Decision for dispute CAC-UDRP-106785

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant has evidenced to be the owner of the following trademark registrations:

- Word mark GRANTERRE, World Intellectual Property Organization (WIPO), registration No.: 1654256, registration date: December 27, 2021, status: active;

- Word mark GRANTERRE, European Union Intellectual Property Office (EUIPO), registration No.: 018627321, registration date: May 14, 2022, status: active.

Also, the Complainant has substantiated to own various domains names relating to its company name and brand GRANTERRE, e.g. the domain name <granterre.it> which resolves to the Complainant’s official website at “www.granterre.it”, used to promote the Complainant’s products and related services in the agri-food industry.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed 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).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

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.

First, the Panel finds that the disputed domain name <granterre-it.com> is confusingly similar to the Complainant’s GRANTERRE trademark, as it incorporates the latter in its entirety, simply added by the descriptive term “it” (the two-letter code for Italy). Numerous UDRP panels have recognized that where a domain name incorporates a trademark in its entirety, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that trademark. Moreover, it has been held in many UDRP decisions and has meanwhile become a consensus view among UDRP panels that the mere addition of descriptive or other terms, such as e.g. the two-letter code “it” for Italy (where the Complainant is located), is not capable to dispel the confusing similarity arising from such incorporation of the Complainant’s GRANTERRE trademark in the disputed domain name.

Therefore, the Complainant has established the first element under the Policy as set forth by paragraph 4(a)(i).

Second, the Complainant contends, and the Respondent has not objected to these contentions, that the Respondent has neither made use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, nor is the Respondent commonly known under the disputed domain name, nor is the Respondent making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain. The Respondent has not been licensed or otherwise authorized to use the Complainant’s GRANTERRE trademark, either as a domain name or in any other way.  Also, there is no reason to believe that the Respondent’s name somehow corresponds with the disputed domain name and the Respondent does not appear to have any trademark rights associated with the term “granterre” on its own. Finally, the Complainant has demonstrated that the disputed domain name does not, and apparently did not in the past, connect to any relevant content on the Internet, but is passively held instead. Many UDRP panels, however, have recognized that the mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase, may not of itself confer rights or legitimate interests in a disputed domain name.

Accordingly, the Panel finds that the Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.

Third, the Panel holds that the disputed domain name was registered and is being used by the Respondent in bad faith. There is a consensus view among UDRP panelists that a passive holding of a disputed domain name may, in appropriate circumstances, be consistent with the finding of bad faith, in particular in circumstances in which, for example, a complainant’s trademark is well-known, and there is no conceivable use that could be made of the disputed domain name and would not amount to an infringement of the complainant’s trademark’s rights. In the case at hand, in the absence of any other reasonable explanation as to why the Respondent should rely on the disputed domain name which includes the Complainant’s undisputedly well-known GRANTERRE trademark in its entirety, and given that the Respondent has brought forward nothing in substance relating to the intended use of the disputed domain name, the Panel finds that the Respondent has registered and is making use of the disputed domain name in a manner which at least takes unjustified and unfair advantage of the Complainant’s GRANTERRE  trademark’s reputation and must, therefore, be considered as registered and being used in bad faith within the meaning of the Policy. Such finding also takes into consideration that the disputed domain name combines the Complainant’s GRANTERRE trademark and the two-letter code “it” for Italy where the Complainant is located, which is a further indication that the Respondent was well aware of the Complainant and its prior rights in the GRANTERRE trademark when registering the disputed domain name and that the use of the latter, therefore, is inconceivable of being of a good faith nature.

Therefore, the Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).