The Complainant is BolognaFiere S.p.A. of Bologna, Italy, represented by Dr. Modiano & Associati S.p.A., Italy.
The Respondents are Contact Privacy Inc. of Toronto, Ontario, Canada, Tang Lang Viaggi di Smac Viaggi, Tang Lang Viaggi Snc Ditta Individuale, and Sabrina Rossi of Varedo, Italy.
The disputed domain names <cosmoprof-bologna.com> and <motorshowbologna.com> are registered with Tucows Inc. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 2, 2016. On August 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 2, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 18, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed two amendments to the Complaint on August 22, 2016 and August 24, 2016.
The Center verified that the Complaint together with the amendments to 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 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on August 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2016. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on September 15, 2016.
The Center appointed Nicoletta Colombo as the sole panelist in this matter on September 20, 2016. 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 Complainant is one of the leading European trade fair organizers and one of the most advanced exhibition centers worldwide having its principal place of business in Bologna. BolognaFiere manages three exhibition centers (Bologna, Modena and Ferrara) and its exhibition center extends over 375,000 square meters of covered and outdoor areas.
BolognaFiere Cosmoprof S.p.A. takes care of organizing and marketing the exhibitions and provided business players, exhibitors and visitors with a complete range of services.
Since 1976, the aim of Motorshow has been to combine showcasing with spectacle. Today, Motorshow is the largest Italian car and motorcycle show.
The Complainant owns national MOTORSHOW, MOTORSHOW BOLOGNAFIERE and COSMOPROF trademarks, including the Italian trademark registration MOTORSHOW with the registration number 0000646223 dated March 23, 1995; the Italian trademark registration MOTORSHOW BOLOGNAFIERE with the registration number 0001490329 dated May 17, 2012; the Italian trademark registration COSMOPROF with the application number 302005901291117 and the registration date November 7, 2008. The Complainant also owns several country code Top-Level Domains ("ccTLDs") and generic Top-Level Domains ("gTLDs") incorporating its trademarks. With such extensive use, the Complainant's trademarks are well known in Italy and various other jurisdictions.
The Respondents registered the disputed domain names <motorshowbologna.com> on September 24, 2014 and <cosmoprof-bologna.com> on December 6, 2014.
Concerning the first element under the Policy, the Complainant submits that the disputed domain names <cosmoprof-bologna.com> and <motorshowbologna.com> are identical to its trademarks MOTORSHOW, MOTORSHOW BOLOGNAFIERE and COSMOPROF. The mere addition of the geographical term "Bologna" is not sufficient to avoid confusion between the disputed domain names and the Complainant's trademarks.
Concerning the second element under the Policy, the Complainant contends that the Respondents have no rights or legitimate interests in respect of the disputed domain names.
The disputed domain names do not correspond to the names of the Respondents and, to the best of the Complainant's knowledge, the Respondents are not commonly known by the disputed domain names.
Concerning the third element under the Policy, the Complainant alleges that the Respondents have registered and are using the disputed domain names in bad faith. According to the Complainant, it is inconceivable that the Respondents could not have been aware of the Complainant's trademarks at the time they registered the disputed domain names.
The disputed domain names are used to promote the Respondents' websites, where information regarding its activity is displayed. In particular, they offer travel and hotel accommodation services for Internet users interested in travelling to Bologna to attend the Complainant's events. The Respondents have never been authorized or licensed by the Complainant to further the above-mentioned activity or to register and use the disputed domain names.
Moreover, after having received the cease-and-desist letter, in which the Complainant was asking for the voluntary transfer of the disputed domain names <cosmoprof-bologna.com> and <motorshowbologna.com>, the Respondents did not reply. It has been deemed in many UDRP decisions that failure to respond to a cease-and-desist letter is indicative of bad faith.
On this basis, the Complainant requests that the disputed domain names be transferred to it.
The Respondents did not reply to the Complainant's contentions.
The consensus view of UDRP panels on the consolidation of multiple domain names and respondents is summarized in paragraph 4.16 of the WIPO Overview 2.0, whereby: "WIPO panels have articulated principles governing the question of whether a complaint filed with WIPO by multiple complainants may be brought against (one or more) respondents. These criteria encompass situations in which […the] complaints brought (whether or not filed by multiple complainants) against more than one respondent, where (i) the domain names or the web sites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties".
According to the public WhoIs information at the time of the filing of the Complaint, the same privacy shield was used to register the disputed domain names. The Registrar verification revealed that the underlying registrants of the disputed domain names were Tang Lang Viaggi Snc Ditta Individuale and Sabrina Rossi. Despite the different registrant names, the contact details of the underlying registrants, including the mailing address, email address, phone and FAX numbers, were identical. Besides that, the design of the websites at the disputed domain names was nearly identical. Therefore, the Panel finds that the websites under the disputed domain names are subject to common control.
The Respondents did not reply to the consolidation request of the Complainant. There is no evidence showing that the Complainant's request of the consolidation would affect the Respondents' rights in responding to the Complaint. Therefore, the Panel accepts the Complainant's consolidation request and finds it appropriate to consolidate the disputed domain names and the Respondents in one administrative proceeding.
In accordance with paragraph 4(a) of the Policy, in order to succeed in these proceedings and obtain the transfer of the disputed domain name, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section A); and
(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names (see below, section B); and
(iii) the disputed domain names have been registered and are being used in bad faith (see below, section C).
Under paragraph 4(a) of the Policy, the burden of proof with regard to these elements lies with the Complainant.
This question raises two issues: (1) whether the Complainant has rights in a trademark or service mark; and (2) whether the disputed domain names are identical or confusingly similar to such trademarks.
As regards to the first issue, the Complainant has provided documentary evidence showing that it is the owner of the related trademarks.
Concerning the second issue, the Panel finds that the disputed domain names are confusingly similar to the Complainant's trademarks. The disputed domain names incorporate the trademarks of the Complainant.
The Panel finds that the combination of the Complainant's trademarks with the geographical term "Bologna" does not render the disputed domain names sufficiently dissimilar to the trademarks of the Complainant.
There are several UDRP decisions stating that confusing similarity, for the purposes of the Policy, is established when a domain name wholly incorporates a complainant's mark even if it is added to another term. In particular, there are UDRP decisions stating that the incorporation of the trademark and a generic word in a domain name is misleading and confusingly similar to the trademark owned by the complainant (LEGO Juris A/S v. Devin Steenberg, WIPO Case No. D2015-0394; QVC Inc. and ER Marks Inc. v. WhoisGuard, WIPO Case No. D2007-1872).
Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant's trademarks.
The Respondents have not filed any response in this case. The Panel finds that, based on the evidence provided, the Complainant has made a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain names.
Specifically, on the basis of the evidence before the Panel, the Respondents have not received any license or authorization from the Complainant to use the well-known trademarks owned by the Complainant, nor have they been authorized to register and use the disputed domain names.
Under these circumstances, the Panel finds that the Respondents have no rights or legitimate interests in the disputed domain names.
The Respondents must have been aware of the existence of the Complainant's trademarks. It is not plausible that someone who was not familiar with the Complainant's marks would have registered the disputed domain names in particular because the Respondents are based in the same town where the Complainant has its legal seat.
The Panel is of the opinion that the Respondents registered the disputed domain names with the intent to profit from the reputation of the famous trademarks of the Complainant by choosing domain names that are confusingly similar to the Complainant's marks.
Moreover, the disputed domain names are used to promote Respondents' transportation and accommodation services for people who desire to attend Complaint's events in Bologna. Such use cannot be considered in good faith.
Taken together with the fact that the Respondents have not filed any response in this proceeding in support of any good faith registration or use, the Panel believes that the Complainant has demonstrated that the disputed domain names have been registered and are being used in bad faith.
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 <cosmoprof-bologna.com> and <motorshowbologna.com> be transferred to the Complainant.
Nicoletta Colombo
Sole Panelist
Date: October 4, 2016