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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rusconi Editore S.p.A. v. Net Identity.com Inc. Formerly known as Mailbank.com Inc.
Case No D2001-0886
1. The Parties
The Complainant is Rusconi Editore S.p.A of Viale Sarca 235 - 20126, Milan, Italy. The Complainant is represented by Avvocato Mariacristina Rapisardi of Studio Legale Rapisardi, Via Serbelloni 12 -20122 Milan, Italy.
The Respondent was formerly called Mailbank.com Inc. but is now known as Net Identity.com Inc. The Respondent's address is 1475 Terminal Way Suite E, Reno 89502, Nevada, USA. The Respondent is represented by Gervaise Davis III, Esq. of Davis & Schroeder, PC, of 215 W Franklin Street, 4th Floor, PO Box 3080, Monterey, California 93940-3080, USA.
2. The Domain Name and Registrar
The domain name in dispute is <gioia.com>. The Registrar is Melbourne IT Limited. D.B.A Internet Names Worldwide of Level 2, 120 King Street, Melbourne 3000, Australia.
3. Procedural History
The Complaint was received by email on July 12, 2001, and by hard copy on July 13, 2001. Acknowledgement of receipt of the Complaint was dispatched by the WIPO Center on July 13, 2001. A request for verification of the registration of the domain name was made to Register.com on July 17, 2001. It transpired that this was not in fact the Registrar and a second request for Registrar verification was made to the Registrar Melbourne IT Limited. D.B.A Internet Names Worldwide on July 18, 2001. A response was received on July 19, 2001, confirming that the current registrant was the Respondent, Net Identity.com Inc.
An amended Complaint was received on July 24, 2001, which was notified to the Respondent on the same day. On August 9, 2001, a Response was received by the Respondent by email. An administrative panel consisting of Clive Thorne (Presiding Panelist), Ms. Anna Carabelli and Mr. Neil Smith was appointed on September 26, 2001. There is a projected decision date of October 10, 2001.
The Complainant is a famous publishing firm based in Milan which publishes in Italy, Europe and the rest of the world a number of well known magazines including "Gioia". This is a weekly magazine dedicated to the "varied female universe". It contains articles written by professional journalists about new, fashion, culture, economics, beauty and health. A sample front cover and inside page for the edition of July 2, 2001, is annexed D to the Complaint.
The magazine Gioia was first published in 1937. The Complainant apparently acquired the magazine in 1954, publishing it for the first time in the name of "Rusconi A Polazzi Editore in December 1956. A copy of the front cover is exhibited at Annex F.
The Complainant maintains that in over 60 years of uninterrupted publication the magazine "Gioia" has gained an undoubted "renown". Figures are given at Annex H to the Complaint which show significant circulation and sales of the magazine in Italy and overseas for the years from 1996 to 2000. The Complainant also annexes at Annex I a data sheet which it contends demonstrates that the magazine has always been at the top of the relevant market sector.
Evidence is also given of the reputation or as the Complainant puts it "renown" of the magazine overseas including at Annex L a page describing the weekly magazine "Gioia" taken from the Swedish web site, at Annex M two requests for media information in the UK and International Media Guide in the USA to update data regarding the magazine and at Annex N a booklet published by the Complainant's parent company in which world wide publications of the Hachette Group are illustrated including "Gioia".
In summary the Complainant contends that on the "back of the circumstances" referred to in the Complaint and as a result of the "high regard of the public which has been won over by the magazine in more than 60 years of publication it can immediately be stated that the trade mark Gioia has acquired a character of renown both in Italy and abroad".
The Complainant also gives evidence of a number of registered trademarks for the mark "Gioia" in Italy and throughout the world. The trademarks on which the Complaint is based are annexed at Annex C to the Complaint and include Italian trade marks in classes 16, 38, 41, 24, 25, 26, an international trademark number R523503 for the mark "Gioia" in classes 16, 38, 41 and extended to France, Germany, Spain, Switzerland, Austria, Benelux, Portugal, Bulgaria, Hungary, Romania, Czechoslovakia, Soviet Union and Yugoslavia. Evidence is also given of US trademark registration no. 1542470 in class 16 for "Gioia", Canadian trademark registration no. 356983 for the word "Gioia" in class 16 and UK trademark registration no. 1324864 for the mark "Gioia" in class 16.
The Panel accepts from this evidence that as a result of the Complainant's trademark registrations and international circulation of the magazine "Gioia" that the Complainant has widespread world wide trademark rights in the mark "Gioia" as well as widespread unregistered trade mark rights in the mark "Gioia".
The Respondent Net Identity.com Inc. gives evidence of its business background and history in the declaration of the Counsel for Respondent annexed to the Response. In summary the Respondent was founded by a group of business and professional people in Vancouver, Canada in 1996, with significant working capital, operated for several years and then sold in late 1998, or early 1999, to group of venture capital investors who have operated it as a separate company since then.
It is a business that hosts email and small web sites for people who are willing to share the <gioia.com> domain name with others who have a similar surname. The whole concept of the Respondent is apparently that of "shared domains" allowing more than one person to use the same family or affiliation domain name. The Respondent stresses that it is neither a cybersquatter nor a company bent on accumulating trade mark domains for unlawful sale to trade mark owners.
Examples of the specific purpose for registration of <gioia.com> by the Respondent are set out at paragraph 5 of the declaration by the Respondent’s Counsel. All people who are surnamed Gioia could have a vanity email address associated with their name such as "email@example.com" or "firstname.lastname@example.org". Other surnames have also been chosen for this purpose. The advantage of this is that customers can always have the same email address which automatically forwards emails by the service to whatever current business or other personal email address they are using, regardless of the actual email or ISP company servicing them.
The Respondent states that the vast majority of domain names are intentionally "statistically" selected surnames of the most common surnames in the English language speaking countries. The Respondent has determined this from analysing telephone directories and US and Canadian census data. In a letter of January 19, 2001, the Respondent's representative refers to the fact that the Respondent has found that "Gioia" is the 12619th most common surname in the United States.
Prior to the lodging of the Complaint there was correspondence between the parties and their representatives. This is exhibited at Exhibit B to Respondent’s Counsel declaration. The Complainant originally complained of the Respondent's use of the domain name in a letter dated September 18, 2000, which was responded to in detail by the Respondent's counsel on October 20, 2000, in which the Complainant was notified of the alleged legitimacy of the Respondent's business. On January 15, 2001, the Complainant wrote back stating that it owned a number of trademarks of the name "Gioia" and wanted to know if the Respondent was prepared to assign the domain name. The Respondent wrote a second responsive letter on January 9, 2001, pointing out inter alia:
(i) That in the United States there are "nearly half a dozen other people who have owned or own trademarks for the word "Gioia"
(ii) The word Gioia is merely Italian for another generic English word - "Joy".
(iii) The Complainant's mark is women's books and magazines which has no relationship to the Respondent's activities.
5. Submissions and Arguments
In accordance with paragraph 4(a) of the Policy, the Respondent is required to prove the three following elements:
(i) The domain name is identical to or confusingly similar to trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) The domain name was registered and is being used in bad faith.
The Panel will deal with each in turn.
(i) The domain name is identical of confusingly similar to trade mark or service mark in which the Complainant has rights
The Complainant submits that the absolute identity between the domain name, the subject of the present Complaint and the trademark rights (referred to above) of which the Complainant is the owner "does not need any further illustration".
The Respondent concedes that the word "Gioia" is a trademark of the Complainant and also the "Gioia" portion of the domain name <gioia.com>.
It follows that the Complainant succeeds in head (i) of paragraph 4(a).
(ii) The Respondent has no rights or legitimate interest in respect of the domain name
The Complainant submits that:
(a) The Respondent does not appear to be the owner of any trademarks incorporating the word "Gioia".
(b) The Respondent has not been commonly known by the domain name in dispute and points out that its name is "Mailbank.com Inc." (now Net Identity.com Inc).
(c) The word "Gioia" which in Italian "indicates a state of or reason for lively satisfaction" has no meaning in English in which the corresponding term "joy" (to express the same concept might be used)
(d) The Respondent's site is based upon an activity which involves "the exploitation of somebody else's renowned trademark".
(e) The surname "Gioia" could only be acceptable as a title which gives a right to registration and use in the domain name <gioia.com> if used by the legitimate holder of the surname but not by a company which is in no way connected to the name, at least not in any legally relevant terms.
The Respondent submits inter alia:
(a) That it and its predecessor Mailbank have been using the domain name legitimately in its vanity email business since July 12, 1996.
(b) That the domain name <gioia.com> was registered for the purpose of subscribers to its shared domain name business.
The Panel takes the view that it is clear from the evidence given by the Respondent that the Respondent has registered the domain name <gioia.com> for the purpose of its business and in particular for the use of subscribers who possess the surname "Gioia". There is no evidence adduced by the Complainant to counter the evidence of this use. It is a use which does not conflict with the publishing activities of the Complainant. The Panel is not convinced by the Complainant's submissions that the surname "Gioia" could only be acceptable as a title which gives a right to registration and use as the domain name <gioia.com> if used by the legitimate holder of this surname but not by a company which is in no way connected to the name. The Panel can see no reason why the Respondent should not be free to use the domain name as part of its trading activity in offering a vanity email service.
It follows that the Complainant has failed to prove element (ii) of paragraph 4(a). This in itself would be sufficient for the Complainant not to succeed in the proceedings. However, because the Respondent alleges "reverse domain name hijacking" the Panel feels it right to consider the issue of bad faith.
(iii) The domain name was registered and is being used in bad faith
The Complainant submits that the "renowned character" of its magazine "Gioia" is evidence that the Respondent should have been aware of infringing the rights of the Complainant and of interfering with the trade mark Gioia and that by registering the domain name <gioia.com> the Respondent exploited the Complainant's trade mark and publicised its own email vanity business and "presumably increased its sales".
In response the Respondent submits that it cannot be said to be acting in bad faith because the use of the domain name precludes the Complainant from using the domain name for its business.
The Panel takes the view that the Complainant has adduced no evidence of bad faith in registering and using the domain <gioia.com>. Inevitably the registration of <gioia.com> was a benefit to the Respondent's vanity email business but it does not follow that is bad faith.
In the Panel's view the Complainant has failed to show bad faith within paragraph 4(a)(iii) of the policy.
6. Reverse domain name hijacking
The Respondent asserts that the Complaint is another example of reverse domain name hijacking by a trade mark owner attempting to use the ICANN Dispute Resolution Policy rules to "take a valued domain name away from an active business that is, and has been using the domain name for years, in a manner fully in accordance with the law and consistent with the intent of the ICANN Rules".
It relies on the fact that the Complainant has not and cannot prove that the disputed domain name was registered or used abusively or in bad faith or that the Respondent has no legitimate claim to the use of the name.
Having considered the evidence submitted by both parties and having reviewed the correspondence predating the Complaint, the Panel takes the view that the Complainant brought the Complaint for bona fide reasons. There is no doubt that the Complainant has significant registered and unregistered trade mark rights but it has not succeeded in showing that the Respondent has no rights or legitimate interests in respect of the domain name nor that the domain name was registered and is being used in bad faith.
It appears to the Panel that the Complainant was fully entitled to bring the Complaint. The Complaint has failed in its Complaint but the Panel does not find reverse domain name hijacking.
The Panel finds for the Respondent, Net Identity.com Inc. and is not prepared to make a finding of reverse domain name hijacking.
The Panel orders that the domain name <gioia.com> should not be transferred to the Complainant as requested.
Clive Duncan Thorne
Neil A. Smith
Dated: October 5, 2001