WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Locatelli S.P.A. v. Charles Martin

Case No. D2018-2308

1. The Parties

The Complainant is Locatelli S.P.A. of Bergamo, Italy, represented by Dr. Modiano & Associati S.p.A., Italy.

The Respondent is Charles Martin of Arlington, Virginia, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <airohhelmetusa.com> is registered with AlpNames Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2018. On October 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 2018, 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.

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, and the proceedings commenced on October 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 14, 2018.

The Center appointed Selma Ünlü as the sole panelist in this matter on November 28, 2018. 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 in this administrative proceeding, Locatelli S.P.A. is an Italian-based company who is a leader in the field of motorcycle helmets. Starting as a contractor of various different brands, the company started to manufacture its own products in 1997 bearing the trademark AIROH. Until now, the Respondent became one of the leading names in the world by its distributors and resellers in 80 countries.

The Complainant owns the registered AIROH and AIROH HELMET trademarks around the world.

As the Panel examined the registrations of the Complainant dated November 12, 2013, it has been noted that the Complainant has trademark registrations for AIROH and AIROH HELMET, respectively with registration numbers 4,432,735 and 4,432,736 before the United States Patent and Trademark Office (“USPTO”) of which the Respondent lives in the jurisdiction.

The Respondent has not submitted any formal Response to the contentions raised in the Complaint.

The disputed domain name <airohhelmetusa.com> was registered on April 7, 2017. According to the evidence submitted by the Complainant, the disputed domain name has been used as a website purporting to be offering for sale the Complainant’s products.

5. Parties’ Contentions

A. Complainant

Pursuant to paragraph 4(i) of the Policy, the Complainant requests the Panel to bring a verdict regarding the disputed domain name to be transferred to the Complainant. The Complainant submits the grounds for these proceedings listed in paragraph 4(a) of the Policy.

In summary, the Complainant contends the following:

Confusingly Similar

The Complainant states that it owns registered and well-known AIROH and AIROH HELMET trademarks and the Complainant itself is one of the leading companies of the relevant industry.

The Complainant asserts that the disputed domain name comprises of the Complainant’s trademark AIROH HELMET, followed by a location abbreviation of the “United States of America” as “USA”, which are with their overall impression confusingly similar to its registered AIROH and AIROH HELMET trademarks.

The Complainant also argues that the word “helmet” is a descriptive word regarding the product manufactured by the Complainant under the registered AIROH trademark, and that the Complainant has a separate registered trademark for AIROH HELMET, therefore the disputed domain name is confusingly similar to the Complainant’s trademarks.

Rights or Legitimate Interests

The Complainant alleges that the Respondent is not and has never been agreed with, authorized, and granted a license by the Complainant regarding the Complainant’s trademarks. The Respondent does not have any rights or legitimate interests in the disputed domain name.

Therefore, the Complainant argues that the Respondent is in no way authorized to use the Complainant’s AIROH and AIROH HELMET trademarks in the disputed domain name and is not using the disputed domain name in connection with bona fide offering of goods or services.

Moreover, the Respondent states that the term “Airoh” is not a generic term and is not possible to be used unrelated to the Complainant and its products. The Complainant also declares that the Respondent does not have any trademark or company activity registered under AIROH trademark.

Finally, the Respondent alleges that the Respondent is not known as “Airoh” either.

Registered and Used in Bad Faith

The Complainant indicates that the disputed domain name has been registered in bad faith. The Complainant contends that the trademarks AIROH and AIROH HELMET are well-known marks throughout the world. It further claims that the Respondent must have been aware of the Complainant and its marks at the time that it registered the disputed domain name.

Additionally, the Complainant argues that the disputed domain name was registered many years after the Complainant had used its trademarks in and outside of Italy.

Finally, the disputed domain name which is almost identical with the domain names of the Complainant, namely <airoh.it> and <airoh.com>, which have been used to sell purported Airoh helmets. However, the Complainant evidences that a customer that visited the website at the disputed domain name have contacted them to inform that the Complainant’s products purchased at the website were never delivered. This should be considered as an action with the purpose of creating a likelihood of confusion between the disputed domain name and the Complainant’s trademarks. Therefore, the overall evaluation of the Respondent does not imply any good faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) The disputed domain name is identical or confusingly similar to the trademark 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.

Paragraph 4(a) of the Policy states that the Complainant has the burden of proving that all these requirements are fulfilled.

A. Identical or Confusingly Similar

The Policy simply requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of the AIROH and AIROH HELMET trademarks.

The Panel finds that the addition of the term “helmet” and the geographical term “USA” are irrelevant when determining whether the disputed domain name is confusingly similar to the Complainant’s trademark since the term “helmet” is comprised in another registered trademark of the Complainant and is also related to the products retailing under the registered AIROH trademark. As to the “USA” abbreviation, the Panel is of the opinion that the said abbreviation does not prevent a finding of confusing similarity between the disputed domain name and the registered trademarks of the Complainant since the Complainant’s trademarks are recognizable.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [the Respondent] 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 [the Respondent] (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 [the Respondent] 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 burden of proof is on the Complainant to demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Once the Complainant has made out a prima facie case, then the Respondent may, by, inter alia, showing one of the above circumstances, demonstrate rights or legitimate interests in the disputed domain name.

In light of the evidence submitted in the case file, e.g., trademark registration certificates etc., it is clear to the Panel that the Complainant has earlier and lawful rights in the AIROH and AIROH HELMET trademarks. Therefore, the Panel finds on the current record that the Complainant has proved rights in the AIROH and AIROH HELMET trademarks and considering the evidence about the use, has also established a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name for the purposes of the Policy.

The Complainant has not granted the Respondent any right or license to use the AIROH and AIROH HELMET trademarks.

Consequently, in the absence of an official response, the Panel accepts the Complainant’s allegations as true that the Respondent has no authorization to use the AIROH and AIROH HELMET trademarks in the disputed domain name. Hence, as the Complainant has made out its prima facie case, and as the Respondent has not demonstrated any rights or legitimate interests as illustrated under paragraph 4(c) of the Policy, nor has the Panel found any other basis for finding any rights or legitimate interests of the Respondent in the disputed domain name, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or 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 the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s website or location.

By consideration of the foregoing, the Panel is of the opinion that due to the earlier rights of the Complainant in the AIROH and AIROH HELMET trademarks, as well as its extensive and intensive usage, the Respondent, who appears to be located in the United States where the Complainant has a recognition, was aware of the Complainant and its AIROH and AIROH HELMET trademarks at the time of registration of the disputed domain name. See, e.g., Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087. Referring to Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226, the Panel believes that the awareness of the Complainant’s trademark at the time of the registration of the disputed domain name is to be considered an inference of bad faith registration.

Moreover, the Panel notes that:

(i) the Respondent did not submit any official response and is in default;

(ii) the Complainant’s trademark has a strong reputation and is registered as a well-known trademark;

(iii) the disputed domain name reproduces the Complainant’s trademarks in their entirety;

(iv) when the Panel visited the website at the disputed domain name on December 14, 2018, it noted that it appears to be used to sell products bearing the trademark of the Complainant which are also submitted alongside with the Complaint as Annex 7. The Panel evaluates this content as the indication of the fact that the main purpose of registration and use is to earn profit therefrom.

In addition, the Panel notes that the term “USA” refers to a geographical region and it is very likely for the Internet users to interpret this as related to the commercial activities of the Complainant conducted in the United States. See Educational Testing Service v. Ken Gardner, WIPO Case No. D2018-1118 and Educational Testing Service v. Kendal Square, Sira Sudhikam, WIPO Case No. D2009-0035.

The Panel is of the opinion that Internet users may fall into the false impression that the disputed domain name is the Complainant’s official domain name or related, associated or sponsored by the Complainant. The Panel recognizes the Complainant’s rights in the disputed domain name and concludes that the disputed domain name is confusingly similar to the Complainant’s AIROH and AIROH HELMET trademarks. Therefore, the Panel concludes that the requirements of paragraph 4(a)(i) of the Policy is provided.

Finally, the Complainant has submitted evidence of an email communication of a consumer accessing the disputed domain name and claiming that it is a scam since he lost the money and did not get the products.

Therefore, in light of the above-mentioned circumstances in the present case, the Panel finds that the disputed domain name has been registered and are being used in bad faith and that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.

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 <airohhelmetusa.com> be transferred to the Complainant.

Selma Ünlü
Sole Panelist
Date: December 14, 2018