Domain name - Domain name dispute resolution policy – Italy – European Trademark – European Service Mark - Identical - Confusingly similar - Bad faith registration - Bad faith use – Default – Continuous Use.

Complainant is an Italian corporation incorporated in Monza and manufactures electrical capacitors for sale internationally. Complainant owns the service mark "Icar" which coincides with the legal name of the Italian corporation Icar SPA since 1945. Complainant has trademark and service mark registrations in Europe.
Respondent is ICAR, an entity of an unknown nature.  When the Panel, through independent action, tried to access the website it was concluded that the website was inactive.

Held, Domain name transferred. 

Complainant has rights on the service mark ICAR. Since 1945 it uses ICAR as a business name. The Panel finds that the domain name at issue is indisputably identical, or having in mind the addition of ".com", at least confusing similar to Complainant's service mark.
By its default, Respondent has not contested the allegation of Complainant that Respondent lacks rights or legitimate interests in the domain name. The Panel thus assumes that there was no other reason for Respondent choosing the domain name but for the presumably known existence of the Complainant´s mark, ICAR.
Respondent has not contested Complainant´s assertion that Respondent told Complainant in a phone conversation that the domain was for sale for "a couple hundred thousand to over 1 million dollars".  This leads the Panel to conclude that the "primary" or chief purpose of registration was selling the domain name at issue with a huge profit and was thus registered in bad faith. The Panel also accepts as relevant for this case that "bad faith use can also exist in situations where… absent a transferal, the Complainant is deprived of the use of the Domain Name and must always be concerned about the possibility of a confusing future site.
 
Policies referred to

Uniform Policy for Domain Name Dispute Resolution

Rules for Uniform Domain Name Dispute Resolution Policy 

Supplemental Rules for Uniform Domain Name Dispute Resolution Policy
 
 

Bianchi, Panelist: -

DOMAIN NAME TRANSFERRED

1. The Parties
The Complainant is Icar SPA, an Italian corporation incorporated in Monza, with address at Via Isonzo 10, 20052 Monza, Italy (the "Complainant"), represented in this proceeding by Mr. David O’Callaghan of The Consultants International Group, Inc. 1616 H Street NW, Washington DC 20006, USA. 
The Respondent is ICAR, an entity of an unknown nature, with address at P.O. Box 13009, Coyote, CA 95013, USA (the "Respondent").

 2. Domain Name and Registrar
The domain name at issue is <icar.com> registered with Network Solutions Inc., of Herndon, VA 20170, USA. 

 3. Procedural History
On June 6, 2000 a Complaint in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules") was submitted by e-mail to the WIPO Arbitration and Mediation Center (the "Center"). On June 13, 2000 the Complaint was received in hardcopy.
On June 8, 2000 the Center sent an Acknowledgement of Complaint to the Parties. The communication was made to the Respondent by courier EMS to the address as shown at para. 1 above. By June 15, 2000 it had not been delivered. 
On June 10, 2000 the Registrar responded by email the Center´s request for verification of June 8, 2000. NSI informed inter alia that the Respondent is the current registrant of the domain name at issue, with address at P.O. Box 13009, Coyote, CA 95013, USA.
On June 14, 2000 the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent by EMS courier with enclosures to ICAR (Vergne, Nadia -Administrative Contact, at the above quoted address, and to the technical and zone contact, hostmaster network, at 1 rue de terre-neuve, les ulis, FRANCE. The reception thereof is recorded. Facsimile transmission and reception of 20 pages is recorded. Emails could not be transmitted to [email protected] and [email protected] because of permanent fatal errors of those addresses. The Center established July 3, 2000 as deadline for the submission of a Response to the WIPO Center and the Complainant.

The Notification of Complaint included following paragraph:
"6. Default. If your Response is not sent by the above date or we have not received any required payment from you by that date, you will be considered in default. We will still appoint an Administrative Panel to review the facts of the dispute and to decide the case. The Administrative Panel will not be required to consider a late-filed Response, but will have the discretion to decide whether to do so and, as provided for by Rules, Paragraph 14, may draw such inferences from your default as it considers appropriate. There are other consequences of a default, including no obligation on our part to consider any designations you have made concerning the appointment of the Administrative Panel or to observe any guidelines you have provided concerning case-related communications."
On July 5, 2000 the Center sent to the Respondent a Notification of Respondent Default by courier and email.
After having received Roberto A. Bianchi´s Statement of Acceptance and Declaration of Impartiality and Independence, on July 6, 2000 the Center appointed him as a Sole Panelist. The scheduled decision date was July 19, 2000. Thus, the Administrative Panel finds that it has been properly constituted.
The Panel sharing the assessment of the Center of June 14, 2000, independently finds that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules, and that payment of the fees was properly made. The Panel finds that the Center has discharged its responsibilities at reasonably trying to notify the Complaint to the Respondent pursuant to Rules, paragraph 2(a), and that the Notification of Respondent Default was also properly notified.
There were no extensions granted nor orders issued.
The registration agreement for the domain name at issue has been done and executed in English by Respondent-Registrant and the Registrar. The Complainant has submitted its Complaint without any observation. Seeing the Panel no special circumstances to determine otherwise, as provided in Rule paragraph 11, the language of this proceeding is English. 

 4. Factual Background
Because the Complaint is formally in compliance with the Policy, the Rules and the Supplemental Rules, and because Complainant´s allegations have not been contested by the Respondent, the Panel finds following facts as having been sufficiently established:
The Complainant owns the service mark "Icar" which coincides with the legal name of the Italian corporation Icar SPA since 1945. The Complainant is a manufacturer of electrical capacitors for sale thought the world. 
The lack of any opposition by the Respondent to Complainant´s assertions allows to conclude that the Complainant has trademark and service mark registrations in Europe. Although the Complainant has not presented the Panel with certificates of trademark registrations that prove its ownership of the mark based exclusively on registration, the Complainant has asserted that it has continuously been using the mark for the last 55 years. This normally means that ownership over a mark does in fact exist. 
The Panel thus finds that Icar SPA has rights to the service mark in addition to ownership of the Icar tradename.
According with the WHOIS domain name records, the domain name at issue was registered on February 5, 1996, and the registrant continues to be ICAR after the record was last updated on October 6, 1999. The Complainant´s reasonable efforts to check the real existence of the Respondent a least by means of looking after its phone number and the phone number of "Nadia Vergne," the administrative contact listed on the WHOIS database, had no positive results. 
The phone number listed for the contact seems to connect to a business that refuses to give its name and on the answering machine for that same number, there is no indication of whom has been reached. The answering machine states simply "please leave a message."
In a phone conversation dated April 13, 2000 the Respondent told the Complainant’s authorized representative that the domain name Icar.com was for sale for "a couple hundred thousand to over 1 million dollars."
The applicable registration agreement between the Registrar and the registrant is version 4.0. At the moment of the issuance of the present decision that in turn means that version 5.0 is in effect, after the change of the dispute resolution policy was consented by the registrant-Respondent. Such a consent is the result of the Respondent not having requested the registrar the cancellation of the domain name registration after the policy’s change by the registrar (the domain name is "active"). The policy now in effect is the existing ICANN´s Policy, under which these proceedings have been installed, with effect for the registrar NSI and the Respondent since January 1, 2000.

5. Parties’ Contentions
A. Complainant
The Complainant contends:
The domain name "Icar.com" is confusingly similar to the service mark "Icar" to which the Complainant has rights. The service mark is "Icar", the legal name of the Complainant’s business since 1945. Icar S.P.A. manufactures electrical capacitors for sale throughout the world, including the United States. 
The domain name is identical to Icar’s service mark, as it is the same as Icar’s business name. Fifty-five years of continuous use of the term and the registration of trademarks and service marks in Europe show that the Complainant does have interests and rights in the name "Icar." 
The term "Icar" has no meaning or significance other than as a service mark identifying a business of the same name. The Respondent does not appear to have any business under the name "Icar" and has no active website under the domain name in issue. There is no evidence that the Registrant has made any use of, nor demonstrable preparations to use, the domain name or any name corresponding to the domain name in connection with a bona fide offering of goods or services since the name’s registration in 1996.
The Respondent has not used the domain name for a bona fide offering of goods or services, and has acted in bad faith, pursuant to the Policy paragraph 4(a)(iii).
The domain name in issue has been registered and used in bad faith because Icar.com registered the domain name primarily for the purpose of selling the domain name, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name. In a phone conversation dated April 13, 2000 the Respondent told the Complainant’s authorized representative that the domain name Icar.com was for sale for "a couple hundred thousand to over 1 million dollars". The Complainant contends that this intent to sell the domain name constitutes both registration and use in bad faith, a contention that is consistent with a United States district court decision, finding that intent by the domain name registrant to sell a
domain name constitutes a "commercial use" under United States antidilution law (15 U.S.C. § 1125(c)).(Intermatic Inc. v. Toeppen, 947 F. Supp. 1227 [N.D. Ill. 1996].)
The Respondent has not used the domain name for a bona fide offering of goods or services. It has made no use of the domain name and does not appear to be doing business under the name "Icar". The Respondent may in fact have a long record of purchasing domain names for the purpose of selling them, as the Respondent informed the Complainant’s authorized representative that "we have registered 3000 domain names" and that "the normal fee for a domain name is a couple hundred thousand to over a million dollars."
It appears that the registrant purchased the domain name with the sole intent of selling it to the Complainant or to another business with a claim to the initials "ICAR."
The Respondent does not appear to be a legal business named Icar. When the Complainant’s authorized representative called telephone information ([408}555-1212) for Coyote, California, on March 9, there was no listing for an "Icar", nor for "Nadia Vergne," the administrative contact listed for Icar.com on Whois. 
The phone number listed for the administrative contact connects to a business that refuses to give its name and on the answering machine for that same number, there is no indication of whom one has reached. The answering machine states simply "please leave a message."
If Icar is not a legal entity, the Respondent’s registration of the domain name in issue, when the Respondent has no legitimate interests in the domain, would constitute unfair competition as found in Tractebel, Court of Appeal of Brussels (April 1, 1998), where the Court held that the registration of a domain name by a third party, thereby preventing the owner of a trademark from registering its corresponding domain name, constituted an act of unfair competition.
The Respondent’s offer to sell the domain name at an exorbitant price and the absence of any demonstration of use or potential use of the domain name are compounded by the fact that denying the Complainant access to the domain name and by selling the domain name to a third party may compromise the Complainant’s business and confuse customers who go to "www.icar.com" searching for the Complainant’s site. 
As a WIPO Administrative Panel found in a similar case, "bad faith use can also exist in situations where… absent a transferal, the Complainant is deprived of the use of the Domain Name and must always be concerned about the possibility of a confusing future site." The Cellular One Group V. Paul Brian, WIPO March 10, 2000 Case No. D2000-28.
The Complainant submits various precedents to demonstrate legal grounds in support of its allegations

B. Respondent
The Respondent has not submitted a response, is therefore in default and, after the Notification of Respondent Default, has not made any submissions whatsoever.

6. Discussion and Findings
6.1 Effects of Respondent Default
The specific allegations and contentions of the Complainant against the domain name registration bound the Respondent to respond specifically. According with Rules paragraph 5(b)(i) "(t)he response shall (...) (r)espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name (...)". The Panel further notes that the Notification of Default by the Center clearly advised the Respondent about the consequences of its failing to submit a response. See 3 above.In case of a default, under Rules paragraph 14 (a), the Panel "shall proceed to a decision on the complaint", and under paragraph 14(b) the Panel " shall draw such inferences therefrom as it considers appropriate".Thus, the Respondent’s default would indicate that the Complainant´s assertions are sufficient ground for the Panel to proceed to a default decision in its favor. However the Policy does not allow to automatically extract such a consequence, because "the complainant must prove that each of these three elements are present". Policy, paragraph 4(a) in fine.

6.2 Independent Connection with the Respondent’s Web Site
The Panel has powers under Rules, Paragraph 10(a), to independently visit the Internet in order to obtain additional light in this default proceeding.
On July 13, 2000 the Panel tried to visit the www.icar.com web site of the Respondent. The connection resulted in an error message with the text "the Internet site http://www.icar.com cannot be accessed." A connection with the server could not be established. This means that the site is inactive.

6.3 Identity or Confusing Similarity
The complainant has rights on the service mark ICAR. Since 1945 it uses ICAR as a business name. The Panel finds that the domain name at issue is indisputably identical, or having in mind the addition of ".com", at least confusing similar to the Complainant´s service mark.

6.4 Rights or Legitimate Interests
By its default, Respondent has not contested the allegation of the Complainant that the Respondent lacks rights or legitimate interests in the domain name. The Panel thus assumes that there was no other reason for the Respondent having chosen <icar.com> as its domain name but the presumably known existence of the Complainant´s mark, ICAR. 
The Respondent has failed to present any evidence of rights or legitimate interests to the domain name. 
Additionally the result of the connection independently conducted by the Panel did not show any evidence as to the rights or the legitimacy of the interests of the Respondent in the domain name. See 6.2. above. No circumstance has been evidenced that could reasonably support such an inference pursuant to the Policy, paragraph 4(c). 
The Panel thus finds that the Respondent has no rights or legitimate interests to the domain name at issue.

6.5 Registration in Bad Faith
By its default, Respondent has not responded to the very specific allegation of the Complainant that the Respondent registered the domain name primarily for the purpose of selling the domain name to the Complainant for a consideration well in excess of documented out-of-pocket costs directly related to the domain name. 
In particular, the Respondent has not contested the Complainant´s assertion that the Respondent told the Complainant in a phone conversation dated April 13, 2000 that the domain was for sale for "a couple hundred thousand to over 1 million dollars".  This leads the Panel to conclude that the "primary" or chief purpose of registration was selling the domain name at issue with a huge profit.  The Panel finds therefore that the domain name at issue was registered in bad faith.

6.6 Use in Bad Faith
An offer of the domain name for sale has been deemed a commercial use in relevant precedents such as the U.S. case Panavision International L.P. v Toeppen, cited to the Panel by the Complainant in Appendix C to the Complaint. The Panel considers it to be a relevant precedent in this case; in the first place, because the Respondent is –according to the WHOIS database – is presumably doing business in the United States of America, and in the second place, because the mutual jurisdiction to challenge this present decision is also located in that country. 
The commercial use resulting from the offer for sale for a huge consideration is sufficient for this Panel to consider that the domain name is being used in bad faith. The Panel also accepts as relevant for this case that "bad faith use can also exist in situations where… absent a transferal, the Complainant is deprived of the use of the Domain Name and must always be concerned about the possibility of a confusing future site." The Cellular One Group v. Paul Brian, WIPO Case No. D2000-0028
(March 10, 2000).

 7. Decision
For all the above reasons the Panel has found that the domain name <icar.com> is identical or at least confusingly similar to the service mark of the Complainant, that the Respondent has no rights or legitimate interests to the domain name, and that the domain name at issue has been registered and is being used in bad faith.
Therefore, pursuant to Policy, Paragraph 4 (i), and Rules, Paragraph 15, the Panel requires that the domain name registration <icar.com> be transferred to the Complainant, Icar SPA.
  Roberto A. Bianchi
Presiding Panelist
Dated: July 18, 2000