unox.com

Unox S.p.A v. Grandtotal Finances8 Ltd and/or Grandtotal Finances

Case No. D2004-0077

The Complainant is Unox S.p.A of Vigodarzere, Padova, Italy, represented by Dr. Modiano & Associati S.p.A., Italy.

The Respondent is Grandtotal Finances8 Ltd, Panama City, Panama and/or Grandtotal Finances, Riga, Latvia.

The disputed domain name, <unox.com>, is registered with iHoldings.com Inc d/b/a DotRegistrar.com.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 29, 2004. On January 30, 2004, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On January 30, 2004, iHoldings.com Inc. d/b/a DotRegistrar.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, 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 February 6, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 26, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 1, 2004. There has been no further communication as far as the panelist is aware from the Respondent.

The Center appointed Mr. Clive Duncan Thorne as the Sole Panelist in this matter on March 8, 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.

In its Complaint the Complainant submits that it is an Italian company with its principal place of business in Vigodarzere (Padova) Italy. The Complainant was established in 1990 since when it has grown quickly and has become known in the International Survey of Professional Oven Producers for the Bakery and Gastronomy fields. It submits that its success is mostly due to a simple policy which has as its main objective the production of a continuously up to date product with continually improving quality. This is apparently due to the constant research made into new construction methods.

The Complainant relies upon its trademark registrations worldwide in the mark UNOX. At Annex 4 to the Complaint is exhibited a representation of the mark UNOX registered as a European Community trademark number 240929. At Annex 5 to the Complaint is a long list of countries worldwide where the trademark UNOX is used. The Panel notes that the Complainant has a trademark UNOX in Latvia which is one of the countries in which the Respondent is based. The Complainant submits that it has continuously used the UNOX trademark around the world to identify its products and has also spent substantial time, energy and money in promoting its trademarks around the world.

The Complainant submits that it has invested in advertising and promoting its trademark to the extent of approximately 70.000,00 Euros per year and its turnover relating to goods sold under the trademark UNOX was 15.287.000,00 Euros for the fiscal year 2002 and approximately 16.000.000,00 Euro for the year 2003.

The Panel notes that the Complainant was established in 1990 and has apparently been trading since that date and that its European Community Trademark referred to above was filed on April 26, 1996. The domain name in dispute was registered on March 10, 1999.

In the absence of any evidence to the contrary from the Respondent the Panel accepts the Complainant’s evidence as to its trademark rights.

The Complainant contends in accordance with paragraph 4(a) of the Policy:

(i) the domain name in dispute is identical to a trademark in which the Complainant has rights; and

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

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

The Panel proceeds to deal with each contention in turn:

(i) The domain name is identical to a trademark in which the Complainant has rights.

The Complainant contends that the domain name <unox.com> can be considered identical both to the Complainant’s registered trademark UNOX and to the Complainant’s trading name Unox S.p.A. It further submits that there is evident confusion between the Complainant’s registered trademark and trade name with the domain name in dispute.

(ii) The Respondent has no rights or legitimate interests in respect of the domain name.

The Complainant contends:

(a) as far as it is known, no agreements, authorisations or licences have been granted to the Respondent to use the Complainant’s trademark;

(b) the use of the Complainant’s mark in the domain name makes it difficult to infer a legitimate use of the domain name by the Respondent. The Complainant relies upon a number of earlier WIPO authorities including the well known decision in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003;

(c) the Complainant has registered and used the trademark UNOX before the Respondent registered the domain name at issue;

(d) the Complainant started publishing its advertising for its website "www.unox.it" immediately after the website launch on January 27, 1997;

(e) the Respondent has no registered trademark identical or including the word "Unox."

(iii) The domain name was registered and is being used in bad faith.

The Complainant submits that the Respondent knew or should have known of the Complainant’s trademark when registering the disputed domain name. This is supported by the fact that the Respondent registered the domain name <unox.com> one year after the Complainant started publishing company information on the Internet.

It also relies upon a submission that UNOX is a fancy name without any meaning and that there is no possibility of coincidence in the Respondent choosing the domain name <unox.com>. It asserts that disputed domain name was registered on March 10, 1999, and has not been used in bona fide manner since then.

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

Under the terms of paragraph 4(a) of the Policy the Complainant is required to prove each of the following elements:

(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.

The Panel proceeds to deal with each of these elements in turn.

Having considered the Complainant’s evidence of trademark rights and its contention that the domain name <unox.com> could be considered identical to the Complainant’s registered trademark UNOX and to its trading name Unox S.p.A. and in the absence of any submissions by the Respondent, the Panel finds that the Complainant has established that the domain name in dispute is identical to a trademark in which the Complainant has rights.

The Complainant relies upon the lack of evidence of any agreements, authorisations or licences which had been granted to the Respondent to use its marks. There is, in the absence of submissions from the Respondent, no evidence to the contrary.

The Complainant also relies upon the authorities, including the Telstra decision referred to above, which is exhibited at Annex 7 to the Complaint. In all the circumstances, the Panel is prepared to accept the Complainant’s contentions with regard to the Telstra case. It was also an authority in which the Respondent did not file a response. In particular, the Panel regards the current submissions of the Respondent as similar to the view taken by the Panel in the Telstra case. This was set out at paragraph 7.2 of the Panel’s decision in Telstra case which stated as follows:

"The Respondent has not provided evidence of circumstances of the type specified at paragraph 4(c) of the Uniform Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name. In the light of (i) the fact that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks; and (ii) the fact that the word "Telstra" appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant, the Administrative Panel finds that the Respondent has no rights or legitimate interest in the domain name."

The Panel therefore finds for the Complainant in respect of this element.

In its Complaint the Complainant submits that the Respondent is not making any "good faith use of the disputed domain name. Moreover, there are reasons to believe that the Respondent knew or should have known the Complainant’s trademark when registering the disputed domain name."

It relies upon "the information and belief" that the Respondent’s only use of the disputed domain name has been to redirect Internet users to another on-line location i.e. to "www.digimoney.com." The Panel notes that at Annex 10 to the Complaint there is a printout dated January 12, 2004, of the web Money site at "www.digimoney.com." The Complainant does not in its Complaint adduce evidence as to the link between the Respondents and their use of the disputed domain name to redirect Internet users to the "www.digimoney.com" website. The Panel therefore does not rely upon this submission.

The Complainant also submits that the Respondent is de facto preventing the Complainant from using the domain name <unox.com> and states that: "it cannot be stated that the intention of the Respondent is to disrupt Complainant’s business but definitely it is confirmed that Complainant has been and is severely hindered and penalised by the use of this Domain Name which is misleading Internet users and creating a likelihood of confusion with Complainant’s trademark and domain name." No evidence is, however, adduced to support this submission.

Evidence is, however, adduced by the Complainant that the Respondent is engaged in a pattern of registration of a series of well known trademarks. In particular, it relies upon the fact that the Respondent has been respondent to other administrative procedures; Altavista Company v. Grand Total Finances Limited et al.,WIPO Case No. D2000-0848, and Bloomberg LP v. Grand Total Finances Limited, NAF Case No. 96760. It points out that in Altavista it was found that the Respondent had registered domain names in bad faith without any legitimate interest for names identical or confusingly similar to the Complainant’s trademark "Altavista." In Bloomberg there is evidence that the Respondent had also registered domain names corresponding to well known third party marks such as <swissair.com> and <volswagen.com>. Copies of WHOIS searches apparently made by the Complainant of these domain names are exhibited at Annex 18 and Annex 19 to the Complaint, dated November 12, 2003, from which it can be seen that Grand Total Finances8 Limited is the registrant of both domain names. The Panel is not in a position, in the absence of evidence from the Respondent, to ascertain whether there was any legitimate reason for these domain names to be registered by the Respondent. However, taking into account the findings in Altavista and in Bloomberg the Panel is prepared to accept that there is evidence of a pattern of conduct as envisaged by paragraph 4(b) of the Policy.

Paragraph 4(b)(ii) of the Policy states:

"For the purposes of paragraph 4(a)(iii) the following circumstances, in particular and 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: (ii) you have registered the domain name in order to prevent the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you engage in a pattern of such conduct."

In summary, the Complainant relies upon four criteria set out in the Telstra case as demonstrating bad faith within paragraph 4(a)(iii) of the Policy as follows:

"1) Actual or Constructive Knowledge

As previously shown, Complainant alleges thatRespondent knew or should have known of the Complainant’s trademark and services at the time it registered the domain name. Thus Complainant claims that Respondent had actual or constructive knowledge of Complainant’s mark.

2) Use of Entire Mark Without Plausible Good Faith Use

The use of Complainant’s entire mark in the Domain Name makes it difficult to infer a legitimate use of the Domain Name by Respondent. No plausible explanation exists as to why Respondent selected the name UNOX as a Domain Name other than to trade on the goodwill of Complainant.

4) [sic] Passive Holding of the domain name

Respondent registered the domain name on March 10, 1999 and upon information and belief, it has never used it since then. Holding a domain name for such a long period (almost 5 years) without making any use of it, as affirmed in a number of WIPO decisions, constitutes passive holding and it is inference of bad faith use and registration.

5) [sic] Pattern of conduct

Respondent, as above said, has registered hundreds of domain names identical or similar to third parties’ trademarks and has been recognised by previous Panels as an example of cyber-squatter.

In view of all of the above, Complainant claims that the evidence establishes sufficient facts to support a finding that the Domain Name was registered and is used in bad faith pursuant to the Policy paragraph 4(a)(iii)." (Complaint, p. 10-11).

Taking all of these criteria into account and also that the Respondent has chosen not to respond to the Complaint, the Panel finds that the Complainant has succeeded in showing evidence of registration and use in bad faith.

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