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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Valdifiemme.ir srl v. Paolo Alzalamira /Fenix Lab. srl
Case No. D2002-0149
1. The Parties
Complainant is Valdifiemme.ir srl, with registered office in Via Pasqualine, 15/b, Daiano (Trento), Italy.
Respondents are Paolo Alzalamira / Fenix Lab. srl, based in Via Matteotti, 14, Cavalese (Trento), Italy.
2. The Domain Name and Registrar
The domain name at issue is <valdifiemme.info> (Domain Name).
The Domain Name is registered with Register.com, 575 8th avenue – 11th floor – New York – NY 10018, United States of America. (the Registrar).
3. Procedural History
A Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the Policy), to the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the Rules), and to the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules), was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the Center) on February 14, 2002, and subsequently in hard copy on March 7, 2002. The Center acknowledged receipt of Complaint on February 21, 2002.
On February 26, 2002, a request for Registrar Verification in connection with this case was transmitted to the Registrar. On February 26, 2002, the Registrar confirmed that: (i) Register.com is the Registrar of the Domain Name <valdifiemme.info>; (ii) the current registrant of the Domain Name is Paolo Alzalamira, Via Matteotti, 14, 38033 Cavalese (TN); (iii) the administrative and billing contact is Paolo Alzalamira; and (iv) the current status of the Domain Name is "active". The Registrar, however, denied receipt of a copy of the Complaint.
On February 27, 2002, the Center sent a Complaint Deficiency Notification to Complainant, pointing out three formal deficiencies affecting the Complaint, as follows: (i) the Complaint was not submitted in one original and four copies, as required by Rules, Paragraph 3(b) and Supplemental Rules, Paragraph 3(c); (ii) the Complaint did not describe the grounds on which it is made, as required by Rules, Paragraph 3(b)(ix) and did not specify the trademark(s) or service mark(s) on which it is based (Rules, Paragraph 3(b)(viii)); (iii) the Complaint did not include a submission by Complainant to the Jurisdiction of the courts in at least one specified Mutual Jurisdiction, which must be expressly identified, as required by Rules, Paragraph 3(b)(xiii). The Center invited Complainant to cure the above deficiencies within five (5) calendar days, pursuant to the Rules, Paragraph 4(b).
On March 5, 2002, Complainant submitted to the Center the amended Complaint.
On March 7, 2002, the Center completed the Formal Requirements Compliance Checklist and, on the same date, transmitted to Respondent a Notification of Complaint and Commencement of Administrative Proceedings (Commencement Notification) by the required means, setting the deadline of March 27, 2002, by which Respondent could file a Response.
A Response was received electronically on March 25, 2002. An Acknowledgment of Receipt (Response) was sent by the Center on March 26, 2002.
On April 2, 2002, Complainant submitted to the Center a request for filing a reply to Respondent’s Response.
On April 15, 2002, the Center notified the parties that Ms. Anna Carabelli had been appointed as Sole Panelist and that, absent exceptional circumstances, the decision was due by April 30, 2002.
On April 19, 2002, the Center notified the parties that, after reviewing the file, the Panelist did not require any further submission from Complainant.
The Panelist independently determined and agreed with the assessment of the Center that the Complaint formally complies with the requirements of the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The only documents submitted by Complainant to support the Complaint are: (i) a copy of the Registrar’s who is database showing that Mr. Paolo Alzalamira is the current registrant of the Domain Name, while the Complaint was made against the company Fenix.Lab s.r.l; and (ii) a copy of the print out of the Complainant’s data available at the Chamber of Commerce of Trento, containing general information such as the name, registered office and the purpose of the company, the date of incorporation (April 9, 2001), the share capital and the name of the legal representative. None of the above documents makes reference to or proves Complainant’s ownership of a registered trademark.
Respondent Fenix Lab. s.r.l. does not question that it registered the Domain Name. As Attachment 1 to the Response, Respondent has produced a letter from Mr. Guido Travaglia, the director of the Val di Fiemme Tourist Board (Val di Fiemme APT), Val di Fiemme being a geographical area in the Italian Province of Trento. This letter confirms that the Domain Name was registered by Mr. Alzalamira in the name of the company Fenix.Lab upon instructions, and for the account and benefit of Val di Fiemme APT. According to Mr. Travaglia, the Domain Name was subsequently transferred to Val di Fiemme APT without any money being charged in addition to registration fee. By attaching the above mentioned letter to the Response, Respondent has implicitly confirmed Mr. Travaglia’s assertions. The Panelist therefore accepts that the Domain Name has been registered and is being used in the name and for the benefit of Val di Fiemme APT. As regards the transfer of the Domain Name to Val di Fiemme APT, the Panelist notices that, although implicitly confirmed by Respondent, such transfer has not been notified to the Registrar and no change in the Domain Name’s registrant appears from the Registrar’s whois database. The Panelist therefore considers that the Complaint was properly addressed to Respondent Fenix Lab. srl.
5. Parties’ Contentions
Complainant’s contentions are as follows:
-"at the time of the Respondent’s registration of the Domain name, no current (non expired) trademark or service mark registration was issued in the Respondent’s name";
-"the Domain name is not identical to the textual or words elements of the trademark or service mark registration on which the registration of the Respondent’s Domain Name is based";
-the Domain Name corresponds identically to the trademark of Complainant "registered in Trento (Italy) on April 19, 2001 (as per attached certification)";
-Complainant delivers information, news and such material related to the Italian Province of Trento under the trademark "valdifiemme";
-as a consequence, the use of a Domain Name in connection with a web-site identical to Complainant’s name can generate confusion.
Based on the above, Complainant requests the transfer of the Domain Name.
Respondent rejects Complainant’s allegations as groundless and not substantiated by any evidence. In Attachment 1 to Response, Respondent explains that Val di Fiemme APT is a government agency having legal territorial jurisdiction over the geographical area of Val di Fiemme. Val di Fiemme APT is duly recognized by the Italian government as the primary establishment with jurisdiction over tourism and has been instituted pursuant to Act no. 21/1986 of the Province of Trento (copy of which is attached to the Response). Val di Fiemme APT’s main task is to promote services such as information, promotion and any advertising services to increase the value of Val di Fiemme as tourism destination.
The Domain Name was registered in good faith and is being used for legitimate non-commercial purposes by Val di Fiemme APT by offering travel operators and general tourism consumers a free information service.
Respondent emphasizes that none of the circumstances set forth in Paragraph 4(b) of the Policy as evidence of registration and use in bad faith have occurred. On the contrary, Respondent (rectius Val di Fiemme APT) has legitimate interests in the Domain Name as evidenced by the fact that prior to any notice of the dispute it has started using the Domain Name in connection with a bona fide offering of services.
6. Discussion and findings
Paragraph 15(a) of the Rules sets out the principles this Panel is to use in rendering its decision: "A Panelist shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
As mentioned in paragraph 3 above, the Panelist denied Complainant’s request to submit a reply. Paragraph 12 of the Rules authorizes additional submissions only if requested, in its sole discretion, by the Panel. Further statements should therefore be admitted only if necessary for the Panel to take a decision and, in any case, sparingly, to maintain the format and expedited nature of the proceedings. In no way further statements could be aimed at curing incompleteness and/or deficiencies in the Complaint or in the Response that could be originally avoided. In the case in hand, there is no reason to depart from the ordinary procedure also considering that Complainant received a Complainant Deficiency Notification and was specifically invited to specify the grounds on which the Complaint is made.
Under Paragraph 4(a) of the Policy, Complainant must prove each of the following:
(i)The domain name in issue is identical or confusingly similar to the Complainant’s trademark or service mark; 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.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of Paragraph 4(a)(iii) shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(c) sets out in particular but without limitation three circumstances which, if proved by Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the domain name for the purpose of Paragraph 4.a(ii) above.
(a) Identical or confusingly similar trademark
Establishing abusive domain name registration and use presupposes the existence of a valid trademark or service mark. Complainant has not met its burden of proof on this element.
Complainant has not submitted any documentary evidence of a trademark registration.
However, the Domain Name is identical to Complainant’s name (Valdifiemme.ir s.r.l., s.r.l. standing for "società a responsabilità limitata", that is limited liability company) save for the addition of ".info". The question is whether Complainant’s name (corresponding to the name of a geographical area in Northern Italy) is a trademark or service mark in which Complainant has rights.
Previous WIPO Panel’s decisions have held that the Policy does not extent to the misappropriation of geographical names per se, as is clarified also by the Report of the First WIPO Domain Name Process and by the Report of the Second Domain Name Process (see WIPO Case No. D2001-1500 Stadt Heidelberg v. Media Factory, WIPO Case No. D2001-0069, Brisbane City Council v. Joyce Russ Advertising Pty Ltd., WIPO Case No. D2001-0047, Brisbane City Council v. Warren Bolton Consulting Pty Ltd., WIPO Case No. D2001-0348, Chambre de Commerce et d’Industrie de Rouen v. Marcel Stenzel).
In some cases, place names, either alone or in combination with other elements, have been held to constitute trademarks or service marks (WIPO Case No. D2000-1217, Skipton Building Society v. Peter Colman, WIPO Case No. D2001-0001, City of Hamina v. Paragon International Projects Ltd., WIPO Case No. D2001-0932, Sydney Markets Limited v. Nick Rakis) but in all such instances the Panels’ decisions were based on the finding that the geographical name had acquired distinctiveness vis-à-vis the goods or services of the Complainant by virtue of the activity carried out by the Complainant.
In the case in hand Complainant has provided no evidence nor even alleged that its name has acquired a distinctive character in respect of the services it offers (delivering of information, news and press releases, gadgets and goods of the region Val di Fiemme). In addition, the short period between the date on which Complainant was incorporated (April 2001), and that on which the Domain Name was registered (September 2001), makes it hard to believe it.
The Panel therefore finds that Complainant has failed to establish the first element under Paragraph 4(a)(i) of the Policy. It is not necessary, therefore, to consider the question of Respondent’s legitimate interests and bad faith registration and use.
For all the foregoing reasons, the Complaint is dismissed.
Dated: April 30, 2002