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Ferrari S.p.A. v. ASDAQ.com [2004] GENDND 699 (25 June 2004)

1. The Parties

The Complainant is Ferrari S.p.A., Maranello, Italy, represented by Studio Legale Jacobacci e Associati, Italy.

The Respondent is ASDAQ.com, Seattle, Washington, United States of America.

2. The Domain Name and Registrar

The disputed domain name <ferrari-usa.com> is registered with BulkRegister.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2004. On May 11, 2004, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On May 14, 2004, BulkRegister.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 Respondent of the Complaint, and the proceedings commenced on May 18, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 8, 2004.

The Center appointed William A. Van Caenegem as the Sole Panelist in this matter on June 15, 2004. 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 notification of the Complaint by the Center to the Respondent occurred by way of email and by post. Although the Complaint forwarded by post was returned to sender, the properties page for the emailed notification and complaint establishes that they were transferred to the email contact supplied by the Respondent upon registration of the domain name. Although no reply was received by the Center, the Panel is satisfied that the Center has complied with its notification obligations.

4. Factual Background

The Complainant is the owner of numerous registered trademarks in a large number of countries, consisting of or incorporating the word ‘Ferrari’. The Complainant submits a tabulated list of relevant trademark registrations in the various countries running to 103 pages. The Complainant also submits copies of certificates of registration or extracts from the trademark register from Italy and, significantly in the present case, the United States of America. The earliest proof of registration in Italy provided by the Complainant dates from 1966, and in the USA from 1979.

The Complainant manufactures well-known motorcars, and also participates successfully in the high profile televised sport of Formula 1 car racing under its registered trademark FERRARI. It also licenses third parties to use its trademarks on various products.

The Respondent has defaulted. No communication has been received from the Respondent or its administrative contact. All that is known about the Respondent’s use of the domain name <ferrari-usa.com> is what is asserted by the Complainant: that the domain name resolves to a website with an unrelated URL, offering unrelated products (unsecured loans) under an unrelated name (Americaoneunsecured.com); and that the domain name <ferrari-usa.com> is offered for sale on the “www.afternic.com” website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the domain name <ferrari-usa.com> is confusingly similar to the registered trademark FERRARI, and creates a misleading impression that the associated website is that of Ferrari’s US subsidiary.

The Complainant further contends that the domain name at issue was registered in bad faith since the Respondent could not have failed to have been aware of the FERRARI mark prior to registration of the domain name, given the mark’s widespread use and renown. The Respondent has no legitimate rights or interests in the mark, and no authorization from the trademark owner to use the mark in any way. Nor is the Respondent known as, or does it use the mark ‘Ferrari’ in the normal course of its business.

The Complainant further contends that the Respondent has used the domain name at issue in bad faith, because the domain name resolves to a website offering services unrelated to the name, and because it is offered for sale at afternic.com. The Respondent is thus seeking to turn the fame of the registered trademark to its own advantage, in the absence of any right to do so.

The remedy sought is the transfer of the domain name at issue to the Complainant.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The domain name is not identical to the registered trademark ‘FERRARI.’

However, the Panel finds that the domain name <ferrari-usa.com> is confusingly similar to the Complainant’s registered trademark. The registered trademark is wholly incorporated into the domain name, and the addition of the suffix ‘-usa’ is not sufficient to distinguish it. The domain name suggests a connection with a US subsidiary or distributor of Ferrari, and thus with the Complainant itself, which does not in fact exist. It is thus apt to confuse consumers (see e.g. Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437, <ikea-korea.com>).

B. Rights or Legitimate Interests

The Respondent has defaulted and thus provided no evidence of any legitimate right or interest in the domain name. In particular, there is no evidence of any of the circumstances referred to in paragraph 4(c) of the Policy.

Nothing in the name of the Respondent suggests any legitimate connection with the term ‘Ferrari’.

The Complainant has not authorized the Respondent’s use of the registered trademark in any way.

The Panel finds that the Respondent has no rights or legitimate interests in the domain name at issue.

C. Registered and Used in Bad Faith

Under the Rules the Respondent is required to submit a response within a certain term (see Paragraph 5(a)). The Respondent has not complied with this requirement and hence Paragraph 14(b) of the Rules applies. One inference commonly drawn from a failure to respond is that the factual assertions contained in the complaint are not contested. The Panel therefore accepts as true the factual assertions, relevant to a determination of bad faith, made in the complaint.

As to registration in bad faith, it is a notorious fact, supported by the evidence of numerous trademark registrations, that the trademark FERRARI is, and has been for a considerable period, a very well-known mark in many jurisdictions, because of its widespread use on cars, in car racing and on or in relation to other goods. The inference is inescapable that the Respondent knew of the trademark and its fame when registering the domain name incorporating the mark, and that the Respondent intended to benefit from this fame while having no legitimate claim or interest in the mark, and no apparent intention to use it for a bona fide purpose.

In accordance with Paragraph 4(b)(i) of the Policy, circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling it, amount to evidence of bad faith. The price set on the domain name at “www.afternic.com” obviously is valuable consideration in excess of out-of-pocket costs directly related to the domain name. Here the only evidence of other intended use is of use that itself is in bad faith in accordance with Paragraph 4(b)(iv) (see further below). It would be perverse to take such use as depriving an evident intention to sell of its character of primary purpose of the registration. Therefore in the absence of evidence of any other legitimate use or intended use, the Panel finds that the domain name was acquired primarily for the purpose of selling it. In fact, in accordance with the Policy, such evidence of intention to sell the domain name amounts to evidence not only of registration, but also of use in bad faith.

Furthermore, the domain name at issue resolves to a website offering totally unconnected services (unsecured loans). In accordance with Paragraph 4(b)(iv) of the Policy, the Respondent has therefore intentionally created confusion amongst consumers, so as to direct them to an on-line location, no doubt with an eye to commercial gain of some description. This also amounts to use in bad faith.

The Panel therefore finds that the domain name was registered and used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <ferrari-usa.com> be transferred to the Complainant.

William A. Van Caenegem
Sole Panelist

Dated: June 25, 2004