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BolognaFiere S.p.A. v. LaPorte Holdings, Inc. [2005] GENDND 1119 (6 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BolognaFiere S.p.A. v. LaPorte Holdings, Inc.

Case No. D2005-0391

1. The Parties

The Complainant is BolognaFiere S.p.A., Bologna, Italy, represented by Dr. Modiano & Associati S.p.A., Italy.

The Respondent is LaPorte Holdings, Inc., Los Angeles, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <cosmoprofcosmetica.com> is registered with NameKing.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2005. On April 14, 2005, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain name(s) at issue. On April 19, 2005, NameKing.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the Respondent and providing the contact details for the administrative, billing, 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 April 20, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2005.

The Center appointed Neil J. Wilkof as the sole panelist in this matter on May 23, 2005. 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 states in its Complaint that it is the owner of a registration for the mark COSMOPROF “… in Italy, the first filing dates back to October 24, 1985, and in the United States of America the first filing dates back to March 6, 1995 (see Annex 5). Further, BolognaFiere is the owner of national, international and community registered trademarks in the name “COSMOPROF.” Community and International trade mark detailed information, enclosed as example, is provided in Annex 6.”

Annex 5 includes what appears to be a registration for the mark COSMOPROF in Italy. The annexed document is, however, in the Italian language and no translation is provided to assist the Panel is reviewing the document.

Also included in Annex 5 is a copy of what purports to be the results of a search conducted on the TARR web server of the U.S.P.T.O., dated September 10, 2004. While the mark and services are set out in the search results, the Panel notes that the name of the owner “BolognaFiere (Fiere Internazionale di Bologna Ente Autonima)” differs slightly from the name of the Complainant, being “BolognaFiere S.p.A.”. No explanation is given for the apparent discrepancy.

Annex 6 contains a copy of what purports to be a CTM registration for the mark COSMOPROF, dated January 12, 2001. The certificate contains a list of countries for which seniority is claimed with respect to the CTM registration. Here, as well, the name of the Respondent,”Fiere Internazionali di Bologna S.p.A.”, differs somewhat from the name of the Complainant.

Annex 6 also contains what appears to be a copy of an International Registration, taken from an extract that appears to have the date of July 2004. The extract indicates that the expiration date is “2004.09.14” and no indication is given to the current status of this registration. As well, the name of the Respondent is “Fiere Internazionali di Bologna S.p.A.-BolognaFiere o in forma abbreviate BolognaFiere S.p.A.”.

5. Parties’ Contentions

A. Complainant

The Complainant, BolognaFiere S.p.A., is one of Europe’s leading exhibition centers and has provided such services under the COSMOPROF mark since 1967. In a recent year, through the members of the BolognaFiere group, the Complainant hosted 30 specialist exhibitions, including 22 “world leading events”, as well as over 500 conferences, attended by over 23,000 exhibitors and 1,400,000 visitors. Inter alia, the Complainant uses the mark to promote and publicize international beauty trade fairs, at which the cosmetic sector is a significant part.

The activities of the Complainant under the aegis of the BolognaFiere group take place in several places in Italy, most notably Bologna, Modena and Ferrera, plus in various locations overseas. The Complainant also operates a group company, BolognaFiere Web, which handles Internet projects “and serves as a one-stop shop for professionals and third parties.”

By virtue of these activities, the mark COSPMOPROF has become well known both in Italy and elsewhere. Use of the mark by the Complainant continues to develop goodwill and repute therein and the mark thereby has become a valuable asset of the Complainant. As indicated above, the Complainant has a number of registrations for the mark COSMOPROF. It has also registered a number of domain names that consist in whole or in part of the word “Cosmoprof.”

The domain name <cosmoprofcosmetica.com> (hereinafter: the Domain Name) was registered in the name of LaPorte Holdings Inc. on September 10, 2004. On September 11, 2004, one day after the registration of the domain name, the Complainant commenced activities for the Cosmoprof Cosmetica International Beauty Trade Fair. This fair had been promoted under this name on various websites held or authorized by the Complainant, including on the site “www.cosmoprofcosmetica.com.br”, since December 2003, well before the date on which the domain name at issue was registered.

Typing the address “www.cosmoprofcosmetica.com”, one resolves to a page that principally shows sponsored links related to the cosmetic field unconnected to the events and activities of the Complainant. The Respondent has not engaged in any activities in the field of cosmetics, nor has it ever made use of either the “COSMOPROF” or “COSMOPROFCOSMETICA” marks, other than in the context of the registration of the Domain Name.

Moreover, the Respondent has been involved in approximately 40 domain name dispute proceedings regarding approximately 60 domain names. In each of these proceedings, the Respondent has been ordered to transfer to domain name to the respective complainants.

B. Respondent

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

6. Discussion and Findings

In view of the Respondent’s failure to submit a response, the Panel shall decide this proceeding on the basis of the Complainant’s undisputed representations and shall draw inferences that it considers appropriate.

Paragraph 4 (a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

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

A. Identical or Confusingly Similar

The Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate. Accordingly, as set out in section 4 above and subject to the reservations expressed therein, the Panel finds that the Complainant has rights in the name and mark COSMOPROF.

The Domain Name, <cosmoprofcosmetica.com>, while not identical to the Complainant’s name and mark COSMOPROF, differing by the addition of the word “cosmetica,” is still confusingly similar within the meaning of paragraph 4(a)(1) of the Policy. As well, the Panel takes notice that the word “cosmetica” has the meaning of “cosmetics” in at least the Spanish and Portuguese languages. Taken as a whole therefore, the word can be viewed as generic or highly descriptive with respect to the cosmetics industry.

It has found that when a generic or highly descriptive term is added to a mark or name in which the Complainant has rights, the addition of the generic or highly descriptive term does not serve to distinguish between the mark of the Complainant and the domain name of the Respondent. In such circumstances, if the domain name wholly incorporates the Complainant’s mark, there is confusing similarity.

In Dr. Ing. H.c. F. Porsche AG v. Vasily Terkin, WIPO Case No. D2003-0888, the Panel noted as follows: “The fact that the word “autoparts” is added to Complainant’s trademark does not eliminate the identity, or at least the similarity, between Complainant’s trademark and the disputed domain name, as “autoparts” is a descriptive component of the disputed domain name. In numerous cases, it has been held that a domain name that wholly incorporates a Complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the UDRP.”

Similar results have been reached in at least three previous panel decisions, which appear to have involved the current Respondent as the registrant of the domain name at issue. See, UBS AG v. LaPorte Holdings, Inc., NAF Case 397662 (“Respondent’s <usbonlineservices.com> domain name is confusingly similar to Complainant’s UBS mark”); Eastman Kodak Company v. LaPorte Holdings, Inc., NAF Case 396458 (“Respondent’s <kodakpicturecenter.com> domain name is confusingly similar to Complainant’s KODAK mark because the domain name incorporates Complainant’s mark and only deviates with the addition of the descriptive word “picture” which describes Complainant’s business, and the generic word “center.”) and Tyson Foods, Inc. v. LaPorte Holdings, Inc., NAF Case 402793 (“Respondent’s <tysonfoodinc.com> domain name is confusingly similar to Complainant’s TYSON mark. Respondent’s domain name incorporates Complainant’s mark in its entirety and adds the terms “food” and “inc”, which describe Complainant’s food production business.”)

Indeed, the addition of the generic word may actually serve to strengthen the likelihood of confusion. Thus, in the matter of Dr. Ing. H.c. F. Porsche AG v. Vasily Terkin, supra, the panel stated that “…such descriptive component added to Complainant’s trademark even adds to the confusion by leading users to believe that Complainant operates the web site associated to the disputed domain name and therefore sells certified Porsche car parts through this web site….”

To a similar effect, See Estee Lauder Cosmetics Ltd.; Make-up Art Cosmetics Inc. v. Telmex Management Services, WIPO Case No. D2001-1428 (“The additional element “osmetics” does not distinguish the Domain Name from the Complainants’ trade mark, in fact it makes confusion more likely as this element is likely to be read as the generic term “cosmetics”, the field in which the Complainants are well-known”).

Even if it can be argued that the word “cosmetica” is not identical to “cosmetics”, the slight difference between the two words cannot help the Respondent. This result has been made clear in a number of decisions, in which a slight difference between the alleged descriptive/generic term and the term used in the domain name has not been found to be significant.

See, e.g., Wells Fargo & Company v. LaPorte co Holdings, Inc., NAF Case 399499 (The fact that the Respondent misspelled the word “financial” in registering the domain name <wellsfargobankfinacialbank.com> does “…not disguise the fact that Complainant’s WELLS FARGO mark is the dominant feature of the disputed domain names and they are not enough to overcome a finding of confusing similarity ….” See also Estee Lauder Cosmetics Ltd.; Make-up Art Cosmetics Inc. v. Telmex Management Services, supra, regarding the use of “osmetics” rather than “cosmetics” in the domain name at issue.

For all of the foregoing reasons, the Panel rules that the Domain Name is confusingly similar to the name and mark “COSMOPROF”, in which the Complainant has legitimate rights.

B. Rights or Legitimate Interests

Here, as well, it is noted that the Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate.

There is no evidence that the Respondent has any registered (or unregistered) marks that are identical or similar to the COSMOPROF mark. Nor has the Complainant entered into any agreement, authorization or license with the Respondent for use of the COSMOPROF mark. The only “use” by the Respondent of the COSMOPROF mark is in connection with the Domain Name.

The Panel notes three suggested grounds under Paragraph 4(c) of the Policy whereby a Respondent may support a claim that it has a legitimate right and interest in the Domain Name. The Respondent has not filed any response to support a claim under any of the grounds, and the allegations of the Complainant refute them. Having regard to the Panel’s reservation about treating this and like lists that appear in the Policy as being exhaustive (see discussion infra under section C), the Panel is of the view that the Registrant can find no refuge under the canopy of this Paragraph of the Policy.

Based on the foregoing, the Panel rules that the Respondent has no rights or legitimate interests in the mark COSMOPROF.

C. Registered and Used in Bad Faith

Once again, it is noted that the Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate.

The Respondent’s use of the mark COSMOPROF in its entirety as the main portion of the Domain Name, wherein the Respondent has no right or legitimate interest in such mark, raises a presumption that the Respondent has acted in bad faith. There appears to be no other plausible explanation for the Respondent’s choice of domain name, except to take advantage of the reputation and goodwill of the Complainant in this name and mark COSMOPROF.

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that point to bad faith conduct by the Respondent, as follows:

(1) The circumstances indicate that the Respondent has registered the domain name primarily to sell or otherwise transfer it to the Respondent for valuable consideration to the Complainant, who is owner of the trademark, or to a competitor of the Complainant.

(2) The domain name has been registered to prevent the Complainant from reflecting its mark in a corresponding domain name.

(3) The domain name has been registered primarily for the purpose of disrupting the business of a competitor.

(4) The use of the domain name indicates an intention to attract Internet users to the Respondent’s website, for commercial gain, by creating a likelihood of confusion.

The Complainant has raised a number of arguments to support the claim that the Respondent has acted in bad faith. To that end, he has referred to various previous decisions where previous panelists have found bad faith in the conduct of the Respondent with respect to its registration of other domain names (unrelated to the mark of the Complainant) or actions in which the Complainant has sought to enforce its trademark rights against third parties other than the Respondent. As well, the Complainant has pointed to the pattern of conduct by the Respondent in numerous other proceedings in which it was ordered to transfer its registration, and to the alleged actual knowledge of the Registrant of the Complainant’s rights in the mark COSMOPROF.

The Panel senses some unease in pigeonholing the conduct of the Respondent precisely into one of the four exemplars set out in the Policy. Neither sub-Paragraph 4(b)(i) nor 4(b)(ii) seems apposite under the circumstances. Sub-Paragraph 4(b)(iii) comes closer to the target, but the reference to “disruption of the business of a competitor” still gives the Panel some reason for pause, despite the fact that previous panels have relied upon this sub-Paragraph in arguably similar circumstances. The circumstances that appear most on point are those that are described in sub-Paragraph 4(b)(iv).

Ultimately, however, as the introduction to Paragraph 4(b) itself makes clear, the list set out therein is only by way of example. Bad faith can be evidenced in a myriad of ways, and it is an ultimately futile task to attempt to catalogue all such indicia within the context of rules, guidelines and the like. Under the circumstances, there seems to be little doubt that the Respondent intended to exploit the rights of the Complainant in the mark and name COSMOPROF, and that the Respondent had no other goal in mind when it registered the Domain Name. Such conduct clearly constitutes bad faith within the meaning of the Policy.

Accordingly, the Panel is of the view that the Respondent has registered and used the Domain Name 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 <cosmoprofcosmetica.com> be transferred to the Complainant.

Neil J. Wilkof
Sole Panelist

Dated: June 6, 2005