Carel-group.com

The timeline behind carel-group.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

ARBITRATION AN D MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Carel Industries S.p.A v. Frezza Giorgio Case No. D2023-3605 1. The Parties The Complainant is Carel Industries S.p.A, Italy, represented by Società Italiana Brevetti S.p.A., Italy. The Respondent is Frezza Giorgio, Italy. 2. The Domain Name and Registrar The disputed domain name <carel-group.com> is registered with Inf omaniak Network SA (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2023. On August 28, 2023, the Center transmitted by email to the Registrar a request f or registrar verif ication in connection with the disputed domain name. On August 29, 2023, the Registrar transmitted by email to the Center its verif ication response disclosing registrant and contact information for the disputed domain name which dif f ered f rom the named Respondent (Unkno wn) and contact inf ormation in the Complaint. The Center sent an email communication to the Complainant on August 30, 2023 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant f iled an amendment to the Complaint on August 31, 2023. The Center verif ied that the Complaint together with the amendment to the Complaint satisf ied the f ormal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” o r “UDRP”), the Rules f o r Unif orm Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules f or Unif orm Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center f ormally notif ied the Respondent of the Complaint, and the proceedings commenced on September 5, 2023. In accordance with the Rules, paragraph 5, the due date for Response was September 25, 2023. The Respondent did not submit any response. Accordingly, the Center notif ied the Respondent’s def ault on September 26, 2023. The Center appointed Anna Carabelli as the sole panelist in this matter on October 18, 2023. The Panel f inds 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. page 2 4. Factual Background The Complainant is an Italian company established in 1973, which manuf actures and markets control solutions for air conditioning, ref rigeration and heating, and systems f or humidif ication and evaporative cooling. The Complainant operates both directly and through subsidiaries in about eighty countries. The Complainant is the owner of numerous trademark registrations f or CAREL in several jurisdictions, including the f ollowing: Countries / Jurisdictions Trademark Application No. Classes Application date Registration date ITA LY CAREL (f igurative) VR1997C00039 4 last renewal No. 362017000106 632 9 October 1, 1997 March 16, 2000 EUROPEAN UNION CAREL (wo rd ) 493767 9,11 March 20, 1997 October 14,1999 EUROPEAN UNION CAREL (wo rd ) 18378909 6,7,9,11,17, 35,37,4 1,42 January 20, 2021 August 03, 2021 INTERNATIONAL REGISTRATION designating: Belarus, Bosnia and Herzegovina, China, Croatia, Republic of Korea , Macedonia, Montenegro, Morocco, Norway, Russian Federation, Serbia, Singapore, Switzerland, Türkiye , Ukraine CAREL (wo rd ) 676173 9,11,16 June 24, 1997 June 24, 1997 The Complainant is also the owner of the domain name <carel.com>, which resolves to the Complainant’s of ficial website, as well as other domain names including <carel.it>, <carelgroup.org> and <carel.store>. The disputed domain name was registered on June 21, 2023 and resolves to an inactive page which states the f ollowing in Italian “Impossibile raggiungere il sito” (“Unable to reach the site”). 5. Parties’ Contentions A. Complainant The Complainant submits and contends that: The disputed domain name is confusingly similar to the Complainant’s registered and well-kno wn CAREL mark. page 3 Indeed, the disputed domain name reproduces entirely the Complainant’s trademark with the addition of the term “group”, followed by the generic Top-Level (gTLD) “.co m”. The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed, authorized or permitted the Respondent to register the disputed domain name. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name nor is he using it in connection with a bona fide offering of goods or services, so as to conf er a right or legitimate interest in it in accordance with paragraph 4(c)(i) of the Policy. Indeed, the disputed domain name resolves to an inactive website. The Complainant submits that the disputed domain name is configured with MX records and is theref ore capable of email communication f or phishing activity. The disputed domain name was registered and is being used in bad f aith. The Respondent knew or should have known about the existence of the earlier and well-established Complainant’s mark. Passive holding, which is the case here, demonstrates bad f aith. The Respondent’s concealment of its identity by using a privacy service and the f act that the disputed domain name is conf igured with MX records, which could potentially be used for phishing purposes, are also indicative of bad f aith. Based on the above, the Complainant requests that the disputed domain name be transf erred to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the panel to decide the complaint based on the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Under paragraph 4(a) of the Policy, the complainant must prove each of the f ollowing: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad f aith. Paragraph 4(b) of the Policy sets out four illustrative circumstances, which f or the purposes of paragraph 4(a)(iii) of the Policy, shall be evidence of registration and use of a domain name in bad f aith. Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by the respondent, shall be evidence of the respondent’s rights to or legitimate interests in a disputed domain name f or the purpose of paragraph 4(a)(ii) of the Policy above. A. Identical or Confusingly Similar The Panel f inds that the Complainant has established rights over the CAREL mark based on the evidence submitted in the Complaint. The disputed domain name consists of the Complainant’s CAREL mark, with the addition of the term “group” preceded by a hyphen, and f ollowed by the gTLD “.com”. page 4 As highlighted in section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0 ”), the addition of a gTLD such as “.com” is viewed as a standard registration requirement and as such is typically disregarded under the first element confusing similarity test. Theref ore, the threshold test for conf using similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name (see section 1.7 of the WIPO Overview 3.0 ). The disputed domain name entirely incorporates the Complainant’s CAREL mark and this is a suf f icient element to establish the first element, as held by previous UDRP panels (e.g., Banca Mediolanum S.p.A. v. Domains By Proxy, LLC / Marzia Chiarello, WIPO Case No . D2020-1955 ; Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No . D2020-1923; Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No . D2019-1409). As recorded in section 1.8 of the WIPO Overview 3.0 , where the relevant trademark is recognizable within the disputed domain name, the addition of other terms does not prevent a f inding of conf using similarity under the f irst element. Accordingly, the Panel finds that disputed domain name is confusingly similar to the CAREL mark in which Complainant has rights. Theref ore, the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the f ollowing circumstances, in particular but without limitation: (i) bef ore any notice to it of the dispute, its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; (ii) it has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; (iii) it is making a legitimate noncommercial or fair use of the domain name, without intent f or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Complainant contends that the Respondent has no rights or legitimate interests in respect o f the disputed domain name, based on the f ollowing: (a) the Complainant holds prior rights in the globally registered and well-known CAREL mark, (b) the Respondent has not been authorized to use the Complainant’s trademark in any way, and (c) the disputed domain name does not resolve to an active website. According to section 2.1 of the WIPO Overview 3.0 , while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring inf ormation that is of ten primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent f ails to come f orward with such relevant evidence, the complainant is deemed to have satisf ied the second element. Here the Panel f inds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has f ailed to invoke any circumstance, which could have demonstrated any rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy. There is no indication before the Panel of any activity in relation to the disputed domain name that would give rise to rights or legitimate interests to the Respondent. Moreover, the page 5 disputed domain name is confusingly similar to the Complainant’s CAREL trademark and carries a risk of implied af f iliation with the Complainant. Such risk f or implied af f iliation cannot constitute f air use. WIPO Overview 3.0 , section 2.5.1. Theref ore, the Panel f inds that the Complainant has established paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad f aith. Paragraph 4(b) provides a non-exhaustive list of circumstances indicating bad f aith registration and use on the part of a domain name registrant. Given the reputation of the Complainant’s trademark, reg istration and use of which precede by f ar the registration of the disputed domain name, it is not conceivable that the Respondent did not have in mind the Complainant’s trademark when registering the disputed domain name. Such fact suggests that the disputed domain name was registered in bad f aith (see WIPO Overview 3.0 , section 3.2.2). Prior panels have consistently found that the mere registration of a domain name that is identical or conf usingly similar to a f amous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad f aith ( WIPO Overview 3.0, section 3.1.4). As to bad faith use, the evidence submitted with the Complaint shows that the disputed domain name does not point to an active website. The current inactive status of the disputed domain name does not prevent a f inding of bad faith under the doctrine of passive holding. As stressed by many previous UDRP decisions, “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the implausibility of any good f aith use to which the domain name may be put.” (See section 3.3 of the WIPO Overview 3.0 ; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No . D2000-0003). Each of these considerations points to the Respondent’s passive holding of the disputed domain name being in bad f aith. Specif ically: (i) the Complainant’s trademark is distinctive and well established; (ii) the Respondent has f ailed to submit any claims or evidence of good-f aith use; (iii) the absence of any relationship between the Respondent and the Complainant; and, (iv) given the conf using similarity to the Complainant’s trademark, there is no conceivable good faith use to which the disputed domain name could be put by the Respondent, that would not result in creating a misleading impression of association with the Complainant. Furthermore, the fact that the disputed domain name is configured with MX records which could potentially be used f or phishing purposes, corroborate the f inding of bad f aith. For all the above reasons, the Panel finds that the disputed domain name was registered and is being used in bad f aith by the Respondent. 7. Decision For the f oregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <carel-group.com>, be transf erred to the Complainant. /Anna Carabelli/ Anna Carabelli Sole Panelist Date: October 24, 2023

Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.