WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cartiere Miliani Fabriano SPA. v. Keyword Marketing, Inc.

Case No. D2007-0411

1. The Parties

The Complainant is Cartiere Miliani Fabriano SPA., Verona, Italy, represented by Dr. Modiano & Associati S.p.A., Italy.

The Respondent is Keyword Marketing, Inc., Charlestown, West Indies, Saint Kitts and Nevis.

2. The Domain Name and Registrar

The disputed domain name <cartieremilanifabriano.com>is registered with Capitoldomains, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2007. On March 19, 2007, the Center transmitted by email to Capitoldomains, LLC a request for registrar verification in connection with the domain name at issue. On March 22, 2007, Capitoldomains, LLC 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 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 March 29, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 18, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 19, 2007.

The Center appointed Christian Pirker as the sole panelist in this matter on May 7, 2007. 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 Cartiere Miliani Fabriano SPA, a large paper company in Italy, which is a subsidiary of the Fedrigoni Group. The Complainant trade name is “Cartiere Miliani Fabriano” since May 1931. The Fedrigoni Group is the second in Europe in the field of speciality paper and has approximately 2000 employees.

The brand of the Complainant and its head office for paper products is mainly FABRIANO, which trademark has been used for over fifty years.

The Complainant and its parent company have registered trademarks containing the term Fabriano, among other:

- Italian Trademark C.M. FABRIANO N° 0000900103 in class 16

- Italian Trademark FABRIANO N° 0000693526 in class 16

- International Trademark FABRIANO No 167412 in class 16, designating numerous countries.

The Complainant has also registered numerous domain names containing the word “cartieremilianifabriano” to present the company and offer its Internet products, among other:

- <cartieremilianifabriano.it> registered on July 13, 1999;

- <cartierefabriano.it> registered on February 23, 2000;

- <cartieremilianifabriano.com> registered on February 8, 2001;

The Respondent is located in Saint Kitts and Nevis.

The disputed domain name <cartieremilanifabriano.com> was registered in October 7, 2006 and is used as a web directory which contains links and advertisement for various websites among others related to paper products.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name is confusingly similar to the trademarks FABRIANO, to the company name “Cartiere Miliani Fabriano” in which it owns common law rights and to the different domain names owned and used by the Complainant. The Complainant further alleges that the Respondent has no prior rights and /or legitimate interest to justify the use of this domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademark or to register any domain name incorporating the above-mentioned trademark nor to use its company name. Further, the Complainant declares that there is no relationship between the parties. Consequently, the absence of any permission and the connection between the choice of the domain name and the Respondent’s website prove that the Respondent has neither rights nor legitimate interest in respect of the domain name. Finally, the Complainant alleges that the Respondent was undoubtedly aware at the time of the registration of the litigious domain name of the existence of the trademarks FABRIANO, of the company name “Cartiere Miliani Fabriano” and of the Complainant’s domain names. Accordingly, the Respondent registered its domain name in order to take advantage of the Complainant’s notoriety. Moreover, the Complainant alleges that the Respondent is currently acting in bad faith as it is using the domain name to offer the same type of products as offered by the Complainant but again in order to take benefit from the Complainant’s notoriety. Accordingly, there should be no doubt that the disputed domain name was registered and is being used in bad faith. Finally, the Complainant noted that the Respondent has already being involved in many claims related to registering and using domain names in bad faith.

Accordingly, the Complainant contends that the Respondent has registered a domain name that is confusingly similar to the trademarks registered and used by it, that the Respondent has no rights or legitimate interests in the domain name at issue, and that the Respondent has registered and used this domain name in bad faith.

B. Respondent

As noted above, the Respondent is in default pursuant to paragraph 5(e) and 14 of the Rules, and paragraph 7(c) of the Supplemental Rules, as no Response was submitted.

Under paragraphs 5(e) and 14(a) of the Rules, the effect of a default by the Respondent is that the Panel shall proceed to a decision on the Complaint. Under paragraph 14(b), the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the 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”.

Paragraph 4(a) of the Policy states that the Complainant must prove that each of the three following elements are present:

(i) that 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

(ii) that the Respondent has no rights nor legitimate interests in respect of the domain name; and

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

A. Identical or Confusingly Similar

The Complainant’s FABRIANO trademarks are registered in Italy and Europe, mainly for paper products.

Previous Panels have decided that ‘essential’ or ‘virtual’ identity is sufficient: The Stanley Works and Stanley Logistics, Inc. v. Cam Creek Co., Inc, WIPO Case No. D2000-0113 and Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102. Applying that test, the Panel finds that the domain name is confusingly similar to the Complainant’s trademark, since it is essentially or virtually identical to it. The Panel finds that the adding of the words “cartiere” and “milani” does not change the overwhelming impression of similarity. In addition, the term “cartiere” is descriptive. Domain names that combine a descriptive term with another’s trademark have been held to be confusingly similar to the trademark (see, e.g., AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553; Scholastic Inc. v. 366 Publications, WIPO Case No. D2000-1627). Based on the foregoing, the Panel has no hesitation in concluding that the domain name is confusingly similar to the trademarks owned by the Complainant.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy a Respondent can establish its rights or legitimate interests in its Domain Name if it shows the presence of any of the following circumstances:

“(i) before any notice to you [Respondent] of the dispute, your 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; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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.”

It is for the Complainant to demonstrate that this condition is met prima facie. Provided that the Complainant is successful in demonstrating that the condition is met prima facie, it is for the Respondent to demonstrate its rights or legitimate interests. Accordingly, the main burden of proof is on the Respondent.

The Complainant alleges that the Respondent has no connection whatsoever with it and that the Respondent has no right or legitimate interest in the domain name.

Taking into consideration the fact that this condition consists of furnishing evidence of the non-existence of a material fact, the Panel considers that the Complainant has fulfilled its obligations under this paragraph.

As stated above, the Respondent failed to respond to the Complaint. The Panel will therefore draw such inferences as it considers appropriate under the circumstances (paragraphs 5(e) and 14 (a) of the Rules).

The Respondent has not challenged the Complainant’s contention. The Panel finds it credible.

Moreover, there is no evidence in the file that the Respondent has any right or legitimate interest in the domain name.

Accordingly, the Panel considers that the Respondent does not have any right or legitimate interest in the domain name.

C. Registered and Used in Bad Faith

The third element to be established by the Complainant is that the domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the policy states the following four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the domain name.

“(i) circumstances indicating that you [Respondent] have registered or you [Respondent] have acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trademark or service mark, or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Name; or

(ii) you [Respondent] have registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Name, provided that you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or your location.”

The domain name must not only be registered in bad faith, but it must also be used in bad faith (e.g., World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001).

The Panel notes that some panels in certain default cases have accepted credible allegations from a complainant as true, particularly under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy, regarding the factors that make out illegitimacy of a respondent’s use or the presence or absence of bad faith, e.g., Luis Cobos v. West, North (Nick Handle: JNMTOKTCQD), WIPO Case No. D2004-0182; Microsoft Corporation v. Andrey Tumakov, WIPO Case No. D2002-1039; Plymouth State College v. Domains, Best Domains, WIPO Case No. D2002-0939.

The Complainant’s allegations in this case that the disputed domain name has been registered and is used in bad faith could be accepted as true. That being said, the Panel further states the following.

The Panel considers that the evidence submitted establishes that the choice of the domain name by the Respondent could hardly be a coincidence. First, adding the term “cartiere milani” to the Complainant’s trademark indicates the Respondent’s purposeful choice of a domain name that is confusingly similar to the Complainant’s trademark, trade name and domain name to attract the Complainant’s customers. Further, the disputed domain name reverts to a website directory which leads to websites active in the same field as the Complainant. Accordingly, the Panel considers that the disputed domain name is used as a “click-through” revenue generating site which provides income to the Respondent by inducing Internet users to click through sponsored links. It is the Panel’s opinion that the intention behind the Respondent’s use of a domain name containing the Complainant’s trademark and tradename is merely to capture the Complainant’s customers who are seeking the Complainant’s services, and to re-direct them to other websites. Such use of domain is neither legitimate, nor in good faith. Using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with a complainant’s mark is evidence of bad faith registration and use under the Policy, paragraph 4(b)(iv) (e.g., Compagnie Générale des Etablissements Michelin CGEM - Michelin & Cie, Michelin Recherche et Technique S.A. v. Horoshiy Inc., WIPO Case No. D2004-0752).

Further, the Panel finds that the circumstances in this case lead to the conclusion of bad faith for the following reasons:

- The disputed domain name leads customers or potential customers of the “fabriani” products to believe that they will find, on the Respondent’s Internet website, Complainant’s products.

- The Respondent’s use of the domain name has no relation to the Complainant’s activities except for misleading and diverting potential customers of the Complainant to the Respondent’s website or related website.

- The Respondent did not actively participate in the proceedings.

- The Respondent has been involved as respondent in numerous other cases, in which the disputed domain names were eventually transferred to the relevant complainants.

As a result, the Panel holds that both elements of paragraph 4(a)(iii) of the Policy have been met. The Panel thus concludes that the Complainant has established that the Respondent registered and used the disputed domain name in bad faith.

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 <cartieremilanifabriano.com> be transferred to the Complainant.

Christian Pirker
Sole Panelist

Dated: May 21, 2007