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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Retecasa SpA v. Guido Savio

Case No. D2007-1017

1. The Parties

The Complainant is Retecasa SpA, Vicenza, Italy, represented by Studio Legale Tamos Piana & Partners, Italy.

The Respondent is Guido Savio, Torreglia, Italy.

2. The Domain Names and Registrar

The disputed domain names, <retecasa.biz> and <retecasa.info>, are registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2007. On July 16, 2007, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain names at issue. On July 17, 2007, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 August 29, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 18, 2007. The Response was filed with the Center on September 18, 2007.

The Center appointed Fabrizio La Spada as the sole panelist in this matter on October 4, 2007. 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.

On September 24, 2007, the Respondent produced an unsolicited submission purporting to complete his response. On the same day, the Complainant opposed the admissibility of this submission. According to the Policy, the Rules and the Supplemental Rules, there are no specific provisions allowing the parties to supplement their complaint or response. However, paragraph 12 of the Rules provides that in addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties. The Panel considers that additional submissions that were neither solicited nor authorized by the Panel should only be admitted very restrictively, in cases where this is necessary to guarantee the parties’ right to be heard and to be treated equally (see paragraph 10 of the Rules). In the present case, the Panel considers that there is no reason to accept the parties’ additional submissions, as they had ample opportunity to present their positions in the initial submissions.

The Panel notes that the Respondent has apparently filed a claim with the “Italian Postal Police”. This claim does not appear to be in connection with or related to the domain name that is the subject of the Complaint.

4. Factual Background

The Complainant is an Italian company active in the real estate franchising industry. It has been doing business under the RETECASA name since 1992. It has a large network of franchisees, in Italy and in other countries.

The Complainant is the owner of the following registered trademarks:

- Italian trademark RETECASA, N. 743403/978334, registered on August 4, 1995 and renewed on July 29, 2005, in classes 35 and 36.

- European trademark RETECASA, N. 608273, registered on August 6, 1997, in classes 35, 36 and 42.

The Complainant is the registrant of several domain names, including <retecasa.it>, <retecasa.com>, <retecasa.net> and <retecasa.org>.

The Respondent registered the domain names on October 25, 2002. At the time of filing of the Complaint, the domain names resolved to a website on which the Respondent offered services in the software industry, under the name RETECASA.

On April 10, 2007, the Complainant sent a cease and desist letter to the Respondent, requesting the transfer of the domain names.

On April 27, 2007, the Respondent set up a company Retecasa Ltd., registered with the Registrar of Companies of England and Wales. The invoice relating to the constitution of this company mentions “Biz-Dormant Company Formation Package”.

5. Parties’ Contentions

A. Complainant

Concerning the first condition under the UDRP, the Complainant contends that the domain names are identical to its registered trademarks, because they incorporate the whole trademark, and only such trademark, in the second level domain name.

Concerning the second condition under the UDRP, the Complainant submits that the Respondent has no right to use the domain names. According to the Complainant, the Respondent is not the owner of a registered trademark and there is no evidence that he works for a company which uses a name corresponding to the domain names. The Complainant points out that before receiving the cease and desist letter of April 2007, the Respondent did not make any use of the domain names and it is only after receiving such letter that he set up his website, relating to an open source software project linked to Sourceforge. In this respect, the Complainant contends that the Respondent’s website is a fake site, as evidenced notably by the fact that Sourceforge deleted the Respondent’s project for being inexistent as of May 24, 2007. In addition, the Complainant states that the UNIX name of the Respondent’s project is “avvscocca” and its official website is “www.avvscocca.sourceforge.net”. The Complainant concludes that the Respondent’s project is in fact a copy of the website of a law firm, which – according to Sourceforge – was renamed “retecasa” somewhere between April 25 and May 2, 2007. Sourceforge also wrote the following on May 2, 2007: “Our records show that the project was created on 2005-12-07 with the descriptive name “Loquendo”. The project’s audit information does not show any changes to the project’s public info until a week ago. […]”. On this basis, the Complainant submits that immediately following receipt of the cease and desist letter, the Respondent decided to set up a fake website to pretend that he was using the disputed domain names in connection with a software project named “Retecasa”. According to the Complainant, this is evidence that the Respondent never actually used the domain names in connection with a bona fide offering of goods or services, not for legitimate noncommercial purposes.

Concerning the third condition under the UDRP, the Complainant submits that the elements summarized above in connection with the second condition under the UDRP are also evidence of the Respondent’s bad faith. The Complainant also stresses that the Respondent is registered as a professional real estate broker in Italy and is therefore a potential competitor of the Complainant.

B. Respondent

Concerning the first condition under the UDRP, the Respondent indicates that the second level domain is identical to the company’s name Retecasa Ltd. in which he has rights.

Concerning the second condition under the UDRP, the Respondent explains that he is the owner of the company Retecasa Ltd., which was set up on April 27, 2007, to preserve and protect his interests. He also points out that the name “Retecasa” is formed merging two generic names: “rete”, which means “network”, and “casa”, which means “house”. According to the Respondent, he chose this name because he wanted to give the chance to small real estate agencies to place offers on the Internet in a unique place. The Respondent states that the software was published on August 30, 2007, but the idea started in 2000, under the name “Atlantide Real Estate”. According to the Respondent, the name was changed in “Retecasa” in 2002, when he registered the domain names. Finally, the Respondent explains that he did the last stage of his professional training as a programmer with the Scocca law firm, where he developed the Loquendo project.

Concerning the third condition under the UDRP, the Respondent acknowledges that before he received the Complainant’s cease and desist letter, his website only contained the mention “this domain is reserved”. However, the Respondent states that he did not intend to sell the domain names. The Respondent further indicates that the website he set up after receiving the Complainant’s letter was made to show who he is and what he does. According to the Respondent, there is no confusion between the Complainant and himself. The Respondent alleges that the project that was deleted by Sourceforge was only used for test purposes.

Finally, the Respondent submits that the Complainant engaged in reverse domain name hijacking. In this respect, he states that he is registered as a broker not only for the real estate business, but also for other activities. He also insists on the fact that he did not have any intention to sell the domain names and that he did not disrupt the business of the Complainant, which is the registrant of several other domain names including the “retecasa” term. Concerning his website, the Respondent contends that it does not look like the Complainant’s site, and that the owners and purpose of these sites are different. According to the Respondent, there can be no confusion. The Respondent also states that the Complainant’s trademarks are not registered in connection with software development.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain names , the Complainant must prove that each of the three following elements is satisfied:

1. The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section A), and

2. The Respondent has no rights or legitimate interests in respect of the domain names (see below, section B), and

3. The domain names have been registered and are being used in bad faith (see below, section C).

Paragraph 4(a) in fine of the Policy states that the burden of proof with regard to these elements lies with the Complainant.

A. Identical or Confusingly Similar

This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) are the domain names identical or confusingly similar to such trademark or service mark.

As regards the first issue, the Complainant has provided satisfactory evidence, in the form of copies of excerpts of trademark registrars, that it is the owner of several word trademarks consisting of the word RETECASA, registered in Italy and in the European Union.

Concerning the second issue, the Panel finds that the domain names, <retecasa.biz> and <retecasa.info>, are identical to the RETECASA trademarks owned by the Complainant. The top level domain names have no distinctive character in this respect.

In his response, the Respondent stated that the domain names are identical to his own company’s name, Retecasa Ltd. This circumstance should be examined in connection with the second condition under the UDRP.

The Respondent also submitted in his response that the Complainant’s trademarks are generic, since they are formed by merging two generic terms. The question whether a trademark is or has become generic, so that the Complainant should not be seen to have rights in respect of the trademark, has been presented to a number of panels (see, e.g., 402 Shoes, Inc. dba Trashy Lingerie v. Jack Weinstock and Whispers Lingerie, WIPO Case No. D2000-1223). While a descriptive term may limit considerably a mark owner’s ability to prevent others from comparable use of the term in a domain name, and the scope of its mark generally, it does not ipso facto render the mark unenforceable or unavailable for use under the Policy (see Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin, WIPO Case No. D2002-0635).

The Panel finds that the existence of a registered trademark is prima facie evidence of the validity of the mark. Registration creates a rebuttable presumption that the mark is distinctive. Respondent has the burden of refuting this presumption (see, e.g., Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047). In addition, even if the Respondent does rebut this presumption, the Complainant still has the possibility to show that the mark has acquired secondary meaning through use by the Complainant (see Broadway Trading, LLC v. Gene Weissman, NAF Case No. FA 94310).

In the present case, the Panel finds that the Respondent has not rebutted the presumption of validity. In particular, the Panel notes that although the words “rete” and “casa” do mean “network” and “house” in Italian, the term “retecasa” does not in itself have any particular meaning. In addition, and more importantly, the Panel finds, based on the evidence on record, that this term must in any event be considered as having acquired distinctiveness, through long and extensive use by the Complainant, in connection with real estate franchising in Italy and abroad.

The Panel therefore finds that the domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the domain names.

It is difficult for a complainant to prove such a negative fact. Therefore, panels have required complainants to establish at least a prima facie case under this heading. If that is made out, the evidential onus then shifts to the respondent to rebut the presumption of absence of rights or legitimate interests (see, e.g. Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070).

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fides offering of goods or services; or

(ii) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [the Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

On the basis of the statements and documents submitted, the Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the disputed domain names, for the following reasons.

The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for any domain name incorporating any of those marks. Moreover, there is no evidence that, before any notice of the dispute, the Respondent was commonly known by the domain names. There is indeed no evidence that the Respondent used the name “Retecasa” at all before receiving the Complainant’s cease and desist letter.

The Respondent has provided documentary evidence showing that he registered a company Retecasa Ltd. on April 27, 2007. Although the name of the Respondent’s company does correspond to the domain names, such company was registered a few days after the Respondent received notice of the Complainant’s claims over such domain names. In the absence of any evidence that the Respondent had been using or preparing to use the name “Retecasa” before he had notice of the dispute, the registration of a new company only a few days after receiving a cease and desist letter is not persuasive evidence that the Respondent has rights or legitimate interests in the domain names.

The Respondent explained in his response that he had been working on open source software projects since the year 2000. He produced evidence showing that, after the end of April 2007, he set up a website using the “Retecasa” name and published software on the website “www.Sourceforge.net”. However, all activities undertaken by the Respondent in connection with the “Retecasa” name began shortly after the Respondent received the Complainant’s cease and desist letter. There is no evidence that any of these activities under the “Retecasa” name, or preparations thereof, began before the Respondent received notice of the dispute.

In addition, there is no evidence indicating that the Respondent is making or planning to make a legitimate noncommercial or fair use of the domain names.

Finally, as set out above, the Panel considers that the domain names are not a generic term in the public domain. The Respondent can therefore not invoke the generic character of the domain names to establish that he has rights or legitimate interests in the domain name.

For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain names.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the domain names were registered and are being used in bad faith by the Respondent. Paragraph 4(b) of the Policy sets out four circumstances which shall be evidence of the registration and use of a domain name in bad faith. These four criteria are non-exclusive (BolognaFiere S.p.A. v. Bonopera Daniele, WIPO Case No. D2003-0295).

Paragraph 4(b)(iv) provides as an instance of registration and use in bad faith circumstances indicating that:

“(iv) by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site location.”

In addition, a finding of bad faith may be made where the Respondent knew or should have known of the registration and use of the trademark prior to registering the domain name (see Maori Television Service v. Damien Sampat, WIPO Case No. D2005-0524; Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537).

On the basis of the statements and documents submitted, the Panel is satisfied that the domain names were registered and used in bad faith, for the following reasons.

First, the Panel finds that the Respondent must have been aware of the Complainant’s trademarks when he registered the domain names. The elements on record establish that the Complainant has made an extensive use of the “Retecasa” name, throughout Italy, since 1992. According to the information he provided for the registrar’s whois record, the Respondent is domiciled in Italy. In addition, he is registered as a real estate broker in Italy. On this basis, the Panel considers that the Respondent could not have ignored the Complainant’s use of the name “Retecasa” when he registered the domain names.

In addition, the evidence on record, produced by both parties, shows that the Respondent made no use of the domain names between 2002 and 2007, before he received the Complainant’s cease and desist letter. Then, within a couple of weeks after receiving such letter, the Respondent registered a new company, in the United Kingdom, and renamed an existing project he had previously developed and which was totally unrelated to the “Retecasa” name. In his response, the Respondent acknowledged that the development of his “Retecasa” website was made after he received notice of the dispute. The Panel considers that these elements, added to the fact that the Respondent made no use, or preparation to use, the domain names before receiving the Complainant’s claim, is indicative of the Respondent’s bad faith in this matter.

Finally, the Panel notes that the Respondent stated in his response that he intended to use the domain names in the future in connection with real estate activities, even if he stressed that he is himself a software developer. In the Panel’s view, these activities would compete with the Complainant’s business and increase likelihood of confusion.

On this basis, the Panel considers that the Respondent intended to benefit from the reputation of the Complainant’s RETECASA trademarks to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion between the domain names and the Complainant’s trademarks and activities. Therefore, the Panel finds that the Respondent registered and used the domain names 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 names, <retecasa.biz> and <retecasa.info>, be transferred to the Complainant.

Fabrizio La Spada
Sole Panelist

Dated: October 31, 2007