WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

RAI Radiotelevisione Italiana S.p.A. and Raicinema S.p.A v. Pro Radio di Claudio Astorri & C Sas

Case No. D2000-1282

 

1. The Parties

Complainants are RAI Radiotelevisione Italiana S.p.A. and Raicinema S.p.A, having registered offices in v.le Mazzini 14, 00195, Rome, Italy. The Complainants’ authorized representative in this administrative proceeding is Societŕ Italiana Brevetti, Piazza di Pietra 39, 00187 Roma, Italy.

Respondent is Pro Radio di Claudio Astorri & C Sas, Corso di Porta Romana 46, 20122, Milano, Italy.

 

2. The Domain Name and Registrar

The domain name at issue is "raicinema.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 28, 2000, (by email) and on October 16, 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). Complainants made the required payment to the Center.

On October 6, 2000, the Center transmitted via email to Network Solutions, Inc., a request for registrar verification in connection with this case. On October 11, 2000, Network Solutions, Inc. transmitted via email to the Center, Network Solutions, Inc.'s Verification Response, confirming that the registrant is Pro Radio di Claudio Astorri & C Sas 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 26, 2000, to Pro Radio di Claudio Astorri & C Sas the Notification of Complaint and Commencement of the Administrative Proceeding by post (with attachment), and by fax and email (without enclosures). On October 27, the Center transmitted via email, copies of the foregoing documents to the Complainants’ representative and to Network Solutions, Inc.

On November 16, 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 November 22, 2000, in view of the Complainants’ 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 December 4, 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 grounds:

The first Complainant, RAI Radio Televisione Italiana S.p.A. (hereinafter RAI), is the Italian public radio-television network established more than 70 years ago serving more than 19 million subscribers in Italy (the subscription to RAI radio-television services is, by law - R.D.L. 21.2.1938, n. 246 -mandatory to all subjects resident in Italy owning a television and a radio)- and worldwide through its satellite programming. RAI owns trademark rights on its own name RAI, including many other RAI formative trademarks in Italy. The Complainants have provided to the panel copies of trademark registrations in Italy.

In view of RAI’s diversified media activity and worldwide competition, a wholly controlled entity, the second Complainant, RAICINEMA S.p.A. (hereinafter Raicinema) was officially incorporated on December 1, 1999. The creation of Raicinema and the use of such name as a de facto trademark to identify the activities of the newly created company were widely publicized in newspapers and electronic media alike earlier than its incorporation, such as in July 1999. Little later on, the electronic newsletter Monitor-RadioTv on September 23, 1999, reported details of the new company: "… With a budget of ITL 450 billions commences its activity RaiCinema, the new company to which all activities pertaining to movies and fiction will be entrusted. The CEO will be Giancarlo Leone, the President Giuliano Montaldo.....). The Complainants have provided the Panel with copies of the certificate of incorporation held by the Rome Chamber of Commerce as well as copy of articles published in Italy reporting about the establishment of the new company.

The domain name "raicinema.com" was registered on March 13, 2000. According to Network Solutions, Inc.'s Verification Response, Pro Radio di Claudio Astorri & C Sas is the registrant of "raicinema.com".

 

5. Parties’ Contentions

A. Complainants

Complainants contend that RAICINEMA is closely similar to, and makes use of, the registered trademark RAI, and is identical to the de facto trademark and company name RAICINEMA, both belonging to the Complainants. RAICINEMA is formed by the first Complainants's name and trademark RAI and by another term, like CINEMA, which in itself makes and explicit conceptual reference to an activity of the entertainment industry where the Complainants are among the major players. Therefore, the resulting combination RAICINEMA is perfectly capable of eliciting a likelihood of confusion, which includes a likelihood of association with the Complainants' trademark and activities. In addition, RAICINEMA is totally identical to the name and de facto used trademark of the second Complainant Raicinema. According to the Complainants, it is therefore clear that the average Internet user would be induced either into believing that the Respondent's domain name and the use of it are to be attributed to the Complainants or, that between the Respondent's domain name and the use of it and the Complainants' trademarks, name and activities, there is some sort of agreement, connection, endorsement, with the Complainants and Complainants' activity.

The Complainants addressed a first letter on June 12, 2000, to the Respondent requesting the transfer of the domain name raicinema.it, also registered by Pro Radio di Claudio Astorri & C S.a.s. Copy of the letter sent via registered mail to the Respondent as well as the response in Italian of the Respondent were provided in the annexes to the Complaint.

The Respondent replied on June 21, 2000, and the translation of the reply reads as follows:

"We believe that the tone of your letter is completely unacceptable and only compatible with presumption of fault that has evidently originated from arrogance of position, yours and possibly of your clients. Since no issue has been raised, we abstain for the moment, but we reserve to communicate our position in legal terms in the future. It would have been opportune for your client or your office to think about the availability, like all other companies on a professional level do, and like my company did, of a domain name chosen as a trademark for an editorial project on Internet. Therefore, we suggest that you adopt a different tone, more apt to our willingness to find an amicable solution. On our side, since we do not stop at the tone and understand the necessity of your client about whom we have the highest consideration, we are willing to renounce in almost immediate terms to the development of our editorial idea about the domain raicinema.it. The establishment of the company Raicinema in Italy and its possible development, about which, in any case, however, the media care very little, almost not at all, while instead it is clear from your letter, may without doubt, create confusion with consequent harm to our company that has strong credibility in more than a sector in this country. Therefore, we are at your complete convenience, even by telephone: 02-5492931. We will also gladly receive all the necessary paperwork for transfer of the domain, which we will sign instantaneously and gratuitously. Fax: 02-54929333. We must, however, communicate that even the domain name raicinema.com is our property. In the latter case, given our interest in the project which was created and is to be launched shortly, we are only available to a transfer, against economic consideration, to renounce to the development of the domain. Thank you for your attention. Signed Claudio Astorri".

It is to be noted that further to the instant letter, the Respondent cancelled the domain name raicinema.it, which was subsequently registered and is actually used by the Complainants.

The Complainants contacted the Respondent to better understand what was meant for "economic consideration" for transferring such domain name. Hardcopy of the letter, dated August 3, 2000, was provided in the annexes as well as the Respondent’s further reply on August 7, 2000, which reads as follows:

"Dear Sirs, I am particularly happy that you appreciated my request to cancel the domain name raicinema.it and I would be even happier to learn that the domain name has been effectively brought under the control of your client. As far as the domain name raicinema.com is concerned, as anticipated, it is available for being acquired by your client. In truth, last month some renowned professional companies operating in the field of sale of domain names (Italian and foreign) contacted us to buy the domain name raicinema.com; their or their clients' speculative intent was evident, probably meant to deal with RAI, strong with their arguments and techniques. Effectively, I would prefer to transfer (the domain name) directly to Raicinema, in the reciprocal interest, without feeding agents or intermediaries but being aware, however, at this point, of the value of image and operative business that a worldwide domain has for a company which is in the audio-visual industry and with such significant possibilities and needs the entire world as a market place. Therefore, I come to your request. My economic expectation for the sale of raicinema.com is ITL 50,000,000 (fifty million lira), taxes excluded. The time limit for a confirmation is regrettably limited and for reasons that do not concern you. For 12 months I will be abroad, starting from September 1, 2000. Therefore, I would like you to make a decision before August 31 and follow it up. I await your response. Thank you for your attention Signed Claudio Astorri".

The Complainants believe that the above mentioned circumstances indicate without any doubt the Respondent has no rights or legitimate interests in respect of the domain name, which has been registered and is being used in bad faith. It is admitted by the Respondent's that before the notice of the dispute was communicated, there was no use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a "bona fide offering of goods or services". The Respondent indeed only alleged the existence of a "project" about which, however, no evidence or any indication whatsoever, has been provided.

The Complainants also believe that the Respondent's registration of the domain name RAICINEMA was not casual, but intentional. Respondent, who is an Italian Company whose field of activity, as shown in the records of the local chamber of commerce, is basically in the same field where the Complainants operated and operate, i.e. the tv-radio-media communication industry, was certainly very well aware of the Complainants' rights to RAICINEMA and could not ignore that the adoption as a domain name of RAICINEMA which incorporates the RAI trademark and company name and is identical to Raicinema de facto trademark and company name would be totally unlawful and unjustified.

Furthermore the Respondent admitted to being very well aware of Raicinema and of the latter's rights to its company name and de facto trademark, since in replying to the Complainants' first letter so stated: " The establishment of the company RAICINEMA in Italy and its possible development, about which, however, the media care very little, almost not at all...". Such words incontrovertibly indicate the Respondent's awareness of the existence of Raicinema.

According to the Complainants, another circumstance further supports the Complainants' belief that Respondent acted in bad faith: the contemporaneous registration of the same domain name RAICINEMA under the ccTLD.IT and its subsequent relinquishment. It is Complainants' belief that the contemporaneous registration, under two quite important TLDs such as the national IT and the "international" COM of the domain name RAICINEMA shows the Respondent's wilful intent and pre-meditated pattern of conduct aimed to unlawfully appropriate such name, conversely depriving the Complainants from using their trade marks and name in a more global context and therefore seriously disrupting the Complainants' business activity.

The Complainants submit that the relinquishment of the sole domain name under the ccTLD IT and not of the gTLD, is an additional indicia of bad faith: it is indeed clear that the relinquishing of "raicinema.it", while remaining in possession of "raicinema.com", was instrumental to create a factual situation where the Complainants would be forced to negotiate the acquisition "raicinema.com" since the contemporaneous existence of an identical domain name in the name of somebody else might have created serious problems and disruption, beside taking an unfair advantage, to the activity in Internet of the Complainants.

Complainants furthermore underline that, as also shown by the Respondent's statements in his August 7 letter, Respondent’s intention was to re-sell the domain for a price largely in excess of (about 1,000 times higher than the actual registration costs: USD35) his documented out-of-pocket costs directly related to the domain name, without minimally denying the concrete possibility that by refusing to pay the amount requested, the domain name "raicinema.com" may be sold to third parties.

Complainants require the transfer of the contested Domain Name to the Complainants.

B. Respondent

Respondent has not contested the allegations of the Complainants 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 Complainants 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 Complainants 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 Complainants have provided evidence of ownership of various trademark registrations and applications for RAI in Italy. "Cinema" in Italian is the generic name of movie theatres and of the services related to the production of movies and other similar products. Therefore, the distinctive portion of the sign "raicinema" is to be sought only in the acronym "RAI" which is identical to the trademark and trade name of one of the Complainants.

In view of the above, the Panel finds that the Complainants have proved that the Domain Name is confusingly similar to the trademark of the Complainants 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 Complainants and Respondent is not a licensee of the Complainants, nor the Respondent has otherwise obtained an authorization to use Complainants’ 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 Complainants who is the owner of the trademark or service mark or to a competitor of that Complainants, for valuable consideration in excess of the holder’s 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 holder’ s website or other online location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder’s website or location.

The Panel finds paragraph (i) applicable in the instant case since the Respondent has indicated, in the letter of August 7, no other interests in the Domain Name but the intention to sell it to the Complainants or to any other third party. Furthermore, the Resistant has requested an amount of ITL 50.000.000 that is noticeably a consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name.

Panel has also considered that the Resistant, especially in light of the interests in the area of tv-radio-media communication industry, could not possibly have ignored the existence of the trademark and trade name RAI, which was the only broadcasting corporation in Italy for a long time, and overlooked the likelihood of confusion of "raicinema.com" with the name of the well established Italian Company.

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.

 

7. Decision

In light of the foregoing, the Panel decides that the Domain Name registered by the Respondent is confusingly similar to the Complainants’ 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 "raicinema.com" be transferred to the Complainants.

 


 

Luca Barbero
Sole Panelist

Dated: December 27, 2000