is operating in the field of manufacturing and distributing chemical-textile covering materials. Complainant is the owner of following national and international trademark registrations in classes 12, 18, 20, 22, 24 and 25:

– ALCANTARA international trademark no. 366265, registered February 19,1970;

– ALCANTARA int. trademark no. 402473, registered June 26, 1973;

– A ALCANTARA int. trademark no. 469564, registered May 25, 1982;

– ALCANTARA int. trademark no. 552903, registered April 23, 1990;

– ALCANTARA int. trademark no. 562866, registered November 1990;

– ALCANTARA int. trademark no. 676793, registered June 30, 1997;

– A ALCANTARA int. trademark no.877266, registered November 23, 2005;

– ALCANTARA CTM trademark no. 001229210, filed October 6, 1999; registered May 16, 2001;

– ALCANTARA CTM trademark no. 001143551, filed May 20, 1999; registered June 6, 2000;

– ALCANTARA EGO CTM trademark no. 001143270, filed May 20, 1999; registered May 31, 2000;

– ALCANTARA CTM trademark no.002617819, filed March 14, 2002; registered September 23, 2003;

– ALCANTARA CTM trademark no. 001143221, filed May 20, 1999; registered May 31, 2000;

– A’BOUT ALCANTARA.COM CTM trademark no. 004554325, filed July 22, 2005; registered October 27, 2006;

– ALCANTARA Italian trademark no.890029, registered April 23, 2003 (renewal of reg. no.526516, filed Nov.28, 1969);

– A ALCANTARA Italian trademark no. 1001016, registered March 30, 2006 (renewal of reg. no.332317, filed Feb 17, 1982);

– ALCANTARA Italian trademark no. 968133, registered June 10, 2005 (renewal of reg. no.53567, filed July 27, 1990);

– ALCANTARA Italian application no.MI/2004/2906, registered March 24, 2004 (renewal of registration, filed March 14, 1994);

– ALCANTARA Italian trademark no. 984476, registered November 23, 2005.

Complainant is also registrant of the following domain names:

– <alcantara.com> from December 7, 1997;

– <alcantara.us> from May 21, 2002;

– <alcantara.it> from July 16, 1998.

Complainant’s official website, “www.alcantara.com”, is directly linked by other domain names which are registered by Complainant’s affiliate company Toray Ultrasued America Inc. Such domain names are:

– <alcantara-automotive.com> from October 18, 2004;

– <alcantara-america.com> from April 15, 2004;

– <alcantara-usa.com> from May 21, 2001;

– <alcantara-auto.com> from October 18, 2004.

Respondent registered the disputed Domain Name on June 25, 2007.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has been commercializing its chemical-textile material successfully throughout the world under the designation ALCANTARA since 1972. Complainant authorizes distributors in more than 37 different states. The distributorship agreements primarily relate to the automotive, furnishing, fashion and boating sectors.

Furthermore, Complainant underlines its reputation achieved under the trademark ALCANTARA evidenced by its presence at international Motor and Yachting shows and by the amounts invested in order to distinguish its products and services from others. Complainant contends having become a leader in the field of chemical-textile covering materials.

Given these facts, Complainant alleges that by registering the disputed Domain Name, Respondent attempted to misleadingly divert consumers away from Complainant’s website in order to disrupt Complainant’s business and to take advantage of Complainant’s renown.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, Complainant must meet the burden of proving the following:

(i) that Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) that Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

(i) Identical or Confusingly Similar

The Domain Name <alcantarafabric.com> consists of Complainant’s trademark ALCANTARA with the addition “fabric”. The component “fabric” is a generic term that may be used in connection with almost any textile fibers and even other products. It is, therefore, only of a secondary meaning. The strong and formative part of the Domain Name obviously is “alcantara”, corresponding to Complainant’s firm name and trademarks. This part of the Domain Name is very distinctive and the addition “fabric” is not suitable to eliminate confusion as to the owner of the trademark.

Given Complainant’s renown and its international presence, it seems clear that interested customers, particularly in the chemical-textile field, expect to find goods and services of Complainant under the Domain Name. Pursuant to several UDRP panels, a domain name, wholly incorporating a complainant’s registered mark, sufficiently establishes confusing similarity under the Policy, despite the addition of another term (see Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903; Alessi S.P.A. v. Alexandr Gritsay, WIPO Case No. D2007-0176; F. Hoffmann-La Roche v. Globex International, WIPO Case No. D2006-0692).

Thus, Complainant has met its burden to prove the first element of the Policy.

(ii) Rights or Legitimate Interests

Since Respondent did not answer to Complainant’s allegations, the Panel is bound to base its decision on the facts as set forth by Complainant (see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Evidentially, Complainant is the owner of the several trademarks covering the term “Alcantara”. As stated by Complainant, it did not authorize Respondent to use such marks in any way whatsoever. Since Respondent’s corporate name is “Asia pacific construction” and nothing indicates that Respondent has any relation to the mark ALCANTARA whatsoever. Thus, no rights or legitimate interests in respect of the disputed Domain Name are apparent to the Panel (see Samsung Electronics Co. Ltd v. NA/Ki Choi, WIPO Case No. D2007-0011; Oki Data Americas Inc. v. ASD Inc., WIPO Case No. D2001-0903; F. Hoffmann-La Roche v. Globex International, WIPO Case No. 2006-0692).

Given the above, the Panel finds that paragraph 4(a)(ii) of the policy has been complied with.

(iii) Registered and Used in Bad Faith

As set out above, Complainant registered the trademark ALCANTARA in the early 1970s and has been undertaking great efforts to commercialize it. Given Complainant’s worldwide reputation today, there can be no doubt that Respondent, at the time of registration of the disputed Domain Name, had knowledge of the exclusive rights owned by Complainant. Furthermore, according to the contents of the webpage attached to the Domain Name, Respondent seems to be involved in identical commercial activities as Complainant as it advertizes on this webpage a microfiber material under the designation “Suresuede” which seems to be very similar to “Alcantara” products. It, therefore, appears obvious to the Panel that Respondent intentionally attempts to attract, for commercial gain, Internet users and potential customers of Complainant to its website by creating a likelihood of confusion with Complainant’s mark. Such behavior clearly constitutes bad faith registration and use (see also Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Hence, the Panel holds, that Complainant has met with the requirements of paragraph 4(a)(iii) of the Policy.

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, <alcantarafabric.com>, be transferred to Complainant.

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Bernhard Meyer-Hauser
Sole Panelist

Dated: July 21, 2008