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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Riello S.p.A. v. Domain Name Clearing Company, LLC
Case No. D2001-1046
1. The Parties
The Complainant in this administrative proceeding is Riello S.p.A., based at 1 Via degli Alpini, I–37045 Legnago, Verona, Italy.
The Respondent is Domain Name Clearing Company, LLC, based at 4640 Jewell, Ste. 202A, San Diego, CA 92109, USA.
2. The Domain Name and Registrar
The domain name at issue is <riello.com> (herafter "the Domain Name"). The Domain Name is registered with Tierranet, Inc., 3870 Murphy Canyon Road # 330, San Diego, CA 92123, USA.
3. Procedural History
The Complainant filed a complaint ("the Complaint") with the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") electronically on August 21, 2001 and in hard copy on August 22, 2001.
On August 23, 2001, the Center transmitted to Tierranet, Inc., the Request for Registrar Verification in connection with this case.
On August 30, 2001, Tierranet responded to the Center’s Request for Registrar Verification and confirmed that Tierranet is the Registrar of the Domain Name <riello.com>. It also confirmed that the Domain Name was registered in the name of Domain Name Clearing Company, LLC, the administrative technical and zone contact being "DNCC Manager" of the said company.
On August 31, 2001, the Center verified that the Complaint met the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
The undersigned has reviewed the documentary evidence provided by the Complainant and the Center and agrees with the Center’s assessment that the Complaint complies with the formal requirements of the ICANN Rules and the Supplemental Rules.
The administrative proceeding commenced on August 31, 2001. The same day, the Center notified the Complaint to Respondent. The notification of Complaint was, however, returned on September 5, 2001, to the Center, Respondent's postal address being incorrect. The Center's various attempts to reach Respondent by mail or by fax were without success. The indicated e-mail address, email@example.com, did not resolve. There is no direct proof, but it can be assumed that the communications did at least reach the administrative contact e-mail address at dncc@LEXLAW.com.
As no Response was submitted within 20 days as of the commencement of the administrative proceeding (sub-section 5 (a) of the Rules), the Center notified Respondent on September 25, 2001, that it was in default. This last communication reached the Respondent probably again only under its administrative contact e-mail address.
Upon receipt of the necessary Declaration of Independence and Impartiality, the Center appointed the undersigned on October 2, 2001, to serve as sole Panelist in this administrative proceeding.
4. Factual Background
The Complainant is a well-known supplier of heating and cooling applications and services in the residential market. Complainant's target markets are Europe, Asia, and America. The Complainant has been operating under the trademark "Riello" since 1920 and started to sell its products worldwide in 1960, by registering a number of trademarks in the afore-mentioned markets (Complaint, p. 5). The Complainant registered wordmarks and devices under the name "Riello", among others for classes 9, 11, and 37, and for numerous countries in Europe and overseas (see Complainant's Annex 5). The Complainant runs factories and sales offices in 16 countries worldwide and reached a gross turnover of Ђ 590 million in 2000. In the same period, Riello's gross turnover for North America amounted to Ђ 13 million.
The Domain Name <riello.com> was registered on March 16, 1997, in the name of Domain Name Clearing Company, LLC, located in San Diego, California, USA (Complainant's Annex 1).
The Complainant indicates that it tried in vain to contact the Respondent to obtain the Domain Name by negotiation (see Complainant's Annexes 7, 8, and 9).
There is evidence from other domain name disputes arbitrated by various panels against the same Respondent and showing that the Respondent is a company with activities related to clearing and filing domain names (Complainant's Annexes 11 to 14). Several WIPO panel decisions show that the Respondent registered various well-known trademarks as domain names (Complainant's Annex 15; see WIPO Case Nos. D2000-1682, D2000-0194, D2000-1396, and D2000-0629).
5. Parties' Contentions
The Complainant alleges that the Domain Name is identical or confusingly similar to the "Riello" trademark. It points out that the Respondent has no rights or legitimate interests in the Domain Name. Pursuant to the Complainant, there is no evidence that the Respondent has trademarks or company activities registered under the brand "Riello". Moreover, the Complainant declares that there are no agreements, authorizations or licenses which have been granted to the Respondent to use the trademark in question. Pursuant to the Complainant, it appears that one of the Respondent's activities is or has been to acquire and resell domain names to the Complainant or to a competitor of the Complainant. In other cases evidence was found in regards of the Respondent's registration of several domain names containing well-known trademarks of third parties. This amounts to an unambiguous evidence of registration and use of a domain name in bad faith within the meaning of paragraph 4(b)(ii) of the Policy. The Complainant further states that the actual registration of the Domain Name by the Respondent has de facto prevented the Complainant from using its trademark "Riello" in a corresponding domain name. In addition, the Complainant is referring to the Telstra Case (WIPO Case No. D2000-0003), where the panel stated that passive holding of a domain name without use in commerce may support a holding of use in bad faith.
The Respondent has not submitted any Response to the Complaint.
6. Discussion and Findings
To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy is satisfied, namely that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the Domain Name, and
(iii) the Domain Name has been registered and used in bad faith.
These three elements will be considered below:
(i) Identity or Confusing Similarity
There is no doubt that the Domain Name <riello.com> is identical with Complainant's trademark in the sense of Article 4 (a)(i) of the Policy.
(ii) Rights or Legitimate Interests
The Panel does not have any evidence that Complainant has licensed or otherwise permitted Respondent to use its trademark or to apply for the Domain Name incorporating this mark.
As the Respondent has not submitted a response, the Panel can find no indicia that Respondent has any rights or legitimate interests in the Domain Name pursuant to Article 4 (c) of the Policy. The Panel is thus of the opinion that Complainant has satisfied the second element of the Policy.
(iii) Domain Name Registered and Used in Bad Faith
The third element Complainant has to prove to succeed in its complaint is registration and use of the Domain Name in bad faith.
Due to the fact that Riello is a widely known trademark and that Riello products have been marketed and sold also in the United States, where the Respondent is located, the Panel concludes that Respondent must have been aware of the Complainant's rights in the Riello trademark when it registered the Domain Name.
To satisfy the conditions set out in Article 4 (a)(iii) of the Policy, Complainant has not only to prove that the Domain Name was registered, but also that it is being used in bad faith. In other words, it is not sufficient to prove that Respondent was in bad faith when it registered the Domain Name. There must also be evidence that the circumstances of the case are such that Respondent is continuing to act in bad faith.
It can be inferred from the circumstances and the evidence submitted by the Complainant that Respondent's main business activity consists in the sale of domain names incorporating famous names or trademarks (see Complainant's Annexes 11 to 14). The fact that a person or entity makes business of registering famous trademarks as domain names with a view to selling them was considered by other panels as sufficient evidence of bad faith use pursuant to Article 4 (a)(iii) of the Policy (see WIPO Case No. D2000-0055 Guerlain SA v. Peikang; WIPO Case No. D2000-0226 Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net). The fact that Respondent's address seems to be wrong (or at least not up-to-date), as well as the fact that Respondent did not file any response to the Complaint, are further elements contributing to the conclusion that this is a case of an inadmissible domain name warehousing.
In this context the Panel refers to the Telstra Case (WIPO Case No. D2000-0003) pursuant to which also a passive holding of domain names may amount to evidence of registration and use of a domain name in bad faith.
In view of the above, the Panel concludes that there is sufficient evidence of the Domain Name being registered and used in bad faith.
In the light of the foregoing, the Panel concludes and decides that:
(i) the Domain Name of Respondent is identical to the trademark in which Complainant has a right;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name;
(iii) the Domain Name has been registered and is being used in bad faith;
(iv) the Domain Name <riello.com> shall be transferred to Complainant.
Dr. Thomas Legler
Dated: October 11, 2001