## Facts

- Recordati S.p.A., an Italian pharmaceutical company, owned registered trademark rights in “RECORDATI,” including a U.S. registration for pharmaceutical-related goods and services.
- Domain Name Clearing Company, LLC (San Diego, California) registered the domain name `recordati.com` in 1997 through Network Solutions, Inc.
- The respondent did not develop an active website at `recordati.com`; the domain was later placed on “Hold” status.
- In 1998, after the complainant requested action, the respondent placed the domain on hold but refused to link the domain to the complainant or transfer it.
- The respondent claimed it selected “recordati” as an intentional misspelling of the Italian word “ricordati” (asserted to mean “remember”) and denied targeting the complainant.
- There was no evidence the respondent offered the domain for sale to the complainant, was a competitor of the complainant, or engaged in a pattern of registering trademark-based domain names.
- The complainant filed a UDRP complaint seeking transfer; the respondent’s response was submitted late, and the panel retained discretion whether to consider it.

## Issues

1. Whether `recordati.com` is identical or confusingly similar to the complainant’s “RECORDATI” mark under UDRP ¶ 4(a)(i).
2. Whether the respondent has rights or legitimate interests in `recordati.com` under UDRP ¶ 4(a)(ii) and ¶ 4(c).
3. Whether the domain name was registered and used in bad faith under UDRP ¶ 4(a)(iii) and ¶ 4(b).

## Decision

- The panel ordered transfer of `recordati.com` to the complainant.
- The panel found the domain name identical to the “RECORDATI” mark for UDRP purposes (disregarding the “.com” gTLD).
- The panel found the respondent lacked rights or legitimate interests because it showed no bona fide use or concrete preparations to use the domain, was not commonly known by “Recordati,” and had no authorization from the complainant.
- The panel found bad-faith registration and use based on the surrounding circumstances, including registration of a domain identical to a distinctive trademark, lack of genuine use, an unsupported explanation for the selection, and refusal to transfer.

## Legal Principles

- Under UDRP ¶ 4(a), a complainant must prove: (i) identical/confusing similarity to a mark in which the complainant has rights; (ii) no respondent rights or legitimate interests; and (iii) bad-faith registration and use.
- A domain name that wholly incorporates a complainant’s registered mark is typically treated as identical or confusingly similar; the “.com” suffix is disregarded for this comparison.
- For UDRP ¶ 4(a)(ii), a complainant may satisfy its burden through a prima facie showing that the respondent lacks authorization and lacks bona fide use; the burden then shifts to the respondent to produce evidence of rights or legitimate interests.
- Legitimate interests may be shown by bona fide offering or demonstrable preparations, being commonly known by the domain name, or legitimate noncommercial or fair use without intent for commercial gain or confusion (UDRP ¶ 4(c)).
- Bad faith may be inferred from a combination of circumstances even when none of the enumerated examples in UDRP ¶ 4(b) is proven, including opportunistic registration of a domain identical to a distinctive mark coupled with non-use and an implausible or unsubstantiated justification.

## Conclusion

The panel ordered transfer of `recordati.com` after concluding the domain was identical to the complainant’s “RECORDATI” trademark, the respondent failed to show any rights or legitimate interests, and the overall circumstances supported an inference of bad-faith registration and use under the UDRP.


Recordati S.p.A. v. Domain Name Clearing Co., WIPO Case No. D2000-0194 (WIPO Arb. & Mediation Ctr. 2000)