On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No. 102701
Time of Filing 2019-10-07 10:47:52
Disputed domain name CHICCO.ONLINE
Case Administrator
Name Šárka Glasslová
Complainant
Organization Artsana S.p.A.
Authorized Representative
Organization Perani Pozzi Associati
Respondent
Organization NIC Admin
Other Legal Proceedings
None of which the Panel is aware.
Identification of rights
The Complainant is the owner of a number of registered trade marks around the world that comprise or incorporate the term “CHICCO”.

These marks include International trademark registration n. 1318052 for “CHICCO” as a word mark registered on 21 January 2016, in classes 3, 5, 8, 9, 10, 11, 12, 14, 15, 16, 18, 20, 21, 22, 24, 25, 26, 27, 28, 29, 30 and 32, based upon an Italian mark of a few days earlier. This particular registration has proceeded to grant in whole or in part in 18 jurisdictions.

Factual Background
FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

The Complainant is a worldwide renowned Italian company specialized in healthcare and baby care, that trades – among others – under the well-known trademarks “CHICCO” (infant care products), “PIC” (hypodermic syringes) and “CONTROL” (prophylactics). Artsana is currently an international corporation highly recognized for its brands and products manufactured at its own production plants and distributed throughout the world, with 21 active branches (12 in Europe), 6 production units in the European Union and over 100 countries covered by its wide range of brands.

The Complainant counts about 5.000 employees and (including dealers and distributors) the Group markets its brands in over one hundred countries with more than 300 Chicco sales points. Artsana focuses on two main business areas: Baby and Health Care, which yielded 87% and 13%, respectively, of the €1.442 million in turnover recorded in 2016. Artsana Group also owns 100% of Prenatal Retail Group S.p.A.

The Complainant’s trademark “CHICCO” is distinctive and well known all around the world.

Moreover, the Complainant is also the owner, among the others, of the following domain names bearing the sign “CHICCO”: CHICCO.COM, CHICCO.BIZ, CHICCO.INFO, CHICCO.IT, CHICCO.SHOP, CHICCO.RU, CHICCO.TN, CHICCO.PT, CHICCO.ASIA, CHICCO.SK. All of them are now connected to the official website www.chicco.com.

On March 16, 2019, the Respondent registered the domain name CHICCO.ONLINE (the "Domain Name").

The Domain Name is connected to a website sponsoring, among others, healthcare and baby care products, for whom the Complainant’s trademarks are registered and used.
 
NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

Rights
The Complainant has, to the satisfaction of the Panel, shown the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).
No rights or legitimate interests
The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the Domain Name (within the meaning of paragraph 4(a)(ii) of the Policy).
Bad faith
The Complainant has, to the satisfaction of the Panel, shown the Domain Name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).
Procedural Factors
The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.
Principal Reasons for the Decision
The domain name in dispute, comprises the term "Chicco" in combination with the ".online" gTLD. The Panel accepts that the Complainant owns trade mark rights in the term "Chicco", which including by way of example, the international trade mark registration, referred to earlier in this decision. In the circumstances, the Complainant's trade mark is clearly recognisable in the Domain Name and it follows that the Complainant owns rights in a trade mark which is confusingly similar to the Domain Name. The Complainant has thereby made out the requirements of paragraph 4(a)(i) of the UDRP.

The Complainant has also brought forward evidence to demonstrate that the Domain Name has been used since registration for the purposes of what looks like a pay-per-click page, displaying links that relate to products in which the Complainant trades under the CHICCO mark.

It appears that the term "Chicco" may have a descriptive meaning in at least one language. Somewhat unhelpfully this fact is not addressed in the Complaint. However, there is no evidence before the Panel that the Domain Name has been used or was registered with that descriptive use in mind.

The Panel also notes that as at the date of this decision, there would appear to be no active website operating from the Domain Name.

Given this the Panel accepts that it was with the pay-per-click usage or some other usage that took unfair advantage of the trade mark rights of the Complainant that the Domain Name was registered and has been held. There is no right or legitimate interest in holding a domain name for that purpose and the registration and holding of a domain name for such a purpose amounts to registration and use in bad faith. The pay-per-click usage made of the Domain Name also falls within the scope of the example of circumstances indication bad faith registration and use set out in paragraph 4(b)(iv) of the UDRP.

On that basis the Panel concludes on the balance of probabilities that the Respondent has no rights or legitimate interests in the Domain Name and that the Domain Name was registered and used in bad faith. The Complainant has thereby made out the requirements of paragraph 4(a)(ii) and (iii) of the UDRP.
Decision
For all the reasons stated above, the Complaint is Accepted
and the disputed domain name(s) is (are) to be
CHICCO.ONLINE Transferred to Artsana S.p.A.
Panellists
Name Matthew Harris
Date of Panel Decision 2019-11-21
Publication of the Decision
Publish the Decision