WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Arturo Salice S.p.A. v Paul Izzo & Company

Case No. D2000-0537

 

1. The Parties

The Complainant is Arturo Salice S.p.A., a corporation incorporated under the laws of Italy, with a place of business at Via Provinciale Novedratese, 10 Ė 22060 Novedrate (CO) Italy.

The Respondent is Paul Izzo & Company, whose full post office address is 21 Heritage Dr. Ė Howell, NJ 07731, United States of America.

 

2. The Domain Name(s) and Registrar(s)

The domain name in issue is "salice.com"; the Registrar with which the disputed domain name is registered is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, VA 22070, United States of America.

 

3. Procedural History

The Complaint was filed on June 1, 2000 by e-mail and on June 8, 2000 in hardcopy. The Center acknowledged receipt of the Complaint on June 5, 2000. A request for Registrar verification was forwarded to Network Solutions Inc. on June 5, 2000 by e-mail. On June 6, 2000, Network Solutions Inc. confirmed by e-mail that Network Solutions is the Registrar of the domain name in dispute and that Paul Izzo & Company, 21 Heritage Dr., Howell, NJ 07731, United States of America is the current registrant of the domain name in dispute.

On June 8, 2000, the Center sent a Complaint Deficiency Notification by e-mail to the Complainantís representative advising that as of June 8, 2000 the Center had not received the required fees and requested proof of payment. The Center also advised that the Complaint was not submitted in one original and four copies as required by Rules, Paragraph 3(b) and Supplemental Rules, Paragraph 3(c). The Center advised that the deficiencies must be cured within 5 calendar days of the date of the notification. On June 13, 2000 the Complainant confirmed that payment could be charged directly to its account at WIPO and that four copies of the complaint had been sent by registered mail on June 1, 2000. On June 14, 2000 the Center completed a Formal Requirements Compliance Checklist showing that the formal requirements of the Complainant had been completed.

On June 14, 2000 the Center forwarded Notification of Complaint and Commencement of Administrative Proceeding to the Respondent Paul Izzo & Company by post/courier, e-mail and facsimile. The Center advised the Respondent that a response was due within twenty (20) calendar days from the day of receipt of the notification. The Respondent was advised that the last day for sending the Response to the Complainant and the Center is July 3, 2000.

On July 3, 2000 the Respondent sent a letter in response to the Complaint by e-mail to the Center. On July 4, 2000 the Center sent an Acknowledgement of Receipt (Response) to the Respondent and to the Complainant by e-mail.

On July 14, 2000 the Respondent sent a Notification of Appointment of Administrative Panel and Projected Decision Date by e-mail to the Complainant and the Respondent advising that an Administrative Panel consisting of a single member had been appointed and that the Administrative Panel was required to forward its decision to the Center by July 27. 2000.

On July 21, 2000 the Complainant sent a letter by e-mail to the Center providing some arguments in reply to the Response of the Respondent dated July 3, 2000

On July 24, 2000 the Panelist sent a document entitled Administrative Panel Preliminary Rulings to the Center. The Panelist requested that the Complainant file evidence by 31 July 2000 supporting the statements of use of the trademark SALICE made in the Complaint. The Preliminary Ruling also provided that the Respondent may file statements and evidence by 7 August 2000 and is required to file a revised Response containing the Respondentís statement with the signature of the Respondent as set out in ss. 5.b.(viii) of the Rules.

 

4. Factual Background

The Trademarks

The Complainant is the owner of the following trademark registrations (see Annex C to the Complaint):

Canadian trademark no. TMA 340,182 registered 13 May 1988 for the trademark SALICE.

Italian trademark no. 421610 registered 12 May 1986 for the trademark SALICE.

Trademark no. 505 954 registered 12 May 1986 under the Madrid Agreement for the trademark SALICE, registered in Germany, Austria, Benelux, Spain, France, German Democratic Republic, Korea, USSR; also registered in Yugoslavia, Czech Republic and Slovenia in 1997.

United States trademark no. 1,367,302 registered October 29, 1985 on the Principal Register for the trademark SALICE.

Complainant has registered and used the trademark SALICE in numerous countries around the world in respect of goods such as hinges, locks, keys, locksmithís hardware, cabinet hardware, furniture hardware, curtain rods, curtain rod hardware, frames for mirrors, castors, brackets and metal chains.

Complainant has been using its trademarks in connection with sales of its products going back as far as 1962 in some countries, see U.S. Registration No. 1,367,302. The Complainant also filed evidence of recent continuing use of the trademark SALICE (see Enclosure 2 to Complainantís further submission dated July 27th, 2000 including copies of invoices from 1996-1998 for sales in Poland, Australia, Amman, U.S.A. and several other countries as well as sample sales catalogues of the Complainant showing numerous goods bearing the trademark SALICE).

Complainant has advertised its products bearing the trademark SALICE in magazines in U.S.A., Spain, Australia, Brazil, Germany, Argentina, China and Denmark since at least as early as 1994 (see Enclosure 1 to Complainantís further submission dated July 27th 2000).

The Respondent is not a licensee of Complainant, nor is Respondent otherwise authorised to use the Complainantís mark.

The Domain Name in dispute "salice.com" is reported by Network Solutions to be in "Active" status as of June 6, 2000. However, the domain name in dispute is not being used by the Respondent to identify a website.

 

5. Partiesí Contentions

A. Complainant

(i) The Complainant submits that the Respondent has registered the domain name salice.com which is identical or confusingly similar to the Complainantís registered trademark SALICE.

(ii) The Complainant submits that the Respondent has no rights or legitimate interest in respect of the domain name salice.com.

(iii) The Complainant further submits that the domain name salice.com was registered and is being used in bad faith.

The Complainant is the owner of registered trademarks for the word SALICE in at least ten countries. Said trademarks are registered and used for hinges, locks, keys, locksmithís hardware, cabinet hardware, furniture hardware, curtain rods, curtain rod hardware, frames for mirrors, castors, brackets and metal chains". The Complainant has provided copies of trademark registrations for SALICE in Canada, the United States, numerous countries under the Madrid Agreement and in Italy. As evidence of use of the trademark, the Complainant has submitted copies of invoices, advertising and brochures in several languages.

With respect to the first element (i), that the Respondent has registered the domain name salice.com which is identical or confusingly similar to the Complainantís registered trademark SALICE. the domain name salice.com contains the whole of the Complainantís registered trademark SALICE. The additional element .com is irrelevant in trademark terms, since it is wholly descriptive and non-distinctive, identifying salice.com a top level generic domain name.

With respect to the second element (ii), whether the Respondent has no rights or legitimate interest in respect of the disputed domain names, and the third (iii) element whether the domain name in dispute was registered by the Respondent in bad faith and is being used in bad faith, Complainant submits that "Paul Izzo & Company certainly knew at the moment of the registration of the Domain Name in issue the importance and the notoriety of all the SALICE trademarks, he certainly registered the Domain Name in bad faith to the purpose of taking advantage from an unlawful use of the Salice world famous trademarks".

B. Respondent

In his Response dated July 3, 2000, the Respondent asserted that the name salice.com is not the same as the name Salice but is representative of a location on the internet.

The Respondent advises that he has not yet made use of the domain name.

With respect to 4.a.(i) of the Uniform Domain Name Dispute Resolution Policy the Respondent further asserts that salice.com is representative of a location and is not identical to Salice. Respondent submits that Salice is a common word and there are many companies with that name, anyone of which would have the same weight of claim to the name as is claimed by Arturo Salice S.pA. Respondent claims that he could start his own company called Salice, or Salice.com whose purpose would be completely different from that or Arturo Salice S.p.A.

With respect to 4.a.(ii) of the Uniform Domain Name Dispute Resolution Policy, Respondent claims that his rights in the domain name rest in the fact that he is the legal registrant and owner.

With respect to 4.a.(iii) of the Uniform Domain Name Dispute Resolution Policy, Respondent submits that he has never used the domain name salice.com in bad faith and has not caused Arturo Salice S.p.A. harm.

Respondent submits that he has never initiated contact with Arturo Salice S.p.A. or a competitor in order to sell them the domain name. Respondent submits that Arturo Salice S.p.A. had approached Respondent inquiring if Respondent would be interested in selling the domain name and Respondentís attorneys responded with "what they felt was a fair and reasonable value based on their broad experience".

Respondent states that Arturo Salice S.p.A. has had and has used the domain name salice.it for over two years and has had tens of thousands of visitors to its site.

Respondent further claims that Arturo Salice S.p.A. is not a competitor; Respondent has not used the domain name and therefore could not have attempted to attract users for gain through confusion.

Respondent did not attach any documentation supporting Respondentís statements in the Response.

In a second Response after the Complainant had filed evidence of use and advertising of wares covered by the Registrations for SALICE, the Respondent replied to six statements made by the Complainant in an e-mail dated July 21, 2000 from the Complainant to the Center responding to the original Response filed by the Respondent. In the e-mail dated July 21, 2000 the Complainant submitted that the Respondent failed to state why the Respondent had registered the domain name "salice.com" if this name is not the Respondentís name or trademark. In the second Response the Respondent stated that the Complainant does not explain why Complainantís domain name "salice.it" is no longer suitable for Complainant and why the Complainant wants the domain name in dispute "salice.com". In the second response the Respondent stated that a two minute search on the internet showed an entity Salice Design Center located at 1157 Broadway, Hewlett, NY 11557 and Salice Occhiali (in Italy). The second Response also responded to all the other submissions in the e-mail filed by the Complainant with the Center on July 21, 2000.

 

6. Discussion and Findings

Complaint:

The Complainant submits that the domain name salice.com is identical to the Complainantís registered trademark SALICE.

Finding:

Complainant is the owner of numerous trademark registrations for the trademark SALICE including United States Trademark Registration No. 1,367,302 for the trademark SALICE, registered October 29, 1985, on the Principal Register in association with metal furniture hardware, namely, hinges, drawer pulls, casters, and catches. The Complainant has supplied the Panel with a copy of United States Registration No. 1,367,302 for SALICE. United States Registration No. 1,367,302 is valid until October 29, 2005. The trademark has been extensively used throughout the world through substantial sales of metal furniture hardware as evidenced by copies of invoices and brochures. The word "salice" has no meaning in the English language and is therefore an inherently distinctive word in English. The Complainantís company is Arturo Salice S.p.A. and the trademark SALICE appears to be taken from an Italian surname. The domain name in issue is salice.com. The distinctive part of this domain name is salice. The Respondent has not filed any evidence of use or proposed use of salice.com in association with any goods, services or business. The Panel finds that the domain name salice.com is confusingly similar to the Complainantís trademark registration for SALICE.

Complaint:

The Complainant submits that the Respondent has no rights or legitimate interests in the domain name salice.com.

 

Finding:

The Complainant has shown that Paul Izzo & Company registered the domain name salice.com through Networks Solutions; the record was last updated on 08 January 1997. Network Solutions Inc. has confirmed that the domain name registration salice.com is in "Active" status.

Respondent is not licensed or authorized by the Complainant to use its registered trademark SALICE as part of the domain name salice.com.

The Respondent did not disclose the existing or proposed business of Paul Izzo & Company which is the owner of the web site or the intentions of the Respondent company with respect to use of the domain name salice.com. Respondent did not offer any reasons why he chose the word "salice.com" as a domain name. Respondent has not submitted any evidence of use or proposed use of the domain name "salice.com" in association with any actual or proposed venture.

Section 5.b.(i) of the Rules for Uniform Domain Name Dispute Resolution Policy requires the Respondent to respond specifically to the statements and allegations contained in the Complaint and include any and all bases for the Respondent Domain Name Holder to retain registration and use of the disputed name.

The word "salice" is not a word in the English language. The Complainant has registered and used the trademark SALICE in the United States of America and many other countries. The Respondent knows why the Respondent registered the non-English word "salice.com" and in the absence of some explanation from the Respondent why this inherently distinctive word "salice" was registered as the distinctive portion of a domain name I find on a balance of probabilities that the Respondent has no rights or legitimate interest in the domain name "salice.com".

Complaint:

Respondentís Domain Name Has Been Registered And Is Being Used In Bad Faith.

The third element which the Complainant must prove is found in Paragraph 4.a.(iii) of the Uniform Domain Name Dispute Resolution Policy:

4.a.(iii) your domain name has been registered and is being used in bad faith.

Some circumstances which if found by the Panel to be present, shall be evidence of registration and use of the domain name in bad faith are set out in Paragraph 4.b. of the Uniform Domain Name Dispute Resolution Policy. Paragraph 4.b. provides:

 

4.b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4.a.(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you 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 complainantís 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 or location.

Paragraph 4.b. is not limiting as to the circumstances which may constitute evidence of bad faith and circumstances other than those enumerated in subparagraphs (i) to (iv) of Paragraph 4.b. may constitute registration and use of a domain name in bad faith.

"Bad faith" is defined in Blackís Law Dictionary 7th edition at page 134 as: "1. Dishonesty of belief or purpose..". In Halsey v Brotherhood (1881), 19 Ch. D. 386 Lord Coleridge L.C.J. in determining whether there was evidence of mala fides stated that the task of the Court was to consider "whether there is anything to show that what the defendant stated was stated without reasonable and probable cause".

Findings:

Paragraph 4.b. of the Uniform Domain Name Dispute Resolution Policy includes examples of four circumstances which if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith.

The first three examples found in sections 4.b.(i), 4.b.(ii) and 4.b.(iii) of the Uniform Domain Name Dispute Resolution Policy refer exclusively to registration and not to commercial use of the domain name. The fourth example found in section 4.b.(iv) refers to commercial use of the registered domain name.

If section 4.a.(iii) is to be interpreted consistently with the examples in sections 4.b.(i), 4.b.(ii) and 4.b.(iii) the term "being used in bad faith" refers to "use" in the broad sense of dealing in the rights associated with the registered domain name in bad faith. The term "being used in bad faith" is not limited to commercial use or operation of a web site in bad faith using the registered domain name.

The Complainant has established that the Respondent registered the domain name "salice.com" on January 8, 1997, and did not set up a web site utilizing the domain name prior to June 1, 2000, when the domain name became the subject of the present Complaint.

Respondent states that after being approached by the Complainant who was interested in acquiring the domain name salice.com, his lawyers "responded with what they felt was a fair and reasonable value". Neither party has provided other details of the offer of sale. There is insufficient evidence with respect to the offer to sell "salice.com" to establish that the Respondentís activities constitute registration and use of the domain name in bad faith under subsection 4.b.(i) of the Uniform Domain Name Dispute Resolution Policy. However subsection 4.b.(i) is only one example of circumstances indicating that a domain name is registered and used in bad faith.

Pursuant to the Rules for Uniform Domain Name Dispute Resolution Policy, subsection 5.(b)(i) provides that the Response must respond specifically to the statements and allegations contained in the Complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name. The knowledge of why the Respondent adopted and registered the domain name "salice.com" on January 8, 1997 and the intended use of the domain name are facts which are exclusively within the knowledge of the Respondent. The Complainant has established that the word "SALICE" is not a word in the English language. The Complainant has further established numerous registrations of the trademark SALICE and use of the trademark SALICE in association with the goods for which the trademark is registered. The Complainantís evidence is sufficient to transfer the burden of proof to the Respondent to respond to Complainantís evidence. When the burden of proof switches to a person who is the sole source of critical evidence supporting any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name, failure to produce such critical evidence of adoption, registration, proposed use or use falls on the Respondent and in the absence of such evidence exclusively within the Respondentís knowledge will support an inference in a proper case that the Respondent has no favorable evidence supporting adoption, registration and use of the disputed domain name.

Has the Complainant established on a balance of probabilities that the Respondent has registered and is involved in dealing with the registered domain name "salice.com" in bad faith? The Complainant stated that the word "salice" is not a word known in the English language. The Respondent claims that "salice" is a common word and there any many companies with that name.

The word "salice" does not appear in English dictionaries. I find that the Respondent has not established that the word "salice" is a word known in the English language or a common word used in trade or corporate names. The Respondent has not produced any creditable evidence as to why the Respondent registered the disputed domain name "salice.com". Respondent has knowledge of the Complainantís web site salice.it (Respondentís response dated July 3, 2000 (unsigned)).

The Respondent did not commence commercial use of the domain name during the period between registration of the domain name on January 8, 1997, and the date on which the domain name became the subject of the present Complaint on June 1, 2000.

One basis for determining whether there is evidence of bad faith is for the Panelist to consider whether there is anything to show that what the Respondent stated was stated without reasonable and probable cause. I find that the Respondentís statement that "Salice is a common word and there are many companies with that name" is not supported by the evidence. I find that SALICE is inherently distinctive in the English language. I find that the Respondent has not produced any creditable evidence as to why the Respondent registered the disputed domain name "salice.com". On a balance of probabilities I conclude that registration of the domain name in dispute was in bad faith.

As found above "use in bad faith" in subsection 4(a)(iii) does not refer to "use in commerce" in the trademark sense of use but refers in the broad sense to a pattern of conduct respecting the registered domain name in dispute. Other panelists have held that passive holding of the domain name, without use in commerce, may support a holding of use in bad faith. Telstra Corporation Limited v Nuclear Marshmallows, Case No. D2000-003.

On a balance of probabilities, I find that the domain name "salice.com" was registered and is being used in bad faith.

 

7. Decision

In the Complaint, the Complainant requested that in accordance with the Uniform Domain Name Dispute Resolution Policy, the Administrative Panel issue a decision that the disputed domain name be cancelled or transferred to Complainant. For the reasons expressed above the Complainant is entitled to a decision in its favour. The Panel requires that the domain name salice.com be transferred to Arturo Salice S.p.A.

 


 

Ross Carson
Panelist

Dated: August 15, 2000