WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Zambon S.p.A. v. Kennedy Garth Parks

Case No. D2020-3346

1. The Parties

The Complainant is Zambon S.p.A., Italy, represented by Studio Barbero, Italy.

The Respondent is Kennedy Garth Parks, United States of America.

2. The Domain Name and Registrar

The disputed domain name <zambongrcup.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2020. On December 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 9, 2020, the Registrar transmitted by email to the Center its verification response 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 the Complainant on December 11, 2020 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 11, 2020.

The Center verified that the Complaint together with the amendment 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 Respondent of the Complaint, and the proceedings commenced on December 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2021.

The Center appointed Leon Trakman as the sole panelist in this matter on January 19, 2021. 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 the owner of a number of international and national trademark registrations, including in the European Union and Italy, for the mark ZAMBON, or variations thereof. These include, among other International Trademarks: Registration No. 509634 for ZAMBON (word mark), registered on January 26, 1987; Registration No. 620243 for ZAMBON (word mark), registered on June 20, 1994, in class 1, 3, 5, 10, 16, 31, 34; Registration No. 1190614 for ZAMBON (figurative mark), registered on October 23, 2013, in class 5; Registration No. 0849410 for ZAMBON (figurative mark), registered on December 28, 2004, in class 5, designating amongst others, the European Union. European Union Trade Mark includes: Registration No. 010374585 for ZAMBON (figurative mark), filed on October 27, 2011 and registered on March 27, 2012, in class 5. Italian Trademark includes: Registration No. 362016000012122 for ZAMBON (word mark), January 26, 1987, and since renewed in class 5.

The Complainant’s domain names including the term “zambon” and variations thereof are registered as generic Top-Level Domains (“gTLDs”) and country-code Top-Level Domains (“ccTLDs”), and include, among others, <zambongroup.com>, <zambonpharma.com>, and <zambon.com>.

The Complainant’s primary web portals are located at “www.zambon.com” and “www.zambonpharma.com”.

The disputed domain name was registered on March 26, 2019. The disputed domain name resolves to a parking page of the disputed domain name’s registration service provider (Lycos), where services associated with Lycos are promoted and on which links redirecting users to third-party commercial websites are published.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that, on March 26, 2019, the Respondent registered the disputed domain name; that the Complainant did not authorize the registration; that the disputed domain name is confusingly similar to the Complainant’s trademark ZAMBON and is almost identical to Complainant’s domain name <zambongroup.com>, from which it differs only from one letter (“c” instead of “o”); that the Respondent directed users to a parking page of Lycos that provides users with links to third-party commercial websites.

The Complainant alleges further: that the disputed domain name may be used in connection with sending potentially fraudulent email communications sent from email addresses ending with “@zambongrcup.com”. The Complainant maintains that, through instructions to its representative, it sent a cease and desist letter to the Registrar of the disputed domain name. The letter notified the Respondent that it had infringed the Complainant’s trademark rights by registering and using a domain name that was confusingly similar to the Complainant’s trademark ZAMBON. It requested that Respondent immediate cease using the disputed domain name and transfer it to the Complainant.

The Representative received an automatically generated email reply from the Registrar, stating, inter alia, that “Trademark claims involving a domain name registration can be addressed through ICANN’s Uniform Domain-Name Dispute-Resolution Policy”. The Complainant’s Representative sent reminder cease and desist emails on January 21, 2020 and on January 27, 2020. The reminders reiterated the request to the Registrar to forward the correspondence to the registrant of <zambongrcup.com>, to which an automated reply was received that was identical to the Registrar’s first response.

On November 3, 2020, the Complainant sent the Registrar a request for disclosure of the underlying Registrant’s contact details listed in the WhoIs database and redacted for privacy, to which no reply was received. The Complainant send a reminder cease and desist letter on December 2, 2020, indicating compliance was required by the close of business that day. In the absence of a reply, on December 2, 2020, the Complainant’s representative requested Lycos, the registration service provider, to forward the cease and desist letter to the Respondent. The Complainant received no reply from the Respondent.

The Complainant alleges that, given the absence of responses to its correspondence, it instructed its representative to file the Complaint in issue and to request transfer of the disputed domain name to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name registered by the Respondent is confusingly similar to the Complainant’s international and nationally registered trademark, ZAMBON. The disputed domain name is identical to that trademark other than containing the term “grcup”, which appears to be a misspelling of the term “group”. The addition of the term “grcup” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. The disputed domain name remains both visually and phonetically confusingly similar to the Complainant’s trademark. See Syngenta Participations AG v. Jon Hanna, Aljt, supra, Holding Le Duff “HLD” v. Maria Nobree, Maria S.A, WIPO Case No. D2019-2199.

The addition of the generic Top-Level Domain (“gTLD”) “.com” in the disputed domain name also does not detract from its confusing similarity to the Complainant’s trademark ZAMBON. As prior UDRP panels have repeatedly held, the use of the gTLD “.com” is no more than an instrumental means in using a domain name to access the Internet. To a similar effect, see Telecom Personal, S.A., v. NAMEZERO.COM, Inc, WIPO Case No. D2001-0015, Société Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760.

The Panel determines that the disputed domain name is not identical to the Complainant’s trademark. However, the name is confusingly similar, both visually and functionally, to the Complainant’s trademark. See further Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) (“where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”).

The Panel, therefore, concludes that the disputed domain name is confusingly similar to the Complainant’s trademark, according to the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the Respondent did not have a rights or legitimate interests in the disputed domain name.

While the complainant has the overall burden of proof to establish the respondent lacks rights or legitimates in a domain name, if the complainant makes out a prima facie case that the respondent lacks rights or legitimate interests in the domain name UDRP panels have found it appropriate to shift the burden of production to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See paragraph 2.1 of WIPO Overview 3.0 and, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

The Respondent’s mere registration of the disputed domain name also does not provide it with any rights or legitimate interests in the disputed domain name. See Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134 (“The mere registration, or earlier registration, does not establish rights or legitimate interests in the disputed domain name.”); National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118; N.C.P. Marketing Group, Inc. v. Entredomains, WIPO Case No. D2000-0387.

The Respondent is not commonly known by the disputed domain name that is confusingly similar to the Complainant’s trademark, and domain name <zambongroup.com>. The Respondent is not expressly, impliedly nor ostensibly authorized by the Complainant, to act as the Complainant’s agent. Nor does the Respondent have any other legitimate authority to use a disputed domain name, such as authorization by an agent of the Complainant, or by the Complainant’s ratification after registration of the disputed domain name.

The Panel recognizes that registration followed by passive use of a disputed domain name, could in certain circumstances constitute evidence of the Respondent’s rights or legitimate interests in the disputed domain name. However, there is no evidence in this case to so infer, such as the Respondent having a surname similar to the disputed domain name or operating a pre-existing business with a similar name.

There is also no reasonable evidence on the record demonstrating that the Respondent registered or used the disputed domain name in connection with a bona fide offering of goods or services, or for any other legitimate purpose or by any other legitimate means. Rather, the Respondent has used the disputed domain name to direct Internet users to a website that is confusingly similar to the Complainant’s trademark, and domain name <zambongroup.com>.

Further evidence of the Respondent’s lack of rights or interests in the disputed domain name is its passivity, in failing to demonstrate those rights and legitimate interests on repeated demand from the Complainant for it to cease and desist from using a domain name that was confusingly similar to the Complainant’s trademark, sent via the Registrar and registration service provider due to the redaction of the public WhoIs details of the disputed domain name. Specifically, the Respondent provided no explanation for adopting a confusingly similar name, after the Complainant’s representative had sent several cease and desist letters to the Respondent which remained unanswered.

The Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name, contrary to the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The misappropriation of a well-known trademark as a domain name by itself can constitute bad faith registration for the purposes of the Policy. See, inter alia, Aktiebolaget Electrolux v. Domain ID Shield Service Co., LTD / Dorian Cosentino, Planeta Servidor, WIPO Case No. D2010-1277. Section 3.1.4 of the WIPO Overview 3.0 has specifically stated, based on consistent prior UDRP decisions, “[…] that the mere registration of a domain name that is identical or confusingly similar [...] to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.”

The Respondent’s use of the disputed domain name is not a bona fide offering of goods or services; nor is its use legitimate, non-commercial, or fair. There is no evidence that “zambon” has a distinctive meaning, or that it is known internationally, inter alia, by other internationally recognized corporations, or that it is used commercially or non-commercially beyond the use of the Complainant.

Nor has the Respondent published any information or disclaimer to inform users that it has no affiliation with the Complainant. This provides further evidence that the Respondent’s use of the disputed domain name, including its misspelling of the word “group”, was intended to increase the likely confusion of users, and to persuade them that the Respondent was employed by or otherwise acting for the Complainant. See, supra, Syngenta Participations AG v. Jon Hanna, Aljt and Holding Le Duff “HLD” Maria Nobree, Maria S.A., WIPO Case No. D2019-2199.

The Respondent demonstrated its bad faith registration from the outset, by registering domain name comprising an unusual term, the Complainant’s trademark, and the term “grcup”, an apparent misspelling of the word “group”. Indeed, the term “zambon” as a proper noun is not associated with internationally known entities, or activities, other than through the Complainant’s use of its internationally used trademark. Furthermore, the Complainant operates domain names including its trademark and the term “group”, such as <zambongroup.com>, which the disputed domain name is likely to be confused.

The facts that surround this case also establish that Respondent’s purpose in registering the disputed domain name was to divert Internet users identifying what they reasonably believed to be the ZAMBON trademark and a domain name associated with the Complainant, to the Lycos website, without making any disclaimer or disclosing that it was not affiliated with the Complainant. As the Panel stated of the Complainant’s trademark in ZAMBON in Zambon S.p.A. v. Fernando Castillo, WIPO Case No. D2013-0862 “… [T]he Respondent registered the disputed domain name in order to create a likelihood of confusion with the Complainant’s trademarks and thus to profit from its reputation.” Here, it is clear the Respondent targeted the Complainant’s well-known trademark and registered the disputed domain name comprising the Complainant’s mark and misspelled term “grcup” in order to create a likelihood of confusion with the Complainant’s trademark, and domain name <zambongroup.com>, in bad faith to profit from association with the Complainant.

Evidence of such bad faith is readily identified in Section 3.1.4 of the WIPO Overview 3.0, based on prior UDRP decisions, identifying bad faith registration and use of a domain name for commercial gain by creating the likelihood of “actual confusion”, “seeking to cause confusion with the Respondent’s trademark”, “redirecting the domain name to a different respondent-owned website”, and doing so in the absence of “any conceivable good faith use”. Based on the evidence on record, the Respondent had no good faith reason for registering and using the disputed domain name other than to deliberately confuse users that it was authorized to act for, or indeed was, the Complainant.

The Respondent’s bad faith registration and use in the instant case is also affirmed by the fact that, in directing Internet users to Lycos, the Respondent was deliberately introducing users to Lycos’ sponsored links to various commercial web sites. Even assuming that the Respondent was not earning from the sponsored links published on the Lycos website, such use of the disputed domain name still constitutes bad faith use under paragraph 4(b) of the Policy. See section 3.5 of the WIPO Overview 3.0.

On multiple UDRP disputes, panels found bad faith in comparable circumstances, see Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666, Zinsser Co. Inc., Zinsser Brands, Co. v. Henry Tsung, WIPO Case No. D2006-0413, Volvo Trademark Holding AB v. Unasi, Inc, WIPO Case No. D2005-0556, Cox Radio, Inc. v. Domain Administrator, WIPO Case No. D2006-0387, Gianfranco Ferre’ S.p.A. v. Unasi Inc., WIPO Case No. D2005-0622, L’Oreal, Biotherm, Lancome Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623, Scania CV AB (Publ) v. Unaci, Inc., WIPO Case No. D2005-0585, Volvo Trademark Holding AB v. Michele Dinoia, WIPO Case No. D2004-0911, Claire’s Stores, Inc., Claire’s Boutiques, Inc., CBI Distributing Corp. v. La Porte Holdings, WIPO Case No.D2005-0589, Members Equity PTY Limited v. Unasi Management Inc., WIPO Case No. D2005-0383.

Moreover, Section 3.4 of the WIPO Overview 3.0 recognizes that, “Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution” such as “to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers”. While that fraudulent purpose has not been established in the current case, it is reasonably conceivable that the disputed domain name might be used to send fraudulent emails from addresses based on the disputed domain name itself (i.e. “@zambongrcup.com”). See further Tetra Laval Holdings & Finance S.A. v. Himali Hewage, WIPO Case No. D2020-0472 in which the Panel found that “the evidence on the record provided by the Complainant shows that the Respondent has set up MX-records for the disputed domain name, indicating that the disputed domain name may be being used for fraudulent email communications.” See also bioMérieux v. WhoisGuard Protected, WhoisGuard, Inc. / Darius Rccg, WIPO Case No. DCO2020-0033.

Accordingly, the Panel finds that the Respondent has attempted to exploit the reputation of the Complainant’s ZAMBON trademark for its own commercial gain, by diverting Internet users from the Complainant to the Lycos website. That holding is affirmed by the Respondent’s choice of a domain name incorporating the Complainant’s distinctive trademark and misspelled term “grcup”, and failure to put forward any claims or evidence of plausible good faith use.

The Panel therefore determines that the disputed domain name was registered and is being used in bad faith, contrary to the requirements 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 name <zambongrcup.com> be transferred to the Complainant.

Leon Trakman
Sole Panelist
Date: January 27, 2021