The Complainants are Bakeca S.P.A. (now known as Bakeca S.r.l.) of Italy; Time for Now Limited of Dublin, Ireland, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.
The Respondents are Constantina-Geanina Panainte of Negri, Romania; Cristian-Anton Vasile of Galati, Romania, represented by Cristian-Anton Vasile.
The disputed domain names <bachecabook.com>, <bachecaforum.com>, <bacheca4.com>, <bacheca4.net>, <ebachecaincontri.com>, <4bacheca.com> and <4bacheca.net> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2015. On June 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 20, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are 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” or “UDRP”), 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 Respondents of the Complaint, and the proceedings commenced on June 25, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2015. The Response was filed with the Center on July 7, 2015.
On July 13, 2015, the Center received an unsolicited filing from the Complainants. The Center acknowledged receipt of such filing on the same day.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on July 21, 2015. 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.
The Complainants have provided online classified advertising services under the domain name <bakeca.it> since June 2005. Initially, the Complainants also provided on the “www.bakeca.it” website personal advertisement services, but in 2009, the Complainants separated the services making the personal advertisement services available at <bakekaincontri.com>; and since 2010 at <bakecaincontrii.com>.
The Complainants own several trademark registration for the word BAKECA, as follows:
CTM Registration No. 12,806,171 for BAKECA – registered September 9, 2014;
Italian Registration No. 1,413,756 for BAKECA.IT – registered June 3, 2010;
CTM Registration No. 12,610,234 for BAKECA INCONTRI – registered July 9, 2014;
CTM Registration No. 12,665,451 for BAKEKAINCONTRI – registered July 24, 2014.
The disputed domain names were registered as follows:
<4bacheca.com> registered on April 10, 2015;
<4bacheca.net> registered on April 10, 2015;
<bacheca4.com> registered on April 10, 2015;
<bacheca4.net> registered on April 10, 2015;
<bachecabook.com> registered on April 20, 2015;
<bachecaforum.com> registered on April 20, 2015;
<ebachecaincontri.com> registered on December 5, 2014.
At the time the Complaint was filed, the domain name <4bacheca.com> reverted to a pornographic website, and the other disputed domain names did not appear to revert to any active websites.
The Complainants submit that all of the disputed domain names are confusingly similar to the Complainants’ registered trademarks BAKECA and BAKECA INCONTRI.
The Complainants contend that the typographical variation of the spelling of the disputed domain names is not sufficient to distinguish them from the Complainants’ trademark BAKECA. The term BAKECA is a coined word, and not a known word in any language. The disputed domain names all contain as the dominant element the term “bacheca”. The Respondents have simply changed the letter “k” for the letters “ch”, and the disputed domain names and the Complainants’ trademark are pronounced the same way. The Respondents have then added the number “4”, the letter “e”, or the words “book”, and “forum” to each of the disputed domain names. The addition of these descriptive words, and a letter/number is not sufficient to distinguish the disputed domain names from the Complainants’ trademark. Furthermore, the Complainant owns registered trademark rights in the words BAKECA INCONTRI, and submits that the disputed domain name <ebachecaincontri.com> is confusingly similar to that trademark, by virtue of both word elements.
The Complainants contend that the Respondents were never authorized or licensed to use the Complainants’ BAKECA and BAKECA INCONTRI trademarks. The Respondents are not commonly known by the Bakeca or Bacheca name. The Complainant submits that the use of a registered trademark (or marks confusing therewith) for the purpose of operating a website that provides pornographic material does not demonstrate a bona fide offering of goods and services. Furthermore, the Complainants submit that the passive holding of domain names does not demonstrate a bona fide offering of goods and services. Accordingly, the Complainants submit that the Respondents do not have any rights or legitimate interests in any of the disputed domain names.
The Complainants submit that the Respondents have registered and are using the disputed domain names in bad faith because the Respondents were aware of the Complainant’s BAKECA and BACKECA INCONTRI trademarks when they registered the disputed domain names. The Respondents deliberately registered confusingly similar domain names in order to trade on the goodwill and reputation of the Complainants for the purposes of selling, renting or otherwise transferring the disputed domain names for purposes of monetary gain. The Complainants submit that the Respondents have previously targeted the Complainants, and registered 12 domain names that were confusingly similar to the Complainants’ BAKECA and BAKECA INCONTRI Trademarks. The Complainant filed a previous UDRP complaint, which was ultimately terminated because the Respondents transferred all 12 domain names to the Complainants. The Respondents are also using one of the disputed domain names in association with a pornographic website, which tarnishes the Complainants’ goodwill and reputation in its registered trademarks.
The Respondents have submitted that the Complainants cannot claim trademark rights in a generic word. The word “bacheca” is an Italian word which means “showcase”. Accordingly, the Respondents deny that the Complainants own any registered trademark rights in the word “bacheca” because there is no way to register a common dictionary Italian word as a trademark. The Respondents submit that they will consent to the transfer of the disputed domain names if and only if the Administrative Panel’s decision is that the Complainants have rights in the disputed domain names.
As a preliminary point on procedure, the Panel must address the Complainants’ request for consolidation and the Complainants’ Supplemental Filing.
The Panel notes the Complainants’ request for consolidation in this matter. As to two separate Complainant entities, the Panel notes that these are two related corporate entities both conducting business under the BAKECA and BAKECA INCONTRI brands. The Panel finds that these corporate entities have a common interest to have filed the Complaint and will thus allow multiple Complainants.
As to the Respondents, the Panel notes that the Complaint is filed against Constantina-Geanina Panainte a/k/a Cristian-Anton Vasile. Constantina-Geanina Panainte is the registrant of record for the following domain names: <ebachecaincontri.com> and <4bacheca.com>. Cristian-Anton Vasile is the registrant of record for the following domain names: <bachecaforum.com>, <bachecabook.com>, <bacheca4.net>, <bacheca4.com> and <4bacheca.net>. The Complainants make various arguments as to why the disputed domain names may be considered to be in common control by a single entity. The Respondents have not come back to rebut these submissions which the Panel considers in the circumstances of this case to be plausible. The Panel therefore finds that the named Respondents may be considered as aliases for a single person or entity and will allow the multiple Respondents.
As to the Supplemental Filing, the Policy does not expressly permit supplemental filings, and it is in the discretion of the Panel whether any supplemental filings will be accepted. The Panel has considered the issue, and does not find that there are any exceptional circumstances that would lead to acceptance of the Supplemental Filing. Accordingly, the Panel will not consider the Complainants’ additional filing.
According to paragraph 4(a) of the Policy, in order to succeed, the Complainants must establish each of the following elements:
(i) The disputed domain names are identical or confusingly similar to the trademark or service mark in which the Complainants have rights;
(ii) The Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
The Panel finds that the Complainants own registered trademark rights in the BAKECA and BAKECA INCONTRI trademarks by virtue of the trademark registrations listed in paragraph 4 above.
The Panel is prepared to find that the term “bakeca” and the word “bacheca” are similar in sound, and appearance. The replacement of the letter “k” with the letters “ch” is not sufficient to distinguish the disputed domain names from the registered trademarks.
The disputed domain names contain as a dominant element a confusingly similar variant of the Complainants’ registered trademark BAKECA, combined with a variety of descriptive terms, for example, “4”, “e”, “book”, and “forum”. The addition of these terms do not serve to distinguish the disputed domain names in any material way. Furthermore, with respect to the disputed domain name <ebachecaincontri.com>, the Panel finds that this disputed domain name virtually replicates the Complainants’ entire BAKECA INCONTRI trademark. Accordingly, the Panel finds that all of the disputed domain names are confusingly similar to the Complainants’ registered BAKECA and BAKECA INCONTRI trademarks.
The Panel finds that the Complainants have satisfied the requirement under paragraph 4(a)(i) of the Policy.
On the evidence filed, the Complainants’ trademarks have a substantial reputation. The Panel takes notice of the fact that the Respondents had previously targeted the Complainants, and finds that the Respondents were clearly aware of the Complainants’ trademark rights in the BAKECA and BAKECA INCONTRI trademarks. The Respondents were never authorized or licensed to use the Complainants’ trademarks, and were aware of Complainants’ previous objections to similar conduct. One of the disputed domain names reverts to a pornographic website, and the others do not revert to any active websites. The Panel concludes that neither the passive holding of a confusing similar domain name, nor reversion to a pornographic site, is evidence of a bona fide offering of goods and services under the Policy. Accordingly, the Panel concludes that the Respondents do not hold any rights or legitimate interests in the disputed domain names.
Therefore, the Panel finds that the Complainants have satisfied the requirement under paragraph 4(a)(ii) of the Policy.
The Panel concludes that due to the reputation of the BAKECA and BAKECA INCONTRI trademarks and the previous conduct of the Respondents (as noted above), the Respondents were aware of the Complainants’ trademarks when they registered and used the disputed domain names. The Respondents clearly intended to attract users to their websites through the unauthorized use of variants of the BAKECA and BAKECA INCONTRI trademarks as the primary and/or dominant element of their disputed domain names. The Respondents are using the disputed domain names in association with a pornographic website or are passively holding the names for purpose of interfering with the Complainants’ business or monetary gain. In particular, the Panel regards the registration and use of the disputed domain name <ebachecaincontri.com> as strong indicia of deliberate misappropriation of the Complainants’ rights. As a result, the Panel finds that the disputed domain names were registered and are being used in bad faith.
The Panel finds that the Complainants have satisfied the requirement under paragraph 4(a)(iIi) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <bachecabook.com>, <bachecaforum.com>, <bacheca4.com>, <bacheca4.net>, <ebachecaincontri.com>, <4bacheca.com> and <4bacheca.net> be transferred to the Complainants.
Christopher J. Pibus
Sole Panelist
Date: August 5, 2015