The Complainant in the present dispute is Fabbrica d’Armi Pietro Beretta, a privately held Italian firearms manufacturing company, founded in 1526 by Mastro Bartolomeo Beretta. <\/p>\n
By the end of the 17th century, the Complainant had become the second largest gun barrel maker and has supplied weapons for every major European war since 1650.<\/p>\n
Nonetheless, the Complainant has been owned by the same family for almost five hundred years and is a founding member of \"Les Henokiens\", an association of bicentenary companies that are family owned and operated.<\/p>\n
In 1918, the Beretta Model 1918, one of the first submachine guns in the world, was fielded by the Italian army: the Complainant manufactured rifles and pistols for the Italian military until the 1943 Armistice between Italy and the Allied forces during World War II; with the Wehrmacht's control of northern Italy, the Germans seized the Complainant and continued producing arms until the 1945 German surrender in Italy.<\/p>\n
After the war, the Complainant continued to develop firearms for the Italian Army and police, as well as the civilian market.<\/p>\n
The success of the Complainant is not at all limited to European market: in the 1980s, BERETTA enjoyed a renewal of popularity in North America after its Beretta 92 pistol was selected as the service handgun for the United States Army under the designation of \"M9 pistol\"; in the 1970s, the Complainant also started a manufacturing plant in São Paulo, Brazil, as a contract between the Complainant and the Brazilian government was signed for the production of Beretta 92s for the Brazilian Army until 1980.<\/p>\n
The parent company, Beretta Holding, also owns Beretta USA, and acquired several domestic competitors (such as Benelli and Franchi) and some foreign companies, including SAKO, Stoeger, Tikka, Uberti, and the Burris Optics company.<\/p>\n
Nowadays BERETTA firearms are used worldwide for a variety of civilian, law enforcement and military purposes: the Complainant is known for the innovative technology of its products; sporting arms account for three-quarters of sales, however it is also renown for other products such as the marketing shooting clothes and accessories.<\/p>\n
Beretta Holding closed the 2021 with 958 million Euro of revenue, of which 250 million Euro has been generated by the Complainant and more than 3380 employees, based not only in Europe but also in Australia, New Zealand, Russia, Turkey, United States and China.<\/p>\n
Presently still operating in several countries worldwide, the Complainant is to date the oldest active manufacturer of firearm components in the world.<\/p>\n
The Complainant is also the owner of the domain name <beretta.com>, registered on March 18, 1997 and pointed to the website “www.beretta.com”, used by the Complainant to promote its BERETTA firearm products.<\/p>\n
The disputed domain name <berettafirearmsusa.com> was registered on September 21, 2021 and currently resolves to a website publishing BERETTA trademarks and offering BERETTA firearms at discounted prices.<\/p>", "other_legal_proceedings": "
The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.<\/p>", "no_response_filed": "
COMPLAINANT<\/p>\n
The Complainant states that the disputed domain name <berettafirearmsusa.com> is confusingly similar to its trademark BERETTA, as it reproduces the trademark in its entirety with the sole addition of the descriptive term “firearms”, the geographical indicator “usa” (to indicate the United States) and the generic TLD “.com”, which is not sufficient to escape the finding that the disputed domain name is confusingly similar to the trademark.<\/p>\n
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Respondent is in no way related to the Complainant and has never received any approval of the Complainant (or the other related parties), expressed or implied, to use its trademarks or any other trademark identical or confusingly similar to such trademarks, nor to register any domain name identical or confusingly similar to such marks.<\/p>\n
The Complainant further underlines that the Respondent is not commonly known by the disputed domain name since it never acquired any rights in a trademark or trade name corresponding to the disputed domain name.<\/p>\n
Moreover, the Complainant emphasizes that the Respondent is using the disputed domain name to publish BERETTA trademarks and official images without any authorization, to offer for sale clearly counterfeit goods and submits that, in doing so, the Respondent is not using the disputed domain name for a bona fide <\/em>offering of goods or services, nor for a legitimate or fair use under the UDRP Policy.<\/p>\n With reference to the circumstances evidencing bad faith, the Complainant indicates that, considering its prior registration of the trademark BERETTA and its world renown, distinctiveness and reputation, it is highly unlikely that the Respondent registered the disputed domain name without actual knowledge of BERETTA and its rights in such trademarks. The Complainant submits that it is highly likely instead, that the Respondent intentionally registered the disputed domain name to attract internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant and its trademarks.<\/p>\n The Complainant also reaffirms that the disputed domain name has been used to publish, without consent from the Complainant, BERETTA trademarks, official promotional images and products, at extremely discounted prices and without disclosing in any way the lack of relationship with the Complainant on its website.<\/p>\n RESPONDENT<\/p>\n No administratively compliant response has been filed.<\/p>",
"rights": " 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).<\/p>",
"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 disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).<\/p>",
"bad_faith": " 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).<\/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": "Accepted",
"panelists": [
"Luca Barbero"
],
"date_of_panel_decision": "2023-07-07 00:00:00",
"informal_english_translation": " The Complainant has provided evidence of ownership of the following trademark registrations:<\/p>\n - International trademark registration No. 147879 for BERETTA (word mark), registered on July 07, 1950, in international classes 8 and 13;<\/p>\n - International trademark registration No. 746766 for BERETTA (word mark), registered on November 08, 2010, in international class 9;<\/p>\n - European Union trademark registration No. 9743543 for BERETTA (word mark), filed on February 17, 2011 and registered on June 28, 2011, in international classes 08, 09, 13, 14, 18, 25 and 34;<\/p>\n - European Union trademark registration No. 3801537 for BERETTA (word mark), filed on April 28, 2004 and registered on August 19, 2005, in international class 28.<\/p>",
"decision_domains": {
"berettafirearmsusa.com": "TRANSFERRED"
},
"panelist": null,
"panellists_text": null
}