WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

F.lli Claudio e Carlalberto Corneliani S.p.A. v. Corantos s.r.l.

Case No. D2000-0759

 

1. The Parties

The Complainant is F.lli Claudio e Carlalberto Corneliani S.p.A., an Italian Corporation having registered offices in Via Panizza 5, Mantova (ITALY), represented by Mr. Massimo Introvigne and Mr. Fabrizio Jacobacci of Jacobacci & Perani;

The Respondent is Corantos s.r.l., a limited liability company having registered offices in Via da Campione 15, Olbia, (ITALY).

 

2. The Domain Name and Registrar

The domain name at issue is ""corneliani.net" " and the corresponding registrar with which the domain name is registered is Internet Domain Registrars (Registrars.com).

 

3. Procedural History

The complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (hereinafter the "WIPO Center") on July 10, 2000. WIPO Center requested the Registrar, Registrars.com , pursuant to Paragraphs 2(a) and 4 of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "Rules") verification of the data.

On September 15, Registrars.com replied that the domain name "corneliani.net" had been registered with them and was "under registrar-lock in the shared Registry server pending arbitration." Registrars.com also confirmed that Corantos s.r.l. was the current registrant of the CORNELIANI-NET domain name registration, and provided all the relevant information. The Registration Agreement of Registrars.com, paragraph 3 so provides:

 

"DISPUTE POLICY

You agree to be bound by the Registrars.com™ Domain Name Dispute Policy (the "Dispute Policy"), as amended from time to time, which is hereby incorporated and made a part of this Agreement by reference. The Dispute Policy can be found at www.registrars.com/disputepolicy. The disputes which are subject to the Dispute Policy are contained in the Dispute Policy. You agree that you will be subject to the provisions specified in the Dispute Policy in effect at the time the domain name registration is disputed by a third party."

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 Rules and of the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "Supplemental Rules"). The Panel finds that the payment was properly made and agrees with the WIPO Centerís assessment concerning the Complaintís compliance with the formal requirements: in accordance with paragraph 2(a) of the Rules, the Complaint was properly notified on September 18, 2000, to the Respondent who did not file any Response and was notified of his default on October 12, 2000. Although the Complainant had earlier requested the dispute to be adjudicated by a three member Panel, on October 11, 2000, the Complainant requested WIPO Center that the issue be decided by a single Panel. The request was forwarded to the Respondent on October 12, 2000, and on the same date 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 a Statement of Acceptance and Declaration of Impartiality and Independence and the date scheduled for the issuance of the Panelís decision was set for November 2, 2000.

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

According to the Complaint, the Complainant is an internationally well-known company in the field of fashion, and the owner of several hundred trademarks that include the word CORNELIANI throughout the world. The trademark registrations in the name of Complainant cover primarily, but not exclusively, clothing, shoes, tissues, fabrics (piece goods), fashion accessories, belts, watches, jewelry and fragrances.

Among these the Complaint mentions expressly:

- Italian application No. TO99C002255 (renewal of registration No. 319311);

- European Community registration No. 123323;

- UK registration No. 1130015;

- US registration No. 1128327;

- Japanese registration No. 4092959.

 

5. Partiesí Contentions

A. Complainant

According to the Complaint:

(1) the domain name "corneliani.net" is confusingly similar to the trademark CORNELIANI owned by the Complainant;

(2) the Respondent has no right or legitimate interests in the domain name. On May 24, 2000, trademark attorneys representing F.lli Claudio e Carlalberto Corneliani S.p.A. wrote to Corantos and got a reply that "the domain name has been registered in connection with a project of this company" ("il dominio in questione Ť stato registrato nell'ambito di un progetto di questa azienda" ). Corantos S.r.l. is a company whose stated business is "activity in Internet web sites and services" ("attivitŗ di siti e servizi Internet". It does not appear to have any interest in the name CORNELIANI;

(3) Complainant believes that the Respondent has both registered the domain name in bad faith, since " there is no way that Respondent, an Italian company, may not have been aware of the famous trademark CORNELIANI, and registration may only have occurred in bad faith", and is using it in bad faith since "the chain-connection between the domain name "corneliani.net" and a project of Respondent is, in fact, a form of "use" of the domain name". The Complainant observes that "passive holding" of the domain name may in itself be "use" when "it is not possible to conceive of any plausible actual or contemplated active use of the domain name by Respondent that would not be illegitimate". However, in the present case Complainant believes that there is more than "passive holding", maintaining that Respondent's holding is "active" since Respondent has made reference to a "project" and engaged in a correspondence with the trademark owner.

B. Respondent

The Respondent did not submit any response and therefore is in default.

 

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 "corneliani.net" is not only confusingly similar with the Complainantís trademark CORNELIANI, but actually identical.

Even though the Complainant filed as evidence a trademark registration (namely the US trademark) where the term CORNELIANI appears in a special graphic aspect, both the Italian and the Community trademark consist of the word mark CORNELIANI which is identical to the domain name CORNELIANI. The addition of the generic top-level domain (gTLD) ".net" after the name CORNELIANI 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 following the same line of arguments already applied in the earlier decision Pomellato (case Pomellato S.p.A v. Richard Tonetti, Case No. D 2000-0493).

Although, as stated in that decision "... the Panel finds that simply stating the reasons is not normally sufficient to meet the Complainantís burden of proof", the Complainant indicated at least one reason why the Respondent would not be entitled to the domain name: "Corantos S.r.l. is a company whose stated business is "activity in Internet web sites and services" ("attivitŗ di siti e servizi Internet"). It does not appear to have any interest in the name CORNELIANI" and the Respondent failed to put forward any argument or fact to support his registration of the domain name.

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 it is to be assumed that Respondent was fully aware of the Complainantís claim.

In the absence of any submission from the Respondent, the only known circumstances supporting the existence of rights or legitimate interests of the Respondent in respect of the domain name is the mere registration of "corneliani.net" and the intention of using it for an undisclosed project. Yet, the Panel concurs with earlier decisions holding 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). The same line of argument should be held applicable to a mere stated intention, not even specified, of use. Under these circumstances this Panel, in accordance with Paragraph 14(b) of the Rules, finds it a fully justified inference that default 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.

The Panel wishes, however, to further emphasize that the lack of a reply from the Respondent makes it impossible for the Panel reasonably to make findings different from those stated in the Complaint. According to Paragraph 10 (b) of the Rules, this Panel must treat the Parties to the proceedings with equality and give them a fair opportunity to present their 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 the 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 Complaint shows that the domain name was registered and is being used in bad faith.

In line with previous decisions, in order to reach this conclusion the Panel examined separately two issues: a) whether or not bad faith existed when the domain name was registered and b) whether or not the domain name was used in bad faith.

As far as the first issue is concerned, the Complainant affirms that "Complainant is an internationally well-known company in the field of fashion, and the owner of several hundreds of trademarks including the word CORNELIANI throughout the world..... there is no way that Respondent, an Italian company, may not have been aware of the famous trademark CORNELIANI, and registration may only have occurred in bad faith".

The Panel may not ignore that the reasoning offered in support of Respondent's bad faith is a circular, self-serving and virtually unsupported argument: the only evidence presented by the Complainant are the facts that 1) it holds (among other registrations) a trademark registration in Italy dating back 1979, and 2) that the Respondent is an Italian company. If the Respondent had challenged the complete lack of support of the claim that CORNELIANI is a well known trademark in Italy, the Panel could have found [cf. Armani Exchange Case (GA Modefine S.A. v. Sparco P/L, Case No. D 2000-0419)], that the Complainant had failed to meet its burden of proof. As a result, the Complaint would have been required to be dismissed in its entirety, because the Panel would not find it appropriate to have recourse to Paragraph 12 of the Rules (re Further Statements), given the relevance and emphasis that is rightly placed upon this particular aspect of the Complainant's burden of proof.

The Respondent did not reply however, 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 indications of the Complaint. In other words, in a situation where a prima facie case of impropriety has already been established by the combined occurrence of the factors analyzed under Paragraphs 6(1) and 6(2), and where the Respondent has failed to proffer arguments in his own favor, the Panel may independently assess the value of the circumstances in order to support a reasonable finding of fact. 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 CORNELIANI alone or in variations has been registered in Italy for more than 20 years, and has been the object of hundreds of registrations in several countries around the world. Moreover, the Complaint alleges that CORNELIANI is an internationally known company in the field of fashion, even if it fails to proffer any evidence of such renown.

In light of these circumstances, the Panel finds it reasonable to assume that extensive use must have been made of the CORNELIANI trademark since no one would lightheartedly undertake the cost and effort of registering a trademark in so many countries unless such registrations are instrumental for the protection of good will and investments related to such trademark. From the foregoing it also follows that while such use and multiple registrations abroad may not per se entail a finding of international renown, they are instead strongly indicative that the CORNELIANI trademark enjoys renown in its home country (Italy), since a decision to undertake the cost, effort and uncertainties associated with developing a trademark in foreign products reasonably would seem to be based on the already achieved success and appreciation earned by the trademark CORNELIANI in its home market (Italy).

Such assumption is supported by a quick search of the term CORNELIANI in the major Italian search engines which showed a large number of hits, all related to such trademark and all indicating that CORNELIANI is and has been for a number of years the object of quite extensive media coverage.

Furthermore, and although the Complaint fails to analyze this aspect, the Panel may not ignore that the Complainantís trademark CORNELIANI is not, in Italian language, a word but rather a personal surname and not at all a common. A search in the telephone directory of Olbia showed the existence of only one person whose surname is CORNELIANI and there is no indication of any link between such person and the Respondent.

The Panel, therefore, finds that the Complaint describes a situation where the renown enjoyed by the trademark CORNELIANI in its home-country is quite credible (also because the Respondent could have denied the renown and not having done so may also be interpreted as an admission that it would have not been such an easy task to accomplish), even if such a renown is at an International level doubtful. Therefore, the adoption of such a name as a domain name by an entity which conducts its business in the home country is more than strongly suspect.

In light of the foregoing the Panel finds it credible Complainant's allegation that Respondent, being an Italian entity, was, with high probability, aware of the Complainantís earlier and renown trademark rights at the time the domain name at issue was registered. Such a highly probable awareness, together with the circumstance that the law of the country (Italy) 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 acted in bad faith when it applied for the registration of the domain name "corneliani.net" .

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

The Panel agrees with the Complainant's analysis of the use made by Respondent. By registering the domain name "corneliani.net" and refusing to turn it over to the lawful owner when the request was made, the Respondent exercised ownership powers over the domain name and this, in the Panelís opinion, constitutes a prima facie evidence of use (see, in addition to the cases cited by the Complainant, 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.

Once again, the Panel must make use of its power of inference, in light of both Respondent's default and Complainant's lack of analysis in such respect.

It is the Panelís view that the Respondentís refusal to turn over the domain name once the Respondent became officially aware of Complainant's requests, in the absence of any right or legitimate interest in the domain name, itself constitutes prima facie evidence of continuing 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").

In light of the lack of reply from the Respondent, such prima facie evidence may be held indisputable and undisputed.

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 "corneliani.net" 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 "corneliani.net" be turned over to Complainant.

 


 

Fabio Angelini
Presiding Panelist

Dated: November 6, 2000