WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rusconi Editore v. The Gente Club
Case No. D2001-0451
1. The Parties
Complainant is Rusconi Editore S.p.A, Milano a corporation organized and existing under the laws of Italy, represented by Avvocato Mariachristina Rapisardi, Studio Legale Rapisardi, Milano, Italy.
Respondent is The Gente Club, Lugano, Switzerland.
2. The Domain Name and Registrar
The domain name at issue is <gente.com>. The registrar is Network Solutions, Inc. ("NSI"), Herndon, Virginia, United States of America.
3. Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on March 28, 2001, and the signed original together with four copies was received by the WIPO Center on March 30, 2001. The WIPO Center sent an Acknowledgment of Receipt to the Complainant on April 2, 2001.
On April 3, 2001, a Request for Registrar Verification was transmitted to the Registrar, NSI. On April 4 NSI/VeriSign confirmed by e-mail that they were in receipt of the Complaint sent to them by the Complainant, that the domain name <gente.com> was registered with them and that the Respondent was the current registrant of the name. The Registrar also forwarded the requested WHOIS details, confirmed that the Uniform Domain Name Dispute Resolution Policy was in effect and stated that the domain name was on "Active" status.
The policy in effect at the time of the original registration of the domain name at issue was VeriSign´s Version 5.0 Service Agreement.
A Formal Requirements Compliance Checklist was completed by the assigned WIPO Center Case Administrator. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules").
The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
No formal deficiencies having been recorded, on April 6, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent, setting a deadline of April 25, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail address indicated in the Complaint and specified in the Registrars WHOIS confirmation, as well as to <firstname.lastname@example.org>. The latter was not received. In addition, the Complaint was sent by courier to the indicated postal address, but was returned.
On April 26, 2001, having received no Response from the designated Respondent, the WIPO Center transmitted to the parties a Notification of Respondent Default.
On May 1, 2001, in view of the Complainant’s designation of a single panelist (but without prejudice to any election to be made by the Respondent) the WIPO Center invited Mr. Knud Wallberg to serve as a panelist in Case No. D2001-0451, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
Having received on May 2, 2001, Mr. Knud Wallberg’s Statement of Acceptance and Declaration of Impartiality and Independence, on May 4, 2001, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Knud Wallberg was formally appointed as the Sole Panelist. The Projected Decision Date was May 17, 2001.
The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.
The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Uniform Rules, the WIPO Supplemental Rules, but without the benefit of a response from the Respondent.
4. Factual Background
1.The Complainant is a publishing firm and owner of a number of magazines distributed in Italy, Europe and the rest of the World.
Among the magazines published by Rusconi, and one which has a particular prominence is the magazine "Gente". The first issue was published in September 1957 and it has during the years gathered national and international renown proved by the high edition and diffusion in Italy and abroad; as proof thereof, the ADS (Accertamento Diffusione Stampa) declaration for the years 1995, 1996, 1997, 1998, 1999 was attached, as well as the data sheet for the sales abroad, with details of the countries and number of copies for the years 1996, 1997, 1998, 1999, 2000. Also further proof of the prominence attached to the magazine was attached to the Complaint.
Attached to the Complaint was also several registration certificates of the mark GENTE in different countries and for a broad list of goods and services.
On this background the Complainant claims that:
- From the circumstances described in the preceding paragraphs and from the number of registered trademarks in Italy and abroad, it can for sure be stated that the trademark "Gente" is provided with the requirement of notoriety.
- The absolute identity between the name of the domain object of the present complaint and the registered trademarks of which the Complainant is owner does not need any further illustration; as well as is proved the notorious character of the trademarks themselves.
As far as the absence of rights and legitimate interests of the Respondent with respect to the domain name under complaint is concerned, the Complainant notes that the Registrant appears to be a not better precised "entity" named The gente club of which not even an address but only a "poste restante" reference exists. A company named "The gente club" does not appear to exist neither it appears that the Registrant "The gente club" be owner of trademarks formed by the word "gente".
Even if we suppose that "The gente club" be corresponding to the denomination of the company, same could at most claim rights or legitimate interests for a domain name formed by the words "The gente club" but not for the domain name herein under complaint, which is formed by the word "gente" only. It shall be specified that at the moment of the issue of this complaint, the domain name "genteclub.com" was available for registration.
The registrant, furthermore, is not known through the web site corresponding to the domain name in question, nor do they carry out any activity, which could be referred thereto. The site corresponding to the domain name is not used.
From the notorious character of the magazine published and distributed by Rusconi it is the view of the Complainant that the Respondent, at the time of the registration, was aware of the rights of the Complainant and thus interfered with the trademarks "gente" of which the same is owner. A more natural step would have been to register the domain name as exactly corresponding to their denomination that, as mentioned in the preceding paragraph, was and is available.
The fact that the web site corresponding to the domain name under complaint is not used although the registration goes back to more than 4 years, beside revealing the absence of a real interest of the Registrant regarding the same, demonstrates the will of the Registrant themselves to prevent the Complainant from having a web site identified with the name of its most important magazine; such an impediment forms as such an interference with the rights that derive to the Complainant from the trademarks of which same is owner.
As mentioned above under 3, the Respondent has not filed a response in accordance with the Rules, Para. 5 and regrettably no other information on the Respondent has been presented to the Panel.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules the Panel shall decide a complaint 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:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no legitimate interests in respects of the domain name; and
3) the domain name has been registered and used in bad faith.
The domain name <gente.com> is identical to the trademark GENTE except for the addition ".com".
The Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating the mark. Further, the Respondent has not proven that he has any prior rights or legitimate interests in the domain name. The mere indication in the Registrant details for the domain name of a name of the holder - The Gente Club -, which contains the distinctive part of the domain name, is not in itself evidence of such a nature as to substantiate a legitimate interest in the domain name. This is especially true since there is apparently no activities performed under the said name from the said address.
The prerequisites in the Policy, Paragraph 4 (a) (i) and (ii), cf. 4 (c) are therefore fulfilled.
Paragraph 4 (a) (iii) of the Policy further provides registration and use in bad faith.
Paragraph 4 (b) regulates, by way of example, the kind of evidence that is required.
In the view of the Panel the facts in the case shows:
- the prior ownership by the Complainant of numerous identical trademark registrations of the mark GENTE including registrations in the home country of the Respondent, Switzerland,
- the identity between this mark and the distinctive part of the domain name at issue,
- the fact that the word GENTE has individuality and distinctiveness to serve as a trademark for the goods for which it is registered and used,
- the wide reputation in the mark GENTE also in Switzerland,
- the fact that it is highly improbable that the Respondent has selected the name without having knowledge of the Complainants trademark rights in Switzerland and elsewhere, and
- the non-contested statement in the Complaint and the contents of the Policy Paragraphs 4 (a)(i-iii) and 4(b)(iv), that the domain name has been registered and is being used in bad faith. The Panel wishes to express that it is within the scope of the rights conferred to a registered trademark to regard "passive use" as "use", cf. Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003, and several other subsequent decisions.
Consequently, all the prerequisites for cancellation or transfer of the domain name according to Paragraph 4(a) and (b) of the Rules are fulfilled.
The Complainant has requested transfer of the domain name.
In view of the above circumstances and facts the Panel decides, that the domain name registered by Respondent is identical to the trademark in which the Complainant has rights, and that the Respondent has not shown to have any rights or legitimate interests in respect of the domain name, and that the Respondent’s domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <gente.com> be transferred to the Complainant.
Dated: May 15, 2001