WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

A.C. Monza S.p.A. v. Marco Scarpis

Case No. D2020-3424

1. The Parties

The Complainant is A.C. Monza S.p.A., Italy, represented by Studio Legale Cantamessa, Italy.

The Respondent is Marco Scarpis, Italy, self-represented.

2. The Domain Name and Registrar

The disputed domain name <acmonza.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2020. On December 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 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 17, 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 21, 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 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2021. The Complainant submitted an unsolicited supplemental filing to the Center on December 22, 2020. The Response was filed with the Center on January 11, 2021. On January 12, 2021, the Center informed the Parties that it would proceed to panel appointment. On the same day, the Complainant submitted a second supplemental filing to the Center.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on January 20, 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.

On January 29, 2021, both the Respondent and the Complainant submitted supplemental filings to the Center. On February 2, 2021, the Respondent submitted an additional supplemental filing, to which the Complainant objected on the same day.

4. Factual Background

The Complainant in this administrative proceeding is Associazione Calcio Monza (in shortened form, AC Monza), an Italian football club based in Monza, Italy. The club was founded in 1912 as Monza Football Club. In September 2018, AC Monza was bought by Fininvest, the holding company of Silvio Berlusconi (a former Italian prime minister and owner of AC Milan for 31 years, 1986-2017). Since September 2018, AC Monza has gained major international visibility. AC Monza is the historical name of the club. The Complainant is known by its abbreviated company name, AC Monza.

The Complainant has documented that it has used the AC MONZA sign as a trademark since 1971.

The Complainant has registered, inter alia, the following trademark:

AC MONZA European Union Trademark No. 018033627, filed on March 8, 2019, and registered on July 3, 2019;

The disputed domain name was registered on September 6, 2018 and, before the start of the current proceeding (at least on December 10 and 11, 2020 as documented by the Complainant), it resolved to a parked page where sponsored links were displayed. After the beginning of this proceeding, the website linked to the disputed domain name was first changed to show a default page, and then changed again to redirect to the website “www.acmonza.it”, also held by the Respondent.

The Respondent’s current sign (“Insegna” in Italian), as documented by a certificate of incorporation attached to the Respondent’s response, is Automobile Club Monza. This sign appears to be in effect starting December 18, 2020.

5. Parties’ Contentions

A. Complainant

The Complainant claims that:

(a) the disputed domain name wholly incorporates and is confusingly similar to the Complainant’s trademark and company name;

(b) the Respondent lacks any rights or legitimate rights in the disputed domain name;

In this regard the Complainant has affirmed that the Respondent is not known by the name AC Monza, and is not authorized by the Complainant to use this name, and the Complainant has also affirmed that the Respondent is also not authorized to use the name Automobile Club Monza.

(c) the Respondent has registered and is using the disputed domain name in bad faith.

In support of this last claim the Complainant, amongst other arguments contained in the Complaint and in the amendment to the Complaint, points out that the disputed domain name was registered by the Respondent on the same day on which the Italian press confirmed the long-rumored news of the purchase of AC Monza by Fininvest, and notes that, as explained in section 3.8.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), in certain circumstances where the facts of the case establish that the Respondent’s intent in registering the domain name was to unfairly capitalize on the Complainant’s nascent (typically as-yet-unregistered) trademark rights, panels have been prepared to find that the Respondent has acted in bad faith. Such scenarios include registration of a domain name: (i) shortly before or after the announcement of a corporate merger; (ii) further to significant media attention (in connection with a product launch or event). In support of this thesis the Complainant quotes The Dow Chemical Company and E. I. du Pont de Nemours and Company v. Mario Rojas Serra, WIPO Case No. D2016-0595, and BML Group Limited v. Rikard Beach, Proxy My Whois AB, WIPO Case No. D2015-1897.

The Complainant, as further inference of the Respondent’s bad faith, also notes that the Respondent is the registrant of the domain name <acmonza.it>, and that although the Complainant has contacted the Respondent several times in order to finalize the transfer of the <acmonza.it> domain name, the Respondent has never informed the Complainant of the fact that he is also the owner of the disputed domain name.

B. Respondent

The Respondent in his response has affirmed his good faith and legitimacy in the acquisition and use of the disputed domain name, and that he is a car dealer, duly registered with the Italian Chamber of Commerce in 2004 and operating continuously in that sector since that date, and that his current trade name is “Automobile Club Monza”, as evidenced by a certificate of incorporation attached to his response. He then affirmed that he had acquired the disputed domain name in relation to the business of selling cars, with a plan to open a showroom in Monza, which was shelved due to the COVID-19 emergency, and therefore he is currently restricted to online car sales only.

6. Procedural factors

The Complainant submitted a first unsolicited supplemental filing to the Center on December 22, 2020, and a second one on January 12, 2021.

With the first supplemental filing, the Complainant produced a signed declaration released by the legal counsel for Automobile Club Milano, affirming that the Respondent had not been authorized by Automobile Club Milano to make use of the words “Automobile Club” in connection with the word “Monza”.¹

With the second supplemental filing, the Complainant pointed out a discrepancy (or rather a contradiction) between the Respondent’s words and the document it supplied to support them.

On January 29, 2021, the Respondent also submitted an unsolicited supplemental filing. On the same day, the Complainant submitted another supplemental filing.

According to paragraph 10 of the UDRP Rules, the panel has the authority to determine the admissibility, relevance, materiality, and weight of the evidence, and also to conduct the proceedings with due expedition. Previous panels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why the party was unable to provide the information contained therein in its complaint or response (e.g. owing to some “exceptional” circumstance).

As regards the Complainant’s first supplemental filing, having considered that:

- the Respondent’s identity was revealed by the Registrar on December 17, 2020, namely only after the Complaint was filed;

- the Complainant’s deadline to file an amendment was fixed for December 22, 2020;

- the amendment to the Complaint was filed on December 21, 2020;

- the signed declaration released by the legal counsel for Automobile Club Milano, produced by the Complainant, only reached the Complainant the day after;

- the commencement of the proceeding was notified to the Parties on December 22, 2020;

- the Complainant’s first supplemental filing was sent to the Center and to the Respondent a few hours later on the same day (December 22, 2021); and

- accepting this filing will not delay the proceeding and will not prejudice the Respondent’s defense,

the Panel has decided to accept the filing.

By contrast, the Panel does not see any “exceptional” circumstances that would give grounds for accepting the Complainant’s second and third supplemental filings and/or the Respondent’s supplemental filings. In fact, the information therein provided was already available when the amended Complaint and the Response were respectively filed, and in any case would not have altered the findings in this case. In addition, to accept these filings (especially the filings that arrived many days after the Panel’s appointment) would greatly delay the proceedings. Consequently, the Panel is not taking these filings into account.

6.1 Discussion and Findings

In order for the Complainant to obtain a transfer of the disputed domain name, paragraphs 4(a) of the Policy require that the Complainant must demonstrate to the Panel that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

A. Identical or Confusingly Similar

The Complainant has established rights in the AC MONZA trademark.

The disputed domain name is clearly identical to the Complainant’s AC MONZA trademark, save for the “.com” generic Top-Level Domain (“gTLD”).

The gTLD is generally disregarded under the test for confusing similarity for the purposes of the Policy, seeing as it is a technical requirement for the registration of a domain name. Therefore, the Panel finds that the disputed domain name <acmonza.com> is identical to the ACMONZA trademark in which the Complainant has rights.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent does not appear to be commonly known by the name “acmonza” or by any similar name. The Respondent has no connection to or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademarks. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services.

The disputed domain name was registered on September 9, 2018, and before the start of the current proceeding, it resolved to a parking page where sponsored links were displayed.

The Respondent’s explanation of the choice of “acmonza” for the disputed domain name relies solely on the assertion that it corresponds to “the lexicon of [the] Respondent’s company’s sign that will become the brand of the next opening store in Monza”.

It is not clear what the Respondent meant when saying that “acmonza” corresponds to “the lexicon of Automobile Club Monza”, but it can however be presumed that he sees it as a combination made of the name of the town of Monza together with the acronym for “Automobile Club” (AC).

The Panel however notes that from the certificate of incorporation provided by the Respondent himself, it appears that the Automobile Club Monza sign has been in effect only since December 18, 2020. This means it was adopted more than two years after the registration of the disputed domain name (i.e. September 9, 2018).

Consequently, the Respondent’s explanation above about the choice of “acmonza” for the disputed domain name does not appear to be credible.

It also appears that the above change of sign was requested by the Respondent the day after he was informed that the Complaint against him had been filed. In fact, the Respondent received a courtesy copy of the email sent to the Complainant by the Center containing the registrant’s details (i.e. details that were previously masked under the GDPR) and thus informing the Respondent of the Complaint on December 17, 2020.

The Panel further notes that the Respondent, being a car dealer since 2004, could not have been unaware of the fact that the “Automobile Club Monza” sign is a very well-known Italian trademark, and that therefore his potential use of the same as a domain name and/or as a brand (without proper authorization) could violate the trademark rights of its owner.

In this regard, the Panel wishes to note that while the Complainant provided a document issued by the legal counsel for Automobile Club Milano, affirming that the Respondent is not authorized to use the sign “Automobile Club Monza”, the Respondent did not reject this affirmation, nor did he assert or show that on the contrary he is authorized to use it.

Finally, the Respondent also did not deny that before the commencement of this proceeding the disputed domain name resolved to a parking page with sponsored links.

In fact, the Respondent provided only a printout of a website that allegedly corresponds to the disputed domain name. However, this printout does not show a date or the related URL and, on the bottom of the page, the sole reference displayed is to “ACMONZA.it Un’idea 7 Car & Service di Vittorio Veneto” (translation: “ACMONZA.it An idea of 7 Car & Service of Vittorio Veneto”).

The Respondent did not provide any evidence to demonstrate, as required by the Policy, that he used or made preparations to use the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services.

Therefore the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy, while the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:

i) circumstances indicating that the respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed 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 the holder’s documented out-of-pocket costs directly related to the domain name; or

ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or

iii) the holder has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

To be successful, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.

The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant’s contentions that the disputed domain name was registered and has been used in bad faith.

In addition to those already discussed under the previous section B, particularly relevant are the following facts:

The disputed domain name (as well as <acmonza.it>) was registered by the Respondent on the same day the Italian press confirmed the long-rumored news of the purchase of AC Monza by Fininvest.

As evidenced by the Complainant and well explained in the WIPO Overview 3.0,section 3.8.2, in certain circumstances where the facts of the case establish that the Respondent’s intent in registering the domain name was to unfairly capitalize on the Complainant’s nascent (typically as-yet-unregistered) trademark rights, panels have been prepared to find that the Respondent has acted in bad faith.

As previously noted, the Respondent’s explanation of its choice of “acmonza” for the disputed domain name does not appear to be either consistent or credible. In fact, the sign “Automobile Club Monza” has been in effect from December 18, 2020, only.

Therefore, the disputed domain name was not registered to correspond to the sign of the Respondent, which was apparently only adopted two years later.

In addition, the Respondent did not affirm or show in any way that he is authorized to use the “Automobile Club Monza” sign. The Respondent also did not deny the Complainant’s claims in this regard.

The Panel notes that in any case the disputed domain name does not correspond to “Automobile Club Monza”, but on the contrary it perfectly corresponds to the Complainant’s AC MONZA trademark.

Further inference of bad faith can be seen in the fact (asserted by the Complainant and not denied by the Respondent) that the Respondent, during negotiations with the Complainant regarding the domain name <acmonza.it>, remained silent on the fact that he is also the registrant of the disputed domain name.

The Respondent also affirmed that he acquired the disputed domain name in relation to the business of selling cars, with a plan to open a store in Monza, which was shelved due to the COVID-19 emergency. However, the Respondent has not provided any convincing evidence substantiating such claims.

This Panel, having regard to all the circumstances of this case, finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith.

Therefore, the Complainant has satisfied 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 <acmonza.com> be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist
Date: February 3, 2021

¹ Automobile Club Milano is the owner of the AUTOMOBILE CLUB MILANO COPPA MONZA trademark.