WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
M. & B. Marchi e Brevetti Srl v. Tom John
Case No. D2012-1527
1. The Parties
The Complainant is M. & B. Marchi e Brevetti Srl in Fabriano, Italy, represented by Monica Stocco, Italy.
The Respondent is Tom John of North Carolina in the United States of America (“US”).
2. The Domain Name(s) and Registrar(s)
The disputed domain name <aristonheating.info> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2012. On July 30, 2012, the Center transmitted by email to the Registrar GoDaddy.com, LLC. a request for registrar verification in connection with the disputed domain name. On July 30, 2012, GoDaddy.com, LLC. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 August 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 22, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 23, 2012.
The Center appointed Jane Lambert as the sole panelist in this matter on August 30, 2012. 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, whose corporate name means “Marks and Patents” in English, has registered the ARISTON sign as a trademark in about 150 countries including the US. In that country the sign is registered in class 11 under registration number 3019624 for “heating boilers, heat pumps, heating electric stoves, heating gas stoves, heating radiators, water heaters” and other goods. The ARISTON mark is used by the Ariston Thermo Group (the “Group”) to market its 6.4 million heating products around the world. According to the Group’s Profile for 2012, it employed 6,700 persons and generated sales of EUR 1.3 billion in 2011. The Complainant does not disclose its relationship with the Group but the number and age of the registrations leads the Panel to assume that the Complainant has registered those marks under the Group’s authority or with its consent.
According to the Complainant, the Respondent is listed as “a high activity seller on sedo.com.”
Seller activity is indicated by a 5 graphic in the “Meet the Seller” section of Sedo GmbH’s website. Seller activity takes account of the seller’s transaction history, his number of and sales volume for transactions. It is represented by yellow bars on a scale of 0 to 5. Five yellow bars indicate the highest possible activity while no yellow bars indicates low activity.
The only use that the Respondent appears to have made of the disputed domain name is parking it with Sedo GmbH.
The Panel visited “www.aristonheating.info” on August 31, 2012 and found a simple blue and white page with sponsored listings and related searches. The disputed domain name was displayed in dark blue lettering against a light blue background. A box in the top right hand corner contained the words
“Buy this domain. The domain aristonheating.info may be for sale by its owner!”
There was a hypertext link under the disputed domain name. Upon clicking the hypertext link a page appeared stating that the disputed domain name was for sale at the price of USD 2,150 or best offer.
5. Parties’ Contentions
A. Complainant
The Complainant claims the transfer of the disputed domain name on the following grounds:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
In support of its contention on the first ground, the Complainant lists and exhibits its trademark registrations in Italy, the USA, China and other countries. It refers to its registration of the word “aristonheating” as a country code domain name in a large number of registries around the world. It concludes that:
“The domain name is confusingly similar to the Complainant’s Registered Trademarks, considering that, on the one hand, the word ARISTON have no meaning with regard to the products which it refers; on the other hand, the word HEATING is a simple description of the products commercialized by the Complainant. As is known, the addition of a generic descriptive term to the ARISTON mark in the Domain Name does not lessen the confusing similarity between the Domain Name and the ARISTON mark but rather strengthens the association between them.”
As to its second ground, the Complainant says that:
(1) there is no evidence of the Respondent's use of the disputed domain name in connection with a bona fide offering of goods or services;
(2) the Complainant’s trademark is so well known that the Respondent is unlikely to be known commonly by the same name; and
(3) the Complainant has not licensed the Respondent to use the disputed domain name.
As for the third ground, the Complainant relies on the offer of the disputed domain name for sale through Sedo GmbH at the price of USD 2.150 and the Respondent’s listing as a “high activity seller.”
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a Complainant to prove that each of the following elements is present:
(ii) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the first element is present.
The Complainant is the registered proprietor of the trademark ARISTON in the US as well as 150 other countries. The business of the Ariston Thermo Group includes the manufacture and sale of boilers, pumps and other heating equipment. The Complainant has registered “aristonheating” as part of a country code top level domain name in many countries. Members of the public who see the disputed domain name will expect a website with information about the Ariston Thermo Group’s products. Accordingly, the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists a number of circumstances by which a respondent can demonstrate that he or she has rights or legitimate interests in a 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 a legitimate noncommercial 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 alleged that none of those circumstances applies and there is, of course, no evidence from the Respondent. The Panel can find no other evidence that the Respondent may have rights or legitimate interests in the disputed domain name. Accordingly, the Panel is satisfied that the second element is present.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides:
“For the purposes of Paragraph 4(a)(iii), 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 a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Complainant relies on paragraph 4(b)(i) on the ground that the Respondent has offered the disputed domain name for sale through Sedo GmbH for USD 2,150 or best offer. As it is possible to register a domain name for a few pounds sterling the price for which the disputed domain name is offered greatly exceeds the Respondent’s out of pocket costs. As the disputed domain name has not been used for any other purpose, it can be inferred that the Respondent registered or acquired the disputed domain name primarily for the purpose of selling or otherwise transferring the disputed domain name to the Complainant or to a competitor of the Ariston Thermo Group. Accordingly the Panel is satisfied that third element is present.
Although the Complainant has not pleaded that ground, the Complainant could also have succeeded under paragraph 4(b)(iv). The Panel has already found that the disputed domain name is confusingly similar to the Complainant’s trademark and that members of the public would expect to find a website with information on the Ariston Thermo Group’s heating products. The disputed domain name has been used for a parking site with sponsored listings and searches for which fees will have been paid. Thus all the requirements of that paragraph are satisfied.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <aristonheating.info> be transferred to the Complainant.
Jane Lambert
Sole Panelist
Dated: August 31, 2012
