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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
E.I. du Pont de Nemours and Company v. Richi Industry S.r.l.
Case No. D2001-1206
1. The Parties
The Complainant in this Administrative Proceeding is E.I. du Pont de Nemours and Company of 1007 Market Street, Wilmington, Delaware 19898, U.S.A. represented by Ing. Barzanò & Zanardo Roma Spa (c/o Avv. Niccolò Invrea), of Via Piemonte 26, 00187 Rome, Italy. The Respondent is Richi Industry Srl of Via Villotta 5, Rovere della Luna, TN, 38030, Italy represented by Ph. D. Alfeo Baraldi of SeCoGeA Servizi Consulenza Gestione Aziendale s.r.l of Via Bezzi n.20, 38068 Rovereto, TN, Italy.
2. The Domain Name and Registrar
The domain name in issue is <corian-shop.com> ("the Domain Name"), the Registrar of which is Nework Solutions Inc. ("NSI").
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received on October 5, 2001, an electronic version of the Complaint and on October 4, 2001, a hard copy of the same and accompanying documents. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"). The Complainant made the required payment to the Center. On October 9, 2001, the Center formally notified the Respondent that this Administrative Proceeding had been commenced, and that date is the formal date of the commencement of this Administrative Proceeding.
On October 5, 2001, the Center transmitted via e-mail a request for registrar verification in connection with this case. On October 8, 2001, NSI transmitted via e-mail to the Center its Verification Response, confirming that the Registrant is Richi Industry s.r.l, the Respondent herein and stating that the Administrative, Technical and Billing Contact is Walfred Pernstich of the Respondent’s address.
No Response has been filed by the Respondent. However, on October 8, 2001, Mr. Baraldi e-mailed the Center to say that he had been instructed by the Respondent on September 13, 2001, and requested an extension of time of 10 days to examine the documentation. The Center replied that this Administrative Proceeding had not yet officially commenced, and that when it did Mr. Baraldi would have 20 days within which to submit a Response. On October 24, 2001, Mr. Baraldi e-mailed the Center in Italian. The Center requested a translation into English, but none seems to have been sent. The e-mail in Italian seems to have requested a further extension of time in light of the fact that Mr. Baraldi had made an offer of settlement to Mr. Invrea, the Complainant’s representative, on October 16, 2001. On October 30, 2001, the Center issued a Notification of Respondent’s Default.
On October 25, 2001, the Center received a supplemental submission from Mr. Invrea, attaching copies of the above-mentioned offer of October 16, 2001, from Mr. Baraldi and a letter dated October 22, 2001. Mr. Baraldi sent an e-mail to the Center objecting to the offer of October 16 being taken into account because it was headed "Confidential -personal, not to be shown before the court". In the circumstances, the Panelist considers he should not rely on the contents of the offer letter of October 16, 2001, beyond noting that an offer was made on that date. However, the e-mail of November 7, 2001, was sent to the Center as an open letter, and the Panelist will admit it into the Administrative Proceeding as it is of some relevance.
On November 5, 2001, this Panelist was appointed by the Center. The Panelist has filed a Statement of Acceptance and Declaration of Impartiality, and his decision was scheduled to be forwarded to the Center by November 19, 2001.
4. Factual Background
(a) The Complainant is the registered proprietor, inter alia, of Community Trade Mark No. 842,252 effective from November 9, 1999 in respect of the mark CORIAN for a wide range of products in Classes 1, 11, 17, 19 and 20 ("the Trade Mark"). The mark CORIAN has been registered by the Complainant in the U.S.A. and in most other countries of the world.
(b) The Domain Name was registered on December 28, 1999.
(c) The Respondent has also registered the following domain names ("the Italian Domain Names") <corian-shop.it>, <corian.it> and <corean.it> in respect of which separate Italian proceedings are pending against the Respondent.
5. Parties’ Contentions
The Complainant asserts, inter alia, as follows:-
(i) The Trade Mark is known by consumers such as architects, interior designers and other people engaged in building services to indicate a specific product manufactured by DuPont. In particular, the Trade Mark is used by DuPont to indicate a solid composite material which is used for construction purposes (architecture, interior decorations and furnishing) such as, by way of example, panels, furniture, working tops for kitchens, tops for wash basins, panels for shower units, wash basins, cladding and laboratory benches. For over twenty years DuPont has invested substantial efforts and financial resources in the promotion and advertising of the Trade Mark and the products it designates.
(ii) As a result, the Trade Mark represents a valuable asset of the Complainant’s business. The Complainant sells CORIAN products through its very large network of authorized distributors in many countries throughout the world. The authorized distributors resell sheets and shapes to "DuPont Authorised Quality Network Fabricators", who have been specially trained in fabricating and finishing techniques and who are soley authorised by the Complainant to fabricate CORIAN products and to perform installations.
(iii) The Respondent trades on its own account and for third parties in materials used for the manufacture of furniture, as well as cladding and finishing of all kinds, which is precisely one of the sectors in which the Complainant’s products are used, thereby creating the risk of confusing consumers.
(iv) The Respondent is not part of the Complainant’s distributorship or authorised fabricators network in Italy.
(v) From the date of registration of the Domain Name, the Respondent has never used and has never made any preparations to use the Domain Name for offering in good faith to the public any goods or services. It has merely opened a web site with the words "Welcome to the CORIAN-SHOP.COM site" together with an invitation to seek further information from the e-mail address "firstname.lastname@example.org".
(vi) The Domain Name was registered primarily for the purpose of selling it to DuPont for a valuable consideration in excess of the Respondent’s out-of-pocket costs of registration. At a meeting held on May 30, 2001 with a Mr. Gavalda from DuPont, the Respondent requested the sum of 75,000 Euro to assign to DuPont the Domain Name and the Italian Domain Names <CORIAN-SHOP.IT> and <CORIAN.IT>. In support of this contention the Complainant exhibits a statement dated September 21, 2001 by Mr. Gavalda in the following terms:-
"To Whom It May Concern
I, Jordi Gavalda, an employee of Du Pont Iberica S.L., located at Avenida Diagonal, 561, E-08029 Barcelona, Spain, in my quality of CORIANâMarketing Manager for Italy, hereby certify that on May 30, 2001, made a visit to Richi Industry S.rl., in the presence of Mr. Roberto Maier, (area sales agent) with the objective to amicably settle the domain name dispute and to assign the corian.it, corian-shop.it and corian-shop.com domain names to DuPont.
When I spoke to Mr. Richard Pernstich, the owner/sales manager of Richi Industry Srl., he admitted that he registered the domain names in order to resell them. He indicated that there is a legal gap in that respect and that he is taking advantage of it. He further said he does not use the domain names for his business activities and that he would be willing to assign them to DuPont for the sum of 75’000 Euros.
When I phoned him one week later, he repeated that he would only assign the domain names to DuPont if DuPont pays him the sum of 75’000 Euros."
(vii) Considering this amount to be far in excess of the costs and expenses reasonably incurred for the registration of the domain names and the maintenance of the temporary web pages associated with them, the Complainant rejected the verbal proposal made by the Respondent. The Complainant believes that such request is itself evidence of the Respondent’s bad faith.
(viii) The Respondent has ignored repeated requests to transfer all the above-mentioned domain names to the Complainant.
(ix) The Respondent on its own website (<www.richi.it>) offers the reader "a new possibility to become informed about the material Corian (only DuPont manufactures Corian) and other products." It also acknowledges that CORIAN is a registered trade mark of DuPont. This confirms that the Respondent is consciously infringing the Complainant’s exclusive rights.
As noted above, no Response as such has been filed. However, it is clear that the Respondent has deliberately chosen not to take part in this Administrative Proceeding. The offer dated October 16, 2001, referred to in paragraph 3 (and relied on by Mr. Baraldi in support of his request of October 24, 2001, for an extension of time in this Administrative Proceeding) is clearly headed only with the Italian Domain Names and would therefore seem to be an offer to settle the Italian proceedings alone. Given the "without prejudice" nature of the October 16, 2001 letter, the Panelist has, as indicated above, decided not to rely on its contents. The e-mail from Mr. Baraldi dated November 11, 2001, appears to have been addressed to the Dispute Resolution Center in Rome, but was copied to the Center. It too contains an offer to settle the proceedings involving the Italian Domain Names, but is also material to this Administrative Proceeding in that it rejects the Complainant’s charges of bad faith on the ground that the Respondent "has been using the material "CORIAN" for many years" and that its business "is based on the manufacture of kitchen and bathroom furniture with the material "CORIAN", as the Complainant … already knows."
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the ICANN Policy, as follows:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
As to element (i), the Panelist has no hesitation in finding that the only distinctive element of the Domain Name is the very well-known mark CORIAN, the Complainant's trade mark. The addition of the word "shop" is wholly non-distinctive in the context of a business which involves the selling of goods The Domain Name is undoubtedly confusingly similar to the trade mark CORIAN.
As to element (ii) of paragraph 4(a) of the ICANN Policy, the Respondent has done nothing to demonstrate that it has any rights or legitimate interests in the Domain Name. There is nothing to suggest that any of the circumstances mentioned in paragraph 4(c) of the ICANN Policy apply (i.e. before notice of the dispute preparation to use the Domain Name, being commonly known by the Domain Name or making a legitimate non-commercial or fair use of the Domain Name). The facts put forward by the Complainant suggest (see paragraph 5(vi) above) that the Respondent's interest in the Domain Name was simply to sell it to the Complainant. The Respondent has not attempted to challenge the Statement of Mr. Gavalda, and the Panelist accepts it as a true statement. Therefore, in the absence of any justification from the Respondent of the activities in relation to the Domain Name, the Panelist concludes that the Complainant has established element (ii).
Lastly, the Complainant must establish element (iii), i.e. that the Domain Name has been registered and is being used in bad faith. Paragraph 4(b)(i) of the Policy indicates to a Respondent that the following circumstances shall be evidence of registration and use of a domain name in bad faith:
"Circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name,"
The offer to sell the Domain Name and two of the three Italian Domain Names to the Complainant for 75,000 Euros (approximately U.S.$ 66,000), a sum very considerably in excess of what the Respondent’s costs could possibly be, coupled with Mr. Pernstich’s frank admission that he registered these domain names in order to resell them satisfies the Panelist that the Complainant has established element (iii).
The fact that the Respondent may itself deal in CORIAN products (see paragraph 5B. above) is no answer in this case to the finding of bad faith within the terms of the ICANN Policy.
In the light of the findings in paragraph 6 above, the Panelist concludes that:-
- the domain name <corian-shop.com> is confusingly similar to the trade mark CORIAN of the Complainant;
- the Respondent has no rights or legitimate interests in the domain name;
- the domain name has been registered and is being used in bad faith.
Accordingly, the Panelist orders that the domain name <corian-shop.com> be transferred to the Complainant, E.I. du Pont de Nemours and Company.
Dated: November 20, 2001