SAFILO Società Azionaria Fabbrica Italiana Lavorazione Occhiali S.p.A v. Digi Real Estate Foundation
Claim Number: FA0710001088036
Complainant is SAFILO Società Azionaria Fabbrica Italiana Lavorazione
Occhiali S.p.A (“Complainant”),
represented by Ronald J. Ventola, of Schnader Harrison Segal & Lewis LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <safiloeyewear.com>, registered with Key-Systems Gmbh.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 3, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 3, 2007.
On October 5, 2007, Key-Systems Gmbh confirmed by e-mail to the National Arbitration Forum that the <safiloeyewear.com> domain name is registered with Key-Systems Gmbh and that Respondent is the current registrant of the name. Key-Systems Gmbh has verified that Respondent is bound by the Key-Systems Gmbh registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 9, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 29, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <safiloeyewear.com> domain name is confusingly similar to Complainant’s SAFILO mark.
2. Respondent does not have any rights or legitimate interests in the <safiloeyewear.com> domain name.
3. Respondent registered and used the <safiloeyewear.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, SAFILO Società Azionaria Fabbrica Italiana Lavorazione Occhiali S.p.A, offers high-quality eyewear products throughout the world under its SAFILO mark. Complainant holds several registrations for its SAFILO mark including with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 990,840 issued August 13, 1974 and Reg. No. 2,639,090 issued October 22, 2002). Complainant also operates a website located at the <safilo.com> domain name, through which it advertises and promotes its products.
Respondent, Digi Real Estate Foundation, registered the <safiloeyewear.com> domain name on May 25, 2007. The dispute domain name is used as a portal to relocate users to a parked page at the <siteboxparking.com> domain name. The website located at the redirected domain name contains hyperlinks to the third-party websites of Complainant’s competitors.
In addition, Complainant has provided sufficient evidence revealing that Respondent has served as the respondent in at least 39 different UDRP proceedings since 2004 in which the disputed domain names in those proceedings were transferred to the corresponding complainants in those disputes. See Robert Half Int’l Inc. & Robert Half Inc. v. Digi Real Estate Found., FA 360817 (Nat. Arb. Forum Dec. 30, 2004); see also Seiko Epson Corp. & Epson Am. Inc. v. Digi Real Estate Found., FA 1007976 (Nat. Arb. Forum July 24, 2007).
Paragraph 15(a) of the Rules instructs this Panel to "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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Pursuant to Policy ¶ 4(a)(i), Complainant has the burden of establishing rights in the SAFILO mark. The Panel finds that Complainant’s registration of the mark with the USPTO sufficiently fulfills this requirement. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
The <safiloeyewear.com> domain name fully incorporates Complainant’s mark and appends it with the generic term “eyewear,” which simply describes Complainant’s business, as well as the generic top-level domain (“gTLD”) “.com.” Accordingly, as these minute additions fail to distinguish the disputed domain name from the SAFILO mark, the Panel finds the disputed domain name confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name <christiesauction.com> is confusingly similar to the complainant's mark since it merely adds the word “auction” used in its generic sense); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel concludes that Complainant has met the requirements of Policy ¶ 4(a)(i).
Pursuant to Policy ¶ 4(a)(ii), Complainant has the initial burden of making a prima facie case that Respondent lacks rights and legitimate rights in the disputed domain name. The Panel concludes that, under Policy ¶ 4(a)(ii), Complainant’s allegation that Respondent lacks rights and legitimate interests in the disputed domain name adequately meets this burden so that the burden is then shifted to Respondent to show that rights or legitimate interests exist. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent has not produced a Response in this dispute. Respondent’s failure to respond allows the presumption that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Accordingly, the Panel is required to make no further analysis. However, the Panel, at its own discretion, will now review the record to determine if Respondent holds rights or legitimate interests under Policy ¶ 4(c).
Nothing in the record, including the WHOIS information, suggests that Respondent, “Digi Real Estate Foundation,” is commonly known by the <safiloeyewear.com> domain name. The Panel, therefore, concludes that Respondent is unable to establish rights and legitimate interests under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Further, the website located at the disputed domain name is used as a portal to the <siteboxparking.com> domain name where Respondent generates pay-per-click revenue through hyperlinks to the third-party websites of Complainant’s competitors displayed on the website located there. This activity is inconsistent with a bona fide offering of goods or services or a noncommercial or fair use. The Panel concludes that Respondent is, therefore, unable to establish rights under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of the complainant’s mark “as a portal to suck surfers into a site sponsored by [the respondent] hardly seems legitimate”); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user).
The Panel concludes that Complainant has met the requirements of Policy ¶ 4(a)(ii).
When Internet users seek out Complainant’s products and navigate to the disputed domain name, they are then transported to the <siteboxparking.com> domain name where hyperlinks to third-party websites of Complainant’s competitors are displayed. This activity constitutes disruption. Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith under Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Further, Respondent is using the disputed domain name to
attract Internet users by causing confusion as to Complainant’s affiliation
with the disputed domain name solely for the purpose of commercial gain through
the generation of click-through revenue with the links provided to
Complainant’s competitors. The Panel
determines that this is a further indication of Respondent’s bad faith
registration and use of the disputed domain name under Policy ¶ 4(b)(iv).
Additionally, Complainant has adequately shown that Respondent has served as the respondent in multiple UDRP proceedings where the disputed domain names in those cases were transferred to the respective complainants in those disputes. See Robert Half Int’l Inc. & Robert Half Inc. v. Digi Real Estate Found., FA 360817 (Nat. Arb. Forum Dec. 30, 2004); see also Seiko Epson Corp. & Epson Am. Inc. v. Digi Real Estate Found., FA 1007976 (Nat. Arb. Forum July 24, 2007). The Panel finds that this evidence is indicative of Respondent’s bad faith registration and use of the disputed domain name as illustrated by a pattern of preventing rightful owners of marks from registering corresponding domain names under Policy ¶ 4(b)(ii). See Sport Supply Group, Inc. v. Lang, D2004-0829 (WIPO Dec. 10, 2004)(“[Respondent] registered the <usgames.com> domain name in order to prevent [Complainant] from reflecting its U.S. GAMES Mark in a corresponding domain name [pursuant to Policy ¶ 4(b)(ii)]. The pattern of such conduct is established, inter alia, by the public decisions of two different UDRP proceedings [against] Respondent.”); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).
The Panel concludes that Complainant has met the requirements of Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <safiloeyewear.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 19, 2007
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