Zeca S.p.A. v. Whois Privacy Protection Service, Inc. / Domain Vault LLC
Disputed Domain [Case No. D2017-0158]
1) The Complainant was an Italian company which was founded approximately 60 years ago as a manufacturer of accessories and spare parts for motor vehicles.
2) The Complainant is the proprietor of a number of registered trademarks for ZECA, including International trademark number 571861, registered on February 5, 1991, designating a number of territories in Europe as well as China, Japan, North Korea and Singapore; and Italy trademark number 1574498, registered on January 30, 2014.
3) Complainant is also the registrant of the domain name <zeca.it> registered on July 20, 1999 and a number of other domain names comprising the TradeMark.
4) The Respondent had registered Domain name way back in 2003. The exact registration date being on October 25, 2003.
5) The identical and confusingly similarity are prima-facie proved further, the Domain was never put to legitimate use. Therefore, the Complainant was able to prove both the first two conditions.
6) More importantly, the third condition requires the Complainant to prove Bad Faith. Though, the Domain had no other meaning and the Complainant has been in business for over 60 years but there was no evidence on record in the Complaint of the extent of its commercial activities or of its marketing or turnover over that period or in the period prior to the date of registration of the Domain Name in 2003.
7) Further, there was no evidence put on record either of the Complainant having established any reputation or goodwill in the United States earlier than 2007, where the Respondent is based. Though, complainant has annexed a copy of the Complainant’s catalogue; some invoices addressed to customers in the United States between 2007 and 2016; and invoices and photographs relating to participation by the Complainant in exhibitions organized by the Industrial Suppliers Association (“ISA”) in the United States between 2013 and 2016. But that could never prove the knowledge of the mark in the eyes of the Respondent.
8) Therefore, the Complainant was denied as Panel held that on the balance of probabilities, that the Respondent could never have been aware of the Complainant or such rights as it had in the Trademark at the date of registration of the Domain Name.