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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VISIVA S.r.l. v. VISIVA di Rocca Sergio
Case No. D2001-1130
1. The Parties
The Complainant is VISIVA S.r.l., a company incorporated in Italy, with principal place of business at Corso Italia, I-28010 Fontaneto d'Agogna, Italy.
The Respondent is VISIVA di Rocca Sergio, a business located in Via delle Alpi, 34d, I-90144 Palermo, Italy.
2. The Domain Name and the Registrar
The domain name at issue is <visiva.net> (the "Domain Name"). The registrar is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia, USA (the "Registrar").
3. Procedural History
On September 14, 2001, the Complainant filed by e-mail a Complaint (the "Complaint") with the WIPO Arbitration and Mediation Center (the "Center"). The Center received a hard copy of the Complaint on September 20, 2001, (annexes received on September 28, 2001) and sent the acknowledgment of receipt on September 17, 2001.
On September 19, 2001, the Center requested the Registrar to verify the Domain Name in dispute. On September 20, 2001, the Registrar confirmed that it is the registrar of the Domain Name, that it has received the Complaint, that according to its Whois Database the current registrant is Visiva di Rocca Sergio, that the administrative contact is Rocca Sergio, that the Service Agreement Version 5 applies to the Domain Name and that the Domain Name is in "active" status.
The Center proceeded to verify whether 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 World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). On September 28, 2001, the Center concluded that the Complaint satisfies all of these formal requirements.
On the same date as above, the Center sent a copy of the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent.
On October 16, 2001, Respondent filed the Response.
On October 22, 2001, the Center informed the Parties that an administrative panel (the "Panel") has been appointed.
The Panel finds it was properly constituted in compliance with the ICANN Rules and the WIPO Supplemental Rules and the panelist issued a Statement of Acceptance and Declaration of Impartiality and Independence.
On October 23, 2001, the Complainant filed a motion requesting permission to file a reply brief and submit further documents. On the same day, Respondent filed an objection thereto and Complainant filed remarks to Respondent's objection. On October 24, 2001, the Panel rendered the following interim order:
"Supplemental filings are not provided for under the Policy and the ICANN Rules and, therefore, this Panel must decide whether to admit them or not. The Policy and the ICANN Rules demonstrate a strong preference for single submissions by the parties absent extraordinary circumstances (Rollerblade, Inc. v. CBNO and Ray Redican Jr., WIPO Case No. D2000-0427). Prior WIPO decisions state that "there can be no doubt that neither the Complainant nor the Respondent has the right to file supplementary submissions to the Complaint and Response. Supplementary submissions can only be filed in response to a request for such from the Panel" (Attachment 1 to Gordon Summer, p/k/a Sting v. Michael Urvan, WIPO Case No. D2000-0596). This Panel has not requested and does not request any supplementary submissions. Accordingly, this Panel denies Complainant's motion to file a further brief and further documents."
4. Factual Background
The Complainant, VISIVA S.r.l., is an Italian company which manufactures fair stands, advertising boards and other promotional materials and renders services related thereto. On June 1, 2000, the Complainant filed an Italian trademark application for "V VISIVA" (device) (Annex 3).
The Respondent is VISIVA di Rocca Sergio, an individual business ("impresa individuale") providing advertising boards and other promotional products and services.
The Domain Name was applied for on March 23, 2000, and resolves to a website offering Respondent's products and services.
5. Parties' Contentions
- that the Domain Name is identical to Complainant's trademark and trade name and that there is a "total identity of goods and services" provided both by the Complainant and the Respondent. According to the Complainant, such identity creates confusion between the two businesses and impairs Complainant's business (Annex 10);
- that Complainant was incorporated on March 24, 1992, and ever since has been doing business under the trade name VISIVA S.r.l. (Annex 4). On June 1, 2000, it filed a trademark application for "V VISIVA";
- that on March 26, 2001, Complainant's counsel contacted the Respondent and requested it to refrain from using the trademark "VISIVA", to modify its trademark, to transfer the Domain Name to the Complainant or to cancel it (Annex 10);
- that the Respondent's failure to answer to such request constitutes an "admission by silence", divesting the Respondent of any rights or legitimate interest in the Domain Name;
- that the Domain Name has been registered and used in bad faith because Respondent registered it long after the Complainant established its business in Italy. The Complainant alleges that the Respondent must have been aware of Complainant's business;
- that the Respondent has registered and used the Domain Name in bad faith for the purpose of disrupting Complainant's business, and that the similarity creates the risk of diverting Complainant's clients to the Respondent and obtaining confidential information by the latter.
- that the Respondent registered the Domain Name on March 23, 2000, i.e. before Complainant's trademark application was filed;
- that there is neither identity nor confusing similarity between the Domain Name <visiva.net> and Complainant's trademark "V VISIVA" (and device) which is composed of several word and graphic elements. The Respondent argues that the word "VISIVA" is only one element of Complainant's trademark, that this word means "visual" in Italian, is descriptive and lacks distinctive character in connection with advertising materials;
- that the Complainant failed to demonstrate Respondent's lack of rights or legitimate interest. The Respondent filed documents showing that its business was set up in November 1998, thus long before Respondent had any notice of the dispute, and used the name "Visiva" in bona fide ever since (Annex 4, 5, 6, 7, 8, 9 and 10);
- that the Complainant failed to prove Respondent's bad faith registration and use of the Domain Name. Respondent contends that no encounters or interference had ever occurred between the parties' businesses besides some e-mail messages which were erroneously sent by one of Respondent's clients to the Complainant. The Respondent also indicates that even though the two companies run similar businesses, due to the geographical distance between them (Complainant is in the north of Italy, Respondent in Sicily) there is neither a proof nor a risk of disrupting Complainant's business and/or diverting its clientele to the benefit of Respondent.
6. Discussion and Findings
To have the disputed Domain Names transferred to it, the Complainant must prove each of the following (Policy, paragraph 4(a)):
(i) that the domain name is identical or confusingly similar to a trademark or service mark 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 Respondent's domain name has been registered and is being used in bad faith.
Identity or Confusing Similarity
The Policy does not require that Complainant's trademark be registered prior to the domain name; however, this fact may be relevant to the assessment of the legitimate rights or interests and of bad faith requirements (Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827; Mpower Communications Corp. v. Park Lodge Hotel, WIPO Case No. D2000-0078). The panel concludes that the Domain Name is confusingly similar to Complainant's pending trademark application.
Legitimate Rights or Interests
Paragraph 4(c) of the Policy provides, without limitation, several circumstances any of which, if proved, demonstrates Respondent's rights or legitimate interest to the Domain Name.
The Respondent received notice of the dispute in March 2001. Invoices, correspondence, brochures and other documents filed by the Respondent show that he used the name "Visiva" in connection with a bona fide offering of advertising products and services since early 1999, i.e. more than two years before receiving any notice of the dispute. The Respondent has shown that his business has been commonly known by the Domain Name since November 1998.
Under these circumstances, the mere fact that the Respondent failed to reply to Complainant's warning letter of March 26, 2001, does not constitute an "admission by silence" of a lack of rights or legitimate interests in the Domain Name. The Policy does not compel the holder of a domain name to respond to unfounded warning letters.
Therefore, the Panel finds that the Respondent succeeded in demonstrating that he has legitimate rights and interests in the Domain Name.
Registration and Use in Bad Faith
Since this Panel has held that the Respondent demonstrated his legitimate rights and interests in the Domain Name, the issue of bad faith needs not necessarily be addressed. In any event, there is absolutely no evidence here suggesting that the Respondent registered and used the Domain Name in bad faith: The Respondent adopted the trade name "Visiva" in 1998, and registered and started using the Domain Name before the Complainant even filed its trademark application on June 1, 2000. The word "visiva" ("visual") is descriptive in the field of advertising, and the Respondent has shown that there is a significant number of other Italian businesses trading under the name "Visiva" alone or in combination with other terms. In any event, the Complainant has not shown that its trademark is particularly well-known. Considering the descriptiveness of the word "visiva", the fact that the Complainant had not yet registered this trademark and the geographic distance between the parties, it is credible that Respondent was not aware of the existence of the Complainant when he registered the Domain Name. There is nothing in the record suggesting that the Respondent registered the Domain Name for the purpose of disrupting Complainant's business, nor that he used it to intentionally divert internet users to his web site.
Therefore, the Complainant has not demonstrated that the Respondent registered and used the Domain Name in bad faith.
For all of the foregoing reasons, the Panel decides that the Complaint is denied because Complainant has not succeeded in proving the evidence required by paragraph 4(a) of the Policy.
The Panel hereby orders that the Domain Name <visiva.net> remain registered to the Respondent.
Dated: November 2, 2001