WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Pomellato S.p.A v. Richard Tonetti

Case No. D 2000-0493

 

1. The Parties

The Complainant is POMELLATO S.P.A., an Italian Corporation having registered offices in Corso Venezia, 12, 20121 Milan (ITALY) represented by Ms. Maria Luisa Pompole;

The Respondent is Mr. RICHARD TONETTI, an individual, resident in Via Venosta 9 and Via Peter Thalguter 4/A, 39022 Lagundo (Bolzano) (ITALY);

 

2. The Domain Name and Registrar

The domain name at issue is "POMELLATO.COM" and the corresponding registrar with which the domain name is registered is Network Solutions, Inc. (hereinafter "Network Solutions"), 505 Huntmar Park Drive, Herndon, Virginia 20170-5139 (USA).

 

3. Procedural History

The complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (hereinafter the "WIPO Center") on May 24, 2000. The WIPO Center sent an Acknowledgment of Receipt on May 25, 2000.

On May 25, 2000, WIPO Center requested the Registrar, Network Solutions, pursuant to Paragraphs 2(a) and 4 of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "Rules"): (1) to confirm that a copy of the Complaint had been sent to Network Solutions by the Complainant; (2) to confirm that the domain name at issue was registered with Network Solutions; (3) to confirm that the person identified as the respondent is the current registrant of the domain name; (4) to provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es) available in the registrarís Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact); (5) to confirm that the Uniform Domain Name Dispute Resolution Policy (hereinafter the "Policy") applies to the domain name; and (6) to indicate the current status of the domain name.

On May 30, 2000, Network Solution replied that: (1) Network Solutions was not in receipt of the Complaint sent to them by the Complainant; (2) Network Solutions was the Registrar of the domain name registration; (3) Tonetti Richard was the current registrant of the POMELLATO.COM domain name registration. (4) Registrant: Tonetti Richard (POMELLATO-DOM) Via Venosta, 9 Lagundo, BZ 39022 IT. Domain Name: POMELLATO.COM. Administrative Contact, Technical Contact, Zone Contact, Billing Contact: Richard, Tonetti (TR3731) tr@DNET.IT. Via P. Thalguter 4/A Lagundo, BZ 39022 IT +39 335 6543800 (FAX) + 39 0473 277637; (5) Network Solutionsí 4.0. Service Agreement was in effect; (6) the domain name registration POMELLATO.COM was in "Active" status.

The policy in effect provides that: "8. DOMAIN NAME DISPUTE POLICY. If you reserved or registered a domain name through us, you agree to be bound by our current domain name dispute policy that is incorporated herein and made a part of this Agreement by reference. The current version of the dispute policy may be found at our Web site: www.networksolutions.com/legal/dispute-policy.html. Please take the time to familiarize yourself with that policy."

The Panel is aware according to an e-mail of June 13, 2000 addressed to the WIPO Center by the Complainantís representative, that the Respondent had indicated to transfer the domain name POMELLATO.COM in favor of the Complainant. However, there is no evidence that Respondent actually requested the domain name at issue to be deleted from the Network Solutions domain name database, and, accordingly, Respondent is therefore bound by the provisions of the Policy.

In light of the above and according to the documents filed with the Panel, the Complaint appears to have been filed in accordance with the requirements of the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "Supplemental Rules").

The only deficiency appears to be the lack of acknowledgement by the Registrar of a copy of the Complaint. Indeed, Paragraph 4 (b) of the Supplemental Rules states that "The Complainant shall provide a copy of the complaint to the concerned Registrar(s) at the same time as it submits its complaint to the Center". However, in the WIPO Guide to the Uniform Domain Name Dispute Resolution Policy, Letter C., "Preparing and Filing a Complaint" it is written that "At the time of submitting the Complaint to the WIPO Center, the WIPO Supplemental Rules require that a courtesy copy of the Complaint be sent to the concerned registrar(s)". In light of these circumstances the Panel is satisfied that a copy of the complaint was sent, as stated in Paragraph 18 of the Complaint itself via mail with return receipt, even though the Complainant did not provide actual evidence of mailing (which is not required), and when the Registrar replied to the WIPO Center on May 30, 2000 it is probable the Complaint simply had not been delivered yet. Even if the Complaint had not been sent, such a deficiency would not seem capable per se of invalidating the Complaint, being a minor formality (the WIPO itself calls it "a courtesy copy"), and in any case the remedy would have a "Deficiency Notification" in accordance with paragraph 5 of the Supplemental Rules.

With respect to all other requirements, the Panel finds that the payment was properly made and agrees with the WIPO Centerís assessment concerning the Complaintís compliance with the formal requirements: the Complaint was properly notified in accordance with paragraph 2(a) of the Rules, on June 2, 2000, but since a response was not filed on June 23, 2000 the WIPO Center communicated to the Respondent a Notification of Default. On June 29, 2000, the Parties were informed that in accordance with Paragraph 6 (f) of the Policy an Administrative Panel consisting of a single Member had been appointed. The sole Panelist submitted on June 27, 2000 a Statement of Acceptance and Declaration of Impartiality and Independence and the date scheduled for the issuance of the Panelís decision was set for July 12, 2000.

After the commencement of the procedures, on June 30, 2000, the Complainantís representative informed the WIPO Center of the following development: "Dear Mr. Rios: Just to keep you posted, in the past days Mr. Tonetti has attempted to transfer the domain name POMELLATO. COM in favor of Pomellato S.p.A. However, he did not succeed. In fact he changed the Administrative Contact placing now Pomellato S.p.A. as Administrative Contact. Mr. Tonetti also sent me some letters regarding this attempt to transfer the domain name which I could submit to WIPO if you think it to be helpful". On the same date of June 30, 2000, the Respondent wrote to the WIPO Center (translated from Italian): "The undersigned Mr. Richard Tonetti does not have any interest in the domain name "POMELLATO.COM" and therefore I am ready to assign it to whomever is entitled to it. The assignment will only take place after receipt of a letter sent via registered mail with return receipt by which the undersigned is held exempt from whatever liability, and no cost or expense for any reason is incurred".

In light of the foregoing, the Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Policy, the Rules and the Supplemental Rules.

Finally and in accordance to Paragraph 11 of the Policy, since the Parties to the present administrative proceeding have not agreed otherwise, and since the registration agreement that relates to the domain name in question does not specify otherwise, the language of the administrative proceeding will be the language of the relevant registration agreement, i.e. English.

 

4. Factual Background

The Complaint, whose company name is POMELLATO S.P.A., alleges use of the trademark POMELLATO for approximately 40 years to identify a famous line of jewelry as well as a variety of other luxury goods. According to the Complainant, the trademark POMELLATO is renowned in Italy where the Complainant runs advertising campaigns on national major newspapers, magazines and television channels on a yearly basis. Further, the Complainant alleges to run advertising campaigns of the POMELLATO trademark, in the following countries: USA, Japan, Austria, Belgium, France, Germany, Greece, Holland, Portugal, Russia, Spain and Switzerland.

The Complainant alleges that the trademark POMELLATO is registered by the Complainant in Italy and in several countries, as follows:

(1) "POMELLATO", Italian trademark application n. MI96C010321 filed on November 22, 1996, effective until February 15, 2007, in International classes 14 and 25, renewal of the previous trademark registration n. 494.579 filed on January 26, 1987, renewal of trademark n. 213.704 filed on February 15, 1967);

(2) "POMELLATO", Italian trademark registration n. 329.399 of November 19, 1981, effective until July 30, 2001, in International Classes 3, 8, 11, 16, 18, 20, 21, 24, 27, 28, 34;

(3) "POMELLATO" International registration n. 465.426 of November 19, 1981, effective until November 19, 2001, in International Classes 3, 8, 11, 16, 18, 20, 21, 24, 27, 28, 34 extended to Algeria, Germany, Benelux, Egypt, Spain, France, Austria, Hungary, Liechtenstein, Morocco, Monaco, Portugal, Romania, Switzerland, Russia, Yugoslavia and North Korea;

(4) "POMELLATO" International registration n. R338.401 of October 3, 1987, effective until October 3, 2007, renewal of the previous trademark registration n. 388.401 of October 3, 1967 in International Classes 14, 25, extended to Germany, France, Hungary, Liechtenstein, Switzerland, Czech Republic, Slovak Republic, Yugoslavia, Benelux, Spain, Portugal, Austria, Morocco, Croatia, Slovenia, Azerbaidjan, Bielorus, Kirghizistan, Kazakistan, Lettonia, Russia, Tadjikistan, Ukraine, Ouzbekistan and Armenia;

(5) "POMELLATO" Community Trademark application (rectius registration) n. 872945 filed on July 10, 1998 and registered on October 10, 1999, in International classes 14, 21 and 25;

(6) The trademark POMELLATO is also protected by national registrations in the following countries: U.S.A., Japan, Singapore, Spain, Hong Kong, Great Britain, Argentina, Brazil, Uruguay, Chile, Taiwan, Estonia, Lithuania, Turkey, United Arab Emirates.

The Complainantís allegations are supported by copies of the trademark registrations and were verified by the Panel. The Respondent did not contest them.

 

5. Partiesí Contentions

A. Complainant

According to the Complaint,

(1) the domain name POMELLATO.COM is identical to the trademark POMELLATO owned by the Complainant;

(2) the Respondent has no right whatsoever to the domain name POMELLATO.COM. This would be demonstrated also by the Respondentís own behavior. In the proceeding the Complainant had previously initiated with Network Solutions, the Respondent did not even respond to Network Solutionsí invitation to outline its rights on the domain name. As a result on May 14, 1999 the domain name POMELLATO.COM was placed on "Hold" status. Likewise, the Respondent appears to have no legitimate interest in the domain name. To the extent of the Complainantís knowledge, the Respondent has never been known by the domain name, and, since its registration, has not made use of the domain name;

(3) the Complainant has reason to believe that the Respondent has registered the domain name in bad faith. After learning that its own trademark had been registered in the context of the domain name POMELLATO.COM, on July 13, 1998, the Complainant sent a cease and desist letter to the Respondent. The Respondent, through its attorney, replied to the Complainantís cease and desist letter inviting the Complainant to make a "proposal" for the transfer of the domain name POMELLATO.COM. Requests for sums well above the amount charged by Network Solutions in relation to the domain name were made in oral form. The Complainant also remarks that the Respondent also registered the domain name LAURABIAGIOTTI.COM. LAURA BIAGIOTTI is the trademark of a famous Italian fashion designer.

B. Respondent

The Respondent did not submit any response, but only expressed his wish not to incur any cost (as inferred by the Panel with reference to the June 30, 2000 e-mail sent by the Respondent to the WIPO Center).

 

6. Discussion and Findings

According to Paragraph 4(a) of the Policy, in an administrative proceeding, the Complainant must prove that each of following three elements are present: (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 was registered and is being used in bad faith.

1) The Panel finds that POMELLATO.COM is identical and confusingly similar with the Complainantís trademark POMELLATO.

The Complainant states that the domain name is identical to its registered trademark.

The Complainantís trademark is actually registered in a particular graphic form, set forth below
trademark

Due to the specific nature of Internet domain names, however, whose input takes place by means of a keyboard, the aural and conceptual aspects of a trademark far outweigh the visual aspect. Therefore, for the purpose of this procedure the domain name may be held identical to the registered trademark.

It also bears noting that the addition of the generic top-level domain (gTLD) ".com" after the name POMELLATO is not relevant, since use of a gTLD is required, necessary and functional to indicate use of a name in Internet and for the average Internet user it would not confer any further distinctiveness to any name.

Thus, the Panel is satisfied that the first condition has been met.

2) The Panel finds that the Respondent has neither rights nor legitimate interests in respect of the domain name.

The Panel reaches this conclusion for two overlapping reasons.

The first is that the Complainant indicated motives why the Respondent would not be entitled to the domain name and the Respondent failed to put forward any argument or fact to support his registration of the domain name. Even though the Panel finds that simply stating the reasons is not normally sufficient to meet the Complainantís burden of proof, the Complaint indicated at least two facts ("the Respondent has never been known by the domain name and since registration did not make use of the domain name"), which could be easily verified and/or negated.

The Respondentís failure to do so, and the consequences thereof, can only be held against the Respondent.

As stated in an earlier case (General Electric Company v. John Bakhit, Case D2000-0386) "it is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond".

In the present case, the Panel finds that the WIPO Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and of the commencement of these proceedings and that the Respondent was fully aware of the Complainantís claim (as also shown by the communication sent to the Respondent by the WIPO Center on June 7, 2000).

In the absence of any submission from the Respondent, the only known circumstance opposing the two facts stated by the Complainant is that the Respondent registered the domain name POMELLATO.COM. Yet, the Panel concurs with earlier decisions that held that mere registration does not seem sufficient to establish rights or legitimate interests since: "if this was so, all registrants would have such rights or interests, and no complainant could succeed on a claim of abusive registration" (General Electric, supra). If mere registration is not a factor, this Panel, in accordance with Paragraph 14(b) of the Rules, finds it a fully justified inference that non-response is indicative of a lack of interest inconsistent with an attitude of ownership and a belief in the lawfulness of oneís own rights.

This first reason, would already be sufficient to find that the Respondent has no rights or legitimate reasons for registering the domain name.

Yet the Panel must remark -and herein lies the second reason- that the lack of a reply from the Respondent makes it impossible for the Panel to reasonably make findings differently from those stated in the Complaint (for instance, that the Respondent, before having any notice of the dispute made any use of, or demonstrable preparations to use, of the domain name or of a name corresponding to the domain name in connection with a bona fide offering of goods or services).

This Panel must, according to Paragraph 10 (b) of the Rules, treat the Parties to the proceedings with equality and give them a fair opportunity to present, respectively, their own case. This principle imposes a burden not only on the Panel but also on both Parties, who must collaborate and aid the Panel in its decision-making process. Facts and circumstances regarding the Respondentís reasons and justifications for the domain name registration are usually known and easily available to the Respondent itself. Furthermore, the absence of a requirement of professional representation makes it possible for the Respondent to inexpensively contest and argue the Complainantís claims and allegations. By choosing not to do so, the Respondent thus accepts that Complainantís statements of fact may be accepted at their face value by this Panel (cf. also Paragraph 14(a) of the Rules).

Therefore this Panel is satisfied that the second condition is met.

3) This Panel finds that the domain name was registered and is being used in bad faith.

In order to reach this conclusion the Panel examined separately two issues: 1) whether or not bad faith existed when the domain name was registered and 2) whether or not the domain name was used in bad faith.

Even though the Panelís reading may appear too literal, the Panel may not ignore the use of the conjunctive "and" rather than the disjunctive "or" in paragraph 4(a)(iii) clearly indicates that a similar burden of proof falls on the Complainant.

As far as the first issue is concerned, the Complainant affirms that the Respondent registered the domain name in bad faith, but the only evidence offered in support is subsequent to the registration (cf. the letter sent by the Respondentís attorney after the Complainantís cease and desist letter) 1. The situation therefore differs from that examined in Paragraph 6(2) above, where the Complainant indicated in support of its claims at least two facts ("the Respondent has never been known by the domain name and since registration did not make use of the domain name"). Here, the Complainant simply stated that bad faith existed at the moment of registration but alleged facts (whose value it is thus not important now to assess) which are not pertinent.

If the Respondent had replied negating his bad faith at the registration date, the Panel might have found that the Complainant had failed to meet its burden of proof. As result, the Complaint should have been dismissed in its entirety, since the Panel could have not found it appropriate to make recourse to Paragraph 12 of the Rules (Further statements) given the relevancy and emphasis that is rightly placed upon this particular aspect of the Complainantís burden of proof.

Yet, the Respondent did not reply and, as mentioned above in Paragraph 2, the Respondentís failure can be used by the Panel to draw such inferences as it considers appropriate based on the Complaint.

The Panel thus takes the view that, in a situation like this where a prima facie case of impropriety has been established by the combined occurrence of the factors analyzed under preceding Paragraphs 6(1) and 6(2), and where the Respondent has failed to proffer arguments in his own favor, it is the Panelís duty to attempt to find in the Complaint itself clues to support a reasonable finding of fact, regardless of the reasons stated -or in the absence of reasons - in the Complaint.

It is obvious that if this search were to prove fruitless, the Panel would have no choice but to dismiss the Complaint.

It is shown in the Complaint that the trademark POMELLATO has been used for almost 40 years, and from its home-country (Italy) has been registered and used in several countries around the world. There is therefore no doubt that use by the Complainant of the trademark POMELLATO is much earlier than the registration of the Respondent of the corresponding domain name. The Complaint also indicates that, at least in its home-country, POMELLATO has gained an unquestionable reputation and renown in the field of fashion in general, and jewelry in particular, and the Panel finds that the evidence enclosed does confirm this renown not only in the home country but also abroad ( Complaintís reference to a CNN story).

Although the Complaint does not analyze this aspect, the Panel may not ignore that the Complainantís trademark POMELLATO, although not a fanciful word (in Italian, the term indicates a "white or gray horse with dark or light round spots", see Vocabolario della Lingua Italiana Treccani, pg. 989, 1991) is certainly an uncommon term. According to the Complainantís own literature (see www.pomellato.it/storia.htm), the trademark POMELLATO appears to have been purposefully chosen as a reference to the grace and elegance of that particular horse in order to identify a line of products characterized by smooth and round style with no angles ("Líoriginale denominazione dellíazienda Ť derivata da una razza equina di estrema eleganza ed esprime anche la creativitŗ e il carattere della produzione con uno stile bombato, morbido e senza spigoli").

The Panel, therefore, finds that the Complaint describes a situation where, given the arbitrariness of the term POMELLATO for a trademark, and the renown and reputation enjoyed by such a trademark in its home-country and abroad, the adoption of such a name as a domain name by anyone living in the home-country (other than its lawful owners) is more than strongly suspect. It seems fair to say that the Respondent, who lives in Italy, was with high probability aware of the Complainantís earlier and reputed trademark rights at the time the domain was registered. Such a highly probable awareness, together with the circumstance that the law of the country would have prevented any actual use of a trademark which enjoys reputation absent consent from the trademark owner (see art. 1.1.(c) Italian Trademark Law), makes it reasonable to believe that the Respondent "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 your documented out-of-pocket costs directly related to the domain name" (cf. paragraph 4 (b) (i) of the Policy).

Having deemed satisfied the first condition, the Panel must now establish whether or not there has been use in bad faith.

The Panel deliberately overlooks the Complainantís own inconsistency between Paragraph 11(3) of the Complaint (stating that the domain name "is being used in bad faith") and at paragraph 12 (stating that "Respondent...since registration did not even make use of the domain name"). Indeed, while the Panel is bound to the actual facts and circumstances alleged by the Parties, it is not bound to the incorrect representation of law made by either Party. It is a well established principle that an omission may cause the same damage as does a direct action. Similarly, actual non-use of a domain name may represent nonetheless a form of use, insofar it is an obstacle for the lawful trademark owner to exploit the possibilities of Internet. By registering the domain name POMELLATO.COM and refusing to turn it over to the lawful owner when the request was made (i.e. the cease and desist letter of July 13, 1998) the Respondent exercised ownership powers over the domain name and this, in the Panelís opinion, constitutes a prima facie evidence of use (see also Parfums Christian Dior v. 1 Netpower, Inc., Case No. D2000-0022: "For the Administrative Panel the relevant fact is that the Domain Name registrations are still today in Respondentís name. Consequently Respondent is in a position to transfer the Domain Names, without prejudice if so wished. By refusing to transfer the Domain Names while at the same time acknowledging that he has no rights or legitimate interests in them, Respondent knowingly prolongs a situation which is at odds with the legal rights of the parties involved and knowingly obstructs the registration of the Domain Names in the name of Complainant and their subsequent use by Complainant").

Therefore, the sole issue to be determined is not whether the Respondent used the domain name, but rather whether or not his use was in bad faith.

Paragraph 4(b) of the Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith. The list of circumstances does not exhaust the Panelís inquiry regarding the element of bad faith, since the Policy indicates that its listing of bad faith factors is without limitation. It is the Panelís view that the Respondentís refusal to turn over the domain name in light of his awareness of the existence of somebodyís else prior rights and in absence of any right or legitimate interest in the domain name itself (not counting the Respondentís late request to be available to give back the domain name but only if the Complainant accepted to hold the Respondent harmless and exempt from liabilities for his actions), constitutes prima facie evidence of use in bad faith (cf. Parfums Christian Dior v. 1 Netpower, Inc, supra,: "...such obstruction is tantamount to the examples of evidence of use in bad faith mentioned under Paragraph 4b of the Policy").

Also in light of the lack of reply from the Respondent, such prima facie evidence may be held indisputable and undisputed. Therefore it is unnecessary to evaluate the other allegations made by the Complainant, and accordingly the Panel need not evaluate: (1) whether or not the Respondentís Counsel reply of September 25, 1998 is admissible evidence, not covered by confidentiality; (2) whether or not a sum of money was requested in oral form; and (3) whether or not the Respondent registered somebody elseís name and trademark (LAURA BIAGIOTTI) as a domain name.

Such circumstances might have become decisive had the Respondent refuted the Complainantís other allegations, but the Respondent by choosing not to do so has made his bed and now must sleep in it.

Therefore this Panel is satisfied that also the third condition is met.

 

7. Decision

In light of the foregoing, the Panel finds that Respondentís disputed domain name POMELLATO.COM is identical to Complainantís trademark, that Respondent has no legitimate rights or interests in the disputed domain name, and that Respondent has registered and made use of the domain name in bad faith, and accordingly pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name "POMELLATO.COM" be turned over to Complainant.

 


 

Fabio Angelini
Panelist

Dated: July 7, 2000


 

Footnotes:

1. The Panel cannot take into consideration the allegation that the Respondent had registered also the domain name LAURABIAGIOTTI.COM since the evidence provided does not clarify when such domain name was registered. If the domain LAURABIAGIOTTI had been registered previously or contemporaneously with the domain name POMELLAT an inference of bad faith might have been made (see Inter-IKEA Systems B.V v. Avi Chekroun, Case No D2000-0478: "Of some relevance in this case is also the fact that Respondent appears in the WHOIS Register as the holder of 36 other domain name registrations, among them such incorporating the names of internationally known companies... This shows that Respondent has great familiarity with the operations of internationally known companies). Absent such an information, it is also unnecessary to give any weight to the fact that the domain name LAURABIAGIOTTI.COM presently does not appear anymore in the name of the Respondent