Westmore · UDRP DecisionFerrari.app
The Panel ordered transfer of <ferrari.app>. It found the domain identical to the FERRARI trademark, found no evidence of Respondent rights or legitimate interests, and concluded that registration and use were in bad faith. The bad-faith finding rested on the reputation of the FERRARI mark, Respondent's lack of any plausible good-faith explanation or use, the domain's mostly passive holding, and its temporary offer for sale.
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This decision illustrates how an exact-match domain incorporating a highly reputed mark can satisfy bad-faith use even when it is mostly inactive. The Panel assessed the totality of the circumstances, including the mark's reputation, the absence of any plausible good-faith use, Respondent's default, and the prior sale offer.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Ferrari S.p.A v. Contact Privacy Inc. Customer 1247676738 / Warren Welsh, Revolution.app Case No. D2020-3537 1. The Parties Complainant is Ferrari S.p.A, Italy, represented by Studio Barbero S.p.A., Italy. Respondent is Contact Privacy Inc. Customer 1247676738, Canada / Warren Welsh, Revolution.app, United States of America (“United States”). 1 2. The Domain Name and Registrar The disputed domain name <ferrari.app> is registered with Google LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2020. On December 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 29, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on December 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 19, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 26, 2021. The Center appointed Stephanie G. Hartung as the sole panelist in this matter on February 4, 2021. 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 Complainant is a company organized under the laws of Italy and a worldwide well-known manufacturer of sports cars and Formula 1 racing cars, that was founded back in 1947 and named after its founder Enzo Ferrari. Complainant has provided evidence that it is the registered owner of numerous trademarks worldwide relating to its company name and brand “Ferrari”, inter alia , the following with protection in the United States: - Word mark FERRARI, United States Patent and Trademark Office (USPTO), registration number: 3000743, registration date: September 27, 2005, status: active; - Word/device mark FERRARI, USPTO, registration number: 0862632, registration date: December 31, 1968, status: active. Moreover, Complainant has demonstrated to own numerous domain names worldwide, including the domain name <ferrari.com>, through which Complainant operates its official website at “www.ferrari.com”, used to promote, inter alia , Complainant’s sports and luxury vehicles as well as other products and related services. Respondent, according to the disclosed WhoIs information for the disputed domain name, is a resident of the United States who registered the disputed domain name on July 29, 2019, which by the time of the rendering of this decision does not resolve to any active content on the Internet. Complainant, however, has also demonstrated that, at some point before the filing of this Complaint, the disputed domain name redirected to a standard parking site where it was offered for sale. Between December 2019 and December 2020, Complainant sent several pre-procedural communications to Respondent requesting to transfer the disputed domain name to which Respondent apparently did not reply. Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties’ Contentions A. Complainant Complainant contends that it has been using its FERRARI trademark in connection with its activities in Italy and many other countries throughout the world for over 70 years, and that nowadays its FERRARI trademark ranks among the most well-known and most valuable trademarks worldwide. Complainant submits that the disputed domain name is identical to Complainant’s FERRARI trademark, as it incorporates the latter in its entirety. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Respondent is not a licensee or authorized agent of Complainant and Respondent is not in any other way authorized to use Complainant’s FERRARI trademark, (2) Respondent apparently is not commonly known by a name corresponding to the disputed domain name as an individual, business, or other organization, and (3) Respondent apparently has simply either held the disputed domain name passively or has redirected it to a website promoting its sale. Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) given the worldwide reputation of Complainant’s FERRARI trademark, it is inconceivable that Respondent was unaware thereof at the time of registration of the disputed domain name, (2) passively holding the disputed domain name which incorporates Complainant’s well-known trademark is indicating Respondent’s bad faith as such, (3) offering the disputed domain name for sale likewise clearly demonstrates Respondent’s bad faith, and finally (4) Respondent failed to respond to Complainant’s cease-and-desist letters which also evidences Respondent’s acting in bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, Complainant carries the burden of proving: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent’s failure to submit a Response as it considers appropriate. A. Identical or Confusingly Similar The Panel concludes that the disputed domain name <ferrari.app> is identical to Complainant’s FERRARI trademark. The disputed domain name exclusively incorporates the entire FERRARI trademark. Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11 ) that the applicable Top-Level Domain (“TLD”) in a domain name is generally viewed as a standard registration requirement and as such is disregarded under the first element test. Accordingly, the existence of the generic TLD “.app” does not dispel the finding of identity arising from the entire incorporation of Complainant’s FERRARI trademark in the disputed domain name. Therefore, the Panel finds that Complainant has established the first element under the Policy set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain. Respondent has neither been granted a license nor has it been otherwise authorized by Complainant to use its FERRARI trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the (family) name “Ferrari” on its own. Finally, Respondent obviously so far has not used the disputed domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair purpose, but rather to temporarily offer it for sale and not to redirect to any valid content on the Internet. Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate evidence demonstrating to the contrary (see WIPO Overview 3.0 , section 2.1 ). Given that Respondent has defaulted, Respondent has not met that burden. The Panel, therefore, finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith. As a general rule, UDRP panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding (see WIPO Overview 3.0 , section 3.3 ). While UDRP panels will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include e.g. : the degree of distinctiveness or reputation of Complainant’s mark, the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good faith use, or the implausibility of any good faith use to which the disputed domain name may be put. Complainant contends, and Respondent has not challenged this contention, that its FERRARI trademark ranks among the most well-known and most valuable trademarks worldwide, given that it has been widely used for more than 70 years with trademark registrations in many countries worldwide. Moreover, Respondent has failed to submit any explanation as to why it needed to rely exactly on the name “Ferrari” as reflected in Complainant’s FERRARI trademark. Accordingly, there is little, if no room for any plausible use of the disputed domain name, including its temporarily offering for sale, which would not take unfair advantage by profiting from the undisputed reputation, which Complainant’s well-known FERRARI trademark enjoys. Against this background, the mostly passive holding of the disputed domain name by Respondent is not in contrast to hold that Respondent has still registered and is using the disputed domain name in bad faith within the larger meaning of paragraph 4(b) of the Policy. Therefore, the Panel concludes that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii). 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 <ferrari.app> be transferred to Complainant. Stephanie G. Hartung Sole Panelist Date: February 11, 2021 1 It is evident from the case file that Contact Privacy Inc. Customer 1247676738, Canada, is a privacy protection service and that Warren Welsh, Revolution.app, United States, is the underlying registrant of the disputed domain name. Therefore, unless otherwise indicated, the term “Respondent” is used by the Panel in the case at hand to refer to the latter underlying registrant only.
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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