NATIONAL ARBITRATION FORUM

 

DECISION

 

Illycaffe S.p.A. v. Mauro Sergio

Claim Number: FA0910001291791

 

PARTIES

 

Complainant is Illycaffe S.p.A., (“Complainant”), represented by Luca Danelon, of Kivial s.r.l., Italy.  Respondent is Mauro Sergio (“Respondent”), Italy.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

 

The domain name at issue is <illycaffe.us>, registered with Register.com.

 

PANEL

 

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 28, 2009; the Forum received a hard copy of the Complaint on October 30, 2009.

 

On October 29, 2009, Register.com confirmed by e-mail to the Forum that the <illycaffe.us> domain name is registered with Register.com and that Respondent is the current registrant of the name.  Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On November 4, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 24, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

Having received no Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On December 2, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

 

RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A. Complainant

 

1.      Respondent’s <illycaffe.us> domain name is identical to Complainant’s ILLYCAFFE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <illycaffe.us> domain name.

 

3.      Respondent registered and used the <illycaffe.us> domain name in bad faith.

 

B. Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

Complainant, Illycaffe S.p.A., founded in 1933, produces and sells espresso coffee throughout the world under ILLYCAFFE mark.  Complainant holds numerous registrations of its ILLYCAFFE mark with various governmental trademark authorities throughout the world, including the Italian Patent and Trademark Office, the Ufficio Italiano Brevetti e Marchi (e.g., Filing No. MI1992C008659 filed December 16, 1992, issued February 10, 1993, Renewal No. MI2002C012041 filed December 12, 2002).

 

Respondent, Mauro Sergio, registered the <illycaffe.us> domain name on May 2, 2002.  The disputed domain name does not resolve to any active website.

 

 

DISCUSSION

 

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 the Complainant's undisputed representations pursuant to Paragraphs 5(f), 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 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 or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

 

Complainant submitted evidence of numerous registrations of its ILLYCAFFE mark with various governmental trademark authorities throughout the world, including the Italian Patent and Trademark Office, the Ufficio Italiano Brevetti e Marchi (e.g., Filing No. MI1992C008659 filed December 16, 1992, issued February 10, 1993, Renewal No. MI2002C012041 filed December 12, 2002).  The Panel finds that this showing sufficiently establishes rights in the ILLYCAFFE mark under Policy ¶ 4(a)(i).  See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also 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.").

 

Respondent’s <illycaffe.us> domain name contains Complainant’s entire ILLYCAFFE mark and adds the country code top-level domain (“ccTLD”) “.us.”  The Panel finds that the addition of a ccTLD to Complainant’s mark does not sufficiently distinguish the disputed domain name from Complainant’s mark.  Therefore, the Panel finds that the <illycaffe.us> domain name is identical to Complainant’s ILLYCAFFE mark under Policy ¶ 4(a)(i).  See Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the [usTLD] Policy”); see also Mattel, Inc. v. Unknown, FA 490083 (Nat. Arb. Forum July 11, 2005) (“The domain name [<Barbie.us>] is identical to the trademark “Barbie”, as it uses the trademark in its entirety. The only difference is the addition of the country code “us” which for this purpose is insufficient to distinguish the domain name from the trademark.”).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.   

 

Rights or Legitimate Interests

 

At the outset, Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name.  Once Complainant makes this showing, the burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name.  The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii).  The burden now shifts to Respondent, from whom no response was received.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); 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 [UDRP] ¶ 4(a)(ii).”).  Although Respondent has made no assertions that it has rights or legitimate interests in the disputed domain name, the Panel elects to examine the record under Policy ¶ 4(c).

 

The Panel finds no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <illycaffe.us> domain name.  Therefore, the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i).  See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).

 

Complainant asserts that the <illycaffe.us> domain name does not resolve to any active website.  The Panel agrees and finds that Respondent’s failure to make an active use of the disputed domain name does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv).  See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to [UDRP] ¶ 4(a)(ii).”); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website.  The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to [UDRP] ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to [UDRP]  ¶ 4(c)(iii).”).

 

The WHOIS information for the <illycaffe.us> domain name lists “Mauro Sergio” as the registrant, which does not indicate that Respondent is commonly known by the disputed domain name.  Respondent has not offered any evidence to suggest that Policy ¶ 4(c)(iii) applies in this case.  Furthermore, Complainant asserts that it has not authorized Respondent to use the ILLYCAFFE mark.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii).  IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

The Panel finds that a finding of bad faith under Policy ¶ 4(a)(iii) is not limited to those instances enumerated in Policy ¶ 4(b).  See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the UDRP is not an exhaustive list of bad faith evidence); see also Educational Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the UDRP “indicates that its listing of bad faith factors is without limitation”).

 

The Panel finds that Respondent’s aforementioned failure to make an active use of the <illycaffe.us> domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii).  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s failure to make an active use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the UDRP); see also American Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

 

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <illycaffe.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Bruce E. Meyerson, Panelist

Date: December 16, 2009

 

 

 

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