WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fendi Adele Srl v. Sunrise Communication Srl
Case No. D2000-1227
1. The Parties
Complainant is Fendi Adele Srl, Via Cornelia 498, Rome, Italy. The Complainantís authorized representative in this administrative proceeding is Ing. Barzanò & Zanardo Roma Spa, Via Piemonte 26, Rome, Italy.
Respondent is Sunrise Communication Srl, Via Caffi 84, Belluno, Italy.
2. The Domain Name and Registrar
The domain name at issue is "fendi.com"; hereinafter referred to also as the "Domain Name". The registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received a complaint (hereinafter the Complaint) on September 15, 2000, (by email) and on September 19, 2000, (hardcopy and exhibits). The Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant made the required payment to the Center.
On September 21, 2000, the Center transmitted via email to Network Solutions, Inc., a request for registrar verification in connection with this case. On September 28, 2000, Network Solutions, Inc. transmitted via email to the Center, Network Solutions, Inc.'s Verification Response, confirming that the registrant is Sunrise Communication Srl and that the Domain Name registration is in "active" status.
Having verified that the Complaint satisfied all the formal requirements of the Policy and the Rules, the Center transmitted on October 2, 2000, to Sunrise Communication Srl the Notification of Complaint and Commencement of the Administrative Proceeding by post (with attachment), and by fax and email (without enclosures). On the same day, the Center transmitted via email, copies of the foregoing documents to the complainantís representative and to Network Solutions Inc.
On October 24, 2000, having received no Response from the Respondent, the Center issued to both the postal and email addresses a Notification of Respondent Default.
No reply by Respondent to the Notification of Respondent Default was received.
On October 27, 2000, in view of the Complainantís designation of a single member panel the Center invited Mr. Luca Barbero to serve as a panelist and transmitted to him the Request for Declaration of Impartiality and Independence and a Statement of Acceptance.
Having received Mr. Luca Barbero's Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted on November 7, 2000, to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Luca Barbero was formally appointed as the Sole Panelist. The Sole Panelist finds that the Administrative Panel (hereinafter referred to also as the Panel) was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
Having reviewed the communication records in the case file, the Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
Therefore, the Panel shall issue its Decision on the basis of the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of any Response from Respondent.
4. Factual Background
The Complaint is based upon the following trademark registrations:
- Application no.33793C76 for the trademark FENDI has been registered in Italy since 1976, and renewed with registration no.756617 in force up to 30.4.2006;
- Application no.33926C76 renewed with registration no.756276 in force up to 18.5.2006;
- Application no.35453C76 renewed with registration no.759725 in force up to 16.12.2006.
- In the same 1976, other Trademarks applications were also filed in several countries.
- Since 1983, FENDI is also registered in United States (registration no.1244466 in force up to 5.7.2003) and since 1982, in the United Kingdom (registration no. 1176026 in force up to 2.6.2003) .
It is stated in the Complaint that the Complainant and its related Companies are also the owners of other 675 trademark registrations and applications for the sign FENDI in the rest of the world. The activities of FENDI began in 1925, in Rome when business first commenced with the production of furs. At present, the Complainant and its related Companies are doing business in all the worldís capital cities, in more than 117 countries on all five continents.
"fendi.com" was registered on December 26, 1995. According to Network Solutions, Inc.'s Verification Response, Sunrise Communication Srl is the registrant of "fendi.com".
5. Partiesí Contentions
Complainant contends that Respondent has registered the Domain Name, which is identical to Complainant's trademarks and therefore likely to deceive and cause confusion. No authorisation for the use of the mark has been given to the Respondent by the Complainant or its related Companies.
The searches conducted on the Respondentís web page at "www.sunrise.it", show that the Respondent is not operating with the name FENDI but with different names in the Internet business. The Complainant notes that the Respondent has obtained trademark and service marks for different names and therefore, the Respondent may not be considered having a right and a legitimate interest on "fendi.com".
Complainant underlines the lack of the Respondentís actual use and the absence of demonstrable preparations to use of the domain name in connection with a "bona fide" offering of the services related to the Respondentís business activity. Therefore, the Respondentís domain name registration is a bar to reflect the mark FENDI in the corresponding domain name typical for the commercial business (what a TLD .com is meant for) and a misappropriation and unlawful catch of the Complainant goodwill and reputation.
Complainant alleges that Respondent, by knowingly choosing a domain name which solely consists of the renown Complainantís trademark, has intentionally created a situation which is at odds with the legal rights and obligations of the parties and which is a blatant infringement of the Complainantís and its related Companiesí exclusive rights. As a result, the Internet consumer connected to "fendi.com" will not find any kind of information on the Complainantís business; therefore, the domain name address "fendi.com" deceives its scope of business identifier.
On the other hand, no control and/or authorization can be given by the Complainant on the possible contents of the web site that could be related to such address.
The Respondent when registering the contested domain name could not ignore the coincidence with the commonly known trademarks and business name FENDI, and its actual and constructive knowledge made by the Complainant in the whole world, and in particular in Italy where the Respondent is operating and is having its place of business. It is concluded that it was highly improbable that the Respondent selected the name FENDI by hazard without having noticed the trademark reputation and the earlier trademark registrations of the Complainantís and its related Companiesí.
On February 9, 2000, a registered letter of cease and desist was addressed to the Respondentís address according to the Whois database. The acknowledgement of receipt with the Respondentís signature is dated February 16, 2000. On February 10, 2000, the letter was also anticipated by facsimile to the Respondentís registered facsimile number. Up to date, no response has been received.
The Complainant concludes that the Respondentís lack of response to the request made by the Complainant as well as the fact that the domain name address "fendi.com" has never been related to any web-site is also a clear evidence of the Respondentís bad faith, quoting a number of precedent WIPO decisions.
It was furthermore highlighted in the Complaint that the Respondent is also owner of other domain names already registered as trademarks and/or service marks by third parties. For instance, the Respondent has obtained the domain name "mediaset.com" which is a registered and renown trademark and infringing (i.e. registration for MEDIASET no.634037, application for MEDIASET FICTION nos.MI2000c1736 and MI2000c1658, application for MEDIAFICTION GRUPPO MEDIASET no.MI2000c366).
Complainant requires the transfer of the contested Domain Name to the Complainant.
Respondent has not contested the allegations of the Complainant and is in default.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and,
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and,
(iii) that the Domain Name has been registered and is being used in bad faith.
6.1. Domain name identical or confusingly similar
The Complainant has provided evidence of ownership of various trademark registrations and applications for FENDI in different countries.
In view of the above, the Panel finds that the Complainant has proved that the Domain Name is identical, obviously excluding the suffix ".com", to the trademark of the Complainant according paragraph 4(a)(i) of the ICANN Policy.
6.2. Rights and legitimate interest
By not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.
Furthermore, there is no relation, disclosed to the Panel, between the Respondent and the Complainant and Respondent is not a licensee of the Complainant, nor the Respondent has otherwise obtained an authorization to use Complainantís trademark and name under any circumstance.
The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the Domain Name, according to paragraph 4(a)(ii) of the ICANN Policy.
6.3. Registration and Use in Bad Faith
For the purpose of Paragraph 4(a) (iii) of the Policy, 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 the Domain Name in bad faith:
(i) circumstances indicating that the holder has registered or has 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 the holderís documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holderí s website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holderís website or location.
Panel finds the paragraph ii) applicable in the instant case since the Respondent is preventing the rightful owner of a trademark from reflecting the mark in a corresponding domain. Respondent is to be considered as engaged in a pattern of such a conduct as it has registered, on top of "fendi.com", also "mediaset.com" on December 31, 1995, identical (but for the top level domain indication) to the trademarks registrations n. 634037 of November 18, 1994, in the name of Mediaset and "torino-2006.org" on June 19, 1999, corresponding to the Italian trademark registration n. 753403 of May 11, 1998, in the name of "Comitato per líOrganizzazione dei XX Giochi Olimpici Invernali Torino-2006" (Organising Committee of XX Winter Olympic Games Torino-2006).
Furthermore, pursuant to the interpretation of the ICANNís Uniform Dispute Resolution Policy first provided in Telstra Corporation Limited v. Nuclear Marshmallows, (WIPO Case No. D2000-0003) in a case of passive holding of the domain name and in a number of following decisions such as Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, (WIPO Case No. D2000-0021); Compaq Computer Corp. v. Boris Beric, (WIPO Case No. D2000-0042); Guerlain, S.A. v. Peikang, (WIPO Case No. D2000-0055); Revlon Consumer Products Corporation v. Yoram Yosef aka Joe Goldman (WIPO Case No. D2000-0468), the Panel has also taken into consideration the following particular circumstances for the assessment of bad faith.
a) Complainantís trademark has a strong reputation and it is widely known in Italy, where the Respondent is based, and in a number of different countries.
b) Respondent has provided no evidence of nor alleged any actual or contemplated good faith use of the Domain Name.
c) Respondent failed to respond to the letter of Complainant.
d) Respondent failed to respond to the Complaint at issue or to deny any of its allegations.
e) It is not possible to conceive of any legitimate, actual or contemplated, active use of the instant Domain Name by the Respondent.
In view of the above, the Panel finds that Respondent has registered and is using the Domain Name in bad faith, according to paragraph 4(a)(iii) of the ICANN Policy.
In light of the foregoing, the Panel decides that the Domain Name registered by the Respondent is identical to the Complainant's trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and is being used in bad faith.
Accordingly, the Panel requires that the registration of the Domain Name "fendi.com" be transferred to the Complainant.
Dated: November 20, 2000