WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Automobile Club di Brescia v. Contact Privacy Inc. Customer 0159067401 / Filipp Gorodetskiy; Yasin Hirakee, Al Hirakee Businessmen Services,

Case No. D2020-2855

1. The Parties

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

The Respondents are Contact Privacy Inc. Customer 0159067401, Canada / Filipp Gorodetskiy, United States of America (“United States”); Yasin Hirakee, Al Hirakee Businessmen Services, United Arab Emirates.

2. The Domain Names and Registrars

The disputed domain name <millemiglia-dubai.com> is registered with eNom, LLC and the disputed domain name <millemiglia-gallery.com> is registered with and Tucows Inc. (the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2020. On October 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 29, 2020, both Registrars transmitted by email to the Center their verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 3, 2020 disclosing multiple underlying registrants revealed by the registrars and requesting the Complainant to either file separate complaint(s) for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity. The Complainant filed an amended Complaint on November 4, 2020.

The Center verified that the Complaint together with the amended 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 Respondents of the Complaint, and the proceedings commenced on November 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2020. The Center received email communications from the Respondent, Filipp Gorodetskiy, confirming ownership of both of the disputed domain names, later stating the disputed domain names were not for sale and finally asking to be “removed from this conversation”. No official response was filed with the Center. . Accordingly, the Center sent out the commencement of panel appointment process on January 14, 2021.

The Center appointed Rodrigo Azevedo as the sole panelist in this matter on January 27, 2021. 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 the trademark owner of the world-renowned Italian automobile race MILLE MIGLIA.

The Complainant obtained registrations for the trademark MILLE MIGLIA in numerous regions of the world, such as the United Arab Emirates trademark registrations number 10166 and 10167, both registered on October 16, 2007; the International Trademark registration number 776355, registered on July 19, 2001; and the European Union Trade Mark registration number 1519511, registered on April 2, 2001.

The Complainant is also the holder of numerous domain names and social network profiles encompassing the term “mille miglia”.

The Respondents registered the disputed domain names <millemiglia-dubai.com> and <millemiglia-gallery.com> respectively on August 21, 2020, and on November 29, 2019.

The Panel accessed the disputed domain names on February 8, 2021, at which time the disputed domain name <millemiglia-dubai.com> was not pointing to any active website and the disputed domain name <millemiglia-gallery.com> redirected users to the website originally published at “www.mmgallery.ae”, which is designed to promote artistic products related to automobile races and contains a reproduction of the Complainant’s trademark MILLE MIGLIA.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

- The disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights. The disputed domain names contain entirely the Complainant’s trademarks and consequently they must be considered as confusingly similar for the purposes of UDRP. The addition of generic / descriptive / geographical has no impact in excluding the risk of confusion; to the contrary such terms could increase the likelihood of confusion between the domain names and a trademark. The terms “gallery” has a descriptive meaning and it could be linked to the Complainant’s business; the word “dubai” is a geographical term and it could be connected to the Complainant’s activities in United Arab Emirates. Finally, it is well established that Top-Level Domains (“TLDs”) are disregarded in the assessment under paragraph 4(a)(i) of the Policy when comparing disputed domain names and a trademark in view of their technical function.

- The Respondent has no rights or legitimate interests in respect of the disputed domain names. It is sufficient for the Complainant to produce a prima facie evidence in order to shift the burden of production to Respondents. In the present case, the Complainant denies that the Respondents could have any right or legitimate interests in registering the disputed domain names. In particular, the Complainant’s internal policies exclude that dealers, agents, distributors, wholesalers or retailers are authorized to register and use MILLE MIGLIA as domain names. Furthermore, it is very improbable that the Respondents could be commonly known as “Mille Miglia”, considering the reputation of the trademark, which is strictly connected to the well-known race. As a matter of fact, the Respondents are known by other names (Filipp Gorodetskiy for <millemiglia-gallery.com> and Yasin Hirakee, Al Hirakee Businessmen Services for à<millemiglia-dubai.com>). Furthermore, the Complainant conducted a trademark search and it did not disclosed any trademark registered or filed in the name of the Respondents which could give them rights to register the disputed domain names. The disputed domain names link to a website at “www.mmgallery.ae”, where numerous goods are promoted under the trademark MILLE MIGLIA. The use of the disputed domain names does not amount to 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, neither to a bona fide offering of goods or services: i) the disputed domain names are used for commercial reasons; ii) the MILLE MIGLIA trademark is used by the Respondents in connection with goods related to the well known MILLE MIGLIA race; iii) the risk of implied affiliation is even higher due to the fact that the disputed domain names reproduce the MILLE MIGLIA trademark in its entirety and the circumstance that the descriptive/geographical additions even increases the risk of confusion as they could be easily associated with the Complainant; iv) the disputed domain names link to a website which could create confusion for Internet users.

- The disputed domain names were registered and are being used in bad faith. The Respondent never received an authorization to register or make any kind of use of the Complainant’s trademarks. Additionally, the Respondents could not ignore the Complainant’s rights on the MILLE MIGLIA trademark, because MILLE MIGLIA is, and was at the time of the domain name registrations, a well-known trademark all over the world, United Emirates Arab and United States included. Moreover, the disputed domain names were registered long after the filing/registration of the Complainant’s trademarks, having effects all over the world, including United Emirates Arab and United States. The use of the disputed domain names definitely proves that the Respondents knew about the MILLE MIGLIA race and trademarks. The Respondents did not reply to the Complainant’s cease and desist letter and such circumstance has been considered an index of use in bad faith of the domain name by previous panels.

B. Respondents

Apart from the emails mentioned in the procedural history, the Respondents did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Consolidation of domain names in one proceeding

The Complainant made a request for the consolidation of the disputed domain names <millemiglia-dubai.com> and <millemiglia-gallery.com> in the same proceeding, despite the fact the WhoIs database informs different Respondents’ names for each of the disputed domain names.

The disputed domain names reproduce the Complainant’s trademark MILLE MIGLIA together with descriptive/geographical terms (respectively “-dubay” and “-gallery”) and the Top-Level Domain “.com”. The Complainant also brought screenshots evidencing that both disputed domain names used to redirect Internet users to the same website at “www.mmgallery.ae”. Accordingly, the nature of both disputed domain names discloses a pattern of common control.

The Complainant also attached a message from the Respondent Mr. Filipp Gorodetskiy replying to one of the Registrar’s email communication regarding the expiry and renewal of the disputed domain names, stating that he was “the owner of both of the domains”.

The request for consolidation was not challenged by the Respondents.

According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.

Therefore, in light of the circumstances described above and of the evidence brought by the Complainant, the Panel accepts the consolidation request in the present case.

6.2 Merits

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:

(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 Panel has no doubt that “Mille Miglia” is a term directly connected with the Complainant’s notorious automobile race, since 1927.

Exhibit 8 to the Complaint show trademark registrations for MILLE MIGLIA obtained by the Complainant as early as in 2001.

The trademark MILLE MIGLIA is wholly encompassed within the disputed domain names. The disputed domain names differ from the Complainant’s trademark MILLE MIGLIA merely by the addition of the terms “-dubai” or “-gallery”, as well as of the gTLD extension “.com”.

Previous UDRP panels have found that the mere addition of geographical (“-dubai”) or dictionary (“-gallery”) terms to a trademark in a domain name do not avoid a finding of confusing similarity. This has been held in many UDRP decisions (see, e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc., WIPO Case No. D2000-0927).

It is already well established that the addition of a gTLD extension such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.

As a result, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademarks, and that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:

(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name; 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 at issue.

Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondents have no rights or legitimate interests in the disputed domain names.

The Panel notes that the present record provides no evidence to demonstrate the Respondents’ intent to use or to make preparations to use the disputed domain names in connection with a bona fide offering of goods or services. Indeed, the Complainant showed that both disputed domain names used to redirect Internet users to a website reproducing the Complainant’s MILLE MIGLIA trademark and promoting products related to automobile races, without disclosing it was not an official channel of the Complainant.

The Complainant has not licensed or authorized the usage of its trademarks to the Respondents, and it does not appear from the present record that the Respondents are commonly known by the disputed domain names. Actually, the Respondents have not indicated any reason to justify why the specific terms “millemiglia-dubai” and “millemiglia-gallery” were chosen to compose the disputed domain names.

Consequently, the Panel is satisfied that the Respondents have no rights or legitimate interests in the disputed domain names, and the Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of 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 documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent 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 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 its website or location or of a product or service on its website or location.

When the disputed domain names were registered by the Respondent in 2019 and in 2020, the trademark MILLE MIGLIA was already well known and directly connected to the Complainant’s automobile races for many decades. It is also important to emphasize that the disputed domain names used to point to a website that contains references to MILLE MIGLIA races and reproduces the MILLE MIGLIA trademark.

The disputed domain names encompass the trademark MILLE MIGLIA. The addition of the terms “-dubai” and “-gallery” even enhances the risk of confusion in the present case, suggesting that the disputed domain names refer to an official MILLE MIGLIA website.

Therefore, the Panel concludes that it is unlikely that the Respondents were not aware of the Complainant’s trademarks and that the adoption of the disputed domain names was a mere coincidence.

Also, according to the WIPO Overview 3.0, section 3.1.4, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith.

Currently, there is no active website linked to the disputed domain name <millemiglia-dubai.com>, but this is insufficient to avoid the Panel’s findings that the disputed domain name is also being used in bad faith. In the Panel’s view, the circumstances that the Respondents are, (a) not presently using the disputed domain name; (b) not indicating any intention to use it; and (c) not at least providing justifications for the registration of a domain name containing third-party famous trademark, certainly cannot be used in benefit of the Respondent in the present case. Furthermore, in the Panel’s view, the references – not challenged – that the Respondents have recently used such disputed domain name in connection with a website reproducing the Complainant’s trademark additionally support a finding of bad faith registration and use of the disputed domain name by the Respondents in the present case.

Accordingly, the Panel finds that the disputed domain names were registered and are being used in bad faith, and the Complainant has also satisfied the third element 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 names <millemiglia-dubai.com> and <millemiglia-gallery.com> be transferred to the Complainant.

Rodrigo Azevedo
Sole Panelist
Date: February 15, 2021