WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NAVA Milano S.p.A. v. Image Maker Appearance Systems, Inc.

Case No. D2010-0489

1. The Parties

The Complainant is NAVA Milano S.p.A. of Milan, Italy represented by Dr. Modiano & Associati S.p.A. of Italy.

The Respondent is Image Maker Appearance Systems, Inc. of Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name <nava.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2010. On March 31, 2010, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the disputed domain name. On March 31, 2010, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and contact information for the disputed domain name differed to the contact information in the Complaint. The Center sent an email communication to the Complainant on April 8, 2010 providing correct contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 9, 2010. The Center verified that the Complaint together with the amended 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 2, 2010. The Response was filed with the Center on May 1, 2010.

The Center appointed John Swinson as the sole panelist in this matter on May 18, 2010. 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 a company based in Milan, Italy. It is involved in the business of paper products, home office furniture accessories and leather. These products are sold in more than 20 countries.

The Complainant owns registered trademarks in the United States of America and Italy, including:

- United States of America trademark registration number 1644998 for NAVA, registered from May 21, 1991; and

- Italy trademark registration number 0001039593 for NAVA (figuratur), registered from February 19, 2007.

The Respondent is a company based in Tampa, Florida, United States.

According to the WhoIs search, the disputed domain name appears to have been registered on November 1, 2005. The website at the disputed domain name is not operational.

5. Parties' Contentions

A. Complainant

The Complainant makes the following contentions:

The disputed domain name is identical to the Respondent's registered trademark NAVA.

The disputed domain name is confusingly similar to the Complainant's company name and domain names <va.eu>, <navadesign.com> and <navamilano.eu>.

No agreements, authorizations or licenses have been granted to the Respondent to use the Complainant's trademark and company name.

There is no evidence that the Respondent has trademarks or company activities registered under the NAVA brand.

Since registration of the disputed domain name, the Respondent has never made any bona fide use of the disputed domain name.

The Respondent has never been known under the name “Nava”.

The Respondent has not replied to the warning letter sent by the Complainant's representatives.

The Respondent's email addresses all resulted as not functioning.

The Respondent shows a lack of interest and is not a legitimate use of the disputed domain name.

The Respondent has no rights or legitimate interests in respect of the disputed domain name.

There are reasons to believe that the Respondent registered and uses the disputed domain name in bad faith supported by:

- the NAVA trademarks are registered trademarks;

- the Complainant started to publish company information via the Internet through its official websites “www.navadesign.com” and “www.nava.eu” in the year 2001;

the Complainant has registered several domain names corresponding to or comprising the trademark NAVA;

- given that more than four years have elapsed since the disputed domain name was registered the fact that only a blank page is displayed, shows that the disputed domain name is held passively;

- the Respondent never replied to the warning letter (and following reminders) from the Complainant;

- the Complainant's email addresses were not functioning; and

- the Complainant has never received authorization from the Respondent to sell products or services under the trademark NAVA in any form.

The Respondent had actual or at least constructive knowledge of the Complainant and its trademark when proceeding to register the disputed domain name which shows the Respondent's bad faith in registering the disputed domain name.

The Complainant is being hindered and penalized by the use of the disputed domain name by the Respondent which is misleading Internet users and creating a likelihood of confusion with the Complainant's trademarks and domain names.

There is no plausible explanation as to why the Respondent selected the disputed domain name other than to trade on the goodwill of the Complainant's trademark NAVA.

The passive holding of the disputed domain name infers bad faith use and registration by the Respondent.

B. Respondent

The Respondent makes the following contentions:

The disputed domain name has been owned by the Respondent since November 1, 2005.

The National Automobile Vendors Association will be launching a web based training and supply association for automotive dealerships in the United States of America (USA) for networking purposes.

The Respondent and the Complainant cannot be confused in the market place.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following:

(i) that the disputed domain name 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 the disputed domain name; and

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

Paragraph 4(a) of the Policy states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied.

A. Identical or Confusingly Similar

The Complainant has shown that it has registered trademarks in the United States of America and Italy for NAVA. These trademark registrations cover paper, cardboard, prints, bookbinding materials, stationery, office requisites, leather, travelling bags and related items

Ignoring the “.com” suffix, the Complainant's trademark is identical to the disputed domain name.

The first element has been met.

B. Rights or Legitimate Interests

To succeed on this element, a Complainant must make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. If such a prima facie case is established, then the Respondent then has the burden of demonstrating rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy lists three ways in which a Respondent may demonstrate rights or legitimate interests in the disputed domain name:

“(i) before any notice to you of the dispute, your use of, or demonstrable 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; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Complainant has submitted sufficient evidence to establish that the Respondent is not known as “Nava”, has acquired no trademark or other rights in that name, and has not been licensed or authorized by the Complainant to use its NAVA mark or to register the disputed domain name.

According to the website “magemaker-usa.com”, the Respondent provides reconditioning services to automotive dealerships.

The Respondent contended that the National Automobile Vendors Association will be launching a web based training and supply association for automotive dealerships in the USA for networking purposes. However, the Respondent has not provided any supporting evidence for this contention.

The Respondent provided no evidence that it is known as “nava” or the National Automobile Vendors Association (or has any connection to or is a member of any such association). The Panelist is aware of the National Automobile Dealers Association (NADA) but is not aware of any association called NAVA or called the National Automobile Vendors Association.

The Respondent is not currently using the disputed domain name for any purpose. Therefore, the Respondent would be unable to prove rights or legitimate interests on the basis of making a legitimate noncommercial or fair use of the disputed domain name.

The second element has been met.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities that the disputed domain name was registered in bad faith or that it has subsequently been used in bad faith.

Paragraph 4(b) of the Policy lists four, non-inclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a disputed domain name in bad faith.

There is no evidence to suggest that the Respondent's conduct falls within any of the four circumstances specifically listed in paragraph 4(b) of the Policy. However, this list is without limitation and there are many other circumstances which may evidence bad faith. The website at the disputed domain name is not operational. The Complainant primarily contends that this passive holding of the disputed domain name amounts to bad faith.

In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the circumstances that indicated that passive holding amounted to use of the domain name in bad faith included that:

(i) the complainant's trademark was widely known;

(ii) the respondent had never used the domain name, provided no evidence that they intended to use it and it was not possible to conceive the respondent using the domain name in any legitimate way; and

(iii) the respondent concealed their identity and did not provide a response to the complaint.

The Complainant has presented evidence that it is widely known in over 20 countries (including the United States of America) in its field of activity. The Complainant has had a registered trademark in the United States of America since May 21, 1999.

In the present proceedings there is very little known about the Respondent. The Respondent has apparently held the disputed domain name for a significant amount of time (for over four years) without any use.

The Respondent has not provided any information as to the business activities of the Respondent. The Respondent contended that the disputed domain name was intended to be used as a website for the National Automobile Vendors Association. However, the Respondent has not provided any information about the existence of the National Automobile Vendors Association (or that the Respondent has any connection with or is a member of any such association). The Respondent provided no supporting evidence as to how the Respondent was going to use the disputed domain name.

The Complainant alleged that it sent the Respondent cease and desist letters to which the Respondent did not respond.

The Complainant sent the original Complaint using the contact details on the WhoIs database of the Registrar. The details on the WhoIs database appear to have been incorrect. Different details were provided by the Registrar in response to a request from the Center for verification. The Panel searched the WhoIs database of the Registrar and the incorrect details are still listed. No explanation was given for the incorrect details being listed on the WhoIs database.

The Respondent however does not appears to have been trying to conceal its identity and the Respondent has filed a Response. But the Respondent has not responded to the claims and submissions made by the Complainant to the Panel's satisfaction.

Even though in some regards the basis of the domain name registration system is “first come, first served”, a domain name holder who has registered a domain name identical to another's distinctive trademark without apparent reason and who has not used the domain name for a significant period of time in this Panel's view, cannot sit back and provide no evidence to support its asserted bona fides when challenged by the trademark owner, not respond to letters from the trademark owner and not provide correct contact details in the WhoIs database.

The Panel is satisfied on balance that the third element has been met.

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 <nava.com> be transferred to the Complainant.

John Swinson
Sole Panelist

Dated: May 24, 2010