Alpitour S.p.A. v. Zerbo
Claim Number: FA0608000767519
Complainant is Alpitour S.p.A. (“Complainant”), represented by Chiara Sartori, of Tortonese-Pene Vidari-Biagi Studio Legale, Piazza Solferino n. 10, Torino 10121, Italy. Respondent is Zerbo (“Respondent”), Via Gaggio 55, Senna Comasco CO, 22070, IT.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <alpitour.com>, registered with Dotster.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 3, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 7, 2006.
On August 3, 2006, Dotster confirmed by e-mail to the National Arbitration Forum that the <alpitour.com> domain name is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 17, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 6, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@alpitour.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 12, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <alpitour.com> domain name is identical to Complainant’s ALPITOUR mark.
2. Respondent does not have any rights or legitimate interests in the <alpitour.com> domain name.
3. Respondent registered and used the <alpitour.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Alpitour S.p.A., holds numerous registrations for the ALPITOUR mark, including one with the Italian Trademark Office (Reg. No. 481,168 issued on June 16, 1987). Complainant makes use of the ALPITOUR mark in connection with its travel services. Complainant is one of Italy’s leading providers of tour operating services, airline services, hotel services, and incentive and event services. Complaint currently offers these services through its official <alpitour.it>, <alpitourworld.it>, and <alpitourworld.com> domain names.
Respondent registered the <alpitour.com> domain name on July 5, 2001. Respondent’s disputed domain name resolves to a website featuring links to various competing and non-competing commercial websites.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has asserted rights in the ALPITOUR mark through its various registrations with the Italian trademark authority. Because Complainant’s rights in the ALPITOUR mark precede Respondent’s rights in the <alpitour.com> domain name, the Panel finds that Complainant has sufficiently established rights under Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The Panel finds that Respondent’s <alpitour.com> domain name is identical to Complainant’s ALPITOUR mark under Policy ¶ 4(a)(i). In Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000), the Panel found the <pomellato.com> domain name to be identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant in the determination of whether a domain name is identical or confusingly similar to an established mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). As a result, the Panel holds that Respondent’s disputed domain name is identical to Complainant’s ALPITOUR mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not have rights or legitimate interests in the <alpitour.com> domain name in accordance with Policy ¶ 4(a)(ii). Upon Complainant’s making a prima facie case, the burden shifts to Respondent to bring forth evidence of rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Complainant contends that Respondent is using the <alpitour.com>
domain name to operate a website that features links to both competing
commercial travel services websites and websites with no relation to
Complainant or its business at all. The
Panel finds that Respondent’s use of the <alpitour.com> domain
name is neither a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy
¶ 4(c)(iii). See Prudential Ins. Co.
of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001)
(finding no rights or legitimate interests in the disputed domain name where
the respondent was using the complainant’s mark to redirect Internet users to a
website offering credit card services unrelated to those services legitimately
offered under the complainant’s mark); see also Seiko
Kabushiki Kaisha v. CS into Tech, FA
198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking
for products relating to the famous SEIKO mark, to a website unrelated to the
mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i),
nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Furthermore, Complainant contends that Respondent is not commonly known by the disputed domain name. Respondent’s WHOIS information reflects the registrant to be Zerbo, a name wholly unrelated to Complainant or its business. In light of Respondent’s failure to present evidence that it is either authorized to register names featuring the ALPITOUR mark or that it is commonly known by the <alpitour.com> domain name, the Panel finds that Respondent is not commonly known by the disputed domain name for purposes of Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
Complainant contends that Respondent’s use of the <alpitour.com> domain name for the purposes of operating a website that features links to various competing commercial websites is evidence of bad faith registration and use. The Panel infers from Respondent’s use that it is receiving click-through fees for each diverted Internet user. Such use for commercial gain is held to be a disruption of Complainant’s business and evidence of bad faith under Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Furthermore, Respondent’s use will likely cause confusion as
to Complainant’s sponsorship of and affiliation with the resulting
websites. The Panel finds that such use
of a domain name for Respondent’s own commercial gain is additional evidence of
Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated
Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”); see also Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the
respondent directed Internet users seeking the complainant’s site to its own
website for commercial gain).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alpitour.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 22, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum