WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Automobile Club di Brescia v. Whoiscontactsprotection.com / Saral Ltd

Case No. D2017-0159

1. The Parties

The Complainant is Automobile Club di Brescia of Brescia, Italy, represented by Barzanò & Zanardo Roma SpA, Italy.

The Respondent is Whoiscontactsprotection.com of Barcelona, Spain / Saral Ltd of Potters Bar, Hertfordshire, United Kingdom of Great Britain and Northern Ireland ("United Kingdom" or "UK"), internally represented.

2. The Domain Name and Registrar

The disputed domain name <millemigliashoes.com> is registered with 10dencehispahard, S.L. (the "Registrar").

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on January 27, 2017. On January 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 10, 2017, 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.

On February 10, 2017, the Center transmitted an email to the parties in English and Spanish regarding the language of the proceedings. On February 13, 2017, the Complainant submitted its request that English be the language of the proceedings. The Respondent did not submit any comments on the language of the proceedings.

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 and 4, the Center formally notified the Respondent of the Complaint in English and Spanish, and the proceedings commenced on February 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 8, 2017. The Response was filed with the Center in Spanish on March 8, 2017.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on March 23, 2017. 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.

Language of the Proceedings

The Complaint was submitted in English. The language of the registration agreement related to the disputed domain name is Spanish.

Consistent with paragraph 11 of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), unless otherwise agreed by the parties, or specified contrarily in the registration agreement, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the appointed Administrative Panel to determine otherwise.

In this case, the Complainant has requested that the language of the proceeding be English. In its Response, the Respondent has expressed its opposition to the Complainant's request to conduct this proceeding in English, claiming that the disputed domain name was registered in Spain, also claiming to not understand the English language.

Pursuant to paragraph 11, the Panel has the authority to determine the language of the proceedings, having regard to the circumstances of each case. The Panel will consider the following circumstances to determine the language of these proceedings.

- The Respondent has filed a Response, replying to the Complainant's claims submitted in English. This requires at least a basic understanding of the English language.

- The content of the Respondent's website is in the English language.

- The Respondent was incorporated, and is domiciled in the United Kingdom, where English is the official language. The Panel infers that a company based in the United Kingdom requires a certain degree of understanding of its official language.

Under the circumstances described above, this Panel concludes that the Respondent is capable of understanding the English language (see Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191; and MySpace Inc. v. Will Eom, WIPO Case No. D2008-0448). On the other hand, the case file contains no evidence showing that the Complainant can communicate in a language other than English and Italian.

Considering that the translation of the Complaint would render this proceeding more onerous and lengthy than what the spirit of the Policy intended (see, mutatis mutandi, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.3; see also Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679; and SWX Swiss Exchange v. SWX Financial LTD, WIPO Case No. D2008-0400), and given the evidence of a common language that the parties share, the Panel determines that the language of the proceedings shall be English.

Given that the Panel is fluent in the English and Spanish languages, it will consider the Complainant's Complaint and evidence filed in English, and the Respondent's Response and evidence submitted in Spanish.

4. Factual Background

The Complainant is Automobile Club di Brescia, an Italian public entity. The Complainant, together with the Italian company ACI Brescia Service S.r.l. is the organizer of the car race known as MILLE MIGLIA.

The Complainant owns, among others, the following trademarks:

The disputed domain name <millemigliashoes.com> was registered on April 17, 2015. The disputed domain name resolves to a website which displays the term "MILLE MIGLIA design", as well as images of shoes and the following statement: "WE ARE WORKING ON OUR NEW WEBSITE COMING SOON".

The Respondent filed a trademark application for MILLE MIGLIA DESIGN in class 25, in Spain, on October 4, 2016. The Complainant has filed 6 oppositions to this application. The prosecution process was suspended by the Spanish Office of Trademarks and Patents on April 3, 2017.

5. Parties' Contentions

A. Complainant

The Complainant argues the following:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

That the Complainant's trademark, MILLE MIGLIA is well-known.

That the disputed domain name is confusingly similar to the Complainant's trademark, as it is composed by trademark MILLE MIGLIA alongside the generic word "shoes".

That the addition of the generic term "shoes" is insufficient to avoid confusing similarity. That said addition increases the likelihood of confusion, since the word is associated to the Complainant or its services.

That the addition of the generic Top-Level Domain ("gTLD") ".com" is a technical requirement when registering a domain name, and should be disregarded when assessing similarity.

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

That the Respondent is not an authorized dealer, agent, distributor, wholesaler, or retailer of the Complainant.

That the Complainant has not authorized the Respondent to include its MILLE MIGLIA trademark in the disputed domain name, nor to make any other use of it.

That, to the Complainant's knowledge, the Respondent is not commonly known by the disputed domain name.

That the Respondent does not own any trademark registrations for "mille miglia".

That the disputed domain name resolves to a website which prominently features the term "MILLE MIGLIA design". That said website displays images of shoes. That the Respondent's website provides links to Facebook, Instagram and Twitter accounts, which market footwear bearing the brand "MILLE MIGLIA design".

That the goods offered under "MILLE MIGLIA design" on the social media accounts linked to the Respondent's site, compete with those of the Complainant. That this fact, combined with the fact that the Compainant's MILLE MIGLIA trademark is well-known, preempts the possibility of considering the use of the disputed domain name as a bona fide offering of goods.

That the Respondent is using the MILLE MIGLIA trademark to mislead potential consumers and create the impression that the Respondent and the Complainant share a commercial relationship.

iii) The disputed domain name has been registered and is being used in bad faith

That the disputed domain name contains a well-known trademark belonging to the Complainant.

That the fame of the MILLE MIGLIA trademark makes it impossible for the Respondent to claim that it was unaware that the registration of the disputed domain name would infringe the Complainant's trademarks.

That the Complainant owns trademark registrations in Spain and the United Kingdom.

That, while the two words comprised in the disputed domain name have a meaning in Italian, they do not belong to the English or Spanish languages. That the Respondent registered the disputed domain name with the intention of establishing a relationship with the Complainant's race and trademark.

That the Respondent is using the fame of the Complainant's trademark to attract, for commercial gain, Internet users to the Respondent's website and to the links provided on the Respondent's website.

That the Facebook and Instagram accounts linked by the Respondent's website direct Internet users to the website to which the domain name <laslolashoes.com> resolves. That LASLOLASSHOES is a UK trademark registered by the Respondent.

That the Respondent is using the disputed domain name to attract Internet users to its sales platform.

That the Respondent is disrupting the Complainant's business.

That the Complainant served the Respondent with a cease-and-desist letter prior to the commencement of this procedure.

That the true identity of the Respondent has been concealed through a privacy service.

B. Respondent

The Respondent argues the following:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

That the disputed domain name was acquired by the Respondent in 2015 to market a line of footwear named after its durability.

That the Respondent applied for the registration of the MILLE MIGLIA DESIGN trademark in October 2016, in Spain.

That the term "MILLE MIGLIA SHOES" was intended to be used in social networks in connection with preexisting footwear lines for which the MILLE MIGLIA DESIGN trademark registration was applied for.

That at the time of registration of the disputed domain name, the Complainant did not market any footwear products.

That the term "mille miglia" is a reference to distance in Italian.

That the term "mille miglia shoes" makes reference to the durability of the soles of the Respondent's shoes, and not to a car race.

That other websites, such as <millemiglia.info> and <millemiglia.net>, use the term "millemiglia" in connection to diverse goods and services offered by third parties.

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

That the Respondent owns a wide array of trademarks, among which is MILLE MIGLIA DESIGN.

That the Respondent has marketed shoes and clothing on the Internet through several websites.

That the disputed domain name was acquired by the Respondent in 2015 to market a preexisting footwear line named after its durability.

iii) The disputed domain name has been registered and is being used in bad faith

That the Complainant is acting in bad faith by taking advantage of the impact of the Respondent's trademark MILLE MIGLIA SHOES and the disputed domain name to benefit from their presence in the footwear industry.

That the Complainant's trademark is intended for a car race. That, while the Complainant started marketing footwear only recently, the Respondent has been doing so under the trademark MILLE MIGLIA DESIGN for years.

That the privacy service has been used by the Respondent to avoid spam.

6. Discussion and Findings

According to the Policy, to qualify for a cancellation or transfer, a complainant must prove each of the elements listed below:

(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.

A. Identical or Confusingly Similar

The Complainant has proven to be the owner of several trademark registrations for MILLE MIGLIA.

The Respondent has not submitted evidence of owning any trademark registrations for MILLE MIGLIA, MILLE MIGLIA DESIGN, or related brands.

The disputed domain name <millemigliashoes.com> is confusingly similar to the Complainant's trademark MILLE MIGLIA, as it is comprised in its entirety of the disputed domain name.

The addition of the generic Top-Level Domain ("gTLD") ".com" to the disputed domain name is irrelevant and immaterial for purposes of assessing confusing similarity with the Complainant's trademarks (see Diageo p.l.c. v. John Zuccarini, WIPO Case No. D2000-0541).

The addition of the descriptive term "shoes" to the disputed domain name is insufficient in itself to avoid a finding of confusing similarity under the first element of the Policy (see eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307; and BHP Billiton Innovation Pty Ltd, BMA Alliance Coal Operations Pty Ltd v. Cameron Jackson, WIPO Case No. D2008-1338).

The first element of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name:

I. before any notice to the respondent of the dispute, the use by the respondent 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. the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

III. the respondent is 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.

According to the evidence submitted by the Complainant, the disputed domain name resolves to a website which displays the term "MILLE MIGLIA design", as well as images of shoes and the following statement: "WE ARE WORKING ON OUR NEW WEBSITE COMING SOON".

The Respondent's website has featured links to Facebook, Instagram and Twitter accounts. According to the Complainant's undisputed evidence, said accounts were used by the Respondent to market footwear under the term "MILLE MIGLIA Design". It is clear that these goods compete with those offered by the Complainant under the trademark MILLE MIGLIA, which is covered by the Complainant's trademark registrations. The Complainant claims that the Respondent's products have been made available at a website to which the domain name <laslolasshoes.com> resolves.

The Respondent replied that it has marketed shoes and clothing on the Internet through several websites, that these products comprise goods distinguished by the brand MILLE MIGLIA SHOES, and that the Complainant has only recently started marketing its own footwear under the trademark MILLE MIGLIA.

There is no evidence available to the Panel that could indicate that the Respondent started marketing products, particularly footwear before the Complainant. Additionally, in accordance to the undisputed evidence provided by the Complainant, at least two of its trademark registrations for MILLE MIGLIA, cover goods comprised in international class 25, namely clothing, footwear, and headwear. Said trademark registrations were granted since 2001 and 2009, long before the date of registration of the disputed domain name.

The Respondent claims to own a trademark registration for MILLE MIGLIA DESIGN. However, the Respondent has not submitted any evidence of registration for this brand.

In fact, the only evidence submitted by the Respondent is a copy of a trademark application for MILLE MIGLIA DESIGN filed on October 10, 2016 with the Spanish Office of Patents and Trademarks. This application was filed approximately two months after the date on which the Complainant allegedly sent a cease-and-desist letter to the Respondent. The application has not matured into a trademark registration. Upon having conducted a search in the database of the Spanish Office of Patents and Trademarks, this Panel found that the application process has been suspended as of April 3, 2017.

Moreover, the applicant of MILLE MIGLIA DESIGN is not the Respondent, but one A. Soler. The Respondent did not submit any evidence to show that Mr. Soler and the Respondent are related.

The Respondent argues that its use of the "mille miglia" term is owed to the durability of the soles of the footwear it markets. The fact is that MILLE MIGLIA is a well-known trademark which has been registered, used, and publicized for decades.

As stated in previous Panel decisions, mere assertions - such as the ones made by the Respondent in this case - are insufficient in proving actual use or preparations to use a disputed domain name (see, mutatis mutandi,DigiPoll Ltd. v. Raj Kumar, WIPO Case No. D2004-0939; and AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr., WIPO Case No. D2005-0485). In this case, the Respondent's claims rest solely on its assertions, which have not been supported by conclusive evidence.

There remains the question of whether the actual use of the disputed domain name by the Respondent is sufficient to prove rights to, or legitimate interests in the disputed domain name. As stated before, the disputed domain name resolves to a site which displays a sign that reads: "WORK IN PROGRESS. WE ARE WORKING ON OUR NEW WEBSITE COMING SOON". This site contains hyperlinks that direct Internet users to social network accounts, which in turn offer products available at a website to which the domain name <laslolasshoes.com> resolves.

In this Panel's opinion the fact that the Respondent has opted to redirect Internet users to social network accounts related to the sale of the products comprising the Respondent's shoes, shows that the disputed domain name has been used as a vehicle for generating traffic.

According to the evidence contained in the Case File, the Complainant's trademark registrations in Spain and the United Kingdom vastly precede the Respondent´s registration of the disputed domain name, and the Respondent's filing of an application for MILLE MIGLIA DESIGN. The Respondent has not submitted any evidence of use of said brand prior to the Complainant's registration of its trademarks.

The Complainant has provided proof of having marketed clothing and shoes under the trademark MILLE MIGLIA on its website. As will be detailed in the analysis of bad faith below, the Respondent's actions cannot be considered as a bona fide offering of goods and services (the Respondent is using a domain name, which is confusingly similar to the Complainant's trademarks, to redirect users to social network accounts in which goods, that are identical or similar to those covered by the Complainant's registrations, are being sold).

This Panel considers that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and thus the burden of production has shifted to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name (see Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467,and Cellular One Group v. COI Cellular One, Inc., WIPO Case No. D2000-1521).

The Respondent did not provide any convincing evidence to prove a legitimate use of the disputed domain name. Moreover, the evidence filed by the Complainant, which has not been rebutted by the Respondent, did prove that the Respondent was making a non-legitimate commercial use of the domain name, with the intent for commercial gain, to misleadingly divert consumers to a website where its shoes have been sold.

In addition, none of the allegations made, or evidence submitted by the Respondent, demonstrated that it has been commonly known by the disputed domain name.

Attending to the reasons analyzed above, the second element of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:

I. circumstances indicating that the respondent has registered or the respondent has acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain names 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 respondent's documented out-of-pocket costs directly related to the domain names; or

II. the respondent has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

III. the respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor; or

IV. by using the domain names, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 respondent's website or location or of a product or service on its website or location.

The Complainant owns several trademark registrations for MILLE MIGLIA around the world, including Spain, where the Respondent claims to have registered the disputed domain name, and the United Kingdom, where the Respondent claims to be domiciled. These trademark registrations vastly precede the registration date of the disputed domain name.

The Complainant claims that its trademark MILLE MIGLIA is well-known. Considering the significant number of longstanding trademark registrations that the Complainant owns for MILLE MIGLIA around the world, and the fact that previous UDRP panels have recognized MILLE MIGLIA's car races as famous (see Automobile Club di Brescia v. Li Fanglin, WIPO Case No. D2015-0975; Automobile Club di Brescia v. FCF WEB Staff Gianpaolo Frosi, WIPO Case No. D2016-1644, and Automobile Club di Brescia v. FCF WEB Staff Gianpaolo Frosi, WIPO Case No. D2016-1647), this Panel concludes that the Respondent could not have possibly been oblivious to the existence of the Complainant's trademark at the time of registration of the disputed domain name.

Even if the Respondent had been oddly unfamiliar with the Complainant's trademarks, according to paragraph 2 of the Policy, it is the Respondent's responsibility to determine whether the domain name registration infringes or violates someone else's rights.

The presence of the term "mille miglia" in the website to which the disputed domain name resolves, does nothing to wave the risk of confusion for potential consumers. Internet users may enter the website to which the disputed domain name resolves, believing it is somehow related to the Complainant or its trademarks, only to find links to social network accounts which are in turn linked to a site that offers products of different shoe sources, including the Respondent. Many of these products are covered by some of the trademark registrations owned by the Complainant. Likewise, the inclusion of the word "shoes" may that create the impression that the disputed domain name resolves to an official website of the Complainant, or its class 25 MILLE MIGLIA branded products.

The Respondent raised allegations stating that its merchandising of shoes predates the commercialization of shoes by the Complainant. Nevertheless, the Respondent did not provide any evidence to support said allegations, and it did not submit any evidence of any prior use, to prove a legitimate interest or right over terms such as "mille miglia", "mille miglia design", or "mille miglia shoes".

On the other hand, the Complainant did submit copies of prior trademark registrations from several countries, including the country where the Respondent claimed to be domiciled, to cover goods identical to those offered by the Respondent, on a website related to the disputed domain name.

In view of the submitted evidence, and attending to the fact that the Respondent did not file convincing evidence to prove legitimate rights over the trademark MILLE MIGLIA, this Panel deems important to stress the following facts:

a) The Complainant's trademark registrations predate the registration of the disputed domain name;

b) The Respondent has not proven to own any trademark registrations for MILLE MIGLIA, or related brands;

c) The Complainant owns registrations in the country where the Respondent has declared to have its domicile;

d) The Complainant owns trademark registrations that cover the same goods that the Respondent is selling through the social network sites that are advertised on the website to which the disputed domain name resolves.

From this Panel's perspective, the above facts prove that the Respondent has intentionally registered and used the disputed domain name to attract, for commercial gain, Internet users to its website and social network accounts, by creating likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.

Therefore, the third element of the Policy is fulfilled.

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, <millemigliashoes.com> be transferred to the Complainant.

Kiyoshi Tsuru
Sole Panelist
Date: April 6, 2017