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Moby S.p.A. v. Mare In S.r.l. [2005] GENDND 518 (6 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Moby S.p.A. v. Mare In S.r.l.

Case No. D2005-0331

1. The Parties

The Complainant is Moby S.p.A., Milan, Italy, represented by Dewey Ballantine, LLP, Milan, Italy.

The Respondent is Mare In S.r.l., Bologna, Italy.

2. The Domain Name and Registrar

The disputed domain name <mobylines.biz> is registered with Melbourne IT, trading as Internet Names Worldwide.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2005. On March 31, 2005, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On April 1, 2005, Melbourne IT trading as Internet Names Worldwide 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, 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 15, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2005.

The Center appointed Luca Barbero as the Sole Panelist in this matter on May 19, 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

The Complainant is the owner of Italian trademark for MOBYLINES (device) No. NA2001C001015, November 30, 2001, in classes 12, 16, 25, 28, 35, 39, 41 and for MOBY (device) No. NA2003C000962, October 9, 2003, in classes 12, 16, 25, 28, 35, 39, 41.

The Respondent registered the domain name <mobylines.biz> with Melbourne IT trading as Internet Names Worldwide on March 19, 2003.

5. Parties’ Contentions

A. Complainant

The Complainant is one of the major Italian companies operating in the cruise sector of the tourism industry and its core business focuses on cruise services serving Sardinia, Elba and Corsica.

The Complainant asserts that both the trademarks (MOBYLINES and MOBY) and the company name (“Moby”) are well-known within Italy and abroad as a result of an advertising campaign thoroughly conducted through all principle means of mass communication (mainly, newspaper advertising and brochures distribution).

The Complainant is also the owner of the domain names <mobylines.it> registered on April 7, 1998, and <moby.it> registered on October 8, 1999.

The Complainant highlights that the Respondent, with registered office in Bologna, Italy, is a Italian company operating in the same business sector as the Complainant; the Respondent actively operates in the tourism sector and its core business focuses on the selling of both ferry boat tickets and flats in famous seaside areas and, therefore, the Complainant asserts that Respondent was certainly aware of Complainant’s existence.

The Complainant indicates that the Respondent was automatically redirecting Internet users accessing the domain name <mobylines.biz> to the website “www.marein.it” through which the Respondent offered and advertised a number of services for tourists. The redirection was deleted after the Respondent received the first cease and desist letter on December 13, 2004.

The Complainant contends that at the time of registration of the domain name, the Respondent was perfectly aware that the domain name was identical to the Complainant’s trademark and that it could obviously be confused with the Complainant’s company name.

According to the Complainant, the primary aim of the Respondent was to disrupt the Complainant’s business, and as a consequence of the resulting confusion, to distract Complainant’s potential customers and take advantage of the notoriety of the name “Moby” on the market since the Complainant is the registered owner of the trademarks MOBYLINES and MOBY.

With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent does not own any registered trademark which could authorize it to make use of the contested domain name. Nor is there evidence that the Respondent used the domain name to supply or directly identify its services, or use it for a non-commercial purpose.

According to the Complainant, the Respondent has registered and used the domain name in bad faith with the sole intention of creating confusion with the Complainant given that the Complainant’s company name “Moby” and its trademarks MOBYLINES and MOBY are well known both in Italy and abroad.

The Complainant contends that it is therefore obvious that the Respondent was aware of Complainant’s existence in light of the facts that the Respondent has its registered office in Italy, where the Complainant has its headquarters and the Respondent is selling the Complainant’s tickets to Corsica, Sardegna and Isle of Elba.

The Complainant underlines that the Respondent is preventing the Complainant from reflecting its trademark in the domain name <mobylines.biz> and has also registered <mobylines.be> and <mobylines.at> in the country code top level in Belgium and Austria, concluding that the Respondent registered the domain names with the sole intention of causing damage to the Complainant’s business reputation and commercial credibility.

With regard to the use of the domain name in bad faith, the Complainant makes reference to the existence of the domain name’s prior web linking activity whereby web users were automatically redirected to the Respondent’s own website and to the present passive holding of the domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default. Therefore, the Panel shall decide this proceeding on the basis of Complainant’s submissions, drawing such inferences from the Respondent’s default as are considered appropriate according to paragraph 14(b) of the Rules.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that 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

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

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

A. Identical or Confusingly Similar

The Complainant has provided evidence of trademark rights in MOBYLINES and MOBY through use and Italian trademark applications for MOBYLINES (device) No. NA2001C001015, November 30, 2001, in classes 12, 16, 25, 28, 35, 39, 41 and for MOBY (device) No. NA2003C000962, October 9, 2003, in classes 12, 16, 25, 28, 35, 39, 41.

The Panel finds that the domain name is identical to MOBYLINES since the suffix “.biz” is merely instrumental to the use on the Internet.

In view of the above, the Panel finds that the Complainant has proven the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(a) that Respondent has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute; or

(b) that Respondent is commonly known by the domain name, even if it has not acquired any trademark rights; or

(c) that Respondent intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

By not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the domain name.

There is no relation, disclosed to the Panel, between the Respondent and the Complainant and Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use Complainant’s trademark and name.

The Panel, therefore, finds that Respondent has no rights or legitimate interests in respect of the domain name, according to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes 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 domain name in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the 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 holder has registered the 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 holder has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’ 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 holder’s website or location or of a product or service on the holder’s website or location.

In view of the facts that the Respondent has its registered office in Italy where the Complainant is based; that the trademark MOBYLINES is well known in Italy; that the Respondent is active in the field of organizing holiday packages in Sardinia - even apparently selling the Complainant’s tickets to Corsica, Sardegna and Isle of Elba - the Panel finds that the Respondent was certainly aware of the existence of the trademark MOBYLINES at the time of the registration of <mobylines.biz>.

As to use in bad faith, the Panel finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent via the prior redirection of the domain name <mobylines.biz> onto the website “www.marein.it” has attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation and endorsement of Respondent’s services.

Furthermore, since the Complainant’s trademark is well-known in Italy, the Panel shares the view of a number of UDRP panel findings of “opportunistic bad faith” in the registration of renown or even somewhat less famous trademarks, e.g. Veuve Cliquot Ponsardin v. The Polygenix Group Ltd., WIPO Case No. D2000-0163, Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137, Prada S.A. v. Mark O’Flynn, WIPO Case No. D2001-0368, Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050, The Nasdaq Stock Market, Inc. v. Act One Internet Solutions WIPO Case No. D2003-0103.

The Panel also finds paragraph 4(b)(ii) of the Policy applicable in the instant case since the Respondent is preventing the rightful owner of a trademark from reflecting the mark in one of the corresponding domain names. The Respondent is to be considered engaged in a pattern of such conduct as it has registered the identical domain names <mobylines.at> and <mobylines.be> (the latter currently redirected to the Respondent’s website).

With reference to the issue of the present non use of the domain name by the Respondent, the Panel finds that the supervening passive holding after a cease and desist letter can be considered an additional circumstance evidencing bad faith. As established in a number of prior UDRP cases, the concept of “bad faith use” in paragraph 4(b) of the Policy includes not only positive action but also passive holding (see i.a. the landmark case Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

In view of the above, the Panel finds that the Respondent has registered and used the domain name in bad faith, according to paragraph 4(a)(iii) of the Policy.

7. Decision

In light of the foregoing, the Panel decides that the registration of the domain name <mobylines.biz > be transferred to the Complainant.

Luca Barbero
Sole Panelist

Dated: June 6, 2005