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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Consorzio per la Tutela dell’Asti v. Mr. Gianmaria Liquore

Case No. D2004-0345

 

1. The Parties

The Complainant is Consorzio per la Tutela dell’Asti, of Italy, represented by Studio Legale Jacobacci e Associati, Italy.

The Respondent is Mr. Gianmaria Liquore, Arezzo, of Italy.

 

2. The Domain Name and Registrar

The disputed domain name <spumanteasti.com> is registered with Register.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2004. On May 12, 2004, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On May 12, 2004, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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 WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

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 28, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2004.

The Center appointed Edoardo Fano as the sole panelist in this matter on July 6, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The Complainant is Consorzio per la Tutela dell’Asti, an Italian entity created in order to control the use of the denomination of origin ASTI for sparkling wines.

The Consorzio was created in 1932, and recognized by the Italian government in 1934.

Its functions changed with the new Italian law on denominations of origin of 1963, and are now regulated by the Ministerial Decree dated November 29, 1993, which confers on the Consorzio the sole authority to authorize the use of the names ASTI, SPUMANTE ASTI and ASTI SPUMANTE (“spumante” meaning “sparkling wine” in Italian) in the field of beverages.

In addition to the rights directly arising from the above Decree, the Complainant is the owner of several trademark registrations and applications, among which:

- Canadian registration for ASTI No. TMA341,488;

- Paraguayan registration for ASTI No. 257.987;

- Peruvian registration for ASTI No. 00000073.

The Respondent’s domain name <spumanteasti.com> was registered on June 11, 2003. It pointed to a pornographic website offering images for a fee and it resolves now in a parking page offering several Internet services.

 

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar with if not identical to the Complainant’s trademark and denomination of origin ASTI SPUMANTE.

Respondent has no right or legitimate interests in respect of the disputed domain name. In fact there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with bona fide offering of goods or services and the Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name ASTI or ASTI SPUMANTE.

Moreover, the disputed domain name pointed to a pornographic website, through which the Respondent offered pornographic images for a fee and therefore its use is indeed commercial and any possibility of a non-commercial fair use is very remote.

The Respondent registered the domain name in bad faith since there is no way that the Respondent may not have been aware of the association of “SPUMANTE ASTI” with the Complainant.

When it may be presumed that “the Respondent (…) knew of the renown of the Complainant’s trademarks”, a finding of “opportunistic bad faith” is in order (Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157: here, the Panel found that Respondent could not have ignored that BANCA SELLA is a famous trademark in Italy for banking services). In Veuve Cliquot Ponsardin v. The Polygenix Group Ltd., WIPO Case No. D2000-0163, the Panel noted that “‘VEUVECLIQUOT.ORG’ is so obviously connected with such a well-known product [VEUVE CLIQUOT champagne] that its very use by someone with no connection with the product suggests opportunistic bad faith.” In Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226, it was also suggested that “the Domain Names are so obviously connected with such a well-known name and products that its very use by someone with no connection with the products suggests opportunistic bad faith [quoting Veuve Cliquot]. In the absence of contrary evidence, the Panel finds that Respondents knew of or should have known of the Complainant’s trademark and services at the time Respondents registered the Domain Names given the widespread use and fame of the Complainant’s CHRISTIAN DIOR mark.”

Even in a case where the trademark involved (EXPEDIA for online travel services) was somewhat less famous than VEUVE CLIQUOT or CHRISTIAN DIOR, it was decided that “the Respondent knew of or should have known of the Complainant’s trademark and services at the time it registered the domain name <xpediatravel.com>, given the widespread use of the Complainant’s EXPEDIA website” (Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137.)

The domain name is used in bad faith. When first visited by Complainant and its attorneys in August 2003, the page at “www.spumanteasti.com” resolved to a page offering pornographic services for a fee. Unfortunately, a printout of the resulting pornographic page has not been kept.

As the Panel stated in the case Motorola, Inc. v. NewGate Internet, Inc. (WIPO Case No. D2000-0079), “while many adult sex sites are perfectly legal and constitute bona fide offerings of goods or services, the use of somebody else’s trademark as a domain name (or even as a meta-tag) clearly does not constitute a ‘bona fide’ offering of goods or services when the web site owner has no registered or common law rights to the mark, since the only reason to use the trademark as a domain name or meta-tag is to attract customers who were not looking for an adult sex site, but were instead looking for the products or services associated with the trademark. Such use of a trademark can create customer confusion or dilution of the mark, which is precisely what trademark laws are meant to prevent. And actions that create, or tend to create, violations of the law can hardly be considered to be ‘bona fide’“. That redirection to pornographic sites from a domain name incorporating the trademark of another company is, per se, evidence of bad faith has been confirmed by several Panel decisions (see e.g.: Ty, Inc. v. O.Z. Names, WIPO Case No. D2000-0370; Youtv v Alemdar, Nat. Arb. Forum Case No. FA 94243; Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362; Simple Shoes, Inc. v. Creative Multimedia Interactive, Nat Arb. Forum Case No. 0008000095343; Dell Computer Corporation v. RaveClub Berlin, WIPO Case No. D2002-0601; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022; Cattlemen v. Menterprises – Web Development, CPR Case No. CPR0304).

As the present case, all the above are cases concerning the so-called “pornosquatting”, where a cybersquatter tries to take advantage of a well-known trademark and/or trade name to attract Internet users to a pornographic website.

Of course, the fact that the domain name was used in the past in association with pornography is significant enough, and what was done in the past may be done again in the future.

Even if we should ignore this past behaviour and focus on the present parking page offering several Internet services, the Respondent is at least in a situation of “passive holding” and therefore would still be in a situation of use in bad faith. In fact not only should his “passive holding” of the domain name be regarded as sufficient in light of the decision Telstra Corporation Ltd. v. Nuclear Marshmallows, (WIPO Case No. D2000-0003) and of many subsequent decisions, but certainly such passive holding (although a parking page selling some services is more than “passive holding”) would be coloured by his past (mis)behavior.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward.

A Respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the Complainant, in accordance with paragraph 14(b) of the Rules (see also Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International plc v. Mark Freeman, WIPO Case No. D2000-1080; Alta Vista Company v. Grandtotal Finances Limited et al., WIPO Case No. D2000-0848).

 

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three tests which a Complainant must satisfy in order to succeed:

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.

A. Identical or Confusingly Similar

As far as the first of these tests is concerned, the Panel finds that the Complainant is the owner of the trademark and denomination of origin ASTI SPUMANTE both by registration and acquired reputation.

The disputed domain name <spumanteasti.com> is confusingly similar to the trademark and denomination of origin ASTI SPUMANTE.

The Complainant has therefore met its burden of proving that the domain name at issue is confusingly similar to Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Respondent has failed to file a Response in accordance with the Rules, Paragraph 5 and has no obvious connection with the disputed domain name.

This and the fact that the Complainant asserts that the Respondent has no right or legitimate interest in the name is enough to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest exists.

However, the Respondent has not presented any evidence of rights or legitimate interests in using the disputed domain name and the Panel therefore finds that also test (ii) of the Policy’s paragraph 4(a) has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that for the purposes 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 a domain name in bad faith:

(i) circumstances indicating that the Respondent 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 its documented out-of-pocket costs directly related to the domain name; or

(ii) that the Respondent 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 Respondent has engaged in a pattern of such conduct; or

(iii) that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the domain name, the Respondent had intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.”

As regards the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark has been already established and the Panel finds that the Respondent, especially because located in Italy where the Complainant is also located and its trademark is especially well-known, knew or should have known that the disputed domain name <spumanteasti.com> was confusingly similar to a well-known trademark of a third party.

As regards the use in bad faith of the disputed domain name, apart from the valid Complainant’s allegation of “passive holding” as set forth in the landmark decision Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003) for the occasions in which the disputed domain name resolved in a “not active” web page, anyway quite irrelevant in the present case due to the commercial use still going on in the web site corresponding to the disputed domain name, on the basis of the previous behaviour of the Respondent the Panel considers the present case a clear case of “pornosquatting” where linking the domain name at issue to pornographic adult-oriented websites is a widely accepted evidence of use in bad faith (MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205; America Online, Inc. v. East Coast Exotics, WIPO Case No. D2000-1198; Motorola, Inc. Limited v. NewGate Internet, Inc., WIPO Case No. D2000-0079; Ty, Inc. v. O.Z. Names, WIPO Case No. D2000-0370; La Union Alcoyana S.A. de Seguros y Reaseguros v. Cosmar Hard-Soft, WIPO Case No. D2003-0570; Youtv v. Alemdar, Nat. Arb. Forum Case No. FA 94243; Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362; Simple Shoes, Inc. v. Creative Multimedia Interactive, Nat. Arb. Forum Case No. FA 95343; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022; Cattlemen v. Menterprises – Web Development, CPR Case No. CPR0304), also reinforced by the use of “mouse-trapping” techniques (Sparco S.p.A. v. Mr. Oleg Filipov-Guevreyan, WIPO Case No. DLA2003-0001; Dell Computer Corporation v. RaveClub Berlin, WIPO Case No. D2002-0601; Miroglio S.p.A. v. Mr. Alexander Albert W. Gore, WIPO Case No. D2003-0557; Star Stabilimento Alimentare S.p.A. v. Ms. Efisia Cuccuredda, WIPO Case No. D2003-0825).

The use of the disputed domain name by the Respondent to redirect the Internet users to a pornographic website is considered by the Panel as an evidence of the Respondent’s bad faith behavior aimed to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, in accordance with Paragraph 4(b)(iv), as well as diluting and tarnishing the trademark.

Moreover, the Respondent is preventing the Complainant from reflecting its well-known trademark in the corresponding most popular .com domain, which constitutes bad faith, in accordance with Paragraph 4(b)(ii).

Considering the above, the Panel finds that the Complainant has presented sufficient evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and used the disputed domain name in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <spumanteasti.com> be transferred to the Complainant.

 


 

Edoardo Fano
Sole Panelist

Dated: July 14, 2004

 

Источник информации: https://internet-law.ru/intlaw/udrp/2004/d2004-0345.html

 

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