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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

RAI Radiotelevisione Italiana S.p.A. v. The Netwizzy Company S.L.

Case No. D2008-1862

1. The Parties

The Complainant is RAI Radiotelevisione Italiana S.p.A., of Rome, Italy, represented by Studio Legale Associato BarzanГІ & Zanardo, of Rome, Italy.

The Respondent is The Netwizzy Company S.L., of Valencia, Spain, represented by David Marcial PГ©rez MuГ±oz, of Madrid, Spain.

2. The Domain Name and Registrar

The disputed domain name, <rai.mobi> (the“Domain Name”), is registered with GoDaddy.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2008. On December 3, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 3, 2008, the Registrar 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 December 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2008. The Response was filed with the Center on December 31, 2008.

The Center appointed Tony Willoughby as the sole panelist in this matter on January 12, 2009. 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 the Italian state radio and television corporation. It commenced its broadcasting services in 1954. Through its RAI International channel many of its programmes are available internationally.

The Complainant is also the proprietor of several trade mark registrations for marks incorporating the letters “rai” in one shape or from, that being the trade mark by which the Complainant is widely recognized. These registrations include inter alia Community Trade Mark No. 001951375 filed November 13, 2000 and registered on February 4, 2002, Rai (device) for various goods and services in classes 6, 9, 14, 17, 18, 20, 22, 24, 25, 26, 28, 35, 38, 41 and 42.

The Respondent is a Spanish company. It is a website publisher. It describes its service offering as “the provision of services related to the dissemination of information by any means, especially those that allow audiovisual and multimedia broadcasting”.

The Domain Name was registered on September 29, 2006.

On July 24, 2008, the Complainant’s representative wrote to the Respondent drawing the Respondent’s attention to its trade mark rights in respect of the letters “rai” and seeking transfer of the Domain Name. The Respondent did not reply to that letter.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical to its RAI trade mark.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.

Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith, primarily on the basis that the Respondent must have been aware of the Complainant’s trade mark when registering the Domain Name, in circumstances where the Respondent has no rights or legitimate interests in respect of the Domain Name and has not been using the Domain Name and there is no conceivable, lawful use that the Respondent can make of it.

B. Respondent

The Respondent concedes that “the distinctive part of the Domain Name is identical to the Complainant’s distinctive trade mark RAI”, but produces evidence by way of Google search results to show that “rai” is not a term exclusive to the Complainant.

The Respondent observes that the entity which shows up most on one of its searches (7 out of the first 10) is the Registro de Aceptaciones Impagadas, which the Respondent claims is the largest source of information in Spain on defaults and debts of corporations and individuals. This entity is said by the Respondent to be managed by Experian Bureau de Crédito, S.A., which has a website at “www.ficherosrai.com”, through which it provides access to the register of bad debts online and by cellular phone.

In asserting that it does have rights or legitimate interests in respect of the Domain Name the Respondent starts out by responding to the Complainant’s allegations based on the Respondent’s failure to respond to the warning letter. The Respondent points out that it is for the Complainant to prove the three elements of paragraph 4(a) of the Policy and the failure to respond to a letter is proof of nothing. The Respondent also points out that the failure to respond to that letter was outside the scope of the Policy and does not therefore entitle the Panel to draw inferences as provided for by paragraph 14(b) of the Rules.

The Respondent contends that it has a right or legitimate interest in respect of the Domain Name within the meaning of paragraph 4(c)(i) of the Policy.

The Respondent acknowledges that it is not yet using the Domain Name, but to demonstrate its preparations to do so it produces extracts of its vanity service offering on several of its websites connected to other domain names. It intends to use the Domain Name in a similar vein.

The Respondent observes that “.mobi” domain names “serve a specific purpose, the provision of web services to cellular phones” and goes on to note “the word element of the disputed domain name corresponds to the known Spanish entity, �Registro de Aceptaciones Impagadas’ (RAI), which envisages the possibility that its affiliates provide a search services [sic] through cellular phones.”

The Respondent contends that its registration of the Domain Name was “with the obvious purpose of exploiting online a business related to the provision of a search service of the Registro de Aceptaciones Impagadas, (RAI) through mobile terminals”.

In support of the proposition that the Respondent had a “clear interest to register” the Domain Name, the Respondent regards it as noteworthy that the Domain Name was registered on August 29, 2006, when registration in the “.mobi” domain was only available at a premium price.

The Respondent denies that the Domain Name was registered and is being used in bad faith. It recites all the examples of bad faith registration and use set out in paragraph 4(b) of the Policy and contends that none of them is applicable.

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:

(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.

B. Identical or Confusingly Similar

It is not in dispute between the Parties that the Domain Name (absent the generic domain suffix) is identical to the Complainant’s RAI trade mark.

The registered mark to which the Panel refers in Section 4 above is for a device mark, the most prominent feature of which are the letters “Rai”. In addition, however, the Complainant has satisfied the Panel that over many years of extensive use, the Complainant has built up a significant reputation and goodwill under and by reference to RAI, the name or mark by which it is well recognized.

The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.

C. Rights or Legitimate Interests

In the Complaint the Complainant recites the three examples set out in paragraph 4(c) of the Policy of what shall constitute rights and legitimate interests in respect of the Domain Name and contends that none of them is applicable.

It has carried out trade mark searches, but has found no sign of any relevant trade mark right in the name of the Respondent. It notes that the Domain Name is not in active use and it states that it has granted the Respondent no permission to use its trade mark for this or any other purpose. It observes that the Respondent is a web publisher and will have been well aware of the Complainant’s trade mark when registering the Domain Name.

The Respondent responds, acknowledging that the Complainant’s trade mark has a strong reputation, but denying that the Complainant’s trade mark had anything to do with its choice of the Domain Name. It states that it registered the Domain Name “with the obvious purpose of exploiting online a business related to the provision of a search service of the “Registro de Aceptaciones Impagadas”, (RAI) through mobile terminals”. It explains that the Registro de Aceptaciones Impagadas is a register comprising a large database of “financial failed obligations and delinquent accounts”. The database is managed by a company named Experian Bureau de Crédito, S.A., which operates a website at “www.ficherosrai.com”.

The Respondent has not yet developed the service it has been intending to launch and claims that the delay has been caused by technical difficulties relating to the “.mobi” domain market.

The fact that the Respondent has not yet developed its website for the Domain Name is no bar to it demonstrating that it has a right or legitimate interest in respect of the Domain Name, but it must nonetheless produce to the Panel something more than a bare assertion. Where there has been no actual use of the Domain Name, paragraph 4(c)(i) of the Policy calls for “demonstrable preparations to use” the Domain Name. Nothing that the Respondent has produced to the Panel has made any reference to the Domain Name. Given that RAI is not an acronym to which the Respondent has any entitlement, even on its own story, the Panel would at the very least have expected to see some correspondence with Experian Bureau de Crédito, S.A., the company said by the Respondent to be responsible for managing the Registro de Aceptaciones Impagadas.

In the absence of any evidence to support the Respondent’s bare assertion that it registered the Domain Name for the purpose for which it claims, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

D. Registered and Used in Bad Faith

The fact that the Domain Name is identical or confusingly similar to the Complainant’s trade mark and that the Respondent, as the Panel finds, has no rights or legitimate interests in respect of the Policy is not the end of the matter. The Complainant still has to prove that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

Examples of what shall constitute bad faith registration and use for this purpose are set out in paragraph 4(b) of the Policy. The only one of those examples mentioned by the Complainant is paragraph 4(b)(ii) which covers registration of a domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, but that provision contains a proviso, “provided that you have engaged in a pattern of such conduct”. The Complainant has not produced any evidence of a “pattern of such conduct”, so that provision is not directly applicable.

However, the list of examples of bad faith registration and use in paragraph 4(b) of the Policy is not an exhaustive list and the Complainant goes on to argue that the failure by the Respondent to make any active use of the Domain Name is itself evidence of bad faith in accordance with the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Panel addresses the issue from a slightly different angle. Is the Respondent’s story reasonably credible? If the answer to that question is in the affirmative, then the probability is that the Respondent’s act in registering the Domain Name was not effected with the Complainant and its trade mark in mind and the Complaint must fail. If the answer to the question is in the negative, then one has to ask why the Respondent has gone to the trouble of producing a less than credible story and the conclusion may be that the Respondent’s intent at time of registration of the Domain Name was targeted at the Complainant.

The Respondent, a company in the media business, and fully recognizing the strong reputation of RAI as the name and trade mark by which the Complainant is widely known, registers RAI as a domain name. In that situation, whatever its purpose in registering the Domain Name, the Respondent cannot have been surprised to receive a lawyer’s letter from the Complainant. If the Respondent’s story were a genuine one, one would have thought that the Respondent would not simply ignore the letter, but would respond giving the answer that the Respondent has given to the Panel. In the Panel’s experience, innocent people do not like being falsely accused and are normally quick to put the accuser right. The Respondent simply ignored the Complainant’s lawyer’s letter.

There is a dispute between the Parties as to the significance of the Respondent’s failure to respond to the letter. The Complainant refers to paragraph 14(b) of the Rules, which provides: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”. The Respondent correctly points out that paragraph 14(b) of the Rules applies to non-compliance within the scope of an administrative proceeding under the Policy, whereas the Respondent’s failure to respond to the warning letter occurred before this proceeding commenced. However, the Panel is not restricted in the inferences he may properly draw, provided that they are justified and, in the particular circumstances of this case, the Panel certainly feels justified in regarding the Respondent’s failure to respond to the warning letter as a factor to weigh in the balance.

This administrative proceeding is then launched and the Respondent’s answer to the Complaint is that it registered RAI as a domain name, not because RAI is a name or mark of either the Complainant or the Respondent, but because it is the acronym, well-known in Spain, for the “Registro de Aceptaciones Impagadas of Experian Bureau de Crédito, S.A”. An innocent party does not normally register someone else’s name or mark as a domain name without permission or, failing permission, a justifiable reason. If the Respondent’s story is true, it would have been very easy for the Respondent to produce as an exhibit to the Response a letter from Experian Bureau de Crédito, S.A. confirming that permission had been granted. No such letter has been produced, nor has the Respondent given any explanation for having registered the acronym without permission. The only document of Experian Bureau de Crédito, S.A., which the Respondent has produced is a document (in Spanish), which appears to be the terms and conditions under which Experian Bureau de Crédito, S.A. will contract with third parties to allow them to provide search services through the latters’ websites. There is no suggestion that the Respondent has sought to negotiate, still less conclude any such arrangement.

The Panel is left with the strong impression that the Respondent’s story was dreamt up simply to defeat the Complaint. The Response bears the usual certificate as to truth, but it was not signed by the Respondent. It was signed by the Respondent’s independent legal representative who cannot know what were the intentions of the Respondent back in September 2006.

The Respondent draws attention to the fact that it had such a keen interest in the Domain Name that it did not wait for general registration under the “.mobi” regime, but registered it on the day following the expiry of the Sunrise period, when it was possible to register names at a premium price. The Panel believes that in the media world in which the Parties both operate, if RAI has a premium value, it is its association with the Complainant that is most likely to give it that value. In passing (and not of material significance to this decision), it is worth noting that the date upon which the Respondent registered the Domain Name was outside the Landrush registration period as identified in the text of the Response.

In the result, the Panel does not find the Respondent’s story a credible story. The Panel believes it probable that the Respondent registered the Domain Name with the Complainant’s well-known trade mark in mind. In so doing the Respondent knew that it would be blocking the Complainant and no doubt hoped and anticipated that the Complainant would approach it with a view to acquiring the Domain Name. If the Domain Name is left in the hands of the Respondent and the Respondent makes use of it to connect to a commercial website, the Panel believes it very probable that a not insignificant proportion of Internet users will visit the site believing it to be a site of the Complainant.

Given the Panel’s finding that the Respondent registered the Domain Name with the Complainant’s trade mark firmly in mind, the Domain Name, in the hands of the Respondent, represents an abusive threat hanging over the head of the Complainant. While, unlike the Telstra case, there is no doubt a lawful use that the Respondent could make of the Domain Name (e.g. with the permission of Experian Bureau de Crédito, S.A.), the Panel finds that that was not the Respondent’s intention when registering the Domain Name.

The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

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 <rai.mobi>, be transferred to the Complainant.

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Tony Willoughby
Sole Panelist

Dated: January 24, 2009