The Complainant is Sorgenia SpA of Milan, Italy, represented by Piana.eu of Milan, Italy.
The Respondent is Maurice Nathan of Paris, France.
The disputed domain name <sorgenia-spa.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2010. On June 24, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On June 25, 2010, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details, and stating that English was the language of the registration agreement. The Center verified that the 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 July 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 29, 2010.
The Center appointed Natasha Lisman as the sole panelist in this matter on August 16, 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.
On September 17, 2010, the Panel issued an Administrative Panel Order asking the Complainant to provide further information relating to its allegations of Respondent’s use in bad faith of the disputed domain name. The Complainant filed its submission pursuant to the said Panel Order on the same date. The Respondent did not submit a reply to the Complainant’s submission.
The Complainant is a commercial company registered in Milan, Italy. It is engaged in the business of energy production and trading, including electricity supply services, and, next to the former holder of a monopoly, ENEL Spa, is the most widely known company in this sector. It maintains extensive contacts with its customers through its call centers, and receives telephone orders. The Complainant owns the mark SORGENIA, registered as an international trademark, and has registered and used a domain name, <sorgenia.it>, since 2006.
The Respondent registered the disputed domain name <sorgenia-spa.com> on April 15, 2010. Through its investigation, the Complainant established that the contact information provided with the registration is false: the street number does not appear to exist in Paris, the phone number belongs to another person, and there is no listing for the Respondent’s name in the Paris phone directory.
In Italy, the suffix “spa” used in the disputed domain name is a common method for denoting a type of corporate organization, “Societa per Azioni,” and this suffix is often incorporated into such companies’ domain names. The website to which the disputed domain name resolves is no longer active, but when it was active and visited by the Complainant as part of its investigation, it mirrored, i.e. was a complete replica of, an earlier website of the Complainant, except for the telephone number provided in the contacts section, which was not a number that ever belonged to the Complainant or any of its affiliates. As part of its investigation, the Complainant repeatedly dialed that number but got no answer.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark. The Complainant further submits that the Respondent has no rights or legitimate interests in that domain name, but, rather, registered and made use of it in bad faith, as evidenced by the facts that the website to which the domain name resolved was, in the Complainant’s words, a “complete rip-off” and “a mascarade where the website pretends to be the Complainant website, when it is not” ; the Respondent provided false information to the Registrar; and has employed the same modus operandi of registering numerous domain names confusingly similar to the trademarks of other energy companies and mirroring their websites, including a domain name that a UDRP panel recently ordered to be transferred to the complainant. See EGL AG v. Maurice Nathan, WIPO Case No. D2010-1012. The Complainant requests that the Panel in this case likewise order that the disputed domain name be transferred to the Complainant.
The Respondent neither replied to the Complainant’s contentions, nor offered any of his own.
Pursuant to paragraph 4(a) of the Policy, to justify the transfer of the domain name, the Complainant must prove each of the following elements:
(i) That the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That Respondent has registered and is using the disputed domain name in bad faith.
Under paragraph 15(a) of the Rules, the Panel must “decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
The Panel accepts the Complainant’s evidence that it is the owner the trademark SORGENIA and finds that the disputed domain name is confusingly similar to that trademark. As has long been recognized in UDRP cases, the “likelihood of confusion is not avoided . . . merely by adding or deleting . . . matter that is descriptive or suggestive of the named goods or services.” Institut Straumann AG v. Core-Vent Corporation, WIPO Case No. D2000-0404. Here, the addition of the suffix “spa” – a commonly used designation of a particular type of corporate organization in Italy - to the Complainant’s mark does nothing to detract from and indeed is likely to reinforce the strong association with the Complainant and its SORGENIA mark.
Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied.
As in any case in which a respondent fails to submit any response to a complaint, the determination of the existence of the respondent’s rights or legitimate interests in respect of the disputed domain name may be rendered difficult. The complainant is only in the position to show that it has never authorized the respondent to use its trademark and that the content of the respondent’s website discloses no legitimate interest in the disputed domain name. However, in this case, the difficulty is alleviated by the fact that the Respondent’s website was a virtually complete replica of a previous website of the Complainant, with only the contact phone number altered. This evidence strongly supports an inference of lack of any legitimate interest on the part of the Respondent, for it is difficult to imagine any legitimate reason for such a practice. Thus, applying the commonly accepted “burden of production” shifting framework under which a complainant bears only the burden of coming forward with a prima facie case of lack of rights or legitimate interest on the part of the Respondent and then the burden of production shifts to the latter, see, e.g. EGL AG v. Maurice Nathan, supra, the Panel concludes that the Complainant has made out a strong prima facie case.
Moreover, given that affirmative evidence of the Respondent’s rights or interests in the disputed domain name is in his hands and paragraph 4(c) of the Policy and paragraph 5 of the Rules encourage respondents to proffer such evidence and provide them helpful guidance, it is fair and reasonable to draw adverse inferences from the Respondent’s failure to contest and affirmatively counter the Complainant’s allegations and contentions. See also Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110. On these grounds, the Panel deems paragraph 4(a)(ii) of the Policy to have been satisfied.
The Panel finds that the evidence provided by the Complainant as to the contents of the website to which the disputed domain name resolved also warrants a finding that the Respondent registered and used the disputed domain name in bad faith. This conclusion is reinforced by the fact that the Respondent appears to have provided false registration information, and has engaged in a pattern of registering domain names confusingly similar to others’ trademarks and creating replicas of the trademark owners’ websites. Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
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 <sorgenia-spa.com> be transferred to the Complainant.
Dated: September 21, 2010
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