Iseo Serrature Spa v. Intercam di Magia Preziosi srl
Case No. D2009-0745
1. The Parties
The Complainant is Iseo Serrature Spa of Pisogne, Brescia, Italy, represented by Studio Turini, Italy.
The Respondent is Intercam di Magia Preziosi srl of Darfo Boario Terme, Brescia, Italy.
2. The Domain Name and Registrar
The disputed Domain Name <iseo.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2009. On June 9, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On June 9, 2009, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name and confirming the language of the registration agreement as being English. 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 June 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 15.
The Center appointed Luca Barbero as the sole panelist in this matter on July 22, 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.
The Panel finds no compelling reason in the present case to depart from the usual rule (under paragraph 11 of the Rules) that the language of proceedings be the language of the registration agreement, which in this case has been confirmed by the registrar as English.
In accordance with the paragraph 10 and 12 of the Rules, the Panel issued a first Panel Order on August 1st, 2009, requesting the Complainant to provide further evidence as to the Respondent's lack of rights or legitimate interest and the registration of the Domain Name in bad faith and requesting also the Complainant to submit the full exchange of correspondence existed between the Complainant and the Respondent as to the Domain Name. Since the Complainant requested a suspension on August 7, 2009, the Center on August 10, 2009 notified the suspension of the proceeding until September 10, 2009. On September 9, 2009 the Complainant requested the reinstitution of the proceeding submitting further documents and statements pursuant to the Panel Order 1. The Center reinstituted the present proceeding on September 11, 2009.
On September 18, 2009, the legal representative of the Respondent addressed to the Panel an unilateral communication, in the Italian language, providing the Panel with some information on the registration and use of the Domain Name by the Respondent. The Panel immediately informed the Center forwarding copy of the communication received and issued a second Panel order on September 21, 2009 requesting the Respondent i) to send to the Center and to the Complainant the communication addressed unilaterally to the Panel and abstain in the future to address any communication directly to the Panel ii) to provide evidence of the use of the Domain Name since its registration in 1997 and to indicate the exact date in which the images of lake Iseo were published on the web site iii) to provide detailed explanation to the Panel as to the request of a consideration € 65.000,00 and iv) to supply evidence of the agreement with the Complainant mentioned in the correspondence provided to the Panel by the deadline of September 28, 2009 and granting the Complainant additional five days to submit any additional comments.
Since, up to October 19, 2009 no additional documents and/or statements were submitted, the Panel requested the Center to notify the parties a communication requesting to confirm that no additional materials were to be submitted pursuant to the Panel Order 2. The Center addressed therefore a communication to the Parties on October 20, 2009, advising that, if no reply would be received by the Parties by October 22, 2009, the Panel would proceed to render its decision.
The Complainant replied to the above mentioned communication addressing to the Center an email on October 20, 2009, confirming that no additional documents or statements had to be submitted by the Complainant. Since no communication was received from the Respondent, the Panel renders the present decision.
4. Factual Background
The Complainant is Iseo Serrature S.p.A., an Italian company based in Pisogne, Brescia.
The Complainant is the owner of the Italian trademark registration No 1034365 for ISEO, registered on January 19, 2007 and first filed on March 12, 1993, in classes 6 9. The Complainant is also the owner of the Italian trademark registration No 1034363 for ISEO SERRATURE, registered on January 19, 2007 and first filed on September 24, 1963 in class 6.
The Respondent registered the Domain Name <iseo.com> on September 9, 1997.
5. Parties' Contentions
A. Complainant
The Complainant points out that, in light of its activity since 1969 in the production of locking devices, Iseo Serrature S.p.A. and its trademark ISEO have become famous in Italy many years before the Respondent's registration of the disputed Domain Name. The Complainant underlines that ISEO is also a fantasy name and has therefore reached a high level of distinctiveness. The Complainant contends that the Domain Name <iseo.com> is identical to the trademarks in which Complainant has rights as it reproduces its well-known trademark ISEO in its entirety.
With reference to rights or legitimate interests in respect of the Domain Name, the Complainant states that the Respondent has not used the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. The Complainant informs the Panel that, at the time of the filing of the Complaint, the Domain Name was redirected to a “parking” web site displaying only the writing “Sito in costruzione. Salve e buon lavoro” (Web Site under construction. Hello and enjoy your work”).
The Complainant adds that the Respondent has never been commonly known by the sign “iseo” nor it appears that the Registrant is making a legitimate commercial or non-commercial use of the Domain Name. The Complainant concludes with reference to the issue of the rights or legitimate interest that the Respondent has no rights or legitimate interest in the Domain Name.
With reference to the circumstances evidencing bad faith at the time of registration, the Complainant indicates that, in light of its activity since 1969 and the dimension reached by the company, the Complainant was famous in Italy and therefore the Respondent was certainly aware of the existence of the Complainant and of its trademark when he registered the Domain Name. As an additional circumstance evidencing the Respondent's knowledge of the Complainant's trademark, the Complainant informs the Panel that the contacts had been taken via email by the registrar of the Complainant with the Respondent in order to ascertain its availability to transfer the Domain Name to the Respondent and that, in such correspondence copy of which was provided to the Panel, the Respondent made reference even to an existing license agreement with the Complainant concerning the use of the Domain Name.
The Complainant adds that, following the above mentioned exchange of correspondence, the Respondent requested to the registrar a sum of 65,000 Euro for the Domain Name. This request according to the Complainant is showing that the Domain Name was registered by the Respondent with the purpose of selling it to the Complainant for an amount well over the out of pocket costs of the Domain Name.
As a circumstance evidencing bad faith in the use of the Domain Name, the Complainant informs the Panel that the Domain Name, which is currently redirected to a web site in which various images and descriptions of Iseo Lake are published, was redirected - until the very day of filing of the Complaint - to a web page in which was only indicated, as mentioned above, that the web site was under construction. The Complainant therefore concludes - in the communication addressed to the Center following the Panel Order 1- that the web site was instrumentally changed by the Respondent after the notification of the Complaint only for the purpose of avoiding the reassignment of the Domain Name. The Complainant also highlighted that, according to the available web pages on the web site www.archive.org on the prior web site available at www.iseo.com, the Domain Name was not used for such content until the day in which the Complaint was filed.
In the reply to the procedural order 1, the Complainant also indicated that the registered office of the Respondent is only at sixteen kilometer from the Complainant and thus could not ignore the existence of the Complainant.
B. Respondent
The Respondent did not formally reply to the Complainant's contentions in due time and therefore was in default. Nevertheless, a communication was addressed by the legal representative of the Respondent that pursuant to the Rules 10 b) was considered by the Panel.
In the mentioned communication, the Respondent contends that the Complainant registered the trademark ISEO after the Respondent's registration of the Domain Name and that “iseo” is a generic term identifying the Iseo Lake, where the Respondent is based.
The representative of the Respondent also points out that the publication of images of Iseo lake on the corresponding web site evidences its legitimate interest in the use of the Domain Name.
With reference to the circumstances evidencing bad faith, in particular regarding the alleged Respondent's offer of the domain name for sale by the Complainant, the Respondent indicates that the Domain Name was never offered for sale or “rented”, since the Respondent was interested in using it for its activity.
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 Name 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 Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
A. Domain Name Identical or Confusingly Similar
According to the Overview of WIPO Panel Views on Selected UDRP, geographical terms can be protected under the UDRP if the complainant “has shown that it has rights in the term and that the term is being used as a trademark. Normally this would require the registration of the geographical term as a trademark”. See along these lines Skipton Building Society v. Peter Colman,WIPO Case No. D2000-1217, concerning the domain name <skipton.com>, where it was stated: “The Panel clearly finds that this limb of the test is satisfied. Skipton BS has held a registered trade mark for the word “Skipton” for as long as it possibly could have done under UK law. The geographical limitation on the mark is, as indicated above, a well-known phenomenon arising from the UK Trade Mark Registry, but does not in any way negate the common law rights of Skipton BS to the name “Skipton” in relation to that area of territory. See also along the same lines FC Bayern München AG v. Peoples Net Services Ltd.,
WIPO Case No. D2003-0464.
In the case at hand, the Complainant has provided evidence of ownership of valid trademark registrations in Italy, where the Respondent is based, for ISEO and ISEO SERRATURE. In particular, the Complainant is the owner of the Italian trademark registrations No 1034365 for ISEO, registered on January 19, 2007 and first filed on March 12, 1993, in classes 6 9 and No 1034363 for ISEO SERRATURE, registered on January 19, 2007 and first filed on September 24, 1963 in class 6.
The Panel finds that the Domain Name is therefore identical to the trademark owned by the Complainant.
In comparing the Complainant's mark to the Domain Name with reference to ISEO it should be taken into account the well-established principle that the generic top level domain may be excluded from consideration as being merely functional component of a domain name. See i.a. Rollerblade, Inc. v. Chris 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”.
In view of the above, the Panel finds that the Complainant has proven that the Domain Name is identical to the trademarks 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 Domain Name. The Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
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 potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name in order to shift the burden of proof on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the Domain Name in accordance with paragraph 4(c) of the Policy or on any other basis, the 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 Protection, c/o Domain Admin, NAF Claim No. 852581).
Since the Domain Name is constituted of a generic term identifying the lake Iseo and the small town Iseo, the Panel, in evaluating if the Respondent has a legitimate interest on the Domain Name, has to consider several factors according to the above mentioned Panel Overview, such as “the status and fame of the trademark, whether the respondent has registered other generic names and what the domain name is used for”.
In this case, in light of the documents and statements provided by the Complainant such as copies of advertisements and articles in Italian magazines on the activity of the Complainant, especially considering the fact that the Respondent is a web agency seemingly based a mere16 km away from the Complainant, and also that the domain name was prima facie not used for an active web site for several years, the Panel considers that the Respondent was very probably well aware of the Complainant's activity under the trademark ISEO.
The Panel also notes that the Respondent is not commonly known by the Domain Name and that the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant's trademarks.
As to the use of the Domain Name, the Panel notes that, according to the available web pages on the web site “www.archive.org”, the Domain Name was also used in the past years in connection with a web page displaying a prima facie search engine and publishing a banner redirecting internet users to the another web site indicating the full data of the Respondent while. According to the documents and statements provided by the Complainant, the Domain Name was, at the time of the filing of the Complaint, pointing to a web page displaying the mere indication “Sito in costruzione. Salve e Buon Lavoro” (Web Site under construction. Hello and enjoy your work”).
The Panel observes that, at the time of drafting the decision, the Domain Name is redirected to a web site displaying a description of Iseo Lake along with a photographic album of the venue but, as also highlighted by the legal representative of the Respondent in its communication addressed to the Panel pursuant to Panel Order 1 with the supporting evidence, such a web site was published only after the notification of the Complaint. In the circumstances, the Panel finds the present use of the Domain Name to be pretextual. (National Hockey League v. Daniel Krusz,
WIPO Case No. D2001-0234.)
In light of the above, the Panel finds that the use of the Domain Name made by the Respondent cannot be considered a legitimate noncommercial or fair use of the Domain Name and, also by not providing any answer to the Panel Order 2, the Respondent has failed to produce to the Panel any evidence that could demonstrate any rights or legitimate interests in the Domain Names pursuant to paragraph 4(c) 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 Name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name 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 Name; or
(ii) the holder has registered the Domain Name 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 Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, 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 at the time of the registration, the Panel notes that, in view of the use of the trademark ISEO since 1969 in connection with the Complainant's activity in the field of locking devices, the fact that the Respondent is based in the very same area of the Complainant, in light of the documents and statements provided by the Complainant (such articles and ads published in Italian magazines dating several years before the registration of the Domain Name), the Respondent was more likely than not aware of the Complainant's activity under the trademark ISEO when the Domain Name was registered.
The 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 as found in Gateway, Inc. v. Lorna Kang,
WIPO Case No. D2003-0257. Along the same lines Veuve Cliquot Ponsardin,Maison Fondée en 1772v. 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 disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.
As to the use in bad faith, the Panel finds that paragraph 4(b)(i) of the Policy is applicable to the present case since in light of the content of the correspondence between the fiduciary party of the Complainant and the Respondent provided by the Complainant, 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. Indeed the Respondent offered to assign the Domain Name for 65,000 Euro, amount that is certainly well over the ordinary costs of registration of a .com Domain Name. See i.a.Wal-Mart Stores, Inc. v. Brad TauerWIPO Case No. D2000-1076 where it was found “the amount sought, US Dollar 475, far exceeds the domain name registration fee and Respondent did not present any documentation as to any other “out-of-pocket costs directly related to the domain name”.
As an additional circumstance evidencing the Respondent's bad faith, the Panel also considers the Respondent's behavior in the present proceeding. The Respondent has not submitted a formal Response to the Complaint in due time, but has only addressed, via its legal representative, a unilateral communication to the Panel in the Italian language (despite the language of the proceedings being English), in violation of paragraph 8 of the Rules. The declaration of the legal representative contained in such a reply also appears to contradict the statement of the Respondent contained in the correspondence copied in the Complaint (stating i.a. that the domain name was currently being “rented” to the Complainant). Moreover, the Respondent has not addressed any communication pursuant to Panel Order 2 in which the Respondent was expressly invited to provide any available evidence to the Panel of the registration and use in good faith and explanation on such a contradiction, providing ample time to comply pursuant to the Rules 10 b).
A further circumstance supporting the bad faith of the Respondent is the sudden change of the content of the web page only after the Complaint was filed while the Respondent has prima facie not used for several years the Domain Name for a dedicated web site.
In view of the above, the Panel finds that the Domain Name was registered and is being used in bad faith.
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 Name <iseo.com>, be transferred to the Complainant.
Luca Barbero Sole Panelist
Dated: October 26, 2009
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