WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Svapostore S.r.l. v. Arcbo d.o.o. (Arcangelo Bove)

Case No. D2017-0449

1. The Parties

The Complainant is Svapostore S.r.l. of Napoli, Italy, represented by Studio legale Fogliani, Switzerland.

The Respondent is Arcbo d.o.o. (Arcangelo Bove) of Koper, Slovenia.

2. The Domain Name and Registrar

The disputed domain name <svapostore.com> (the "Disputed Domain Name") is registered with InsaneNames LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2017. On March 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 6, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, providing the contact details and confirming that the registration agreement is in English.

On March 8, 2017, the Center transmitted an email to the parties in English and Italian regarding the language of the proceedings. On the same day, the Complainant submitted its request that Italian be the language of the proceedings. The Respondent did not submit any comments.

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 Italian, and the proceedings commenced on March 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 11, 2017.

The Center appointed Andrea Mondini as the sole panelist in this matter on May 4, 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.

4. Factual Background

The Complainant is a company specialized in the wholesale and retail of electronic cigarettes.

The Complainant registered the domain name <svapostore.net> on March 2, 2013 and uses this domain name to sell electronic cigarettes.

The Complainant owns two Italian registrations for the trademarks SVAPOSTORE and SVAPOSTORE.NET which have been registered on July 19, 2016 in classes 9, 34 and 35.

The Respondent registered the Disputed Domain Name on February 17, 2014.

The Respondent also registered the domain name <svapostore.it>. In its decision dated December 28, 2016, the "Centro Risoluzione Dispute Domini" decided that this domain name should be transferred to the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends in essence:

- That the Complainant owns registrations for the trademarks SVAPOSTORE and SVAPOSTORE.NET;

- That the Disputed Domain Name is identical to its trademark SVAPOSTORE;

- That the Disputed Domain Name is redirected to the website “www.svapoweb.it” on which the Respondent offers products that directly compete with the Complainant’s products;

- That the Respondent is not sponsored or affiliated in any way with the Complainant, nor commonly known by the Disputed Domain Name;

- That the Complainant has not given to the Respondent permission to use the Complainant’s trademark in any manner and that the Respondent does thus not have any rights or legitimate interests in the Disputed Domain Name;

- That the Respondent registered and is using the Disputed Domain Name in bad faith in order to divert customers to its competing website “www.svapoweb.it”.

B. Respondent

The Respondent did not reply to the Complainant’s contentions

6. Discussion and Findings

6.1. Language of the proceeding

The Panel notes that, although the Complainant requested Italian to be the language of the proceeding and filed the Complaint in Italian, the registration agreement is in English. The Respondent did not submit any response. Therefore, there is no agreement between the Parties to use the Italian language.

Therefore, the Panel determines that English is the language of the proceedings in accordance with paragraph 11(a) of the Rules.

6.2. Substantive Issues

According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:

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

(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 shown that it is the holder of registrations of the trademarks SVAPOSTORE and SVAPOSTORE.NET in Italy. The Disputed Domain Name is identical to the trademark SVAPOSTORE.

Therefore, the Panel finds that the Disputed Domain Name is identical to the Complainant’s SVAPOSTORE trademark in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

Although the complainant bears the ultimate burden of establishing this element of paragraph 4(a) of the Policy, previous UDRP panels have recognized that this could result in the potentially impossible task of proving a negative proposition. Such a proof requires information that is primarily within the knowledge of the respondent. Therefore, the common view is that the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in the disputed domain name once the complainant has established a prima facie showing indicating the absence of such rights or legitimate interests. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

In the present case, the Respondent is not commonly known by the Disputed Domain Name. Moreover, the Complainant has declared that it is not affiliated in any way with the Respondent and that it has not authorized the Respondent to use its trademark SVAPOSTORE. The Respondent has not contested these allegations. Moreover, the Panel finds that the Respondent’s use of the Disputed Domain Name to redirect Internet users to Respondent's website which offers products that directly compete with the Complainant’s offerings does not amount to a bona fide offering of goods or services within the meaning of the Policy.

In the light of the Complainant having established an unrebutted prima facie case, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

While the Panel notes that the Complainant’s trademarks were registered in 2016, the Complainant was offering its products and services via its website “www.svapostore.net”. When the Respondent registered the Disputed Domain Name on February 17, 2014, the Complainant had already been selling electronic cigarettes on its website for approximately one year. Therefore, the evidence filed by the Complainant shows that the Respondent was aware of the Complainant and registered the Disputed Domain Name in bad faith. The Panel also finds on balance that the Respondent is using the Disputed Domain Name to redirect Internet users looking for the Complainant to the Respondent’s website “www.svaposotre.it” where the Respondent offers products that directly compete with the Complainant’s offering. In the Panel’s opinion this constitutes registration and use in bad faith under paragraph 4(b)(iv) of the Policy.

Therefore, this Panel finds on balance that the Respondent registered and is using the Disputed Domain Name in bad faith.

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

Andrea Mondini
Sole Panelist
Date: May 17, 2017