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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Seat Pagine Gialle S.p.A. v. Domains By Proxy Inc., Ing. Luigi Rocco

Case No. DTV2007-0011

 

1. The Parties

The Complainant is Seat Pagine Gialle S.p.A., Milano, Italy, represented by Studio Barbero, Italy.

The Respondents are Domains By Proxy Inc., Scottsdale, United States of America and Ing. Luigi Rocco, Napoli, Italy, represented by Gianluca Actis, Italy.

 

2. The Domain Name and Registrar

The disputed domain name <paginegialle.tv> is registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2007. On August 13, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On the same day, Go Daddy Software transmitted by email to the Center its verification response, which mentioned that Domains by Proxy is not the registrant of the domain name. The registrar confirmed that the registrant is Ing. Luigi Rocco, Napoli, Italy, and also that the language of the registration agreement is English. In response to a notification by the Center, on August 31, 2007, conveying the registrant information provided by the Registrar and inviting the Complainant to file an amendment, the Complainant filed an amendment to the Complaint on September 5, 2007. In this amendment, the Complainant added Ing. Luigi Rocco as second Respondent in the proceedings. The Center verified that the Complaint, together with the amendment to 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 September 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 27, 2007. The Response was filed with the Center on September 27, 2007.

The Center appointed Fabrizio La Spada as the sole panelist in this matter on October 11, 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.

 

4. Factual Background

The Complainant is an Italian company that distributes telephone directories. The Complainant has produced evidence showing that it has distributed such directories at least since the year 2000.

The Complainant is the owner of several registered trademarks, including in particular the following:

- Italian trademark PAGINE GIALLE, N. 180959, filed on June 6, 1966, registered on September 12, 1966, in class 16 and 35.

- European trademark PAGINE GIALLE, N. 161380, filed on April 1, 1996, registered on October 10, 2002, in class 16 and 35.

- International trademark PAGINE GIALLE, N. 327245, filed on June 6, 1966, registered on November 22, 1966, in class 16 and 35 in several European and North African countries.

The Complainant is also the registrant of several domain names consisting of or containing the words “pagine gialle”, such as <paginegialle.it>, <pagine-gialle.it>, <paginegialle.info>, etc.

According to evidence produced by the Complainant, the latter has run several advertising campaigns in 2002, 2004, 2005 and 2006 to promote its products and services under the name “PAGINE GIALLE”.

Ing. Luigi Rocco (hereinafter “the Respondent”), who has been confirmed by the Registrar as the underlying registrant of the disputed domain name, apparently registered the domain name on October 1, 2005. At the time of filing of the Complaint, the domain name resolved to a “parking page”. This webpage featured “sponsored” links to commercial sites, some of which competing with the activities of the Complainant. The domain name was registered in the name of a known proxy registration service, Domains by Proxy, Inc.

On September 11, 2006, the Complainant sent a cease and desist letter to Domains by Proxy, requesting amongst other remedies the transfer of the domain name. On September 27 and November 2, 2006, as well as on July 22, 2007, the Complainant sent reminders to Domains by Proxy. Domains by Proxy answered on July 25 and July 30, 2007, stating that they did not have any interest in the domain name or related website, but only offered a proxy registration service allowing their clients, registrants of domain names, to maintain anonymity.

 

5. Parties’ Contentions

A. Complainant

Concerning the first condition under the Policy, the Complainant submits that the domain name is identical to its PAGINE GIALLE registered trademarks. It also mentions that the words “Pagine Gialle” are not to be considered descriptive for phone registries. According to the Complainant, the terms “Gelbe Seiten” (in German), “Pages Jaunes” (in French), “Pagine Gialle” (in Italian) and “Yellow Pages” (in English) are extremely well-known designations for a commercial registry.

Concerning the second condition under the UDRP, the Complainant first points out that the Respondent has not provided evidence of its use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services before any notice of the dispute. Further, it submits that its trademarks are distinctive for commercial registries and that the Respondent is intentionally profiting from the Complainant’s well-known character of the trademarks. According to the Complainant, the use that is being made of the domain name, i.e., directing users to a page displaying sponsored links, is not a legitimate non commercial use. In addition, the Complainant states that the Respondent is not commonly known by the domain name and is not a licensee, an authorized agent, or in any other way authorized to use the Complainant’s trademarks.

Finally, concerning the third condition under the UDRP, the Complainant contends that in light of the fact that the Complainant’s trademarks are well-known, and that the Respondent is an individual domiciled in Italy, the Respondent certainly knew or should have known of the existence of such trademarks when he registered the domain name. In addition, according to the Complainant, use of the domain name to seek or realize commercial gain through a sponsored links page indicates the Respondent’s bad faith.

On this basis, the Complainant requests that the domain name be transferred to the Complainant.

B. Respondent

In its response, the Respondent first points out that the representative of the Complainant appears to be an “accredited arbitrator at the WIPO” and, therefore, the Respondent states that he reserves the right to “issue a direct challenge against the arbitrator in this procedure”.

Concerning the first condition under the UDRP, the Respondent submits that the words “Pagine Gialle” were in common usage well before the Complainant’s trademarks were registered. According to the Respondent, these words have usually referred to telephone lists and/or directories since the beginning of the 20th century. Therefore, these words are within the public domain.

Concerning the second conditions under the UDRP, the Respondent contends that the Complainant’s assertions are entirely unfounded, and unsupported by evidence. The Respondent states that he is currently preparing “various activities to be performed through his websites” and stresses that he his under no obligation to use the domain name within any given period of time, nor may he be required to disclose confidential information about his future projects to third parties. According to the Respondent, this would amount to “an unjustified and unacceptable restraint on individual liberty, specifically the free initiative of entrepreneurs, protected by the constitutions of all democratic legislations”. The Respondent further alleges that “Yellow Pages” is a generic term that indicates a collection of addresses of persons, companies, etc. that offer goods or services.

Concerning the third condition under the UDRP, the Respondent insists that he is in no way responsible for the existence of sponsored links on the website to which the disputed domain name resolves. According to the Respondent, he has never requested nor authorized that sponsored links, or any other system that would generate income, be displayed on the website. The Respondent also mentions that he was not aware of these links and only learned of them after the complaint was served on him. In this respect, the Respondent alleges that he filed a formal complaint with the Italian Public Security Authority to identify those responsible for the distorted use of the website. Finally, the Respondent suggests that the presence of the sponsored links on his website may be a deliberate manoeuvre of the Complainant to place the Respondent in difficulty.

 

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 name, the Complainant must prove that each of the three following elements is satisfied:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and

2. The Respondent has no rights or legitimate interests in respect of the domain name, and

3. The domain name has been registered and is being used in bad faith.

Paragraph 4(a) in fine of the Policy states that the burden of proof with regard to these elements lies with the Complainant. The Panel finds as noted that it was properly constituted, and is aware of no matters that would affect its impartiality and independence in rendering a decision in the instant proceedings, had such a challenge been made.1

A. Identical or Confusingly Similar

This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the domain name 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 words “PAGINE GIALLE”, registered in Italy, in the European Union, and in other European and non European countries.

Concerning the second issue, the Panel finds that the domain name is confusingly similar to the PAGINE GIALLE trademarks owned by the Complainant. The fact that the two words PAGINE and GIALLE are separated in the Complainant’s trademarks, whereas they are written in a single word in the domain name, and that the latter contains the suffix <.tv> is not sufficient to distinguish the two signs (see, e.g., DeTeMedien Deutsche Telekom Medien GmbH v. Gelbseiten GmbH, WIPO Case No. D2006-0358).

In his Response, the Respondent submitted that the Complainant’s trademark is generic and, therefore, is in the public domain. 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, ICANN 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 term “Pagine Gialle” is – in Italian – descriptive of pages of a yellow color, it is not in itself descriptive of products or services related to commercial directories. On the contrary, the material before the Panel suggests that this term has acquired distinctiveness, through long use by the Complainant, in connection with commercial registries.

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 name.

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 [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 [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 [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 name, 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 before the Panel that the Respondent was commonly known by the domain name and there is no apparent relationship between the Respondent and the name “Pagine Gialle”. There is no evidence before the Panel that the Respondent used the words “pagine gialle” at all.

The Respondent explained in his response that he is preparing “various activities to be performed through his websites” and that he is under no obligation to disclose details about his projects. The Panel will certainly not force the Respondent to disclose the nature of his projects. However, in accordance with the Rules, the Respondent must provide some sort of explanation or evidence showing that he has used, or has made demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services if he wishes to prevail himself in the circumstances. In the present case, the Respondent has provided no element indicating that he has used or prepared to use the domain name in connection with a bona fide offering of products or services, or that he otherwise – claims regarding common use of the words “pagine gialle” notwithstanding – has rights or legitimate interests in the use of this particular domain name.

In addition, there is no evidence, nor compelling explanations from the Respondent, indicating that the Respondent is making or planning to make a legitimate noncommercial or fair use of the domain name.

Finally, as set out above, the Panel considers that the domain name is not a generic term in the public domain. The Respondent can therefore not – his own apparent lack of use notwithstanding – invoke the generic character of the domain name 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 name.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the domain name was registered and is 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 [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 trade mark 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 Sansone, WIPO Case No. D2004-0018).

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

Before the Respondent had notice of the dispute, his web site displayed a number of links, pointing to commercial websites operated by third parties, including some of the Complainant’s competitors. The Respondent claimed in the proceedings that he was not responsible for the existence of this webpage and for the sponsored links featured thereon. However, the Respondent as registrant of the domain name had control over the contents of his website. In this respect, the Panel considers that the registrant of a domain name, with control over the contents of the web page related to this domain name, is responsible for such contents. The Panel agrees with numerous prior panels that have held that using a domain name confusingly similar to a complainant’s mark to link to a website of the complainant’s competitor constitutes bad faith under the Policy (See, e.g., National City Corporation v. MH Networks LLC, WIPO Case No. D2004-0128; Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Sansone, WIPO Case No. D2004-0018). The Panel notes that the links and advertising banners appearing on the Respondent’s web site are clearly commercial in nature and are used for commercial gain.

Therefore, the Panel finds that the Respondent registered and used the 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, <paginegialle.tv>, be transferred to the Complainant.


Fabrizio La Spada
Sole Panelist

Dated: October 31, 2007


1 Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505

 

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