WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Caterina Vidal and Jacopo Vidal v. Giustino Di Donato

Case No. D2020-1144

1. The Parties

The Complainants are Caterina Vidal and Jacopo Vidal (hereinafter named both together as the “Complainant”), Italy, represented by Studio Legale Jacobacci e Associati, Italy.

The Respondent is Giustino Di Donato, Italy, represented by Ing. Claudio Baldi Srl, Italy.

2. The Domain Name and Registrar

The disputed domain name <themadihome.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2020. On May 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 7, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 12, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 14, 2020.

The Center verified that the Complaint together with the amendment to 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 May 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2020. The Response was filed with the Center on June 8, 2020. On June 12, 2020, the Complainant submitted to the Center its supplemental filing, in response to which the Respondent submitted a supplemental filing on June 17, 2020.

The Center appointed Edoardo Fano as the sole panelist in this matter on June 18, 2020. 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 June 23, 2020, the Complainant submitted to the Center another supplemental filing and on June 25, 2020, the Panel allowed five days to the Respondent to reply to the latter supplemental filing. The Respondent submitted a supplemental filing on June 30, 2020.

The Panel considers admissible all the Complainant’s and the Respondent’s supplemental filings.

The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.

The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.

4. Factual Background

The Complainants are Caterina Vidal and Jacopo Vidal, the daughter and the son of the well-known architect Renato Vidal, the creator, among other things, of a modular folding house called “Madihome”. The Complainant, in relation to the “MADI housing project”, owns the following trademark registrations for M.A.DI. (the acronym of “Modulo Abitativo DIspiegabile”, meaning in English “Deployable Housing Model”):

- Italian Trademark Registration No. 0001581160 for M.A.DI., registered on February 27, 2014;

- International Trademark Registration No. 1416990 for M.A.DI., registered on April 10, 2018.

The Complainant also operates on the Internet at the website “www.madihome.com”, having registered the domain name <madihome.com> on June 20, 2012, in the name of Jacopo Vidal.

The commercial relationship between the Complainant and the Respondent started in 2014 with an exclusive license granted by the Complainant to the Respondent and concerning a patent owned by the Complainant on the modular folding houses: in the license agreement no reference is made to the use of the Complainant’s trademark M.A.DI. and/or domain name <madihome.com> / website “www.madihome.com”.

The trademark M.A.DI., the domain name <madihome.com> and the website “www.madihome.com” have been always exclusively owned by the Complainant and their use was benevolently granted to the Respondent without a contract and for free.

The Complainant, after noticing that the trademark M.A.DI. and the website “www.madihome.com” were no longer used by the Respondent as agreed, sent a warning letter to the Respondent on November 20, 2018.

On July 12, 2019, the Respondent incorporated the company Madihome S.r.l. and transferred the license for the use of the Complainant’s patent to this latter company.

On October 28, 2019, the Complainant’s legal representatives informed the Respondent of the termination of the 2014 patent license agreement for breach of contract, as well as the termination of the possibility for the Respondent to use the Complainant’s trademark M.A.DI. and the website “www.madihome.com”. On December 18, 2019, the Respondent’s legal representatives challenged this termination letter.

On November 22, 2019, the Respondent registered the European Union Trade Mark No. 018105043 for MADIHOME, against which the Complainant filed a cancellation action based on invalidity on May 8, 2020.

On March 5, 2020, the Complainant filed a precautionary appeal against the Respondent before the Italian Court of Padua and on April 1, 2020, the Respondent filed the relevant defense before the Italian Court of Padua.

The Complainant and the Respondent provided evidence in support of the above.

The disputed domain name was registered on March 5, 2018, according to the WhoIs records, the website at the disputed domain name resolved to the website of Madihome S.r.l., an Italian company whose sole administrator is the Respondent, displaying which appears to be “MADI housing project” related information.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain name is confusingly similar to its trademark M.A.DI.

Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since he has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, he is not commonly known by the disputed domain name and he is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.

The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the Complainant’s trademark M.A.DI. is an acronym standing for “Modulo Abitativo DIspiegabile” (meaning in English “Deployable Housing Model”) created by the Complainant and the disputed domain name was registered without informing the Complainant, with the aim, more likely than not, of misleading customers. Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain name and the Complainant contends that the use of the disputed domain name, as address of a website filled with content identical to the Complainant’s official website but without making reference to the Complainant’s patent until this Complaint was filed, with the purpose of intentionally attempting to create a likelihood of confusion with the Complainant’s trademark as to the disputed domain name’s source, sponsorship, affiliation or endorsement, constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use. Moreover, the Complainant considers that the Respondent’s creation of the company Madihome S.r.l. and registration of the European Union Trade Mark No. 018105043 for MADIHOME, without informing the Complainant, further support a finding of bad faith registration as use of the disputed domain name.

B. Respondent

The Respondent has nothing to declare in respect to the fact that the disputed domain name is confusingly similar to the Complainant’s trademark M.A.DI.

Moreover, the Respondent asserts to have rights or legitimate interests in respect of the disputed domain name since, as exclusive licensee, he was authorized by the Complainant in the patent license agreement of 2014 and further correspondence to use the trademark M.A.DI. and to register the trademark MADIHOME in order to strengthen their protection and increase the promotion and retail of the relevant products. As regards the disputed domain name, the Complainant explicitly authorized its registration and the Respondent, in the relevant website, has been only offering and promoting M.A.DI. products, always indicating that the Complainant was the designer of the M.A.DI. housing project.

The Respondent submits that the disputed domain name was registered with the only aim to avoid possible episodes of cybersquatting, and to increase the visibility and sales of M.A.DI. products as the Respondent was the exclusive licensee of the Complainant.

Finally, the Respondent contends that the fact that the contents of the websites “www.madihome.com” and “www.themadihome.com” are identical is because they were both created by the Respondent, proving that there is no intention by the Respondent to use the disputed domain name in bad faith, but rather to increase the visibility and the profits of the M.A.DI. housing project, always giving credit to the Complainant as the developer of the project.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:

(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 first element has not been contested by the Respondent.

The Panel finds that the Complainant is the owner of the trademark M.A.DI. both by registration and acquired reputation and that the disputed domain name is confusingly similar to the trademark M.A.DI., as the disputed domain name wholly contains the Complainant’s trademark with the addition of the article “the” and the word “home” (a dictionary term referring to the product sold by the Complainant).

Regarding the addition of the article “the” and the word “home”, the Panel notes that it is now well established that the addition of terms or letters to a domain name does not prevent a finding of confusing similarity between the domain name and the trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713). The addition of the article “the” and the word “home” does not therefore prevent the disputed domain name from being confusingly similar to the Complainant’s trademark.

It is also well accepted that a generic Top-Level Domain (“gTLD”), in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).

The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that the Respondent has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, he is not commonly known by the disputed domain name and he is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.

The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that he has rights or legitimate interests in the disputed domain name.

The Respondent asserts to have rights or legitimate interests in respect of the disputed domain name since, as exclusive licensee, he was authorized by the Complainant in the patent license agreement of 2014 and further correspondence to use the trademark M.A.DI. and to register the trademark MADIHOME, in order to strengthen their protection and increase the promotion and retail of the relevant products.

As regards the patent license agreement of 2014, the Respondent finds the authorization of the Complainant under paragraph 11, which reads: “The user agrees to make the best effort to advertise the M.A.DI. products on the national market and/or on foreign markets, in order to develop the product as much as possible in order to obtain the best possible economic result. The user undertakes to highlight the name of the inventor, Mr. Renato Vidal, in every graphic representation and not of the M.A.DI. products.”

The Panel interprets paragraph 11 of the 2014 patent license agreement as an implicit authorization to “use”, not to “register”, the distinctive sign M.A.DI., in order to advertise and develop the Complainant’s products.

As regards the correspondence between the Complainant and the Respondent, in which the Respondent is basing the Complainant’s authorization to proceed with the registration of the trademark MADIHOME, again the Panel finds nothing more than an authorization to “use”, both the trademark M.A.DI. and the website “www.madihome.com”, while stressing that they both belong exclusively to the Complainant. When talking about the opportunity to register the trademark MADIHOME and a few supposedly defensive domain names (“.asia”; “.com.cn”), the Complainant is writing to the Respondent that “In my opinion it is certainly the case, as we were discussing, to register the trademark MADIHOME. And I would say that we could be also interested in the domains .Asia…and maybe .Com.Cn…”, without saying that these distinctive signs were supposed to be registered under the Respondent’s name.

The Respondent states that the Complainant has never challenged the registration and use of the disputed domain name, not even when the latter was used in the email correspondence between them: the Panel was not able to find a single reference to the disputed domain name or any explicit consent by the Complainant in the correspondence provided as Annexes to the Response and the Respondent’s Supplemental Filings, while the Complainant states to have been totally unaware of the registration and use of the disputed domain name by the Respondent.

The Respondent’s considerations about the fact that the 2014 patent license agreement between the Complainant (licensor) and the Respondent (exclusive licensee) is still in force until a Court’s final decision is issued are beyond the scope of this proceeding, since as stated above the 2014 patent license agreement is granting to the Respondent an explicit exclusive right to “use” the Complainant’s patent and an implicit right to “use” the Complainant’s trademark M.A.DI. to advertise the Complainant’s products, having no direct relation with the registration of the disputed domain name.

The Respondent further submits that its company name, Area Legno, has been always related to the Complainant’s trademark M.A.DI. and the relevant project MADIHOME, being the Respondent the exclusive licensee: in the Panel’s view this does not mean that the Respondent was commonly known by the disputed domain name, and when in 2019 the Respondent incorporated the company Madihome S.r.l., the Complainant was never informed about it.

Finally, the Respondent is submitting that “he always made a legitimate non-commercial or fair use of the domain name, without any intent for commercial gain to misleadingly divert consumers or to tarnish the reputation of the Complainant’s trademark. This is demonstrated by the use made by the Respondent of the domain name themadihome.com and madihome.com, where the distinctive sign MADI was always combined with the indication that Mr. Renato Vidal is the ideator and designer of the project”.

In this respect the Respondent is invoking the application of the “Oki Data test” requirements, probably making reference to the circumstance of “bona fide offering of goods and services” instead of “legitimate noncommercial fair use”. In this case there is no dispute regarding the Respondent’s status (i.e. exclusive licensee of the Complainant), offering official products made on the basis of the Complainant’s patent and bearing the official Complainant’s trademark before any notice of the dispute. The only issue here is for the Panel to determine whether the Respondent’s offering can be considered as bona fide.

According to the current state of UDRP decisions in relation to the issue of resellers and distributors, as summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.8.1:

“(...) resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki Data test’, the following cumulative requirements will be applied in the specific conditions of a UDRP case:

(i) the respondent must actually be offering the goods or services at issue;

(ii) the respondent must use the site to sell only the trademarked goods or services;

(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and

(iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.”

This summary is based on the UDRP decision in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.

However, the website at the disputed domain name does not include a clear, accurate and prominent reference to the license relationship between the Respondent and the Complainant (or lack thereof). The website at the disputed domain name includes the sentence “Madihome is a Patented Product Designed by Architect Renato Vidal” or similar statements, as proved by the evidence of the website provided by the Complainant as well as the Respondent. Such statement is not sufficient to prevent any potential confusion of the Internet users as to the relationship of the Respondent with the Complainant, and whether the Respondent is the owner of trademark M.A.DI. and the MADIHOME project. Thus the Panel is of the opinion that the Respondent fails to comply with the OKI Data test. In addition, according to the evidence provided by the Complainant at some point the website at the disputed domain name only included “2019 © Copyright Madihome srl – All rights reserved”, which is also not sufficient to comply with the Oki Data test.

The UDRP precedent mentioned by the Respondent when considering the second element, i.e. Patrick Pawlicki v. The Plastiform Company,WIPO Case No. D2007-1206, regarding the disputed domain name <plastiform.com>, in the opinion of the Panel is not comparable to the present case, since in deciding that case the Panel found “that Respondent has established rights and legitimate interests in the Domain Name. The record shows that for over a decade before notice of the dispute, Respondent used a corporate name corresponding to the Domain Name in connection with the bona fide offering of goods and services pursuant to a patent license from Complainant. Respondent’s use of its corporate name was made with Complainant’s full knowledge and acquiescence, as is evident from the 2000 Patent License Agreement and the Plastiform Company royalty checks endorsed by Complainant. Similarly, the Panel notes that Respondent registered and used the Domain Name in connection with this bona fide offering of goods and services for over eight years before notice of the dispute, with the knowledge of and without objection by Complainant. Thus Respondent has proved rights and legitimate interests in the Domain Name pursuant to Paragraph 4 (c) (i) of the Policy. Further, Respondent’s proof that since 1994 it has been commonly known as The Plastiform Company, a name Complainant himself asserts is identical to the Domain Name, also establishes Respondent’s rights and legitimate interests in the Domain Name under Paragraph 4(c)(ii) of the Policy, regardless of whether Respondent has any trademark rights to the PLASTIFORM Mark”.

In the present case, while the Complainant may have authorized implicitly the use of the M.A.DI. trademark for the purposes of advertising and developing the Complainant’s products, such implicit authorization should not be interpreted as an absolute permit to register and use a domain name confusingly similar to the Complainant’s trademark in a manner susceptible of creating confusion to the Internet users. The Panel notes that the Respondent could have registered for the provision of its services a domain name that would not lead to confusion with the Complainant’s trademark. In addition, the Panel notes that the nature of the disputed domain name carries a risk of implied association with the Complainant’s trademark.

The Panel notes that the disputed domain name was registered on March 5, 2018, while the Respondent incorporated the company Madihome S.r.l. on July 12, 2019, and the Respondent registered the European Union Trade Mark No. 018105043 for MADIHOME, on November 22, 2019. From the circumstances of the case, the Panel considers likely that the election of such company name is connected to the Complainant’s products. However, the Panel does not consider that the fact that an entity has been formed after the registration of the disputed domain name is in itself sufficient to establish rights or legitimate interests in the disputed domain name. The right to use a company name is not unlimited and cannot serve by itself to provide rights or legitimate interests in a domain name that is confusingly similar to a complainant’s trademark, especially when the respondent is clearly aware of the complainant’s trademarks and products (see for example FlixMobility GmbH v. Aleksandar Dimitrijević, Dijas Doo Jugbogdanovac Merosina, WIPO Case No. D2020-0485).

Furthermore, the Panel notes that the Respondent has obtained a trademark registration for MADIHOME (a registration that has been challenged by the Complainant) after the registration of the disputed domain name. Noting the circumstances of the case, the Panel finds on balance that the registration of the disputed domain name was motivated by the Complainant’s trademark (noting that the Respondent was the exclusive licensee for the production and retailing of the Complainant’s products), and the ulterior registration of the trademark by the Respondent would not be sufficient by itself to raise rights over the disputed domain name under the UDRP. In these circumstances, it appears likely to the Panel that the Respondent has registered this trademark in an attempt to secure for himself trademark rights in the term MADIHOME and thus to legitimize his ownership of the disputed domain name (and circumvent the application of the UDRP), while being well aware of the Complainant, and its goodwill in its trademark.

Based on the facts of this case, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, 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 [the respondent has] registered or has 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) that [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) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that 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”.

Regarding the registration in bad faith of the disputed domain name, there is no question about the fact that the Respondent knew of the Complainant and deliberately registered the disputed domain name, being the Respondent the exclusive licensee of the Complainant and the responsible for managing the Complainant’s official website “www.madihome.com”.

It remains to be decided if, when between a complainant (licensor) and a respondent (exclusive licensee) there is a license agreement, like in the present case, the registration under the respondent’s name of a domain name identical or confusingly similar to the complainant’s trademark should be considered in bad faith.

The Panel deems that a license agreement is granting the licensee, either exclusive or not, a right to “use”, not a right to “register”, especially under its name, unless explicitly provided in the agreement as authorized by the licensor.

This same opinion is shared by the panel in the UDRP precedent mentioned by the Respondent when considering the third element, otherwise not relevant as it will be explained later, i.e. Hawke & Company Outfitters LLC v. Perfect Privacy, LLC / Michael Rosenberg / Zee Co. Apparel Corp.,WIPO Case No. D2019-1941, when saying that “The License Agreement expressly provides Respondent the right to use the HAWKE & CO mark in a domain name but is completely silent as to how such a domain should be registered. Put another way, the License Agreement does not specify how the domain name should be registered or how it would be administered, but simply grants Respondent the right to use the HAWKE & CO mark in a domain name (which arguably may include the right to register a domain name)”.

In the present case, the Panel’s view is that the Respondent has not been able to prove that the registration of the disputed domain name was explicitly or implicitly authorized or accepted by the Complainant.

This view is based on the following:

The disputed domain name was registered almost ten months before the warning letter sent by the Complainant to the Respondent, less than a year and eight months before the termination of the license agreement by the Complainant and two years and a couple of months before the filing of this Complaint, that is not a long time, especially if compared to the case mentioned by the Respondent as a relevant precedent (Hawke & Company Outfitters LLC v. Perfect Privacy, LLC / Michael Rosenberg / Zee Co. Apparel Corp.,WIPO Case No. D2019-1941), in which more than ten years had passed between the registration of the disputed domain name and the filing of the Complaint: in the current case during this time, while the relationship between the Complainant (licensor) and the Respondent (exclusive licensee) was getting worse and worse, the Complainant stated to be unaware of the registration of the disputed domain name and the Respondent could not prove the opposite.

The Respondent stated that the Complainant was aware of the registration of the disputed domain name by submitting first the Complainant’s “explicit” consent (page 4 of the Response), then the Complainant’s “implicit” consent (page 6 of the Response), and basing both of them on paragraph 11 of the 2014 patent license agreement and on three email interchanges between the Complainant and the Respondent.

As stated above, the Panel interprets paragraph 11 of the 2014 patent license agreement and the three email interchanges as an implicit authorization to “use”, not to “register”, the distinctive sign M.A.DI., either as a trademark or as a domain name.

As far as email interchange of Response Annex 3 is concerned, the Panel finds that the Complainant is positive about the opportunity to register the distinctive sign MADIHOME both as a trademark and as a domain name under other Top-Level Domains (“TLDs” such as “.asia” and “.com.cn” are specifically mentioned), without consenting their registration under the Respondent’s name, but more likely than not implicitly meaning under the Complainant’s name, since in another communication the Complainant is stressing that both the trademark M.A.DI. and the domain name <madihome.com> belong exclusively to the Complainant. Based on the facts discussed above, the Panel can reasonably infer that the Respondent was aware that the registration of the disputed domain name would be confusingly similar to the Complainant’s trademark, and still decided to proceed with the registration of the disputed domain name, without discussing such registration with the Complainant (while the possible registration of other domain names with different TLDs was later on mentioned to the Complainant).

Furthermore, although in this email interchange the Complainant and the Respondent are talking about a possible defensive strategy for MADIHOME as a domain name, without any reference to a possible second level domain consisting of “themadihome”, the Panel believes that the impossibility for the Respondent to produce a single piece of communication reporting the same kind of discussion about the registration of the disputed domain name under the Respondent’s name further confirms that the Complainant was unaware of it.

Therefore the Panel cannot see any good faith reason behind the Respondent’s registration of the disputed domain name, since at that time the Respondent was the Complainant’s exclusive licensee for the patent on which Madihome project products were based, as well as the manager of the Complainant’s official website “www.madihome.com”. Even if the Respondent may have been implicitly authorized to use the Complainant’s trademark by virtue of the License Agreement, the Panel does not find any evidence that would explain or support the Respondent registering a (new) domain name, noting that he was already using the Complainant’s domain name <madihome.com>.

As regards the further reason submitted by the Respondent, that the disputed domain name had been registered for “avoiding likely episodes of cybersquatting”, the Panel considers such a strategy rather peculiar (as that registration could have been done providing the name of the Complainant as the registrant) and again apparently never discussed with the Complainant, unlike in the case of the opportunity to protect MADIHOME as a domain name under TLDs “.asia” and “.com.cn”.

In the Panel’s view it is also established that the disputed domain name is used in bad faith because, since the end of the license relationship communicated by the Complainant’s legal representatives to the Respondent, that is more than six months before the present Complaint was filed, in the website at the disputed domain name the Complainant’s trademarked products have been offered for sale under the name of a company, Madihome S.r.l., incorporated by the Respondent, and without any clear indication of the relationship (or lack of relationship) with the Complainant, although comprising the registered trademark of the Complainant, i.e. M.A.DI.

The content of the website at the disputed domain name, “www.themadihome.com”, is almost identical to the content of the Complainant’s official website, “www.madihome.com”, and therefore likely to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark and the relationship (or lack thereof) between the Complainant and the Respondent.

The following incorporation of the company Madihome S.r.l. and registration of the trademark MADIHOME by the Respondent under his name have been discussed under the second element of this decision, and the Panel finds on balance that these are further factors supporting the Panel’s consideration of the Respondent’s bad faith.

The reasons why in the opinion of the Panel the UDRP precedent mentioned by the Respondent when considering the third element, i.e.Hawke & Company Outfitters LLC v. Perfect Privacy, LLC / Michael Rosenberg / Zee Co. Apparel Corp.,WIPO Case No. D2019-1941, is not relevant in the present case, are the difference in the timing for the filing of the complaint and the circumstances surrounding the registration of the disputed domain name in this case, compared with the circumstances and timing in the precedent mentioned by the Respondent. In deciding that case the panel found that “[h]ere, Respondent registered the disputed domain name on October 30, 2008. At that time, Respondent Michael Rosenberg was apparently still a shareholder of Complainant. At some point thereafter, Respondent Michael Rosenberg separated from Complainant and Zee Co. was granted a license to use the HAWKE & CO mark with certain products pursuant to the September 30, 2009 License Agreement. Paragraph 2.1 of the License Agreement specifically granted Zee Co. the right to use the HAWKE & CO mark in or as part of domain names in connection with the advertising, promotion or sale of the products authorized under the License Agreement. On its face, it thus appears to the Panel that Respondent registered the disputed domain name with implicit, if not explicit, consent or ratification from Complainant. (…) Notably, Complainant has provided no evidence that establishes or shows that Respondent registered the disputed domain name in bad faith in 2008 while Respondent Michael Rosenberg was still a shareholder of Complainant. Indeed, Complainant makes no mention of the Parties’ prior business relationship (or that the principals of the respective companies are related), and makes no mention regarding the circumstances that led to the License Agreement in 2009 or what happened between the Parties in 2008 and 2009. Complainant’s entire argument of bad faith is based on the fact that the disputed domain name is registered under Respondent’s name, the actions of Respondent in 2019, the use of the disputed domain name in 2019 and Respondent’s refusal to transfer the disputed domain name in 2019. Again, while these actions might establish Respondent’s bad faith use of the disputed domain name in 2019, they do not establish that in 2008, in view of the terms in License Agreement granting Respondent the right to use a domain name that consists of the HAWKE & CO mark, Respondent registered the disputed domain name in bad faith and without the implicit or explicit consent of Complainant”.

As a conclusion, the above evidence suggests to the Panel that the Respondent intentionally registered and is using the disputed domain name in order to create confusion with the Complainant’s trademark and attract, for commercial gain, Internet users to his website, in accordance with paragraph 4(b)(iv) of the Policy.

The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.

The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been 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 <themadihome.com> be transferred to the Complainant.

Edoardo Fano
Sole Panelist
Date: July 2, 2020