The Complainant is Comune Di Saluzzo, of Saluzzo, Italy, represented by Studio Turini, Italy.
The Respondent is Editrice Il Taccuino S.r.l., of Vercelli, Italy, represented by Avv. Setragno, Italy.
2. The Domain Names and Registrar
The disputed domain names <piscinasaluzzo.com> and <piscinasaluzzo.net> are registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2008. On October 6, 2008, the Center transmitted by email to eNom, Inc a request for registrar verification in connection with the disputed domain names. On the same day, eNom, Inc transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2008. The Response was filed with the Center on October 31, 2008.
The Center appointed Richard Hill as the sole panelist in this matter on November 13, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a town that owns a public swimming pool. It markets various activities under the name of the town, namely “Saluzzo”.
The Respondent formerly managed that swimming pool. As part of its management contract, it registered domain names related to the pool.
The Complainant cancelled the Respondent's management contract. The Respondent then proceeded to use the domain names related to the pool for other activities, including adult entertainment.
5. Parties' Contentions
A. Complainant
The Complainant is the “Comune di Saluzzo” which is the body that administers the city of Saluzzo, Italy. The Complainant alleges that it is the owner of the sole swimming pool in the city, and that pool is located in the city hall.
According to the Complainant, Saluzzo is the name of the city, but this name has been used as a distinctive sign also to identify many of the events held in the city hall, many organizations and also the swimming pool, widely known as “piscina di Saluzzo” (the word “piscina” in Italian means pool, specifically swimming pool). Therefore the name “Saluzzo”, even if not registered as a trademark, has been used during the years as a trademark by the Complainant, which is the only entity authorized to use it. In particular, the Complainant is the only entity that can use the compound mark “piscinasaluzzo” as that name contains the distinctive word “saluzzo”.
The Complainant states that, up to August 29, 2007, the swimming pool in question was administered by Gestel, a company run by Mr. Guido Gabbotto, today sole administrator of the Respondent. On August 29, 2007, the Complainant revoked Mr. Gabotto's license to operate the pool.
Further, says the Complainant, given that Mr. Gabbotto was the operator of the pool, the Complainant did not oppose his registration of the domain name <piscinasaluzzo.it>, which provided information on the pool and courses held there.
According to the Complainant, when the license was revoked due to serious problems, the Respondent (a company controlled by Mr. Gabbotto) has continued to use, without any right, the domain name <piscinasaluzzo.it> and then registered, in addition, one of the disputed domain names with the aim of disparaging the city's swimming pool, spreading false news regarding the condition of the water. For this reason, the Complainant has initiated criminal action in the Italian courts. Following that, the Respondent changed the website at the disputed domain names, and this in response to an order from the judge in charge of the criminal case. At that point, the Respondent registered the other disputed domain names.
Further, says the Complainant, it doesn't appear that the Respondent has ever been commonly known by the domain names in dispute. Its name is Editrice Il taccuino s.r.l. and it no longer has any business related to swimming pools in Saluzzo. It doesn't appear that the Respondent is making any other legitimate commercial or non-commercial use of the disputed domain names.
On the contrary, says the Complainant, the Respondent uses the disputed domain names to gain clients by misleading customers. Its web site does not have proper references to the swimming pool in Saluzzo. On the contrary, it apparently contains adult-entertainment material.
According to the Complainant, by registering the disputed domain names the Respondent has disrupted the business of the Complainant, by misleading Internet users who access the disputed domain names thinking to find there information about the Complainant. That is, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other on-line location, by creating a likelihood of confusion with Complainant's mark.
B. Respondent
The Respondent raises a procedural issue. According to the Respondent, preliminarily, it must be noticed that the acting Mayor of Saluzzo Municipality appears not authorized by the Majority to bring the present complaint procedure, which consequently has to be dismissed (look for reference: Council of State – Italy - Section n. IV, n. 3988, taken on July 17, 2002: “The authorization to the legal representative of a board to stand in trial is indispensable condition for the valid setting up of the trial relation and, as a consequence, the lack, the invalidity or the shortage of execution of the authorization order makes the complaint dismissible. The orders of authorization to stand in trial and of appointment of representation of the board are competence of the Majority and do not require to be ratified).
Turning to the substance, the Respondent alleges that the disputed domain names are not confusingly similar to the Complainant's marks because they do not contain any reference to the municipal pool (there are several swimming pools in Saluzzo). On the contrary, a Google search yields the domain name <piscinacomunalesaluzzosub.it>; this domain name is nothing but the municipal Saluzzo swimming pool website in which (unlike those websites on dispute in the present proceeding) it is possible to find the pool time-table, the activities, the courses and anything else that might be useful to the municipal swimming pool users.
According to the Respondent, the web sites at the disputed domain names do not contain any references to the activities at the swimming pools. Adapting to our times the Latin legal principle, quod non est in google non est in mundo, it is reasonable to come to the conclusion that there is no “interference”, not even virtual, between the site “www.piscinasaluzzo.net” and the activities of the municipal Saluzzo baths.
According to the Respondent, the Complainant has not offered to prove that the use of the dispute domain names had in any way caused a business or an image damage nor that the management of the municipal swimming pool (not even carried out by the Complainant) had been damaged or disturbed by the publication on the sites at the disputed domain names.
Further, says the Respondent, the UDRP case law on the matter, categorical in assimilating the domain name, in respect of its function and protection forms, to signs and to trade marks, presupposes for its defense the so called “distinctive capacity”. Anyone can see that in this case there is absolutely no risk of confusion between the websites at the disputed domain names and the activity at every title developed by the Municipality of Saluzzo, neither at a first sight of the site nor during the consultation of the contents of the same.
According to the Respondent, the uniform trend of the WIPO UDRP Panel decisions, on the matter of Geographical Identifiers, consists in rejecting those complaints that base the domain name reassignment request on the confusing similarity with names of Cities, Regions or States.
The Respondent notes that the Complainant states that it is the holder of the denomination “Saluzzo”, even if not registered, and to have used the denomination during the years as a proper trade mark. Following the arguments of the Complainant, neither the site “www.saluzzo.it”, propertyof the “Saluzzo città da amare” Association, that also put in evidence bigger risks of confusion/superimposition with the activity of the Municipality of Saluzzo, has to be considered licit, nevertheless the administrative body has not taken any protection initiative on regard.
According to the Respondent, in the present case, there is no connection between the name of the City of Saluzzo and the disputed domain names. The Municipality of Saluzzo has its own domain name and its own website, just like the municipal swimming pool. The disputed domain names identify a site which has the only purpose of informing the citizens of Saluzzo on topics regarding the swimming pool, but not only; it is easy to conclude, for the exposed arguments, that there is no risk, not even in abstract, of confusing the disputed domain names with any activity or trade mark belonging to the City of Saluzzo.
The Respondent states that the complex judicial proceedings between the parties to the present case (Municipality of Saluzzo, on one hand, Gestel s.c.s.d. and Editrice il Taccuino Srl, on the other hand) has been settled by the Complainant with the following statement “until the decision of revocation of the 29.08.02007 n.88 the swimming pool of Saluzzo was administrated by Gestel s.c.d.s. of which Administrative Board Guido Gabotto is a member, today sole administrator of the Editrice Taccuino S.r.l. (…) When the charge has been revoked for serious default, retaliation, the Editrice Taccuino srl has continued to use without any right the domain name <piscinasaluzzo.it> (for which is pending the reassignment procedure in front of the Italian Registry) and then has registered <piscinasaluzzo.com> and <piscinasaluzzo.net> with the aim of disparage the city's swimming pool, spreading false news regarding the condition of the water”.
The Respondent states that the Complainant failed to report to the Panel that an appeal is pending before the Administrative Regional Tribunal (“TAR”) of Region Piedmont against the illegitimate and discretionary revocation measure (Appeal brought on September 5, 2007, case number 1057 R.G.), namely an opposition proceeding for the annulment of the Council of the Municipality of Saluzzo order, n. 88/2007, adopted on August 31, 2007, immediately executive, with which has been revoked from Gestel the “licence of management service of the municipal swimming pool, situated in Via Aldo Moro”.
According to the Respondent, the revocation of the Saluzzo municipal baths management against Gestel is in fact a questioned measure; from the simple reading of the opposition before the TAR, it has to be put in evidence that the conduct of the Public Administration, in that specific situation, is worthy of censure under numerous profiles.
Further, says the Respondent, in any case it is an unquestionable fact is that the Respondent's company Gestel has been for a long time the society that managed the Saluzzo municipal swimming pool and, in its capacity of pool manager, has created, registered and used the site named <piscinasaluzzo.it> and the sites and the disputed domain names, and in the frame of the close collaboration relations with Editrice Il Taccuino Srl, has handed over and entrusted to the named society the management of the site. Equally indisputable is that the exclusion of Gestel from the management of the municipal swimming pool is actually sub iudice.
According to the Respondent, any decision on the concern of the domain names (firmly reaffirming the impossibility of risk of confusion, as stated above) could not be taken before the Italian Judicial Authority has taken its position on the case related to the illegitimate exclusion of Gestel from the management of the swimming plant.
The Respondent states that one of the disputed domain names has been registered on August 5, 2003, and that it was used, without any objection, until the year 2008, when the Municipality of Saluzzo has “discovered” all of a sudden the potential leading astray of potential clients of the municipal swimming pool.
According to the Respondent, an argument of bad faith use of that domain name after the discontinuance of the swimming plant management, as claimed by the Complainant, could be admitted only if the disputed domain names were capable of producing confusion with respect to the activity of the municipal swimming pool. But, as fully discussed above, this risk does not exist in the specific case.
The Respondent states: given that the initial registration of the domain name was legitimate (because at the time Gestel was operating the municipal swimming pool), given the creation and the use of the domain name, given the absolute lack of any risk of confusion or of illicit competition either in the name or in the contents of the website, there is no issue concerning the legitimacy of the current use of the domain name.
Because the Complaint refers to facts published on “www.piscinasaluzzo.it” of information regarding the presence of pseudomonas aeruginosa in the municipal swimming pool bath, the Respondent considers it opportune to bring to the Panel's attention that it has filed an action before the Public Prosecutor's office on July 23, 2008, alleging that:
- the published information was not false;
- the site in dispute is not unnecessarily alarmist;
- the primary public interest is not to try to silence, with rash legal action, those who have informed, but to verify with the maximum timeliness the truth of the new, concerning public sanitation, trough the publication of official documents and to remedy, as soon as possible, a situation of potential serious risk for the community.
Thus, says the Respondent, the web site in question is not illegitimate. On the contrary, it has the merit of compensating for idleness of the Saluzzo authorities.
Finally, says the Respondent, it must be stressed that the names “Saluzzo” and “piscinasaluzzo” have never been registered by the Complainant, who thus cannot invoke the protection coming from the preventive registration of the trade mark. Similarly, it has to be put in evidence that, before the Respondent made any use of the disputed domain names, the denomination “piscinasaluzzo” has never been used in a continuous way to identify any activity or executive sector of the Municipality of Saluzzo.
The Respondent's registration of one of the disputed domain names on August 27, 2008, is nothing but an attempt to protect the website “piscinasaluzzo” from the repeated and continual attacks, also trough rash legal actions, such as it seems the present action, that are downright acts of abuse of the Policy (Hijacking).
The Respondent requests a finding of Reverse Domain Name Hijacking.
6. Discussion and Findings
Before discussing the merits, the Panel will rule on the procedural issue raised by the Respondent, namely whether the Complainant has standing to initiate these proceedings.
The Complainant is represented by a reputable Italian law firm. Thus, the Panel declines to enter into the subtleties of Italian administrative law with respect to the powers of municipal executives. The Panel assumes that the law firm representing the Complainant has satisfied itself regarding the Complainant's standing to initiate the present proceedings.
Therefore, the Panel accepts the Complaint.
A. Identical or Confusingly Similar
The disputed domain names are obviously confusingly similar to the term “Saluzzo”, the name of a city in Italy. As the Respondent correctly points out, numerous UDRP panels have held that geographical names (in particular city names) are not necessarily trademarks, and therefore do not necessarily confer rights under the Policy.
A good analysis of the issue of geographical names can be found in Land Sachsen-Anhalt v. Skander Bouhaouala,
WIPO Case No. D2002-0273, in which the learned Panel shows that panels have consistently refused to find that mere geographic names are protected under the Policy, but have also consistently recognized that geographic names can have rights under the Policy when they are used in commerce and become trademarks.
In the present case, the Complainant has argued (and presented evidence to support its argument) that the name “Saluzzo” was in fact used in commerce, thus creating what are in many jurisdictions called common law (or unregistered) trademark rights. Indeed, one of the cases cited by the Respondent reaches the same conclusion, see City of Hamina v. Paragon International Projects Ltd.,
WIPO Case No. D2001-0001, in which the Panel stated:
“The Administrative Panel takes definite exception to the Complainant's view that rights to a unique geographical name should, evidently as a matter of principle, “be regarded to belong to the owner of the geographical area in question”. However, applying by analogy relevant parts of the European Court's interpretation to evidence introduced by the Complainant, the Administrative Panel concludes that the Port of Hamina has acquired distinctiveness and become established in the meaning of the Trademarks Act as a trademark/service mark relating to services originating from the City of Hamina/Port of Hamina. Consequently, Port of Hamina is a trademark/service mark to which the Complainant has rights. The Administrative Panel also finds that the domain name “portofhamina.com” is confusingly similar to that mark.”
Given that the disputed domain names are generic domain names (gTLDs) to which the Policy applies, and that numerous Panels have found that common law rights may be relied on by a complainant under the Policy, the Complainant can invoke common law (or unregistered) rights provided that it is able to show that the claimed name has become a distinctive identifier associated with the Complainant or its goods or services. In this case, the Panel is satisfied on balance that this is the case.
Thus, the Panel holds that the Complainant does have common law rights protected by the Policy to the name “Saluzzo”, and that, as a consequence, the disputed domain names are confusingly similar, in the sense of the Policy, to the Complainant's protected name.
The Respondent argues that the Complainant has not shown any actual confusion. But the such considerations are irrelevant for this element of the policy. As the Panel stated in Plan Express Inc. v. Plan Express, D2000-0565:
“To determine whether a name is identical or confusingly similar to a mark, the panel merely compares the mark in question to the domain name at issue, regardless of the various lines of business in which each is used, or of the geographic areas in which each party conducts business.”
B. Rights or Legitimate Interests
The question of whether or not the Respondent has rights or legitimate interests to the disputed domain names depends entirely on whether the use of the disputed domain names is or is not bona fide.
As we will see below, the Panel concludes that the offer was not bona fide in the sense of the Policy. Thus, the Panel holds that the Respondent does not have rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
It is not disputed that a company controlled by the Respondent's principal was responsible for operating the Saluzzo municipal swimming pool. After that relation ended, the Respondent registered the disputed domain names and started using them for various purposes.
The Respondent argues that use of the disputed domain names to criticize the current cleanliness of the water in the Saluzzo municipal swimming pool is a legitimate use under the Policy, thus there was no bad faith use of the disputed domain names.
It is of course true that genuine non-commercial criticism is, in general, a legitimate use under the Policy, see in particular National Alliance for the Mentally Ill Contra Costa v. Mary Rae Fouts, NAF Case No. 204074. However, in this Panel's view defamation would not be legitimate criticism. In the present case, the Complainant has presented evidence of a court ordering that the Respondent cease using one of the disputed domain names, precisely because the material was considered defamatory. Thus, the Panel is inclined not to accept the Respondent's allegation that its use of the disputed domain names is protected free speech.
In any case, the Respondent subsequently changed the content of the web sites at the disputed domain names. The Respondent itself states that the web sites at the disputed domain names do not contain any references to the activities at the swimming pools. The evidence presented shows that they now present a variety of material, including adult entertainment material. Such use cannot be considered legitimate in the sense of the Policy. As the Panel stated in Motorola, Inc. v. NewGate Internet, Inc,
WIPO Case No. D2000-0079:
“While (as the respondent correctly points out) many adult sex sites are perfectly legal and constitute bona fide offerings of goods or services, the use of somebody else's trademark as a domain name (or even as a meta-tag) clearly does not constitute a “bona fide” offering of goods or services when the web site owner has no registered or common law rights to the mark, since the only reason to use the trademark as a domain name or meta-tag is to attract customers who were not looking for an adult sex site, but were instead looking for the products or services associated with the trademark. Such use of a trademark can create customer confusion or dilution of the mark, which is precisely what trademark laws are meant to prevent. And actions that create, or tend to create, violations of the law can hardly be considered to be “bona fide”.”
See also Paule Ka v. Paula Korenek,
WIPO Case No. D2003-0453: “the proper test in this Panel's view is whether the objective consequences or effect of the Respondent's conduct is a free-ride on the Complainant's goodwill, whether or not that was the primary (subjective) intent of the Respondent.”
Thus, on the basis of the evidence presented, the Panel holds that the Respondent registered and is using the disputed domain names to attract, for commercial gain, Internet users to its web sites, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of services. This constitutes bad faith registration and use under 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <piscinasaluzzo.com> and <piscinasaluzzo.net > be transferred to the Complainant.
The Respondent's request for a finding of Reverse Domain Name Hijacking is dismissed.
Richard Hill Sole Panelist
Dated: November 27, 2008
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