Fedrigoni S.p.A. v Nana Nanocare, McMahon Steel Company, Inc
WIPO Case No. D2024-0124
•27-05-2024
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Fedrigoni S.P.A. v. Nana Nanocare, McMahon Steel Company, Inc.; Williams
Mills; Laid Grace; Marie Lamanteer, fedirigoni; Johnson David; Jessie
Larson; and Brenda Dansby
Case No. D2024-0124
1. The Parties
The Complainant is Fedrigoni S.P.A., Italy, represented by Dr. Modiano & Associati S.p.A., Italy.
The Respondents are Nana Nanocare, McMahon Steel Company, Inc., United States of America (“United
States”); Williams Mills, United States; Laid Grace, Netherlands (Kingdom of the); Marie Lamanteer,
fedirigoni, United States; Johnson David, Greece,; Jessie Larson, United States; and Brenda Dansby,
United States.
2. The Domain Names and Registrars
The disputed domain names <febrigoni.com> and <febriqoni.com> are registered with PDR Ltd. d/b/a
PublicDomainRegistry.com.
The disputed domain name <fedirigoni.com> is registered with Squarespace Domains II LLC.
The disputed domain name <fedlrigoni.com> is registered with GMO Internet, Inc. d/b/a Discount-
Domain.com and Onamae.com.
The disputed domain name <fedrgoni.com> is registered with Wild West Domains, LLC.
The disputed domain name <fedrigoni.icu> is registered with NameCheap, Inc.
The disputed domain name <fedrigoni.me> is registered with Dynadot Inc.
The disputed domain names listed above are collectively referred to as the “Domain Names”, while the registrars listed above are collectively referred to as the “Registrars”.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2024.
On January 12, 2024, the Center transmitted by email to the Registrars requests for registrar verification in
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connection with the Domain Names. On January 12, January 13, January 15, and January 16, 2024, the
Registrars transmitted by emails to the Center their verification responses disclosing registrant and contact
information for the Domain Names which differed from the named Respondents (Domains By Proxy, LLC,
Williams Mills, Repossessed by Go Daddy, Privacy Protect, LLC, Contact Privacy Inc. Customer
7151571251, Redacted for Privacy, Data Redacted, and Privacy service provided by Withheld for Privacy
ehf) and contact information in the Complaint.
The Complainant requested the suspension of the proceedings on January 30, 2024. The proceeding was suspended until February 29, 2024. On February 21, 2024, the Complainant requested the reinstitution of the proceeding. Accordingly, the proceeding was reinstituted as of February 23, 2024.
The Center sent an email communication to the Complainant on February 23, 2024 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting the Complainant to either file separate complaint(s) for the Domain Names associated with different underlying
registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that
all the Domain Names are under common control. The Complainant filed an amended Complaint on
February 28, 2024.
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 March 11, 2024. In accordance with the Rules, paragraph
5, the due date for Response was March 31, 2024. The Respondents did not submit any response.
Accordingly, the Center notified the Respondents’ default on April 4, 2024.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on April 12, 2024. 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 April 15, 2024, the Complainant sent a communication to the Center attaching a duly executed Standard Settlement Form and requesting the implementation of the agreed upon settlement terms, namely, the transfer of the disputed domain name, <fedrigioni.com>, to the Complainant. Moreover, the Complainant requested the suspension of the proceedings for 30 days.
On April 22, 2024, the Panel issued Administrative Panel Procedural Order No. 1 (“Panel Order No.1”) suspending the proceeding for 30 days and instructing the Center to inform the concerned Registrar on the outcome of the settlement. Moreover, the Panel instructed the Center to notify to the Parties the partial dismissal of the proceedings without prejudice as regards the disputed domain name <fedrigioni.com>, once the Center received confirmation from the Complainant that the settlement has been implemented.
On April 25, 2024, further to the Panel Order No. 1, the Center requested the concerned Registrar to transfer the disputed domain name <fedrigioni.com> to the Complainant. On May 2, 2024, the Complainant confirmed to the Center that the settlement in relation to the disputed domain name <fedrigioni.com> had been implemented.
On May 22, 2024, the Center informed the Parties that further to the Panel Order No. 1, the proceeding for
the remaining Domain Names, <febrigoni.com>, <febriqoni.com>, <fedirigoni.com>, <fedlrigoni.com>,
<fedrgoni.com>, <fedrigoni.icu>, and <fedrigoni.me> was reinstituted as of May 22, 2024.
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4. Factual Background
The Complainant is an Italian manufacturer of high quality papers. One of the Complainant’s most renowned products are the self-adhesive labels for the wine sector.
The Complainant is the owner of numerous FEDRIGONI trademark registrations, including:
| - | the Italian Trademark Registration for FEDRIGONI, No. 0001010027, registered on May 30, 2006; |
| - | the United States Trademark Registration for FEDRIGONI, No. 2460851, registered on June 19, 2001; |
| - | the International Trademark Registration for FEDRIGONI, No. 909456, registered on May 30, 2006; and |
| - | the European Union Trade Mark Registration for FEDRIGONI, No. 000597583, registered on June 1, 1999. |
The Complainant also operates such domain names as <fedrigoni.com>, <fedrigoni.it>, <fabriano.it>, and
<fabriano.com> which incorporate its FEDRIGONI trademark.
The disputed domain name <fedrgoni.com> was registered on January 25, 2023.
The disputed domain name <fedlrigoni.com> was registered on May 29, 2023.
The disputed domain name <febrigoni.com> was registered on January 9, 2023.
The disputed domain name <fedirigoni.com> was registered on April 15, 2023.
The disputed domain name <fedrigoni.me> was registered on August 30, 2023.
The disputed domain name <fedrigoni.icu> was registered on May 2, 2023.
The disputed domain name <febriqoni.com> was registered on September 21, 2023.
As of the date of this decision, as well as at the time of submitting the Complaint, the Domain Names have not resolved to any active websites. They have resolved either to the error pages, parking pages, pages with the offer for sale, or pages with a blocked content.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Names.
First, the Complainant submits that the Domain Names are identical or confusingly similar to the FEDRIGONI trademark in which the Complainant has rights.
Second, the Complainant argues that the Respondents have neither rights nor legitimate interests in the
Domain Names.
Third, the Complainant contends that the Domain Names were registered and are being used in bad faith.
B. Respondents
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Matters - Consolidation of Multiple Respondents
The amended Complaint was filed in relation to nominally different domain name registrants. The
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Complainant alleges that the domain name registrants are the same entity or mere alter egos of each other, or under common control. The Complainant requests the consolidation of the Complaint against the multiple registrants pursuant to paragraph 10(e) of the Rules.
The domain name registrants did not comment on the Complainant’s request.
Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.
In addressing the Complainant’s request, the Panel will consider 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. See section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP
Questions, Third Edition (“WIPO Overview 3.0”).
As regards common control, the Complainant contends the following.
First, all the Domain Names were registered in close proximity in time, i.e., between January 9, 2023 and
September 21, 2023.
Second, all the Domain Names follow similar naming patterns. They either incorporate the Complainant’s
FEDRIGONI trademark in its entirety, or they consist of a misspelling of this trademark.
Third, as of the date of this decision, as well as at the time of submitting the Complaint, the Domain Names have not resolved to any active websites. They have resolved either to the error pages, parking pages, pages with the offer for sale, or pages with a blocked content.
Fourth, the registrant information for the Domain Names (except for the disputed domain name
<febrigoni.com>) have not been disclosed.
Fifth, as evidenced by the Complainant, some of the disclosed registrants of the Domain Names share the same IP address and MX records.
Sixth, based on the evidence provided by the Complainant, some of the disclosed registrants of the Domain
Names appear to have a history of abusive domain name registrations.
Seventh, some of the disclosed registrants of the Domain Names used clearly fictitious names and contact details for the Domain Names.
Lastly, the Respondents have not denied that the Domain Names are under a common control.
As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.
Accordingly, the Panel decides to consolidate the disputes regarding the nominally different domain name registrants (referred to below as “the Respondent”) in a single proceeding.
6.2. Substantive Matters - Three Elements
A. Identical or Confusingly Similar
Under the first requirement, the Complainant must establish that the Domain Names are identical or confusingly similar to the trademark in which the Complainant has rights.
The Complainant holds valid FEDRIGONI trademark registrations. The disputed domain names
<fedrigoni.me> and <fedrigoni.icu> incorporate this trademarks in its entirety. As numerous UDRP panels
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have held, incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or
confusingly similar to that trademark. See section 1.7 of the WIPO Overview 3.0.
The rest of the Domain Names, namely the disputed domain names <fedrgoni.com>, <fedlrgoni.com>, <febrigoni.com>, <fedirigoni.com>, and <febriqoni.com> consist of a misspelling of the FEDRIGONI trademark. As numerous UDRP panels have held, a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered to be confusingly similar to the relevant mark. See section 1.9 of the WIPO Overview 3.0.
The Top-Level domains (“TLDs”) “.com”, “.me”, and “.icu” in the Domain Names are viewed as a standard registration requirement and as such are typically disregarded under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview 3.0.
Given the above, the Panel finds that the disputed domain names <fedrigoni.me> and <fedrigoni.icu> are identical to the FEDRIGONI trademark in which the Complainant has rights, while the disputed domain names <fedrgoni.com>, <fedlrgoni.com>, <febrigoni.com>, <fedirigoni.com>, and <febriqoni.com> are confusingly similar to this trademark. Thus, the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under the second requirement, the Complainant must prove that the Respondent has no rights or legitimate interests in the Domain Names.
The respondent may establish a right or legitimate interest in the domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(i) that it has used or made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute; or
(ii) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or
(iii) that it 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.
Based on the records, the Panel finds that the Complainant has established a prima facie case that the Respondent does not have any rights or legitimated interests in the Domain Names, and the burden of production of evidence shifts to the Respondent. WIPO Overview 3.0, section 2.5.1. Although given the
opportunity, the Respondent has not submitted any evidence indicating that any of the circumstances
foreseen in paragraph 4(c) of the Policy are present in this case.
On the contrary, it results from the evidence on record that the registration of the Complainant’s FEDRIGONI trademark predates the Respondent’s registration of the Domain Names. There is no evidence in the case record that the Complainant has licensed or otherwise permitted the Respondent to use this trademarks or to register the Domain Names incorporating the trademark. There is also no evidence to suggest that the Respondent has been commonly known by the Domain Names.
Moreover, it results from the evidence on record that the Respondent does not make use of the Domain Names in connection with a bona fide offering of goods or services, nor does it make a legitimate noncommercial or fair use of the Domain Names. On the contrary, at the time of submitting the Complaint and as of the date of this decision, the Domain Names have not resolved to any active websites. In fact, it does not result from the case evidence that the Domain Names have been used in any active way to date.
Furthermore, the composition of the disputed domain names <fedrigoni.me> and <fedrigoni.icu>, wholly incorporating the FEDRIGONI trademark by itself, carries a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.
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In sum, the Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the Domain Names. Thus, there is no evidence in the case file that refutes the Complainant’s prima facie case. The Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under the third element, the Complainant must prove that the Domain Names were registered and are being used in bad faith.
Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. See section 3.1 of the WIPO Overview 3.0.
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use includes without limitation:
(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of
selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a
trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct;
or
(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the domain name has intentionally been used in an attempt to attract, for
commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion
with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a
product or service on a website or location.
As indicated above, the Complainant’s rights in the FEDRIGONI trademark predate the registration of the Domain Names. This Panel finds that the Respondent was or should have been aware of the Complainant’s trademark at the time of registration. This finding is supported by the composition of the disputed domain names <fedrigoni.me> and <fedrigoni.icu> consisting exclusively of the FEDRIGONI trademark and TLDs. Moreover, it has been proven to the Panel’s satisfaction that the Complainant’s FEDRIGONI trademark is well known and unique to the Complainant. Thus, the Respondent could not likely reasonably ignore the reputation of this trademark. In sum, the Respondent in all likelihood registered the Domain Names with the expectation of taking advantage of the reputation of the Complainant’s FEDRIGONI trademark.
Moreover, as of the date of this decision, as well as at the time of submitting the Complaint, the Domain Names have not resolved to any active website. Considering the overall circumstances of this case, the Panel finds that the Respondent’s passive holding of the Domain Names does not prevent a finding of bad
faith. As numerous UDRP panels have held, passive holding, under the totality of circumstances of the case,
would not prevent a finding of bad faith under the Policy. See section 3.3 of the WIPO Overview 3.0. Here,
given the well known nature of the Complainant’s FEDRIGONI trademark, the failure of the Respondent to
submit a response, and the implausible good faith use to which the Domain Names may be intrinsically put,
the Panel agrees with the above.
Furthermore, the Respondent’s use of privacy services that concealed registrant information constitutes an additional evidence of bad faith.
Moreover, as evidenced by the Complainant, some of the Domain Names have been configured with MX records to enable sending and receiving emails from the Domain Names. In the circumstances of this case, there appear to be no conceivable benefit to the Respondent to be gained by registration and use of the Domain Names in this way other than through bad faith activity such as phishing (see W.W. Grainger, Inc. v.
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WhoisGuard Protected, WhoisGuard, Inc. / Daniel Thomas, WIPO Case No. D2020-1740).
Finally, the Complainant has proved that the Respondent has engaged in the pattern of bad faith conduct. UDRP panels have found the abusive domain name registrations on the part of the Respondent in such a case as Mölnlycke Health Care AB v. Jessie Larson, WIPO Case No. DME2023-0015.
For the reasons discussed above, the Panel finds that the Complainant has proved the requirements under paragraph 4(a)(iii) 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 <febrigoni.com>, <febriqoni.com>, <fedirigoni.com>,
<fedlrigoni.com>, <fedrgoni.com>, <fedrigoni.icu>, and <fedrigoni.me> be transferred to the Complainant.
/Piotr Nowaczyk/
Piotr Nowaczyk
Sole Panelist
Date: May 27, 2024
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