WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fiat Auto S.p.A v. Italienska bil
Case No. DBIZ2001-00030
1. The Parties
The Complainant is Fiat Auto S.p.A., Corso Agnelle 200, I 10135 Torino, Italy and is represented by Dr. Massimo Introvigne, Studio Legale Jacobacci & Associati, Corso Regio Parco 27, 10152 Torino, Italy.
The Respondent is Italienska bil, Box 324, Sollentuna 192 39, Sweden.
2. The Domain Name and Registrar
The Domain Name at issue is <alfaromeo.biz>. The Registrar is Network Solutions, Inc. (NSI), 505 Huntmar Park Drive, Herndon VA 20170-5142, U.S.A.
3. Procedural History
The STOP Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) on December 12, 2001, and a hardcopy was received by the Center on December 17, 2001.
The Center verified that the Complaint satisfies the Start-up Trademark Opposition Policy for <.biz>, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, (the STOP) and the Rules for Start-up Trademark Opposition Policy for <.biz>, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 (the STOP Rules) and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for <.biz> (the WIPO Supplemental STOP Rules), and that payment was properly made. The Panel is satisfied this is the case.
On December 21, 2001, the Center notified the STOP Complaint and the Administrative Proceeding commenced. Since no Response was received by the Center within the time limit set, on January 14, 2002, the Center sent a Notice of Default to the Respondent.
On January 30, 2002, the Center notified the Parties that an Administrative Panel, composed of a single member, Dr. Gerd F. Kunze, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
No further submissions were received by the Center or the Panel.
4. Factual Background
The Complainant is an internationally well-known company in the field of cars, which it sells under different brands, including the ALFA ROMEO brand (which it acquired, together with the business of the former car maker Alfa Romeo).
The Complainant is the owner of registrations for the trademark "ALFA ROMEO" in Italy and in many countries around the world (listed in Annex 2 to the Complaint), and, in particular, of the international registration 493417, dated 17.12.194, for the word mark ALFA ROMEO, covering goods and services in classes 1 to 37, and extending to over 30 countries, members of the Madrid Agreement (Annex 3 to the Complaint).
The mark ALFA ROMEO is no doubt an internationally well-known mark, enjoying a wide scope of protection.
On November 19, 2001, the Respondent registered the domain name <alfaromeo.biz>.
5. Parties’ Contentions
The Complainant submits that (1) the domain name <alfaromeo.biz> is identical to a trademark or service mark, in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered or is being used in bad faith.
The Respondent failed to submit a Response.
6. Discussion and findings
Paragraph 4(a) of the STOP lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant:
1) The domain name is identical to a trademark or service mark ("mark") in which the Complainant has rights; and
2) the Respondent has no rights or legitimate interests in respect of the domain name; and
3) the domain name has been registered or is being used in bad faith.
1) Identity with a mark in which the Complainant has rights
The trademark ALFA ROMEO is written in two words, whilst the domain name <alfaromeo.biz> consists of one word, which contains the words "alfa" and "romeo", written together.
Since the Policy requires that the domain name be identical to a mark in which the Complainant has rights, the Complainant’s argumentation that the domain name be confusingly similar is not sufficient to sustain the Complaint. It must be decided whether, despite the difference in writing mentioned before, the domain can be considered "identical" with the Complainant’s mark within the meaning of the Policy.
In that context it must be taken into account that, if the STOP required 100% identity not only in pronunciation but also in writing, it could only apply to rights in marks consisting of one single word (since several words cannot be written separately as domain name). This cannot be the intention of the STOP, since it would discriminate many trademark owners.
In the attempt to find a reasonable interpretation of the Policy, taking account of the technical requirements of the domain name registration system, several approaches may be followed.
1) One might assume that identity of the domain name with the main distinctive word part of the trademark, as it is used in oral communications, is essential.
2) One may also apply Art. 5 C of the Paris Convention mutates mutantis, according to which use of a mark in a form differing in elements, which do not alter the distinctive character of the mark shall not diminish its protection. In that context a decision of the Board of Appeal in an opposition procedure against the registration of a Community Trademark (R 133/00, dated February 1, 2000) is of interest, where in application of the principle of Art. 5(2) of the Paris Convention the use of "HAPPYDAY" was held not to alter the distinctive character of the mark HAPPY DAY.
3) One may also consider that the domain name is identical to the mark, where the difference in writing only stems from the rules and technical necessities of the domain name registration system. Actually, if one intends to register the trademark ALFA ROMEO as the domain name <alfa romeo.biz>, it is impossible due to the space between "alfa" and "romeo".
Applying any of the examples of a possible test, the Panelist arrives in the present case at the conclusion that the domain name <alfaromeo.biz> is identical with the trademark ALFA ROMEO, in which the Complainant has rights.
2) Legitimate rights or interests in respect of the domain name
The Respondent has no connection or affiliation with the Complainant, who has not consented to the Respondent's use of the Domain Name. Simple stocking of the domain name by the Respondent, as this is the case at present, does not create any right or legitimate interest in the Domain Name.
Furthermore, none of the circumstances listed under 4(c) of the STOP, possibly demonstrating rights or legitimate interests, are given. The Respondent has not submitted to be the owner or beneficiary of a trademark that is identical to the Domain Name. The Respondent apparently has never used the Domain Name in connection with a bona fide offering of goods or services, and it has not demonstrated any preparations for such use. The Respondent is not known at all under the name <alfaromeo.biz>.
Therefore, the Panel concludes that the Respondent has no rights or legitimate interests vis-à-vis the Complainant in the domain name <alfaromeo.biz>.
3) Registration or use in bad faith
For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered or is being used in bad faith..
In the present case the Respondent apparently has registered <alfaromeo.biz> without having either used it or having tried to offer it for sale. Since the TELSTRA decision, it has been upheld by many panelists under the Uniform Domain Name Dispute Resolution Policy (the UDRP) that even without any activity of the Respondent in relation to the domain name, the circumstances of a case may lead to the conclusion that a Respondent has registered and is using a domain name in bad faith. Under the STOP, it is sufficient that the Respondent either registered or is using the domain name in bad faith. In view of the short time the <.biz> gTLDs have been available, the question will mainly be whether, based on the circumstances of the case, a Panelist arrives at the conclusion that the Respondent registered the domain name in bad faith.
In this context the Complainant submits the following arguments:
In view of the international fame of the ALFA ROMEO trademark the Respondent cannot have ignored the Complainant’s rights in that mark. Furthermore, it is hardly possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate. This is more true in the STOP proceeding for the <.biz> domain where an intention of fair non-commercial use does not counter bad faith registration.
In addition, the registration of <alfaromeo.biz> by the respondent makes it impossible for the Complainant to register in the <.biz> domain its trademark ALFA ROMEO and thus could disrupt the Complainant’s business. Most visitors to the <.biz> site searching for ALFA ROMEO cars, would first try to type a domain name corresponding to that registered by the Respondent. Should the Respondent activate a website under that Domain Name, visitors would be misled into the belief that they are connected with the makers of ALFA ROMEO cars. This, again, shows that the Respondent cannot reasonably use the domain name for business purposes without infringing the Complainant’s rights in the ALFA ROMEO mark.
Since the Respondent chose not to submit any arguments as to its intention for the domain name registration <alfaromeo.biz>, the Panelist accepts the arguments submitted by the Complainant, and is satisfied that the Respondent registered the Domain Name in bad faith.
The Panel decides that the Complainant has proven each of the three elements of paragraph 4(a) of the STOP.
Pursuant to paragraph 4(I) of the STOP and paragraph 15 of the Rules, the Panel requires that the registration of <alfaromeo.biz> be transferred to the Complainant.
Dr. Gerd F. Kunze
Date: February 12, 2002