{ "case_number": "CAC-UDRP-105285", "time_of_filling": "2023-03-17 09:10:30", "domain_names": [ "palumboyachts.com" ], "case_administrator": " Iveta Špiclová (Czech Arbitration Court) (Case admin)", "complainant": [ "Palumbo Group S.P.A." ], "complainant_representative": "Convey srl", "respondent": [ "Rafał Długołęcki (Victoria Dom S.A.)" ], "respondent_representative": null, "factual_background": "

A. Complainant's Factual Allegations<\/strong><\/p>\n

The Complainant’s statements of fact can be summarised as follows:<\/p>\n

The Complainant has been operating in the shipbuilding industry for 51 years, during which time it has undertaken construction of complex vessels, such as cruise ships, ferries, mega-yachts, and offshore units. It has refitted 1.937 ships and 341 superyachts in the past 5 years. The Complainant’s group personnel comprise over 900 employees, resources and exclusive subcontractors, and 100+ naval architects and engineers.<\/p>\n

The Complainant has begun its activities as a fairly modest carpentry and metalwork yard to support the local Italian ship repair industry. Currently, the Complainant represents the largest refit\/repair network in the Mediterranean, has grown to become a major player in the shipbuilding industry, and is building up its reputation in the luxury yacht world.<\/p>\n

The Complainant launched its first 54 meter superyacht in 2011 and, at present, operates the following world renowned trade marks: Isa Yachts, Columbus Yachts, Mondomarine, Extra Yachts and Palumbo SY Refit.<\/p>\n

In addition to the trade mark mentioned in the section ‘Identification of Rights’, and many others, the Complainant holds since 2016 the domain name <palumbogroup.it>, which resolves to the Complainant’s official website.<\/p>\n

B. Respondent's Factual Allegations<\/strong><\/p>\n

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The Respondent has failed to serve a Response in this UDRP administrative proceeding, the result of which being that the Complainant’s factual allegations are uncontested.<\/span><\/p>\n<\/div>\n<\/div>\n<\/div>", "other_legal_proceedings": "

The Panel is unaware of any other pending or decided legal proceedings in respect of the domain name <palumboyachts.com> (‘the disputed domain name’).<\/p>", "no_response_filed": "

A. Complainant's Submissions<\/strong><\/p>\n

The Complainant’s submissions can be summarised as follows:<\/p>\n

I. The disputed domain name is confusingly similar to a trade mark in which the Complainant has rights<\/strong><\/p>\n

The Complainant avers that the disputed domain name is confusingly similar to the Complainant’s trade mark PALUMBO, in so far as it incorporates the Complainant’s trade mark in its entirety. The addition of the word ‘yachts’ is insufficient to escape the finding that the disputed domain name is confusingly similar to the Complainant’s trade mark PALUMBO. On the contrary, the generic term ‘yachts’ worsens the likelihood of confusion as it directly refers to the Complainant’s business activity. Furthermore, the generic Top-Level Domain (gTLD) suffix (<.com>) is typically disregarded in the assessment of identity or confusing similarity under paragraph 4(a) of the UDRP Policy.<\/p>\n

II. The Respondent has no rights or legitimate interests in respect of the disputed domain name<\/strong><\/p>\n

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name.<\/p>\n

The Complainant is not in possession of, nor aware of the existence of, any evidence demonstrating (i) that the Respondent might be commonly known by the disputed domain name or a name corresponding to the disputed domain name as an individual, business, or other organisation; (ii) that the Respondent holds any registered trade mark rights with respect to the disputed domain name; (iii) the Respondent’s use, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods and services before any notice of this UDRP administrative proceeding; and (iv) that the Respondent has been using the disputed domain name for a legitimate non-commercial purpose.<\/p>\n

The Respondent registered the disputed domain name in order to redirect it to a website related to PALUMBO products\/services, which does not represent a bona fide offering as the Respondent’s website capitalises on the reputation and goodwill of the Complainant’s trade mark and misleads Internet users who could wrongly assume that the disputed domain name is a Complainant’s authorised reseller.

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III. The Respondent registered and is using the disputed domain name in bad faith<\/strong><\/p>\n

Registration<\/strong><\/p>\n

The trade mark PALUMBO has been used extensively and exclusively by the Complainant since 1967, and through long established and widespread use in several countries worldwide.<\/p>\n

The trade mark PALUMBO enjoys worldwide reputation in the industry sectors of shipbuilding and refitting.<\/p>\n

The disputed domain name was registered in January 2023, years after the Complainant had obtained registered trade mark rights for PALUMBO, including in Poland, where the Respondent is prima facie located.<\/p>\n

Use <\/strong><\/p>\n

The Complainant avers that the Respondent has intentionally used the disputed domain name to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website (paragraph 4(b)(iv) of the UDRP Policy).<\/p>\n

The Complainant further avers that the Respondent’s website displays a picture of a yacht owned by the Complainant as well as the statement ‘Palumbo Yacht Ship Yard. You decide buy or not’, which the Complaint claims would suggest to Internet users the possibility of buying PALUMBO yachts through the Respondent’s website.<\/p>\n

The Respondent’s website was previously linked to an Instagram account held by the Respondent exploiting the PALUMBO trade mark. The Complainant sought the suspension of the account in view of the trade mark infringement, which the Complainant succeeded on 27 February 2023.<\/p>\n

The Complainant also contends that, whilst the Respondent’s website remains under construction, the following cumulative circumstances sway in favour of the Complainant: (i) the Respondent’s lack of response to the Complainant’s cease and desist letter prior to this UDRP administrative proceeding; (ii) the Respondent’s concealment of its identity; and (iii) the implausibility of any good faith use of the disputed domain name.<\/p>\n

The Complainant therefore concludes that the Respondent has registered and is using the disputed domain name in bad faith.<\/p>\n

B. Respondent’s Submissions<\/strong><\/p>\n

The Respondent has failed to serve a Response in this UDRP administrative proceeding, the result of which being that the Complainant’s submissions are uncontested.<\/p>", "rights": "

The Complainant has, to the satisfaction of the Panel, shown that the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the UDRP Policy).<\/p>", "no_rights_or_legitimate_interests": "

The Complainant has failed to make a prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name (within the meaning of paragraph 4(a)(ii) of the UDRP Policy).<\/p>", "bad_faith": "

The Panel makes no ruling on this UDRP Policy ground for the reasons set forth in section ‘Principal Reasons for the Decision’ further below.<\/p>", "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.<\/p>", "decision": "Rejected", "panelists": [ "Gustavo Moser" ], "date_of_panel_decision": "2023-04-26 00:00:00", "informal_english_translation": "

The Complainant relies upon the following registered trade mark, amongst others:<\/p>\n

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  • EU trade mark registration no. 017883294, registered on 20 August 2018 for the figurative mark PALUMBO, in classes 12, 37 and 42 of the Nice Classification.<\/li>\n<\/ul>\n

    (Hereinafter, ‘the Complainant’s trade mark’; ‘the Complainant’s trade mark PALUMBO’; or ‘the trade mark PALUMBO’ interchangeably).<\/p>\n

    At present, the disputed domain name resolves to an active website, the details of which are discussed further below (‘the Respondent’s website’).<\/p>", "decision_domains": { "palumboyachts.com": "REJECTED" }, "panelist": null, "panellists_text": null }