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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Csp International Industria Calze S.P.A. v. Giancarlo Bernabei

Case No. D2003-0268

 

1. The Parties

The Complainant is Csp International Industria Calze S.P.A., headquartered in Ceresara (MN), Italy.

The Respondent is Giancarlo Bernabei, Velletri, Roma, Italy.

 

2. The Domain Name and Registrar

The disputed domain name <oroblu.biz> (hereinafter also the Domain Name) is registered with Melbourne IT, trading as Internet Name Worldwide.

 

3. Procedural History

The WIPO Arbitration and Mediation Center (hereinafter the Center) received a complaint (hereinafter the Complaint) by email on April 8, 2003, and in hardcopy and exhibits on April 9, 2003. On April 10, 2003, the Center transmitted via email to Melbourne IT trading as Internet Name Worldwide with reference to <oroblu.biz> and to Register.it S.p.A. with reference to <oroblu.org> a request for registrar verification in connection with this case.

On April 10, 2003, Melbourne IT trading as Internet Name Worldwide transmitted via email to the Center, the Verification Response, confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact and that the domain name registration is in "active" status.

On April 11, 2003, Register.it S.p.A., transmitted via email to the Center, the Verification Response, confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact and that the domain name registration is in "active" status but requesting an extension of time to confirm whether the Uniform Dispute Resolution Policy would have applied to <oroblu.org>. On April 23, 2003, the Center sent a reminder to Register.it S.p.A. requesting the needed confirmation. On April 24, 2003, Register.it S.p.A. indicated that at the moment of the registration of <oroblu.org> "UDRP was not specified on the Registrar- Registrant contract" and specifying that "it has been added later". The Centre on April 24, 2003, requested then a further clarification on the declaration rendered and received on the same April 24, 2003, a further mail indicating that UDRP could not be applied to the registration of <oroblu.org> "since the domain name registrant has not approved the new contract yet".

In light of the second statement of Register.it S.p.A., the Center had no other option than state that, due to an omission by the concerned registrar, Register.it, the Uniform Domain Name Dispute Resolution Policy would not be applicable to the registration of <oroblu.org>, requesting the Complainant on May 19, 2003, to file an amendment to the Complaint removing <oroblu.org> from the scope of the proceeding.

The Center verified that the amended Complaint, received on May 23, 2003, via email and in hardcopy and exhibits on May 26, 2003, 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 WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). Complainant made the required payment to the Center.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 27, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2003. The Response was filed with the Center on June 12, 2003, via email and in hard copy and exhibits on June 23, 2003.

On June 25, 2003, in view of the Complainant’s designation of a single member panel the Center invited Mr. Luca Barbero to serve as a panelist and transmitted to him the Request for Declaration of Impartiality and Independence and a Statement of Acceptance.

Having received Mr. Luca Barbero's Statement of Acceptance and Declaration of Impartiality and Independence as required by the Center to ensure compliance with the Rules, paragraph 7, the Center transmitted on June 26, 2003, to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Luca Barbero was formally appointed as the Sole Panelist. The Sole Panelist finds that the Administrative Panel (hereinafter referred to also as the Panel) was properly constituted and appointed in accordance with the Rules and Supplemental Rules.

 

4. Factual Background

The Complaint is based inter alia on the Italian trademark registration No. 692946 "OROBLU’" first filed on March 16, 1984, in class 25, and duly renewed thereafter, the International Registration N. 489478 "OROBLU" of October 20, 1984, and a number of National registration in over 50 countries.

The Respondent registered the Domain Name <oroblu.biz> on November 13, 2002.

 

5. Parties’ Contentions

A. Complainant

The Complainant indicates that the Complainant is a leading company in the underwear clothing field, with goods marketed and promoted in about 39 countries beyond its main market in Italy. The OROBLU trade mark has been used since 1987, and it is nowadays distributed in about 3.000 sales points in Italy, while abroad it is distributed throughout principal stores. The world-wide turnover of the Complainant related to the selling of goods trademarked OROBLU exceeded the amount of 25 million Euro in 2001.

The Complainant provides the Panel with the indications of the amount of sales turnover of sales achieved with the OROBLU products in the years 1987 throughout 2002, and data about the investment for advertising in various media, concluding that therefore the trademark OROBLU is well-known in Italy and abroad. The first filing of the trademark OROBLU dates back to October 1984, and the Complainant is the owner of national and international registered trademarks; the Panel was provided with some certificate of registration and a list with the full data of over 50 national registrations in various countries.

The Complainant informs the Panel that, upon information and belief, there is no evidence that the Respondent has trademarks or company activities registered with the name OROBLU and states that no agreements, authorizations or licenses have been granted to the Respondent to use the Complaint’s trademarks. Therefore, the Complainant affirms that the Respondent has no rights or legitimate interests in respect of the Domain Name that is the subject of the present Complaint according to the aspects mentioned within the Policy, paragraphs 4(b) and (c).

According to the Complainant, the Respondent has activities related to filing and trading domain names rather than the bona fide use of them since the Respondent has registered hundreds of domain names, providing the Panel with a long list of domain names registered in the name of the company of the Respondent and is not making any good faith use of the disputed Domain Name.

The Complainant points out that the Respondent registered the disputed Domain Name during the Italian domain name re-assignment proceeding (the Italian equivalent of the Mandatory Administrative Procedure), concerning the domain name <oroblu.it> and received a cease and desist letter on May 9, 2002; notwithstanding the above, the Respondent on November 13, 2002, (i.e. four days after the re-assignment decision on case <oroblu.it>), registered the Domain Name and also the domain name <oroblu.org>.

The Complainant informs the Panel that the pages presently published on the web pages corresponding to the Domain Name are the same as those the Respondent published on the web site formerly retrievable at the URL "http://www.oroblu.it", enclosing to the Complaint print outs of both the web sites available on line respectively on November 11, 2002, at "http://www.oroblu.it" and February 11, 2003, at "http://www.oroblu.biz". According to the Complainant such pages were activated by Respondent, only after the Italian Administrative Procedure had begun, allegedly in order to attempt to show a bona fide use of the Domain Name. The Complainant points out that the web site appears to be of ten pages, accessible through the main frame and, of these ten pages, eight have simply the wording "in construction", one is the home page and the tenth a collection of links to other sites containing the word "oroblu". The Complainant informs the Panel that the home page is composed of photos and excerpts of articles copied from various sources but the main part is an article copied - identical are the colours, photos and its, position and the fonts - from the site of the Rai-Radio Televisione Italiana without duly quoting the source or the author. In the web site copied to the Panel there is also an excerpt of an article of Alessandro Cerroni copied from the site of the "Coordinamento di iniziative popolari di solidarietà internazionale" and copies of wording and images taken from other web sites. The same is true for the only other page not in construction of the current web site, the page with the links that, according to the Complainant, is merely the transposition of the results of a query on a search engine on the word "oroblu".

Furthermore, the Complainant points out that the only difference between the site at the time of the decision on <oroblu.it> and the current one, consists in one single page added after the transfer decision of the domain name <oroblu.it> was issued where the Respondent has made reference to a petition to the Court of Velletri (Roma), that the Respondent filed in order to impede the transfer proceeding for the domain name <oroblu.it>. The Complainant informs the Panel, providing copies of the relevant correspondence, that the Italian Registration Authority itself indicated to the Respondent the procedure to be followed in order to avoid the transfer procedure of <oroblu.it> allowing the Respondent an exceptional extra period of 15 days to possibly start a civil lawsuit. Once the allowed deadline had expired the Registration Authority, not having received any further communication from the Respondent, has proceeded with the transfer of the domain name <oroblu.it> from the Respondent to the Complainant.

With reference to the issue of bad faith, the Complainant informs that Panel that the Respondent has registered hundreds of domain names. The report of the database Whois of the Italian Registration Authority for the ccTLD ".it" shows over 350 domain name registrations in the name of the Respondent’s company amongst which names of cities in Lazio followed by "online" (<albanonline.it>, <ciampino-online.it>, <anzio-online.it>, <grottaferrataonline.it>, <roccadipapaonline.it>, <roccaprioraonline.it>, <velletrionline.it>, etc.) names of people (<rosalba.it>, <katiuscia.it>, <tania.it>, <benito.it>, <filiberto.it>, etc.) names connected with religious subjects (<chiesavaldese.it>, <evangelici.it>, <testimonigeova.it>, etc.); according to the Complainant all these domain names are associated by the fact that they were registered in the year 2000, and are today all inaccessible.

The Complainant, also following the wording of the decision rendered in Italy on <oroblu.it>, states that the number of domain names registered, the fact that they are held by the Respondent without any use being made of them, that for a large part of them the Respondent does not appear to have any prior right to their use and that some of them correspond to registered names under other TLDs by legitimate rights holders, leads to the consideration that the registration of so many domain names was made for holding purposes, no indication having been furnished by the Respondent regarding a possible plan, commercial or otherwise, for which so many domain names have been registered, aspect that it to be considered as an indication of bad faith in the registration and maintaining of the Domain Name.

The Complainant furthermore informs the Panel that, in addition to the over 350 ".it" domain names, the Respondent has also registered at least 85 generic TLD quoting amongst them <andreotti.info>, <buttiglione.net>, <dalema.info>, <prodi.info>, <prodi.net>, as surnames of well-known Italian politicians, <parlamento.biz>, <cameradeputati.info> with reference to Italian institutions and also registration for <corrieredellasera.net>, <ilmessaggero.net> and <larepubblica.net> namely Il Corriere Della Sera, Il Messaggero and La Repubblica, three of the major Italian daily newspapers, commenting that in all of them domain names the Respondent has presumably no rights.

With reference to the fact that the Domain Name was registered to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, the Complainant states that the actual registration of the Domain Name by the Respondent is de facto preventing the Complainant, as the rightful owner of the trademark OROBLU, from using the trademark in this corresponding domain name. Regarding whether the Domain Name was registered primarily for the purpose of disrupting the business of a competitor, the Complainant cannot state that the intention of Respondent is to disrupt its business but advises the Panel that definitely the Complainant has been severely hindered and penalized by the use of this Domain Name which is creating a likelihood of confusion with Complainant’s trademarks and domain names.

As regards to the use of the Domain Name to attract Internet users by creating a likelihood of confusion, the Complainant affirms that Respondent has never received any authorization to sell products or services under the Complainant trademarks in any form, that the disputed Domain Name has never been used in good faith and that Respondent was aware of Complainant’s trademarks. By knowingly choosing a domain name consisting of the Complainant’s trademark, the Respondent intentionally created a situation which is at odds with the legal rights and obligations of the parties. This statement, according to the Complainant, is reinforced by the fact that a cease and desist letter was sent to Respondent on May 9, 2002, requesting the Respondent to desist from using in any ways the trademark OROBLU. In addition, the Complainant has obtained the transfer of the domain name <oroblu.it> also registered by Respondent. Therefore, if not for resale, the Domain Name must have been registered to create a likelihood of confusion and damage the Complainant’s reputation and business.

The Complainant points out that such confusion and damage are purposely increased and demonstrated by Respondent placement of the indication <oroblu.it> on the head of the home page as well as on top of each page retrievable at the web pages published at the address "www.oroblu.biz". In addition, the Respondent has also placed the email address "info@oroblu.it" that according to the Complainant suggests to the public an immediate and actual link between the Respondent and the Complainant.

The Complainant also emphasizes that the Respondent had actual knowledge of Complainant’s trade mark from the above mentioned cease and desist letter and from the above Italian reassignment procedure and, nevertheless, proceeded to register the Domain Name.

The Complainant also points out the that, the policy of the concerned Registrar for the domain name <oroblu.biz>, which is binding for the Respondent, states at point 10 that: «Registrant warrants that, to the best of its knowledge and belief, neither its registration of a domain name nor the manner in which it is directly or indirectly used infringes the legal rights of a third party». In addition, as written under point 24 (A) (1) BIZ RESTRICTIONS «Registration in the .biz TLD must be used or intended to be used primarily for bona fide business or commercial purposes»; and under point 24 (A) (2) BIZ CERTIFICATION – «as a .biz domain name registrant, Respondent certified that: a) the registered domain name would have been used primarily for bona fide business or commercial purposes and b) the registered domain name is reasonably related to the Registrant’s business or intended commercial purpose at the time of registration».

The Complainant concludes that in view of all the above, it appears that the Respondent has registered the Domain Name knowing the existence of Complainant’s trademark rights and without any bona fide purpose.

B. Respondent

The Respondent in his Response, filed in English, German and Italian, affirms that for most Italian people the word "oroblu" means water that, since it is becoming more and more scarce, it is compared to gold. In order to support such a statement, the Respondent encloses to the Response one page photocopy of a partial extract of an article (where the signature of the author is not included) published on the edition of June 20, 2002 - July 4, 2002, of a local paper in free distribution "Il Caffè" (Notizie locali nel tempo di un caffé ) and refers to his web site "www.oroblu.biz" for links where water is defined as "oroblu" by various authors.

The Respondent indicates - only in the Italian version of the Response - that, since the word "oroblu" is commonly used in the Italian language and does not have any novelty character, the registration of the trademark itself should therefore be "reconsidered (rivista) ".

The Respondent informs the Panel that with this website he wants to bring to peoples’ attention that the water is becoming more and more scarce (as a member in the WWF and other organisations).

The Respondent advises the Panel that he has already instituted a criminal procedure "for being wrongly accused" at the Court in Velletri both against the Panel of the prior decision on the domain name <oroblu.it> and against the lawyer assisting the Complainant in such a procedure, enclosing to the Response the one page request filed in Velletri on November 19, 2002. The Respondent, only in the Italian version of the Response, refers in details to the charges that he has brought against the Panel and the lawyer and the reasons why, according to his interpretation of the Naming Rules, the Italian Registration Authority should not have transferred <oroblu.it> to the Complainant herein.

The Respondent furthermore indicates that, at the time of his registration of the domain name <oroblu.it> on April 11, 2000, the Complainant was "not known" (but according to the Italian version of the Response "was very little known") on the market and anyway the Complainant has demonstrated little interest in domain names since only in 2002, the Complainant has claimed back the domain name <oroblu.it>. In the Italian version of the Response, the Respondent states that such a scarce interest of the Complainant in the Domain Name is "also demonstrated by the fact that, even though the domain names <oroblu.biz> and <oroblu.org> they (the Complainant) have not registered them and, only after the decision on the transfer of OROBLU.IT (November 8 2002) the underwritten had registered OROBLU.ORG and OROBLU.BIZ". The Respondent also adds that his registration of the Domain Name only after the decision of the Italian Panel confirms that he had not registered the Domain Name with the purpose to sell it to the Complainant since, had it been his real intention, the Respondent "would have registered them sooner and already attempted to sell them".

The Respondent furthermore states that his "job is to register web sites and not to steel (rectius steal) them" and he is registering domain names mainly for friends and clients. The Respondent quotes as an example of his activity of registering domain names, <cesaroni.it> and <cesaroni.info> which was registered for the mayor of Velletri and not to sell it to Cesaroni Technology Inc., of which he was not aware of. The Respondent indicates that he has also bought some town names for example <Albano.it>, <Lariano.net>, <Velletri.net>, <Barletta.org>, <Campobello.it>, <Trefontane.it>, <Mozia.it>, <Velletrionline.it>, <Castelliromani.info>, <Granitola.it> all presently corresponding to active web sites and not only the domain names quoted in the Complaint.

The Respondent also states that he has also bought many personal names for relatives and friends such as <Jessica.it>, <Sabrina.it> (the daughters); as for the name of the politicians, the purpose is to create parody web site while many other domain names corresponds to the name of flowers and various festivals.

In the English version of the Response, the closing statement consists of the simple declaration of the Respondent "never sold one of the domains" while in the Italian version the Respondent further comments, indicating that it should not be a fault to believe in Internet, to have registered a number of domain names before third parties did and, should he have found help and time available, he would have activated them all in a little time. The Respondent furthermore states that if he had registered the domain names for selling purpose he would have already done it and, consequently, it would have been easy for the Complainant to prove his bad faith but, to date, the Respondent states that amongst the hundreds of domain names it is not apparent that any one was assigned to third parties. The closing statement of the Respondent in the Italian version of the Response is "I have bought the knife to eat the meat and not to harm someone", inviting anyone to prove the Respondent’s bad faith amongst the many domain name registrations.

 

6. Discussion and Findings

According to paragraph 15(a) of the Rules: "A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

6.1. Domain Name Identical or Confusingly Similar

The Complainant has provided sufficient evidence of ownership of the trademark OROBLU including the Italian trademark registration No. 692946 "OROBLU’" first filed on March 16, 1984, in class 25, and duly renewed thereafter, the International Registration N. 489478 "OROBLU" of October 20, 1984, and a number of National registration in over 50 countries.

In view of the above, the Panel finds that the Complainant has proved that the Domain Name is identical, obviously but for the suffix ".biz" which is instrumental for the use in Internet, to the trademarks of the Complainant according to paragraph 4(a)(i) of the Policy.

6.2. Rights and Legitimate Interest

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:

(a) that he has made preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to the dispute;

(b) that he is commonly known by the Domain Name, even if he has not acquired any trademark rights; or

(c) that he intends to make a legitimate, non-commercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

As to the preparations of the Respondent to use the name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to the dispute and to the fact that he is commonly known by the Domain Name, even if he has not acquired any trademark rights, the Respondent has not provided the Panel with any convincing evidence. The Respondent inter alia, did not address at all the essential issue of prior use or preparation to use of the Domain Name before the first communication of the Complainant’s rights on the trademark OROBLU, addressed to the Respondent on May 2002.

It is not the purpose of the present procedure nor within the powers of the Panel to ascertain the validity of a trademark or to question the distinctive character of a sign legitimately registered and used as a trademark since 1984, and therefore the Respondent’s indication as to the opportunity to "reconsider" the trademark in light of the mere allegation that oroblu has become, in Italy, a common expression to identify water is not to be considered relevant in the present procedure.

With reference to the intention of the Respondent to make a legitimate, non-commercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark, the Panel takes note of the fact that the web site published at the URL address corresponding to the domain name <oroblu.biz> at the time of the decision, still contains a clear reference, in right corner of the home page as well as on top of each page currently retrievable on the web site, to the domain name <oroblu.it>, that was transferred to the Complainant last December 2002, and is currently pointing at one of the active web sites of the Complainant.

It is also relevant for the Panel’s evaluation of the legitimate and fair use of the Domain Name by the Respondent and also to ascertain the lack of intention to mislead or divert internet users, that the only email indicated as a reference on the web site on line at "http://www.oroblu.biz" is info@oroblu.it, which corresponds now to one of the possible email addresses of the Complainant.

Furthermore, it does not appear entirely in line with a fair use without the intention to tarnish the trademark of the Complainant, the publication in one of the pages of the web site available at "http://www.oroblu.biz" in very large font of the statements with reference to the Complainant: "ci vogliono fottere anche .org e .biz …" which in English reads "They wish to take (other more colorful translation may also apply) .org and .biz too" and "…la Csp non compra i domini .biz e .org che erano ancora disponibili alla decisione del .it … fanno causa dopo (che siano mal consigliati??)" which translated is "the Cps (the Complainant herein) did not buy the domain names .biz and .org which were still available at the time of the decision on .it was rendered…they start a legal action afterwards (are they badly advised??)".

It is acknowledged that there is no relation, disclosed to the Panel, between the Respondent and the Complainant and Respondent is not a licensee of the Complainant, nor the Respondent has otherwise obtained an authorization to use Complainant’s trademark and name under any circumstance.

The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the Domain Name, according to paragraph 4(a)(ii) of the Policy.

6.3. Registration and Use in Bad Faith

For the purpose of Paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:

(i) circumstances indicating that the holder has registered or has 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 the holder’s documented out-of-pocket costs directly related to the Domain Name; or

(ii) the holder has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’ s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder’s website or location.

Panel finds paragraph 4(a)(ii) of the Policy applicable in the instant case since the Respondent is preventing the rightful owner of a trademark from reflecting the mark in a corresponding domain name, and the Respondent is to be considered as engaged in a pattern of such a conduct as it has registered, in addition to <oroblu.biz>, a number of other domain names identical and/or confusingly similar to third parties trademarks, such as: <corrieredellasera.net>, <ilmessaggero.net>, <larepubblica.net>, <clubjuventus.it>, <clublazio.it>, <clubmilan.it>, <clubroma.it>, <clubtorino.it>, <tecnocase.it>. The Panel acknowledges that the Respondent is the legitimate owner of a number of other domain name registrations. Nevertheless, in order to establish a pattern according to paragraph 4(a)(ii) of the Policy it is not necessary that all the domain names registered by a Respondent are potentially infringing third party trademark rights but it is sufficient that some of them are identical or confusingly similar to trademark registration, which could be easily known by a Respondent.

As to the assessment of the prior knowledge of the existence of the Complainant trademark rights at the time of the registration of <oroblu.biz>, the Respondent himself stated in the Response that it was only after the unfavourable decision about <oroblu.it>, and therefore months after having received the cease and desist letter from the Complainant, that the Respondent had decided to register the Domain Name. The Panel, in line with a number of other UDRP decisions, finds that the actual prior knowledge of the Complainant’s rights on the trademarks is a circumstance supporting bad faith. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137, Infospace, Inc. v. Siavash Jimmy Behain, et al., WIPO Case No. D2000-1631 (One factor to support a finding of bad faith is Respondent’s knowledge of Complainant’s Trademarks). In this sense, see also Channel Tunnel Group Ltd. v. John Powell, WIPO Case No. D2000-0038 (awareness of Complainant's mark at the time of registering confusingly similar domain name is evidence of bad faith).

Another circumstance that the Panel has considered for the evaluation of bad faith use of the Domain Name is the current reference throughout the web site published at "www.oroblu.biz" to the domain name <oroblu.it> and the fact that the only email of reference quoted in the web site is "info@oroblu.it". Since the domain name <oroblu.it> has been transferred to the Complainant already at the end of 2002, and is currently pointing to one of the web sites of the Complainant, it is a circumstance attesting bad faith the fact that the Respondent has not amended the reference to the Complainant’s web site in such a long time. Furthermore, since the Respondent is declaring in the home page published at "www.oroblu.biz" that the objects of the web site are to "coordinate the association of volunteers, technicians, scholars and anyone interested to contribute to provide developing countries with technological instrument, funds and projects for the supply of water" it is not showing a genuine bone fide use of the Domain Name the fact that the Respondent has not minded to amend, in over six months of time, the only email address of possible reference available on the published web site.

An additional circumstance evidencing bad faith of the Respondent, are the untrue declarations that the Respondent has made while registering <oroblu.biz>. According to the policy of the Registrar of the Domain Name, the Respondent warranted that to "the best of his knowledge and belief, neither his registration of a domain name nor the manner in which it is directly or indirectly used infringes the legal rights of a third party" at a time when he was already well aware of the existence of a trademark registration in the name of the Complainant. The Respondent before registering the Domain Name, was aware of the fact that the registration in the ".biz" Top Level Domain must be used or intended to be used primarily for bona fide business or commercial purposes and as a ".biz" domain name registrant, Respondent certified that the registered domain name would have been used primarily for bona fide business or commercial purposes and the registered domain name is reasonably related to the Registrant’s business or intended commercial purpose at the time of registration. Also in light of the content of the web site published at "www.oroblu.biz", it is apparent that the Respondent has therefore made a deceitful statement regarding all the requirements for a ".biz" registration. See along these lines i.e. Nasdaq Stock Market, Inc. v. Jon Steinsson, WIPO Case No. D2002-0571, and Citigroup, Inc. v. Joseph Parvin, WIPO Case No. D2002-0969 (Domain Name was registered and is being used in bad faith because it is not being used primarily for bona fide business or commercial purpose, as Respondent certified when registering the <cititravel.biz> Domain Name).

In view of the above, the Panel finds that the Respondent has registered and used the Domain Name in bad faith, according to paragraph 4(a)(iii) of the Policy.

 

7. Decision

In light of the foregoing, the Panel decides that a) the Domain Name registered by the Respondent is identical to the Complainant's trademarks, that b) the Respondent has no rights or legitimate interests in respect of the Domain Name and c) that the Domain Name has been registered and used in bad faith.

Accordingly, the Panel requires that the registration of the Domain Name <oroblu.biz > be transferred to the Complainant.

 

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Luca Barbero
Sole Panelist

Dated: July 14, 2003