WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Boezio 31 S.r.l. v. Siga S.r.l.
Case No. D2001-0267
1. The Parties
Complainant is Boezio 31 S.r.l., Rome, Italy ("Complainant"). Respondent is Siga S.r.l., Rome, Italy ("Respondent").
2. The Domain Names and Registrar
The domain names at issue in this Complaint are "enjoyrome.net" and "enjoyrome.org".
The Registrar is BulkRegister.com. The remedy sought by Complainant is the transfer of the domain names to Complainant.
3. Procedural History
On February 20, 2001, Complainant submitted to the WIPO Center a Complaint under the Uniform Domain Name Dispute Resolution Policy and the Uniform Rules, followed by an Amendment submitted on February 28, 2001. The Panel agrees that payment was properly made, that the Center rightly assessed the Complaint’s compliance with the formal requirements; that Complaint was properly notified in accordance with paragraph 2 (a) of the Rules. On March 20, 2001, Respondent submitted its Response. On March 21, 2001, a Mr. Daniel Beraca Visel, claiming to represent Complainant, submitted further comments to the Response. These comments were not requested, nor authorized, and will not be taken into account.
The Panel agrees that it was properly constituted and that Panelist submitted a Statement of Acceptance and Declaration of Impartiality.
The Panel also acknowledges that Complainant stated that proceedings for copyright infringement and damages, somewhat parallel to this case, are being instituted in Italy.
4. Factual Background
Complainant is the owner of the trademark ENJOY ROME , registered in Italy, with rights dating back to 1994, for travel and associate services. Complainant has proved that the trademark has been used in 1994, and claims (but does not prove) that it trades as "Enjoy Rome", although its registered trade name is Boezio 31 S.r.l. Complainant is also the owner of the domain names "enjoyrome.com" and "enjoyrome.it", used in connection with a web site offering travel and associate services.
Respondent, Siga S.r.l. has registered its domain names "enjoyrome.net" and "enjoyrome.org", after trademark and other rights on ENJOY ROME were acquired by Complainant. No active web sites correspond to Respondent’s domain names as of April 3, 2001.
Respondent also owns the domain names "enjoyvenezuela.com" and "enjoyfilms.com", with very limited content as of April 3, 2001.
5. Parties’ Contentions
a. Complainant claims that it is the owner of the trademark "ENJOY ROME", has used it since 1994, and trades (including through electronic commerce) under this name.
b. Complainant claims that the domain names "enjoyrome.net" and "enjoyrome.org" have been registered by Respondent in bad faith. Respondent is located a few blocks from Complainant and could not have ignored Complainant’s rights, nor has Respondent any rights or legitimate interests in respect of the domain names.
c. Complainant claims that, should the domain names "enjoyrome.net" and "enjoyrome.org" be used, such use would occur in bad faith.
a. Respondent claims that it is preparing a number of web sites related to photography, and in fact already operates in this field under the domain names "enjoyvenezuela.com" and "enjoyfilms.com". Contrary to Complainant’s argument, Respondent is a bona fide company duly registered and operating in Rome.
b. Respondent offers to "swap" the two domain names in dispute to the Complainant in exchange of other two available domain names.
6. Discussion and Findings
A. General Principles
Under paragraph 4 (a) of the Policy, the Panel should be satisfied that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name;
(iii) the domain name has been registered in bad faith;
(iv) the domain name is being used in bad faith.
B. Confusion with Complainant’s Trademark
The Panel finds that, although there is no evidence that it is known in the course of trade as "Enjoy Rome" rather than as Boezio 31 S.r.l., Complainant has established some rights on "Enjoy Rome", based on both statutory and common law trademark rights. That Complainant has used in commerce ENJOY ROME before Respondent seems beyond dispute, including through electronic commerce.
Respondent’s domain names are identical to Complainant’s trademark and domain names.
C. Respondent’s Absence of Rights or Legitimate Interests in the Domain Name
Respondent claims that it has a legitimate interest on a line of domain names including the word "ENJOY" as evidenced by its registration and use of "enjoyvenezuela.com" and "enjoyfilms.com". This use is, however, minimal an, in this Panel’s opinion, is not enough to establish a "right or legitimate interest", capable of prevailing over Complainant’s established rights. Respondent has not developed a real business nor is known, under any "enjoy" trademark, trade name, or even domain name. On this point also, Complainant prevails.
D. Registration in Bad Faith
Complainant argues that Respondent, located a few block from Complainant’s premises, could not have ignored Complainant’s activities under the trademark "ENJOY ROME". Respondent answers that it is not active in the same field of business; Complainant offers travel and related services, while Respondent is active in the field of photography. What exactly Respondent does is unclear from the documents submitted to this Panel. In several cases, Panels have assumed bad faith by Respondent when a trademark is internationally well-known (see, for example Veuve Cliquot Ponsardin v. The Polygenix Group Ltd., case no. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and Christian Dior Net, case no. D2000-0226). Complainant’s trademark "ENJOY ROME" does not seem to be internationally well-known. However, Panels have also found that, when Complainant and Respondent are located in the same geographical area, it may be presumed that Respondent knew of the Complainant’s trademarks and a finding of "opportunistic bad faith" is in order (Banca Sella S.p.A.. v Mr. Paolo Parente, case no. D2000-1157). In this case, Complainant and Respondent are so close geographically that it is not unfair to assume that Respondent knew of Complainant’s activities under the trademark "ENJOY ROME".
The Panel, thus, concludes that the domain names have been registered in bad faith.
E. Use in Bad Faith
Complainant states that the domain names, if used, would be used in bad faith.
On the question of "use" of a domain name in bad faith when there is no actual Web page by Respondent, nor an offer for selling the domain name, there is now an entire body of significant precedents. Most of these quote the landmark decision Telstra Corporation Limited v. Nuclear Marshmallows (case no. D2000-0003), which stated that "the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith. This understanding of paragraph 4(a)(iii) is supported by the actual provisions of the Uniform Policy. Paragraph 4(b) of the Uniform Policy identifies, without limitation, circumstances that ‘shall be evidence of the registration and use of a domain name in bad faith’, for the purposes of paragraph 4(a)(iii). Only one of these circumstances (paragraph 4(b)(iv)), by necessity, involves a positive action post-registration undertaken in relation to the domain name (using the name to attract custom to a web site or other on-line location). The other three circumstances contemplate either a positive action or inaction in relation to the domain name. That is to say, the circumstances identified in paragraphs 4(b)(i), (ii) and (iii) can be found in a situation involving a passive holding of the domain name registration. Of course, these three paragraphs require additional facts (an intention to sell, rent or transfer the registration, for paragraph 4(b)(i); a pattern of conduct preventing a trade mark owner’s use of the registration, for paragraph 4(b)(ii); the primary purpose of disrupting the business of a competitor, for paragraph 4(b)(iii)). Nevertheless, the point is that paragraph 4(b) recognizes that inaction (eg. passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith. Furthermore, it must be recalled that the circumstances identified in paragraph 4(b) are ‘without limitation’ – that is, paragraph 4(b) expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith." Among the circumstances indicating that "passive holding" amounts to "use in bad faith", Telstra listed cases where "the Complainant’s trademark has a strong reputation and is widely known", and "it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law." Telstra has been quoted in a number of subsequent decisions, including: Ingersoll-Rand Co. v. Frank Gully (case D-2000-0021), Compaq Computer Corporation v. Boris Beric (case D2000-0042), InfoSpace.com, Inc. v. Tenenbaum Ofer (case D2000-0075), Association of British Travel Agents Ltd .v. Sterling Hotel Group Ltd (case D2000-0086), Marconi Data Systems, Inc. v. IRG Coins and Ink Source (case D2000-0090), Inc Sanrio Company, Ltd. and Sanrio, Inc. v. Neric Lau (case D2000-0172), J. García Carrión, S.A. v. Mª José Catalán (case D2000-0239), Frías Advanced Micro Devices, Inc. v. (No Name) (Case D2000-0515), Teledesic LLC v. McDougal Design (case D2000-0620), Clinica Corachan, S.A. v. Fc Team Car, S.L. (case D2000-0766), Red Bull GmbH v. Harold Gutch (case D2000-0766).
In all the above cases, the conclusion was that "passive holding" of a domain name may amount to use in bad faith, particularly when "the expected use of the domain name by Respondent inevitably (…) will lead people to believe that the Respondent and the Respondent’s site was in some way associated with the Complainant. For this purpose potential use is equivalent to actual use" (Red Bull GmbH V. Harold Gutch, quoted).
Based on these precedents, the Panel concludes that the domain names "enjoyrome.net" and "enjoyrome.org" are being used by Respondent in bad faith.
F. Respondent’s offer to "swap" domain names
Respondent’s offer to "swap" domain names in exchange of two other available domain names is, obviously, outside the Policy and cannot be taken into account here.
Pursuant to Paragraph 4 (i) of the Policy and Rule 15 of the Uniform Rules, this Panel orders that the domain names "enjoyrome.net" and enjoyrome.com" be transferred to Complainant.
Dr. Massimo Introvigne
Dated: April 3, 2001