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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

RAI Radiotelevisione Italiana S.p.A. v. Freedomain E-Solutions LLC

Case No. D2005-0491

1. The Parties

The Complainant is RAI Radiotelevisione Italiana S.p.A., Rome, Italy, represented by Barzanт & Zanardo Roma SpA, Italy.

The Respondent is Freedomain E-Solutions LLC, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <raitv.net> is registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2005. On May 9, 2005, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On May 9, 2005, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and that the Uniform Domain Name Dispute Resolution Policy applies 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 11, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 2, 2005.

The Center appointed Irina V. Savelieva as the Sole Panelist in this matter on June 14, 2005. 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 known under the name of “RAI Radiotelevisione Italiana” or “RAI” is the primary Italian radio and television broadcasting corporation covering the entire national territory and reaching many Italian communities abroad. It has been known under the name “RAI” for over 50 years with the official start of its broadcasting services in 1954. In addition to national programs, RAI International is available 24-hours a day in Europe, Africa, Asia, Pacific and Latin America. It is also present in the United States of America and Canada.

RAI has registered trademarks incorporating the word “RAI” on national, European and international levels. It has also various registered domain names such as <rai.net>, <rai.org>, <raitv.org> and other containing the word “RAI”.

The disputed domain name <raitv.net> has been registered on July 31, 2001, the fact of which the Complainant became aware in 2003. On June 26, 2003, the Complainant sent a cease and desist letter to the Respondent asserting its rights to use the disputed domain name <raitv.net>. There was no response from the Respondent, however, the audiovisual material breaching exclusive RAI’s rights were removed from the website “www.raitv.net”. On May 18, 2004, the Complainant sent another letter requesting the Respondent to assign the disputed domain name to the Complainant. No response was received from the Respondent who seemed to have failed to collect the letter at its Italian address and the delivery to its US address was not possible since the Respondent was unknown there.

5. Parties’ Contentions

A. Complainant

(a) The disputed domain name <raitv.net> is virtually identical to the Complainant’s trademarks and domain names:

- The Complainant has registered numerous trademarks incorporating the word “RAI” in many countries of the world,

- The descriptive word “tv” not only does not reduce the risk of confusion, but even increases it since it refers to television being the main activity of the Complainant,

- the disputed domain name <raitv.net> creates confusion with the business name of the Complainant, its logos and websites.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name:

- The Respondent has never been commonly known by the disputed domain name and has not registered or acquired any trademark relating to the name “RAI”.

- The Respondent should have knowledge of trademark, business name, logos and websites of the Complainant.

- The Respondent does not use the domain name in connection with the bona fide offering of goods and services, according to the standards set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903,

- The fact that the Respondent after several letters from the Complainant has added to its corporate name “Freedomain E-solutions” the words “Research-and-Aids 4 InternetTVs Hi Technology Net Services does not justify the registration of the disputed domain name and is clearly an attempt of the Respondent to artificially create evidence of legitimate use of the disputed domain name.

(c) The domain name was registered and is being used in bad faith:

- The Respondent has registered the disputed domain name with the knowledge of the Complainant and its trademarks incorporating the word “RAI”.

- The choice by the Respondent of a domain name incorporating the well-known trademark “RAI” constitutes evidence of bad faith from the part of the Respondent since, while using the name “RAI” for its website, the Respondent is not involved in any broadcasting activity.

- Bad faith is characterized further by the fact that the disputed domain name <raitv.net> designates a website with web pages deep-linked and framed in such a way similar to the ones of official RAI’s websites. Before the Complainant sent several cease and desist letters, the Respondent was using audiovisual materials of the Complainant without any authorization. By doing so, the Respondent intentionally mislead the Internet users to attract them to its website for commercial gain.

- The fact that there is no reference to a specific company name of the Respondent makes it likely for consumers to believe that the Complainant has endorsed, authorised or is otherwise affiliated with the said website. Furthermore, the Respondent has taken steps to conceal its true identity and failed to correct false contact details in breach of its registration agreement.

- The utilization of the disputed domain name by the Respondent not only create a likelihood of confusion, moreover, it causes serious damage to the Complainant by misleading the Internet users.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Respondent was given notice of this proceeding in accordance with the Rules. The Center discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint.

However, as noted, the Respondent failed to file any reply to the Complaint and has not sought to answer the Complainant’s assertions, evidence or contentions in any other manner. The Panel finds that the Respondent has been given a fair opportunity to present its case, and the Panel will proceed to a decision on the Complaint.

The Respondent’s default does not automatically result in a decision in favour of the Complainant. The Complainant must still prove the elements required by the Policy. In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark 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 disputed domain name has been registered and is being used in bad faith.

Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel’s decision is based upon the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to reply.

Identical or Confusingly Similar

The Complainant has registered numerous trademarks containing the name “RAI” throughout the world including a number of international and national trademark registrations such as community trademark registration “RAI” No. 1951375 of February 4, 2002, in classes 6, 9, 14, 17, 18, 20, 22, 24, 25, 26, 28, 35, 38, 41, 42; community trademark registration “Radio RAI” No. 1193614 of February 17, 2003, in classes 9, 16, 28, 35, 38, 41; international trademark registration “RAISAT” No. 550688 of February 22, 1990 in classes 7, 9, 12, 15, 16, 18, 19, 20, 22, 25, 28, 30, 33, 35, 36, 38, 41, 42 (Annex 5 to the Complaint). The Complainant has a number of registered domain names containing the word “RAI” such as <rai.net>, <rai.org>, <raitv.org>.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademarks containing the word “RAI”. The fact that the disputed domain name has the word “tv” added as a kind of suffix, in the Panel’s view, does not change the overall situation. As the Complainant stated, the word “tv” even increases the likelihood of confusion since it refers to the main activity of the Complainant (see Dr. Ing. h. c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888 as cited by the Complainant).

Therefore, the Panel agrees with the Complainant’s arguments that the result may be that the disputed domain name would be associated in the mind of the consumers with the Complainant’s trademarks, so that a risk of confusion is likely.

This view is reflected in a number of past UDRP decisions, which confirm that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002, and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd, WIPO Case No. D2000-0802).

The Respondent has not filed any reply to the Complaint or contested the Complainant’s assertions. The Respondent did not present any evidence of having rights in the trademark or trade name incorporating the word “RAI”.

The Panel infers the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

The Complainant contends the Respondent has no rights or legitimate interests in the disputed domain name.

Even though the Respondent has not filed any reply to the Complaint and has not contested the Complainant’s assertions, it is up to the Panel to consider whether the Respondent’s use of the disputed domain name demonstrates rights or legitimate interests in the domain name.

According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate the Respondent’s rights or legitimate interests in a domain name:

(i) Respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or

(iii) Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s marks.

The Respondent may elect to show rights and legitimate interests, non-exhaustively, by producing proof under paragraphs 4(c)(i)-(iii) of the Policy. By not responding to the Complainant’s contentions, the Respondent in this proceeding has never attempted to show its rights and legitimate interests.

Firstly, there is no evidence that the Respondent was using the disputed domain name for a legitimate offer of goods and services.

According to the documents submitted by the Complainant, the website under the disputed domain name <raitv.net> resembles the legitimate website of the Complainant. Prior to receiving a cease and desist letters from the Complainant, the Respondent was using unauthorized audiovisual material of the Complainant for its website.

The Panel finds no evidence that Respondent was using or is using the disputed domain name for a legitimate offering of goods and services.

Secondly, as for the Respondent’s proof under paragraph 4(c)(ii) of the Policy there is no evidence that the Respondent has been commonly known by the disputed domain name.

There is no information that the Respondent may be known under the disputed domain name as its business name or its company name. The Complainant contends the Respondent is not commonly known by the disputed domain name. The Panel agrees with the Complainant that the fact that the Respondent added to its corporate name, “Freedomain E-solutions”, the words “Research-and-Aids 4 InternetTVs Hi Technology Net Services” does not justify the registration of the disputed domain name and is clearly an attempt of the Respondent to artificially create evidence of legitimate use of the disputed domain name. In addition, the Panel notes that the Respondent’s information with its registrar seems to contain wrong or incorrect information about Respondent’s address.

The Panel recalls that the Respondent registered the disputed domain name on July 31, 2001 (Annex 1 to the Complaint). The Complainant’s broadcasting business under the name “RAI” is known since 1954, and it is a trademark registered throughout the world. The Panel believes that the Respondent knew about the Complainant’s broadcasting activity, its business name and trademarks.

Afterwards, regarding these facts, it is the Panel’s view that the Respondent probably registered the disputed domain name with awareness of the Complainant’s product and its reputation.

Thus, the Panel finds that the Respondent’s use of the disputed domain name does not constitute a bona fide offering of services under paragraph 4(c)(i) the Policy, on the contrary, it proves that the disputed domain name has been used in bad faith (see below).

Furthermore, the Panel draws an adverse inference from the Respondent’s failure to respond to the Complaint.

The Panel finds the Complainant has carried out its burden of proof to show that the Respondent has no legitimate rights or interests in the disputed domain name.

Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a Respondent has registered and used 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 the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

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

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.

The Complainant contends that the Respondent has violated the bad faith provision of the Policy because the disputed domain name was registered and used primarily for the purpose of diverting public attention to the Respondent’s website for potential commercial gain, using the association with the Complainant’s business through the word “RAI”. It is further proved by the fact that initially Respondent used authorised audiovisial materials of the Complainant (reproducing digital files and embodying television programs owned exclusively by RAI – see Annex 8 to the Complaint).

The Panel finds that the Respondent’s website could have attracted potential attention from the public thus diverting it from the official website of the Complainant. At the same time it has created a likelihood of confusion with the Complainant’s business and its trademarks as to the source, sponsorship, affiliation or endorsement of its website.

The Panel finds that the Complainant presented circumstantial evidence that the Respondent was in violation of provisions of paragraph 4(b)(iv) of the Policy.

The Panel holds that the Respondent “has registered the disputed domain name in bad faith”. The Respondent does not conduct any legitimate business activity using the disputed domain name. The Respondent knew of the Complainant’s business and should be aware of its trademarks containing the word “RAI”. These findings, together with the finding that the Respondent has no rights or interests in the domain name, lead the Panel to conclude that the disputed domain name has been registered by the Respondent in bad faith.

The fact that the Respondent’s use of the disputed domain name has created a likelihood of confusion with the Complainant’s product and trademark under paragraph 4(b)(iv) of the Policy indicates that the disputed domain name has been used in bad faith.

The fact that the Respondent failed to respond to the Complaint, in the Panel’s view, adds to the arguments in favour of the Respondent’s bad faith.

The Panel finds the Complainant has shown that the Respondent registered 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 disputed domain name <raitv.net> be transferred to the Complainant.

Irina V. Savelieva
Sole Panelist

Dated: June 28, 2005