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and Mediation Center
Solahart Industries Pty Ltd. v. Ciccarelli Luigi
Case No. D2006-0051
1. The Parties
The Complainant is Solahart Industries Pty Ltd., Rydalemere, NSW, Australia.
The Respondent is Luigi Ciccarelli, Napoli, Italy.
2. The Domain Name and Registrar
The disputed domain name <solahart.org> (the “Domain Name”)
is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2006. That same day, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On January 19, 2006, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 20, 2006. 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 22, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 14, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2006.
The Center appointed David H. Bernstein as the Sole
Panelist in this matter on March 28, 2006. 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
Because Respondent has failed to file a response in
this case, the Panel accepts as true all statements of fact made by the Complainant
in its submission. Champion Innovations, Ltd. v. Dussling, WIPO
Case No. D2005-1094 (December 16, 2005); Top Driver, Inc. v. Benefits
Benefits, WIPO Case No. D2002-0972
(January 7, 2003).
The Complainant is a company registered under the Corporations Law of Victoria, Australia. Complainant owns the SOLAHART mark, which has been registered as a trademark since 1978 in both Australia, the home country of the Complainant, and Italy, the Respondent’s country of residence. Complainant and its predecessor in interest also have registered the SOLAHART mark in a number of other countries. Complainant uses the mark for water heating systems.
Complainant’s European affiliate previously employed Respondent’s business CAMAL S.A.S. as an agent for the sale and installation of Complainant’s water heating systems. Respondent registered the Domain Name without Complainant’s consent in 2000.
It is not clear when the business relationship between Complainant and Respondent ended. In any case, Respondent is no longer authorized to sell Complainant’s heating systems, but it continues to sell heating systems in competition with Complainant. Notwithstanding the termination of its relationship with Complainant, Respondent continues to use the Domain Name and continues to display the SOLAHART mark prominently on the website associated with the domain name.
In 2005, Complainant wrote to Respondent and demanded
that Respondent cease using the SOLAHART mark. Respondent agreed in writing
to cancel his registration of the Domain Name. Notwithstanding that agreement,
Respondent has failed to cancel its registration of the Domain Name.
5. Parties’ Contentions
Complainant contends that the Domain Name is identical to its SOLAHART mark on the ground that the Domain Name and the mark are identically spelled.
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name. Complainant alleges that Respondent has not acquired any rights to the SOLAHART trademark, and that Respondent registered the Domain Name without Complainant’s permission. Complainant further alleges that Respondent falsely advertises his business as selling and installing Complainant’s heating systems.
Complainant contends that Respondent registered and is now using the domain name in bad faith. Complainant alleges that Respondent associates his business’ website with the Domain Name in order to attract Internet users to promote his business interests. Complainant further contends that Respondent’s use of the Domain Name creates a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s website.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Domain Name is identical to a trademark in which the Complainant has rights.
Complainant attaches copies of its registrations of the SOLAHART mark in three countries. This evidence is more than sufficient to establish Complainant’s rights in the mark.
The only difference between the Domain Name and the SOLAHART mark is that the
Domain Name adds a top level domain suffix, “.org”. Under the Policy
the Domain Name and Complainant’s mark are identical. Omnigraphics
Capital (Pty) Ltd.v. Fleximount, WIPO
Case No. D2004-0471 (August 17, 2004).
B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Complainant alleges that Respondent registered the Domain Name without Complainant’s permission. Complainant further alleges that Respondent uses the Domain Name to sell its own products and services in competition with Complainant.
Even if Respondent was, at one time, an authorized distributor of Complainant’s
SOLAHART heating systems, Respondent no longer sells or installs these systems.
It does, however, sell competing heating systems, and advertises its sale and
installation of these competitive heating systems on the “www.solahart.org”
website. The use of the Domain Name to attract potential consumers to Respondent’s
site, coupled with the offering of competitive products on that site, is a classic
bait and switch that evidences a lack of rights or legitimate interests. See
generally Oki Data Americas, Inc. v. ASD, Inc., WIPO
Case No. D2001-0903 (November 6, 2001).
Accordingly, the Panel finds that Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Name was registered and is being used in bad faith.
Respondent’s current use of the Domain Name in bad faith is clear from Complainant’s uncontested allegations. Respondent knowingly sells competing products using a Domain Name and website bearing Complainant’s registered trademark. As such, Complainant has proven that Respondent is causing confusion among consumers. Under paragraph 4(b)(iv) of the Policy, this conclusion establishes bad faith use.
Whether Respondent’s registration of the Domain Name was also in bad
faith is a closer question, in part because the Complaint provides very little
context or evidence concerning the registration itself. In several cases involving
the registration of a domain name by a distributor or sales agent, panels have
refused to find bad faith registration. Green Tyre Co. v. Shannon Group,
WIPO Case No. D2005-0877 (October 5, 2005);
Miss Universe L.P., LLLP v. A Visual Group, WIPO
Case No. D2005-0738 (August 29, 2005); Western Holdings, LLC v. JPC Enter.,
LLC, WIPO Case No. D2004-0426 (August 5, 2004);
K&N Eng’g, Inc. v. Kinnor Servs., WIPO
Case No. D2000-1077 (January 19, 2001). However, all of these cases involved
at least an allegation by the distributor that the trademark owner consented
to the registration of the domain name at the time of registration.
Here, Complainant alleges that Respondent registered the Domain Name without
Respondent’s permission. Respondent had an opportunity to contest that
assertion of fact, but has chosen not to do so. Under these circumstances, the
Panel finds that the Respondent’s registration of the Domain Name with
knowledge of Complainant’s trademark registration and without Complainant’s
consent constitutes bad faith registration. Herbalife Int’l, Inc. v.
Farmaha, WIPO Case No. D2005-0765
(October 3, 2005).
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <solahart.org> be transferred to the Complainant.
David H. Bernstein
Dated: April 16, 2006
1 Given the absence of
a Response, the Panel has carefully reviewed the record to ensure that the Center
gave Respondent fair notice of the Complaint. See Nicole Kidman v. John Zuccarini,
WIPO Case No. D2000-1415 (January 23, 2001).
The Center mailed the notification of the Complaint to Respondent by courier
to both of Respondent’s mailing addresses: the Administrative Contact
address listed in the Registrar Verification, and the business address for Respondent’s
company CAMAL S.A.S. provided in the Complaint. The notification sent to the
Administrative Contact address was successfully delivered. The Center also sent
the notification by email to the firstname.lastname@example.org address and to the
email addresses listed in the Registrar Verification and on Respondent’s
website. The Panel finds that the Center has discharged its obligation to provide
fair notice to Respondent under paragraph 2(a) of the Rules.