Decision for dispute CAC-UDRP-108674

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 proved to own the following trade mark rights, inter alia:

• the European Union trademark “ISA” No. 012331203, dated November 21, 2014, duly renewed since then, covering goods and services in classes 9, 12 and 37;

• the European Union trademark ISA YACHTS n° 014294301, dated November 10, 2015, duly renewed, covering goods and services in classes 3, 9, 12, 14, 18, 22 ,25 and 37;

• the Italian trademark “ISA YACHTS” n°2025000064077, registered on April 15, 2025, covering goods and services in classes 12 and 37;

• the Italian trademark “ISA / ISAYACHTS” n°0001573630, registered on April 23, 2013, and duly renewed, covering goods and services in classes 3, 9, 12, 14, 18, 22, 25, 37;

• the US trademark “ISA ISA YACHTS” n° 814866, registered April 24, 2025, covering goods and services in classes 12 and 37;
• the international trademark “ISA YACHTS” n°1868180, registered on April 24, 2025, covering goods and services classes 12 and 37, designating inter alia
   The United Kingdom, Turkey and the United States;
• the international trademark “ISA” n°828475, registered on April 30, 2004, duly renewed and covering goods and services in classes 3, 9, 12, 14,18, 22, 25 and 37, designating inter alia Albania, Switzerland and North Macedonia.

The Complainant, Palumbo Superyachts S.r.l., is part of the Palumbo Group, an Italian group active in the design, construction, refit, repair and maintenance of yachts and superyachts.

The Complainant operates, inter alia, under the ISA Yachts trademark from Ancona, Italy. The ISA Yachts brand originates from the expression "International Shipyards Ancona" and has been used in the superyacht sector since 2001. The ISA Yachts brand is associated with the construction of luxury yachts and superyachts in Ancona, Italy.

The Respondent is Mr. Giancarlo Iurisci, an individual residing in Italy. According to the information provided in the Response, Mr. Iurisci acts as the owner and authorized representative of an entity referred to as "IURISCI SHIPYARD ABRUZZO ISA SUPER YACHT", allegedly engaged in shipbuilding activities and located in Ortona, Italy.

The Panel notes that no evidence has been provided demonstrating that such an entity is registered in the Italian Companies Register. Furthermore, based on the record available in this proceeding, no trademark rights for "ISA", "ISA SUPER YACHT", or "IURISCI SHIPYARD ABRUZZO ISA SUPER YACHT" have been shown to be owned by the Respondent or by the alleged entity.

The Respondent registered the disputed domain name <isasuperyachts.com> on August 26, 2021.

A. The Complainant

The Complainant contends that the disputed domain name is confusingly similar to its ISA and ISA YACHTS trademarks, in which it has established rights through numerous trademark registrations and longstanding use in the superyacht industry.

The Complainant submits that the disputed domain name incorporates its ISA trademark in its entirety and merely adds the descriptive term “superyachts”, which directly relates to the Complainant’s field of activity and reinforces the impression of an association with the Complainant and its ISA YACHTS brand.

The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent is not affiliated with the Complainant, has not been authorized to use the Complainant’s trademarks, and is not commonly known by the disputed domain name. The Complainant also submits that no evidence has been provided demonstrating trademark rights or corporate registration corresponding to the name allegedly used by the Respondent.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. In particular, the Complainant argues that the Respondent was necessarily aware of the Complainant and its ISA and ISA YACHTS trademarks at the time of registration of the disputed domain name, given the parties’ presence in the same specialized shipbuilding sector in Italy and the reputation acquired by the ISA YACHTS brand. The Complainant submits that the composition of the disputed domain name creates a risk of implied affiliation and was intended to take unfair advantage of the Complainant’s trademark rights.

The Complainant requests the transfer of the disputed domain name.

B. The Respondent

The Respondent contends that he is the owner and authorized representative of a shipbuilding business referred to as “IURISCI SHIPYARD ABRUZZO ISA SUPER YACHT”, based in Ortona, Italy.

The Respondent submits that the term “ISA” contained in the disputed domain name is not a reference to the Complainant’s trademarks but rather an acronym derived from the name of his business, namely “IURISCI SHIPYARD ABRUZZO”.

The Respondent argues that the disputed domain name was registered in connection with his own shipbuilding activities and not with the intention of targeting the Complainant or its trademarks.

The Respondent therefore maintains that he has rights or legitimate interests in the disputed domain name and denies that the disputed domain name was registered or used in bad faith.

The Respondent requests that the Complaint be denied.

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.

Identity (paragraph 4(a)(i) of the Policy)

The Panel finds that the disputed domain name <isasuperyachts.com> is confusingly similar to the Complainant’s ISA Yachts and ISA trademarks.

The disputed domain name incorporates the Complainant's ISA trademark in its entirety. The addition of the descriptive term "superyachts" does not prevent a finding of confusing similarity. On the contrary, given that the Complainant is active in the luxury yacht and superyacht sector, the added term may increase the likelihood that Internet users will assume an association with the Complainant. More, the disputed domain name closely echoes the Complainant's ISA YACHTS trademarks The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant's ISA trademark for the purposes of paragraph 4(a)(i) of the Policy.

Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademarks.

Absence of Rights or Legitimate Interests (paragraph 4(a)(ii) of the Policy)

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is established, the burden of production shifts to the Respondent to demonstrate rights or legitimate interests under paragraph 4(c) of the Policy.

The Panel finds that the Complainant has established a prima facie case. The Complainant has demonstrated its rights in the trademarks ISA and ISA YACHTS, has stated that it has not authorized the Respondent to use its marks, and there is no evidence that the Respondent is affiliated with the Complainant.

The Respondent submits that the disputed domain name derives from the expression "IURISCI SHIPYARD ABRUZZO" and that the term "ISA" constitutes an acronym referring to his alleged shipbuilding business. The Respondent further states that he acts as owner and authorized representative of an entity referred to as "IURISCI SHIPYARD ABRUZZO ISA SUPER YACHT".

The Panel states the following. First, the Respondent has produced no evidence that he owns any trademark rights corresponding to the terms "ISA", "ISA SUPER YACHT", or "IURISCI SHIPYARD ABRUZZO ISA SUPER YACHT". Likewise, no documentary evidence has been provided showing that the alleged business is registered in the Italian Companies Register or otherwise enjoys any recognized legal status. In the absence of such evidence, the Respondent's assertions remain unsupported.

Second, the mere fact that the letters "ISA" may be presented as an acronym does not in itself establish rights or legitimate interests within the meaning of the Policy. The relevant inquiry is not whether the acronym can be explained, but whether the Respondent has demonstrated a bona fide entitlement to use the disputed domain name. The Panel finds that the Respondent has failed to provide objective evidence supporting such entitlement.

Third, the Respondent has not demonstrated that he is commonly known by the disputed domain name or by the name "ISA" within the meaning of paragraph 4(c)(ii) of the Policy. It is well established that a respondent seeking to rely on being commonly known by a domain name would normally be expected to provide evidence such as company registrations, trade name registrations, trademark rights, business records, media references, or other objective evidence showing that it is commonly known by the relevant name.

Indeed, the Panel notes that the Respondent has submitted certain screenshots and Internet search results in support of his position. However, these materials are of limited probative value. They primarily consist of references generated from the Respondent's own online presence, including his website, social media accounts, and related online content. Such materials do not independently establish that the Respondent or the alleged business is commonly known by the name "ISA".

More, the Respondent's own submissions repeatedly refer to the alleged business under the name "IURISCI". The Response states that "the name is derived from our own company identity and branding, which includes the 'IURISCI' name and trident symbol", and further asserts that "clients recognize IURISCI as an independent shipbuilder". The Panel notes that any reputation or recognition claimed by the Respondent is therefore associated with the name "IURISCI", not with the term "ISA". The Respondent has provided no evidence that customers, suppliers, business partners, or the relevant public identify him or his alleged business by the name "ISA".

Fourth, the Respondent has failed to demonstrate use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Panels assess all circumstances of the case to determine whether the claimed use is genuinely bona fide and not merely an attempt to capitalize on a complainant's trademark rights. In the present case, the Respondent has produced no documentary evidence supporting the existence of the alleged business under the name "ISA", nor any evidence establishing independent rights in that term.

The Panel additionally notes that the disputed domain name wholly incorporates the Complainant's ISA trademark and combines it with the term "superyachts", a term directly related to the Complainant's field of activity and closely corresponding to the Complainant's ISA YACHTS trademarks. Such a composition carries a significant risk of implied affiliation. It is well established that a domain name consisting of a complainant's trademark together with a term referring to the complainant's field of commerce will generally not support a finding of fair use where it suggests sponsorship, endorsement, or affiliation with the trademark owner.

In these circumstances, the Panel finds that the Respondent has failed to rebut the Complainant's prima facie case and concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.

Bad faith (paragraph 4(a)(iii) of the Policy.)

Under paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name was registered and is being used in bad faith.

The Panel finds that this requirement has been established.

At the time of registration of the disputed domain name, the Complainant already owned longstanding trademark rights in ISA and ISA YACHTS. The Complainant's trademark rights significantly predate the registration of the disputed domain name and have been used for many years in connection with the construction, marketing, refit and maintenance of luxury yachts and superyachts.

The Panel considers it unlikely that the Respondent was unaware of the Complainant and its trademarks when registering the disputed domain name. The parties operate in the same highly specialized industry, namely the construction and marketing of yachts and superyachts, and are both located in Italy. Given the narrow and specialized nature of the relevant market, the Panel finds it more likely than not that the Respondent was aware of the Complainant and its ISA and ISA YACHTS trademarks at the time of registration.

The Panel further notes that the Complainant has submitted evidence showing references to Ancona in connection with the Respondent's activities. This circumstance is particularly significant because the acronym "ISA" originates from "International Shipyards Ancona", the historic name associated with the Complainant's business and trademarks. In the Panel's view, the existence of such references on the respondent website further undermines the Respondent's contention that the disputed domain name was independently derived from the expression "IURISCI SHIPYARD ABRUZZO" and supports a finding that the Respondent was aware of the Complainant and its trademarks.

The composition of the disputed domain name further supports this conclusion. The disputed domain name wholly incorporates the Complainant's ISA trademark and combines it with the term "superyachts", a term directly corresponding to the Complainant's field of activity and closely echoing the Complainant's ISA YACHTS trademarks. The Panel finds that such a combination is unlikely to be coincidental. Rather, it creates a direct association with the Complainant and its business.

The Panel also notes that the disputed domain name carries a significant risk of implied affiliation with the Complainant. Indeed, a domain name consisting of a complainant's trademark together with a term relating to the complainant's field of commerce may falsely suggest sponsorship, endorsement, or affiliation. In the present case, the addition of the term "superyachts" reinforces, rather than dispels, the association with the Complainant's ISA YACHTS business.

While the Respondent denies any intention to target the Complainant, the Panel is entitled to assess the totality of the circumstances. The cumulative factors present in this case, namely (i) the Complainant's prior trademark rights, (ii) the reproduction of the ISA trademark in its entirety, (iii) the addition of the term "superyachts", which directly corresponds to the Complainant's business, (iv) the parties' operation within the same specialized sector in Italy, (v) the references to Ancona, historically associated with the Complainant's ISA brand, and (vi) the absence of persuasive evidence supporting the Respondent's claimed rights in the term "ISA", lead the Panel to conclude that the Respondent more likely than not knew of the Complainant and deliberately selected the disputed domain name because of its association with the Complainant's trademarks.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.