VENETA CUCINE, S.P.A. v Kyoung S Park

WIPO Case No. D2023-0876

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

VENETA CUCINE, S.P.A. v. Kyoung S Park

Case No. D2023-0876

1. The Parties

The Complainant is VENETA CUCINE, S.P.A., Italy, represented by Ubilibet, Spain.

The Respondent is Kyoung S Park, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <veneta-cucine.com> is registered with TurnCommerce, Inc. DBA

NameBright.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2023. On February 27, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 2023, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint 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 Respondent of the
Complaint, and the proceedings commenced on March 13, 2023. In accordance with the Rules, paragraph
5, the due date for Response was April 2, 2023. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on April 4, 2023.

The Center appointed Jonathan Agmon as the sole panelist in this matter on April 13, 2023. 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.

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4. Factual Background

The Complainant was founded in 1967 in Treviso, Italy and over the years has steadily grown from a small local enterprise into a major multinational group. It is currently a major manufacturer of kitchen furniture in Italy. In 1978 the Complainant changed its name to VENETA CUCINE.

The Complainant’s production facilities employ more than 600 staff and the Complainant’s products are marketed by over than 1,000 international dealers in Europa, Asia, Africa, North and South America.

VENETA CUCINE is the owner of VENETA CUCINE trademark registrations worldwide, including but not limited to:

- International Trademark Registration No. 911024 for registered on September 18,

2006

- UKIPO Trademark Registration No. UK00810911024 for registered on May 31,

2010
-	Korean Trademark Registration No. 4004388180000 for VENETA CUCINE registered on January 22, 1999.

The Complainant states that it owns the domain name <venetacucine.com>. The domain name was registered by the Complainant on January 3, 2011.

The disputed domain name was registered on January 2, 2016 and currently resolves to a website displaying pay-per-click (“PPC”) links.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s registered VENETA CUCINE mark as the Respondent has intentionally registered a confusingly similar domain name that incorporates the Complainant’s mark in its entirety. The Complainant also argues that the Respondent lacks any legitimate rights in the mark or in the disputed domain name as it has not licensed or permitted the Respondent to use any of its trademarks or register the disputed domain name and that the Respondent registered and continues to use the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark
certificate belong to its respective owner. The Complainant has provided evidence that it owns the VENETA
CUCINE registered trademark.

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The disputed domain name comprises the Complainant’s VENETA CUCINE mark in its entirety with a hyphen between the words “VENETA” and “CUCINE” and the Top-Level Domain (“TLD”) “.com”. It is well established that where the trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

Further, it is well established that the adding of the TLD “.com”, as a standard registration requirement, is disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1).

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the

Complainant has rights and the element under paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name (see WIPO Overview 3.0, section 2.1).

In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.

The Complainant has provided evidence that it owned trademark registrations of the VENETA CUCINE mark before the date that the disputed domain name was registered and that the Complainant is not affiliated with nor has it licensed or otherwise permitted the Respondent to use the Complainant’s trademark (see LEGO

Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138).

The Complainant also provided evidence that the Respondent is not commonly known by the disputed domain name (see WIPO Overview 3.0, section 2.3).

Further, the Respondent did not submit a Response in the present case and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain name which would be sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The complainant must also show that the respondent registered and is using the disputed domain name in bad faith (see Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.

The Respondent’s website under the disputed domain name resolves to a parked webpage which uses the Complainant’s VENETA CUCINE mark and display what appears to be comprising PPC links purporting to offer links to what would appear to be the Complainant’s catalogue or competing products to those of the

Complainant’s such as kitchen furniture. It has been held by prior UDRP panels that the use of a domain name that is confusingly similar to a trademark to host a parked page comprising PPC links presumably for the purpose of generating PPC revenues, is a clear evidence of bad faith within the meaning of paragraph 4(b)(iv) of the Policy.).

Further, the disputed domain name incorporates a single hyphen within the Complainant’s VENETA CUCINE mark. The Panel finds that the use of the Complainant’s mark with a hyphen between the words “VENETA”

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and “CUCINE” is an attempt by the Respondent to confuse and/or mislead Internet users seeking or domain name that is identical or confusingly similar to create a likelihood of confusion with a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy.

expecting the Complainant. The Panel find that under these circumstances “a likelihood of confusion is
presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s
site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No.

Further, the Complainant has submitted evidence which shows that the Respondent registered the disputed domain name several years after the Complainant registered the VENETA CUCINE trademark. Given the evidence presented to the Panel, the Panel finds that it is highly likely that the Respondent was aware of the Complainant and its VENETA CUCINE trademark at the time of registering the disputed domain name and specifically targeted the Complainant and its goodwill.

In addition, the Respondent did not submit a Response in this proceeding. Under the circumstances of this case, this is an additional indication of the Respondent’s bad faith, which was considered by the Panel.

Accordingly, given the particular circumstances of this case, the reputation of the Complainant’s trademark, and based on the evidence presented to the Panel, including the registration of the disputed domain name long after the registration of the Complainant’s trademark, the nature of the disputed domain name and

confusing similarity with the Complainant’s trademark, the Respondent’s use of the disputed domain name
and the failure of the Respondent to submit a response, and the fact that there is no plausible good faith use
the Respondent can put the disputed domain name to, the Panel draws the inference that the disputed
domain name was registered and are being used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden 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 name <veneta-cucine.com> be transferred to the Complainant.

/Jonathan Agmon/
Jonathan Agmon
Sole Panelist
Date: April 27, 2023