WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mediaset S.p.A. v. Antonio Esposito, S.C.A. Service Controll Access, Amata International Network Co. Ltd

Case No. D2009-0026

1. The Parties

The Complainant is Mediaset S.p.A. of Cologno Monzese, Italy, represented by Carlo Sala, Italy.

The Respondent is Antonio Esposito, S.C.A. Service Controll Access, Amata International Network Co. Ltd, Milan, Italy.

2. The domain names and Registrars

The disputed domain names <gruppomediaset.com> is registered with Tucows Inc. and <mediaset.asia> is registered with Mesh Digital Limited (the Domain Names).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2009. On January 12, 2009, the Center transmitted by email to Tucows Inc. and Mesh Digital Limited a request for registrar verification in connection with the disputed Domain Names. On January 12, 2009 and January 14, 2009, Tucows Inc., and Mesh Digital Limited transmitted by email to the Center their verification responses 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” or “UDRP”), 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 January 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2009.

On January 28, 2009, the Center received an informal email communication from the Respondent attaching documents in Italian. The Center acknowledged receipt advising that pursuant to the Rules, paragraph 11, the language of the administrative proceedings shall be the language of registration agreement (language of registration agreement being English in this case as confirmed by the relevant registrar).

On the same date, the Center received a subsequent email communication from the Respondent stating that:

“We comunicated that complaint to the Italy court is considerated illegal ,why without days time limits of transfer domains. If you take in consideration this complaint, we contact legal office Vs Wipo. for illegal procedure.in attacched illegal complaint.”

However the Respondent did not submit a formal Response. Accordingly, the Center informed the Respondent on February 16, 2009 that it would proceed with the appointment of an administrative Panel and that the consideration or otherwise of any late submission of Response shall be left to the discretion of the Panel (on appointment).

The Center appointed Luca Barbero as the sole panelist in this matter on February 23, 2009. 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 Mediaset S.p.A., an Italian private TV group which was established in 1987 and is the holder of several trademark registrations consisting of the term “Mediaset” such as the Italian registration n° 634037 for MEDIASET, registered on November 18, 1994 in classes 16, 28, 35, 38, 41, 42 and renewed on January 24, 2008.

The Complainant is furthermore directly or indirectly through controlled companies (such as R.T.I. S.p.A.) the registrant of a number of domain namesconsisting of or including the term “Mediaset” such as <gruppomediaset.it> registered on March 12, 2002; <mediasetgroup.it> registered on April 3, 2002; <mediaset.it> registered on February 27, 1996; <mediaset.net> registered on April 19, 2003; <mediaset.biz> registered on February 27, 2004.

The Respondent registered the Domain Names <gruppomediaset.com> on May 17, 2005 and <mediaset.asia> on April 7, 2008.

5. Parties' Contentions

A. Complainant

The Complainant points out that Mediaset S.p.A. is the biggest Italian private TV group, which controls inter alia Reti Televisive Italiane S.p.A, the well-known broadcasting company.

The Complainant contends that the disputed Domain Names <gruppomediaset.com> and <mediaset.asia> are clearly identical and confusingly similar to trademarks in which Complainant has rights as they reproduce the trademark MEDIASET in its entirety.

The Complainant highlights that, with regard to <mediaset.asia>, on September 10, 2008 Milan IP Court declared that the trademark MEDIASET is well-known and enjoined the Respondent to make further use of it and ordered the transfer of the Domain Name.

With reference to rights or legitimate interests in respect of the disputed Domain Names, the Complainant states that the Respondent has no rights or legitimate interests in respect of the Domain Names as the Respondent has no connection or affiliation with the Complainant and has not received any licence or consent, express or implied, nor is authorized to use the Complainant's trademarks.

The Complainant concludes that the mark MEDIASET is clearly and strongly associated with the popular TV Group, as also Milan IP Court explained in the above- referenced case brought against the Respondent, and that it is not a designation that everybody may legitimately choose, unless seeking to create the impression of an association with the Complainant.

With reference to the circumstances evidencing bad faith, the Complainant underlines that the Respondent knowingly chose Domain Names respectively identical and confusingly similar to a trademark of strong reputation and fame.

As a circumstance evidencing bad faith in the use of the Domain Name <mediaset.asia>, the Complainant highlights that it has never been used in relation to an active website. With regard to the Domain Name <gruppomediaset.com>, the Complainant emphasizes that it points to a web site the content of which is limited to the sentence “www.gruppomediaset.com RESERVED this domain is reserved”. Furthermore, according to the Complainant, the Respondent has been trying to sell <gruppomediaset.com> on the Sedo Parking website for valuable consideration (USD 10,000) in excess of his out-of-pocket costs directly related to the Domain Name registration, which shows that the Respondent registered the Domain Name for the purpose of reselling it to any interested party.

Furthermore, the Complainant points out that the Center has already issued a decision against the Respondent in a case which resulted similar to the one at issue (Fiat S.p.A. and Fiat Group Automobiles S.p.A. v. Antonio Esposito, WIPO Case No. D2007-1868).

B. Respondent

Notwithstanding the statement submitted to the Center on January 28, 2009 quoted above and the absence of a formal Response within the due date, pursuant to Rules, paragraph 10(b) the Panel deems appropriate to anyway consider the email message submitted to the Center on January 28, 2009 in Italian.

The Respondent in such a communication informed the Center that the Domain Name <mediaset.asia> was registered last April through the Asian Domains Registrar Domainmoster.com, in good faith to use it for the Indian and the Chinese market and the Respondent states that is currently negotiating the possible assignment of the Domain Name <mediaset.asia> to one Indian and one Chinese company.

The Respondent finds unfair the decision taken by Milan IP Court of September 10, 2008, which enjoined the Respondent to make further use of the Domain Name and ordered the transfer of the domain to the Complainant. The Respondent alleges that the Italian proceeding has not been established with a regular notification procedure and therefore the Panel should not consider this pronouncement while deciding this case.

The Respondent adds that the Italian rules on trademark protection cannot be applied for the Domain Name <mediaset.asia>, because the Domain Name has been registered in New Zealand and the trademark has no reputation over there.

According to the Respondent, the word “Mediaset” is not even a trademark but a generic English word that means “setting of the media” that cannot be registered by an only owner. Moreover, the Respondent states that registered Domain Names cannot be considered a property of a registrant because Domain Names are only a service given by a provider.

The Respondent also states that he does not provide goods or services similar to which provided by the Complainant and that also other domain names containing the term “Mediaset” have been registered by a third party (i.e <mediaset.com>, which has been registered in Taiwan) and the Complainant never tried to recover them so far.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the Domain Names registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) that the Domain Names have been registered and is being used in bad faith.

A. Domain Names Identical or Confusingly Similar

The Complainant has provided evidence of ownership of the registered trademark MEDIASET.

I Identical Domain Name <mediaset.asia>

The Panel finds that the disputed Domain Name <mediaset.asia> is identical to the trademarks owned by the Complainant.

In comparing the Complainant's marks to the Domain Name with reference to <mediaset.asia> it should be taken into account the well-established principle that the suffixes, including the generic top level domains, may be excluded from consideration as being merely functional components of a domain name. See Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429 “the specific top level of the domain name such as ‘.net' or ‘.com' does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”; Chevy Chase Bank, F.S.B. v. Peter Ojo, WIPO Case No. D2000-1770 “the accused domain name <chevychasebank.org> is legally identical to Complainant's trade name CHEVY CHASE BANK”).

II Confusingly similar <gruppomediaset.com>

The Panel finds that the disputed Domain Name <gruppomediaset.com> is confusingly similar to the trademark owned by the Complainant. Pursuant to a number of prior decisions rendered under the Policy the addition of descriptive terms to a trademark is not a distinguishing feature.

It is well-established in prior decisions that “when a domain name incorporates a complainant's mark in its entirety, it may be confusingly similar to that mark despite the addition of other words”. Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to WALMART mark); PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033 (“chart”, “miusic”, “arena”, “sweep”, “nfl” and “coliseum” added to PEPSI mark); Experian Information Solutions Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095 (“credit” added to EXPERIAN mark); Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“parts” added to OKIDATA mark); Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 (“buildingsociety” added to BRITANNIA mark); CHANEL INC. v. ESTCO TECHNOLOGY GROUP, WIPO Case No. D2000-0413 (“chanelstore” and “chanelfashion” found to be confusingly similar to the CHANEL mark).

In view of the above, the Panel finds that the Complainant has proven that the disputed Domain Names are respectively identical and confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed Domain Names. The Respondent may establish a right or legitimate interest in the disputed Domain Names by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(a) that it has made preparations to use the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services prior to the dispute; or

(b) that it is commonly known by the Domain Names, even if he has not acquired any trademark rights; or

(c) that it intends to make a legitimate, noncommercial or fair use of the Domain Names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent's rights or legitimate interests in respect of the domain name according to paragraph 4(a) of the Policy is quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.

It also well-established that it is sufficient that the Complainant shows prima facie evidence in order to shift the burden of proof on the Respondent. If a respondent fails to demonstrate rights and legitimate interests in the domain name in accordance with paragraph 4(c) of the Policy or on any other basis, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Met America Mortgage Bankers v. Whois ID Theft Protectionc/o Domain Admin, NAF Claim No. 852581).

In the case at hand the Complainant has made a prima facie case and the Respondent has failed to raise any convincing circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed Domain Names.

Indeed there is no relation, disclosed to the Panel, between the Respondent and the Complainant and Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use Complainant's trademarks and name under any circumstance and to sell Complainant's products.

Furthermore, there is no indication before the Panel that the Respondent has made preparations to use the Domain Names in connection with a bona fide offering of goods or services or intends to make a legitimate, noncommercial or fair use of the Domain Names.

The Panel finds, also in light of the Panel's finding under “Registered and Used in Bad Faith”, that the Respondent has no rights or legitimate interests in respect of the disputed Domain Names, in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Names in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names' registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder's documented out-of-pocket costs directly related to the Domain Names; or

(ii) the holder has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Names, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder' s website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the holder's website or location or of a product or service on the holder's website or location.

As to bad faith registration the Panel notes that in light of use of the trademark since 1987, the amount of advertising and sales of Complainant's services and products worldwide and the fact that the Respondent is Italian, suggests that the Respondent was well aware of the Complainant's trademark at the time of registration.

As in Gateway, Inc. v. Lorna Kang, WIPO Case No. D2003-0257, this Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks. Along the same lines Veuve Cliquot Ponsardin,Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn, WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions WIPO Case No. D2003-0103. As stated inter alia in DHL Operations B.V v. Net Marketing Group, WIPO Case No. D2005-0868 “It is obvious that the value and goodwill, of the Complainant's mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the Domain Names. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.

With reference to the bad faith use of <gruppomediaset.com> Domain Name,the Panel finds that in light of the documents attached to the Complaint, the Domain Name was registered for the purpose of selling it to the Complainant for an amount well in excess of the documented out-of-pockets costs directly related to the Domain Name.

Indeed the Respondent offered the Domain Name for sale at USD 10,000 - indicating that amount in the “sellers price expectation” sum that is certainly well over the ordinary costs of registration of a .com domain name (see inter alia. Bencom SRL v. NetCorporation, WIPO Case No. DRO2006-0007). The figure indicated by the Respondent is also in line - but for the currency - with the amount requested by the same Respondent in the prior case Fiat S.p.A. and Fiat Group Automobiles S.p.A. v. Antonio Esposito, supra where, commenting the offer of 1000 Euro as reimbursement the Respondent stated:

“has been considered much insufficient since the above mentioned is a high target International domain name in English language. Therefore we can assign the domain name to you for € 10,000 since this is the real value calculated by us and shown in our price list”

and the Panel decided for the transfer.

As to <mediaset.asia>, even if the actual amount desired was not explicitly disclosed, the Respondent stated in the message addressed to the Center on January 28, 2009 that was currently negotiating the assignment to one Indian and one Chinese company, therefore expressly declaring the purpose of selling also <mediaset.asia>.

In view of the above, in light of the particular circumstances of this case, the Panel deems paragraph 4(b)(i) of the Policy applicable to <gruppomediaset.com> and, also to <mediaset.asia>.

7. Decision

For all the foregoing reasons, in accordance with the paragraph 4 (i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <gruppomediaset.com> and <mediaset.asia> be transferred to the Complainant.

Luca Barbero
Sole Panelist

Dated: March 10, 2009