WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Faac S.p.A. v. Alejandro del Pino Luna

Case No. D2019-0669

1. The Parties

Complainant is Faac S.p.A. of Bologna, Italy, represented by Studio Turini, Italy.

Respondent is Alejandro del Pino Luna of Zapopan, Jalisco, Mexico.

2. The Domain Name and Registrar

The Disputed Domain Name <faacmexico.com> is registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2019. On March 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 27, 2019, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 28, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 29, 2019.

The Center verified that the Complaint together with the amended 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 Respondent of the Complaint together with the amended Complaint, and the proceedings commenced on April 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 23, 2019.

The Center appointed Richard W. Page as the sole panelist in this matter on April 26, 2019. 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

Complainant is a well known Italian company founded in 1965, which provides solutions for automation in residential, condominium and industrial use, pedestrian control and vehicle access.

Complainant is the holder of many well known trademark registrations for FAAC (the “FAAC Mark”), including International Trademark No. 809135 FAAC registered on July 3, 2003 (expiration date in July 3, 2023) for classes 7 and 9; Mexican Trademark No. 472250 FAAC registered on September 5, 1994 (expiration date April 15, 2024) for class 9; United States Trademark No. 7412287 FAAC registered on October 27, 1992 (renewed registration) for classes 6, 7 and 9; and others containing FAAC registered before other offices, such as Poland, the Russian Federation and Singapore.

Complainant is also the owner of the domain name <facc.it> created on January 2, 1998, which resolves to Complainant’s website located at “www.faac.it”.

Respondent registered the Disputed Domain Name on January 18, 2013 and it resolves to a site that reproduces Complainant’s trademark. The site appears to sell Complainant’s products, amongst others.

5. Parties’ Contentions

A. Complainant

Complainant contends that the notoriety and diffusion of the FAAC Mark in Mexico are proven by Complainant’s documents submitted in this proceeding from invoice years 2000-2018 related to the Mexican market, from one of Faac’s Mexican supplier’s flyers from the year 2013, and from photos of a Faac Mexican supplier (Merik S.A. de C.V.) for its convention during the year 2010. Complainant further contends that its rights are affected by Respondent’s conduct because he uses the term “faac” in the Disputed Domain Name.

Complainant alleges that the Disputed Domain Name is composed using the entirety of the FAAC Mark. Complainant further alleges that numerous panel decisions under the Policy have held that the incorporation of a complainant’s trademark in full in a domain name, may be sufficient to establish confusing similarity under paragraph 4(a)(i) of the Policy.

Complainant argues that neither the addition of suffixes, common or geographic terms such as “mexico” does anything to alleviate the confusion caused by the incorporation of the well-known FAAC Mark in the Disputed Domain Name. Complainant further argues that the addition a common or a generic term does not sufficiently distinguish the Disputed Domain Name from the FAAC Mark.

Complainant avers that the addition of “mexico” to the Disputed Domain Name can be interpreted as a reference to the activities of Complainant in Mexico. Complainant further avers that Internet users may mistakenly believe the Disputed Domain Name to be Complainant’s official website targeting the Mexican market.

Complainant insists that this case presents a form of typosquatting and that the addition of expressions such as “mexico” to a trademark is typically employed by typosquatters. Complainant further insists that it is a well-established principle that typosquatting constitutes prima facie evidence of confusion.

The Disputed Domain Name is highly similar to Complainant’s primary domain name <faac.it> and to its company name.

Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name. Complainant further contends that Respondent is not commonly known by that name (as an individual, business or other organization). Complainant further contends that Respondent was not authorized, licensed or otherwise allowed by Complainant to use the name faac” or to apply for any domain name incorporating the FAAC Mark.

Complainant continues that Respondent in using the Disputed Domain Name to connect to a website where the FAAC Mark is reproduced, without any authorization by Complainant and where products and services are promoted and sold. Respondent is not an official Faac outsourcing factory and retailer.

Complainant avers that Respondent’s use of the Disputed Domain Name is not in connection with a bona fide offering of goods or services. Complainant further avers that Respondent is using the Disputed Domain Name in order to attract the public to its website, by way of typosquatting. Complainant continues that the composition of the Disputed Domain Name is designed to attract Internet users and to mislead and divert consumers and cannot be considered noncommercial or fair use.

Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith, because Respondent is using the confusing similarity of the Disputed Domain Name to attract Internet users for commercial purposes.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”

Respondent is not obliged to participate in a domain name dispute proceeding, but when it fails to do so, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. See Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441.

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the FAAC Mark in which Complainant has rights; and

ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

iii) that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has shown that it has numerous registrations of the FAAC Mark in Mexico, the United States and internationally.

Prior UDRP 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 has the burden of refuting this assumption. See, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

Respondent has not contested this showing. Therefore, the Panel finds that for purposes of this proceeding Complainant has enforceable rights in the FAAC Mark.

Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the FAAC Mark pursuant to paragraph 4(a)(i) of the Policy.

Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. Complainant argues that the entirety of the FAAC Mark is incorporated into the Disputed Domain Name. Complainant further argues that when a Disputed Domain Name incorporates an entire trademark with only the addition of a common or geographical word such as “mexico,” it is still confusingly similar to the trademark as the addition of the common or geographical word is not distinctive. See, Hoffmann-LaRoche AG v. P Martin, WIPO Case No. D2009-0323; Dixons Group Plc. v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L., WIPO Case No. D2008-0792. See also Section 1.8 of the WIPO Overview 3.0.

Respondent has not contested Complainant’s contentions of confusing similarity.

The Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s FAAC Mark and that Complainant has demonstrated the required elements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.

Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights or legitimate interests in the Disputed Domain Name. Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or legitimate interests in the Disputed Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed 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 Disputed 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 Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the FAAC Mark.

Complainant contends that Respondent is not commonly known by that name (as an individual, business or other organization). Complainant further contends that Respondent was not authorized, licensed or otherwise allowed by Complainant to use the name “faac” or to register any domain name incorporating the FAAC Mark.

Complainant continues that Respondent is using the Disputed Domain Name to connect to a website where the FAAC Mark is reproduced, without any authorization by Complainant and where products and services are promoted and sold. Complainant avers that Respondent’s use of the Disputed Domain Name is not in connection with a bona fide offering of goods or services nor any legitimate noncommercial or fair use of the Disputed Domain Name.

The Panel finds that Complainant has made a prima facie case that Respondent has not rights or legitimate interests in the Disputed Domain Name and that Respondent has not rebutted that prima facie case.

Therefore, the Panel finds that Complainant has satisfied the elements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:

(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to 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 Disputed Domain Name; or

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

(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the FAAC Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.

Complainant avers that the composition of the Disputed Domain Name is designed to attract Internet users and to mislead and divert consumers.

Complainant further alleges that the Disputed Domain Name was registered and is being used in bad faith, because Respondent is using the confusing similarity of the Disputed Domain Name to attract Internet users for commercial purposes.

Respondent has not contested the allegations of Complainant concerning bad faith.

The Panel finds that Complainant has established the requirements of paragraph 4(b)(iv) of the Policy.

Therefore, Complainant has satisfied the elements of paragraph 4(a)(iii) of the Policy.

7. Decision

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 Dame <faacmexico.com> be transferred to Complainant.

Richard W. Page
Sole Panelist
Date: May 5, 2019