Decision for dispute CAC-UDRP-109017

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 is the owner of trademark registrations for MARAZZI, including, inter alia:

- International Trademark Registration No. 378091 for the mark MARAZZI, registered on May 6, 1971 in classes 8, 19, 20, 21 and 27;

- International Trademark Registration No. 1055223 for the mark MARAZZI (word), registered on September 2, 2010 in class 35, designating, among others, the United States of America; and

- European Union Trademark Registration No. 015567639 for the mark MARAZZI (word), registered on November 10, 2016 in class 19.

The Complainant is an Italian company based in Sassuolo, Italy, operating in the ceramic tile industry under the MARAZZI brand. According to the Complainant, the business was founded in 1935 and is now present in more than 140 countries. MARAZZI is the surname of the founder of the company. MARAZZI GROUP S.r.l. is the Complainant’s company name, as recorded in the Italian Register of Companies. The Complainant uses the website at www.marazzi.it.

The disputed domain name was registered on June 8, 2026.

According to the evidence in the case file, the disputed domain name resolved to a page of the GoDaddy domain marketplace, where it is offered for sale for USD 1,450, or under a “lease to own” option of USD 242 per month.

The Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:

(1) the disputed domain name is confusingly similar to the Complainant’s trademark, since it contains the MARAZZI mark. The disputed domain name is moreover identical to the Complainant’s company name. The gTLD “.xyz” is a technical element and has no impact on the assessment;

(2) the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not an authorized dealer, agent, distributor or reseller of MARAZZI products and has not been authorized to register or use the MARAZZI trademark in a domain name. The disputed domain name is inactive and is therefore not used in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use;

(3) the disputed domain name was registered and is being used in bad faith. Given the distinctiveness and reputation of the MARAZZI trademarks, it is inconceivable that the Respondent registered the disputed domain name without actual knowledge of the Complainant and its rights. MARAZZI is the surname of the founder of the company and MARAZZI GROUP is the Complainant’s company name. The disputed domain name was registered long after the Complainant acquired trademark rights in MARAZZI, including in the United States, where the Respondent is located. As to use, the disputed domain name links to an inactive website, and given the distinctiveness of the MARAZZI trademark and its direct connection with the Complainant, it is inconceivable that the disputed domain name could be used in a manner that would not infringe the Complainant’s trademark.

The Complainant requests transfer of the disputed domain name.

The Respondent

The Respondent did not reply to the Complainant’s contentions.

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.

To succeed in a UDRP complaint, a complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as follows:

1) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark in which the Complainant has rights;

2) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

3) that the disputed domain name has been registered and is being used in bad faith.

The Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a Respondent does not respond to the Complaint, the Panel’s decision shall be based upon the Complaint. The Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions.

The Panel has taken note of the WIPO Overview of WIPO Panel Views on Select UDRP Questions (“WIPO Overview 3.1”) and, where appropriate, will decide consistent with the consensus views captured therein.

Identical or Confusingly Similar

According to paragraph 4(a)(i) of the Policy, it should be established that the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights.

The Complainant has demonstrated ownership of the MARAZZI trademark. The Panel is therefore satisfied that the Complainant has registered trademark rights for the purposes of the Policy. See WIPO Overview 3.1, section 1.2.1.

As clarified in WIPO Overview 3.1, section 1.7, the first element functions primarily as a standing requirement, and the test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s mark and the disputed domain name.

The disputed domain name reproduces the MARAZZI mark in its entirety, followed by the term “group”. The mark is the first and dominant element of the disputed domain name and remains clearly recognizable. The addition of “group” does not prevent a finding of confusing similarity. See WIPO Overview 3.1, section 1.8. The gTLD “.xyz” is a standard registration requirement and is disregarded for the purposes of this comparison. See WIPO Overview 3.1, section 1.11.1.

The Panel therefore concludes that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, and the requirement under paragraph 4(a)(i) of the Policy is satisfied.

Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

While the overall burden of proof remains with the Complainant, UDRP panels have recognized that requiring a complainant to prove a negative would often be impracticable, as the relevant information is typically within the Respondent’s knowledge. Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production shifts to the Respondent to demonstrate such rights or legitimate interests. See WIPO Overview 3.1, section 2.1.

The Complainant states that the Respondent is not its authorized dealer, agent, distributor or reseller, and that it has not authorized the Respondent to use the MARAZZI trademark in a domain name. Nothing in the record suggests otherwise. The Respondent’s name, as disclosed by the Registrar, bears no resemblance to the disputed domain name, and there is no evidence that the Respondent is commonly known by it within the meaning of paragraph 4(c)(ii) of the Policy.

The disputed domain name resolved to a domain marketplace page where it is offered for sale. The Panel has assessed the case on the basis of that evidence. The record contains no indication of any other use of the disputed domain name, or of preparations for such use.

Panels have accepted that holding domain names for resale may be legitimate where the domain name consists of dictionary words, common phrases or similar terms and the purpose of registration was not to target a trademark. See WIPO Overview 3.1, sections 2.1 and 2.10.1. That is not the present situation. MARAZZI has no apparent dictionary meaning; it is a surname used for decades as the Complainant’s trademark. A surname may in principle be registered in good faith by a person who bears it or has some other connection with it, but nothing in the record connects the Respondent with that name. The addition of the term “group”, far from distinguishing the disputed domain name from the Complainant, reproduces the Complainant’s corporate name and suggests that the disputed domain name belongs to the Complainant’s group of companies. See WIPO Overview 3.1, section 2.5.1. Offering such a domain name for sale does not amount to a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, and is plainly not a noncommercial or fair use under paragraph 4(c)(iii).

The Complainant has therefore established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted it.

Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must prove on the balance of probabilities both that the disputed domain name was registered and is being used in bad faith.

The Complainant’s International Registration No. 378091 for MARAZZI dates from 1971, and International Registration No. 1055223, which designates, among others, the United States, from 2010. The disputed domain name was registered on June 8, 2026, decades after the Complainant’s rights arose.

The evidence of the reputation of the MARAZZI mark is limited to the Complainant’s own corporate materials, and the Panel does not need to decide whether the mark is well known worldwide, as the Complainant contends. The relevant question is whether the Respondent, more likely than not, had the Complainant in mind when registering the disputed domain name. The Panel finds that the Respondent did. MARAZZI is a distinctive term with no apparent meaning other than as a surname and as the Complainant’s trademark, which has been in use for ceramic tiles for several decades. The Respondent did not register the term alone, but combined it with “group”, so that the disputed domain name mirrors the Complainant’s company name MARAZZI GROUP S.r.l. This choice is difficult to explain as coincidence, and the Respondent has offered no explanation. See WIPO Overview 3.1, section 3.2.2. The Panel concludes that the disputed domain name was registered with knowledge of, and with the intention of targeting, the Complainant and its MARAZZI mark.

As to use, the Complainant relies on the doctrine of passive holding. As noted above, the disputed domain name is not passively held, as it is listed for sale on the GoDaddy marketplace for USD 1,450, with a “lease to own” option.

A generalized offer to sell a domain name, including through a third-party platform, does not by itself constitute bad faith. The question is whether the offer targets the trademark owner. See WIPO Overview 3.1, section 3.1.1. Relevant considerations include the strength of the mark, whether the term is descriptive or used by third parties, and the nature of the domain name. Here, the disputed domain name combines a distinctive mark with a term that identifies the Complainant’s corporate group; it has no apparent value other than that derived from its association with the Complainant. There is no evidence of the Respondent’s out-of-pocket costs, but the asking price, set within months of registration, is in the Panel’s view clearly in excess of any costs that may reasonably be associated with registering a “.xyz” domain name. In the absence of any explanation from the Respondent, the Panel finds that the disputed domain name was registered primarily for the purpose of selling it to the Complainant or its competitor for valuable consideration in excess of the Respondent’s documented out-of-pocket costs, within the meaning of paragraph 4(b)(i) of the Policy. Even if the intended purchaser were another party seeking to trade on the Complainant’s name, the registration and offer for sale of the disputed domain name would amount to bad faith under paragraph 4(a)(iii), the circumstances listed in paragraph 4(b) being non-exhaustive.

The Panel adds that the outcome would be the same were the disputed domain name regarded as passively held. The distinctiveness of the MARAZZI mark, the composition of the disputed domain name reproducing the Complainant’s corporate name, the Respondent’s failure to respond, and the absence of any plausible good-faith use to which the disputed domain name could be put would each support a finding of bad faith under the passive holding doctrine. See WIPO Overview 3.1, section 3.3.

The Respondent registered the disputed domain name through a privacy service. Such use, by itself, is not an indication of bad faith (WIPO Overview 3.1, section 3.6), and the Panel has not relied on it.

Accordingly, the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.