WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fondazione Arena di Verona v. Giovanni Albertin
Case No. D2001-0567
1. The Parties
Complainant is Fondazione Arena di Verona, having its registered seat in Verona, Piazza Brà 28. The Complainantís authorized representative is Europatent-Euromark S.r.l., Via A. Locatelli 20, I-37122 Verona, Italy.
Respondent is Giovanni Albertin, via Stella 7, 35036 Montegrotto Terme (PD), Italy. The Respondentí authorized representative is Fiammenghi Fiammenghi, Via Quattro Fontane 31, 00184 Rome, Italy.
2. The Domain Names and Registrar
The domain names at issue are <arenaverona.com>, <arenaverona.tv>, <arena-verona.tv> and <arenadiverona.tv>; hereinafter referred to also as the "Domain Names".
The registrar for the domain names at issue is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received a complaint (hereinafter the Complaint) by email on April 19, 2001, and in hardcopy and exhibits on April 26, 2001. On April 26, 2001, May 4 and May 14, 2001, the Center transmitted via email to the Registrars requests for registrar verification in connection with this case. On May 16 and May 22, 2001, Network Solutions, Inc. transmitted via email to the Center, Network Solutions, Inc.'s Verification Responses, confirming that the registrant is Giovanni Albertin and that the Domain Name registrations are in "active" status.
The Center transmitted on May 25, 2001, to Giovanni Albertin the Notification of Complaint and Commencement of the Administrative Proceeding by post (with attachment), and by fax and email without enclosures.
On June 13, 2001, the Center received the Response from the Respondent and on June 14, 2001 acknowledged receipt.
On July 6, 2001, the WIPO Center invited Mr. Luca Barbero, of Turin, Italy, to chair the Panel in this case. It had earlier invited Mr. Eduardo Magalhaes Machado, of Rio de Janeiro, Brazil and Mr. Mladen Vukmir, of Zagreb, Croatia, to be Panelists. The WIPO Center transmitted to all Panelists a statement of acceptance and requested a declaration of impartiality and independence.
The Panelists duly advised of their acceptance to the WIPO Center and forwarded their statements of impartiality and independence. On July 10, 2001, the Complainant and the Respondent were notified of the appointment of the Panel. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On July 20, 2001, the Panel was informed by the WIPO Center that the text of the Preliminary Injunction on the domain name <arenaverona.com> proceeding, indicated as pending in the Complaint, was available and the Complainant was ready to provide such document and its translation in English. The Panel decided to examine the document and to take a decision according to Article 18 of the Rules for Uniform Domain Name Dispute Resolution Policy. A communication to that effect was issued by WIPO on July 25, 2001, allowing the Complainant a term of five days to comply with the notification and setting the new deadline for the decision at August 18, 2001. The Panel, having reviewed the Italian Judicial decision, opted to proceed to a decision according to Article 18 of the Rules for Uniform Domain Name Dispute Resolution Policy.
On August 15, 2001, the panel was informed of a submission via email of the Respondent to draw the Panelís attention on the WIPO Case No. D2001-0566 (Fondazione Arena di Verona v. Reiner Klose). Notwithstanding the late submission, the Panel informed the parties that such decision was already duly considered and it was concluded that there were significant differences in factual patterns between the two cases.
4. Factual Background
The Complaint is based on the following application and registration for the word mark "FONDAZIONE ARENA DI VERONA": Italian trademark registration No. 813097, filed on February 24, 2000; international trademark registration No. 735465, filed on March 27, 2000; Community trademark application No. 1571470, filed on March 23, 2000; U.S. trademark application No. 76/002,351, filed on March 16, 2000, and Canadian trademark application No. 1049785, filed on March 3, 2000 (copy of the trademarks were enclosed with the Complaint).
The Respondent registered the domain names <arenaverona.com> on April 10, 1999, and <arenaverona.tv>, <arena-verona.tv> and <arenadiverona.tv> on March 1, 2001.
5. Partiesí Contentions
The Complainant, Fondazione Arena di Verona (hereinafter also referred as "the Foundation"), is a non-for-profit private company with its registered seat in Verona (Italy), Piazza Brà 28. According to the certificate issued by the Chamber of Commerce of Verona, annexed to the Complaint, the Foundation is involved in the following activities: spreading, promotion and development of art and musical performances; musical education and training of art managers.
The Foundation is a private company which serves (according to the "purposes of the company") public purposes, and it has been a public body (under the name "Ente Lirico Arena di Verona") until March 1999. The President of the Foundation is the Mayor of Verona.
According to Article 1 of the Italian Law Decree No. 367 of June 29, 1996 (the text was annexed to the Complaint) "The bodies of priority national interest must become private right foundation according to this Law Decree" and Article 2 includes into these bodies "the Opera self-governing bodies cited in Title 2 of Law No. 800 of 14 August, 1967". The Law No. 800 of August 14, 1967 (copy provided to the Panel), Title 2, Article 6 ("Opera self-governing bodies and similar musical bodies") states that "The City Theatre of Bologna... and the Arena of Verona are recognized as Opera self-governing bodies".
According to article 15 of the Italian Law Decree No. 367 of June 29, 1996, the Foundation have "the exclusive right to use its own name, and the name and device of the theatre which is owned by the Foundation, as well as the names of the theatre performances; the Foundation can consent to the use of the above only with regard to activities which comply with the purposes of the Foundation".
The Complainant informs the Panel that the Foundation (and, before 1999, the Ente Lirico Arena di Verona) has been using the name Arena di Verona with regard to musical performances organized in the well-known theatre, since a very long time: as evidence thereof, the Complainant enclosed a collection of copies of posters of Summer Opera Seasons (the first evidence is dated 1938) of the Arena di Verona. According to the Complainant, the name Arena di Verona is therefore "well-known, famous and notorious, at least all over Europe and USA, and it is associated with the full range of activities which take place in the famous Veronaís roman theatre". This statement is strengthened by the fact that more than 50% of the audience of the yearly Summer Opera Season comes from abroad, and particularly from Germany, Austria, Switzerland, France, Japan and the U.S.A.
The Complainant states that according to the general rules concerning well-known trademarks, it must be deemed that any consideration about "products and services in connection with which the mark is used" is not important. As a matter of fact, every product of service marked "Arena di Verona" is deemed to be considered as anyway linked to the Verona Theatre. It is furthermore highlighted to the Panel that the disputed active website <arenaverona.com>, appears to deal with tourism, art and leisure, i.e. the typical fields of activity of the Foundation.
From the Certificate of the Chamber of Commerce of Verona, it could be derived that the Foundation has been established on March 22, 1999, i.e. before the four domain name registrations which are hereby contested.
The Complainant then indicates that with regard to the disputed domain names "arenaverona.tv", "arena-verona.tv" and "arenadiverona.tv", the Foundation is owner of several trademark applications or registrations, all preceding the registration of the above domain names, with regard to the wording "Fondazione Arena di Verona", being clear that the "heart" of these trademarks is the wording "Arena di Verona", and that "Fondazione" is a generic term, equivalent to the English word "Foundation".
The Complainant concludes that the possible confusion between the four contested domain names and the Complainantís trademark rights, similarity between the wordings "arenaverona", "arena-verona" and "arenadiverona" and the wordings "Fondazione Arena di Verona" and "Arena di Verona" is self-evident.
Addressing the issue of rights and legitimate interest, the Complainant states that the wordings "arenaverona", "arena-verona" and "arenadiverona" have nothing to do with the intellectual property right of the Respondent, the registered seat of the Respondent and any fair or authorized use of the above wordings by the Respondent. The Complainant is not aware of any intellectual property rights (trademarks, trade names, and so on) owned by the Respondent in connection with the words "Arena" and "Verona".
The Complainant notes that the Respondent is domiciled in Montegrotto Terme (Padua), which is, according to the Italian Railways Timetable, 95 Kilometres from Verona. The city of Montegrotto Terme belongs to another well-known touristic district (the "Terme Euganee" thermal baths), which has nothing to do with Verona or the Arena of Verona.
The Complainant informs the Panel that the Foundation has never authorized anyone to use its name as a domain name nor to sell tickets or reservations for the Arena Summer Opera Season on the Internet. To the best of the Complainantís knowledge, a non-commercial, or fair, or authorized use of the contested wording does not exist.
With reference to the registration and use in bad faith the Complainant indicates that the disputed domain names were registered for the purpose of interfering with the business of the Complainant and were primarily registered for the purpose of taking an unlawful advantage from the Complainantís great renown, by means of a likelihood of confusion with the Complainantís trademark and trade name as to the source.
Examining the contents of the active website <arenaverona.com>, the Complainant underlines that general information with regard to famous operas, story of the Arena, ticket reservations and hotels are provided. At the time the complaint was filed, the Respondent site seems to be the institutional site of the theatre, and no mention was made about the fact that such site had nothing to do with the Foundation and with its official website.
As a further element of bad faith, the Complainant underlines that, in the section "Hotels" the first place was reserved to Hotel Rio díOro, which is owned by the Respondent and only about Hotel Rio díOro full information were provided. In Complainantís opinion, there was a clear intention to establish a connection between Summer Opera Season and Hotel Rio díOro: the average consumer could easily be misled and think that there is any commercial link between the theatre and the Hotel, in absence of any contrary indication.
Concerning the ".tv" domain names, the Complainant states that they have been registered on March 1, 2001, and they are not yet active. As indicated in the complaint, the Complainant sued the Repondent for unfair competition (in what concerns <arenaverona.com>) on February 2001 before the Verona Court, and that the ".tv" registration have been secured by the Respondent just after the proceedings were started.
The Complainant discloses the above referenced legal proceeding pending in front of the Court of Verona and quotes the transfer of the domain name <arenaverona.it> to the Complainant already decided by an Italian Arbitration Panel according to the Italian Dispute Resolution Procedure.
The Respondent objects the extent to which Complainant has met the burden of proof.
With reference to the trademarks rights, the Respondent objects to the extension of use granted by the Italian Law Decree No 367 of June 29, 1996, which according to the Respondent should be limited to the spreading, promoting and developing art and music performance. Thus, Complainantís rights are restricted in the field of the music to the words FONDAZIONE ARENA DI VERONA and are not extended to ARENAVERONA/ARENADIVERONA.
The words "ARENA" and "VERONA" should be considered as common words thus Complainantís exclusive rights are limited to the words FONDAZIONE ARENA DI VERONA, therefore any use made by third parties must be considered as legitimate when not adopting exactly the same words. Thus the Domain Names ARENAVERONA and ARENADIVERONA did not violate Fondazioneís exclusive rights in its own "FONDAZIONE ARENA DI VERONA".
According to the Respondent, the trademark FONDAZIONE ARENA DI VERONA when it is used in connection with the activity of the theatre Arena of Verona has to be considered a descriptive trademark supporting this statement with a quote of Art. 3 of the Directive 89/104/EEC entitled (grounds for refusal or invalidity) " a trademark shall not be registered Ö..when it consists exclusively of sign or indications which may serve, in the trade to designate theÖgeographical origin Ö". The Respondent concludes that the trademark FONDAZIONE ARENA DI VERONA is a trademark designating geographical origin. Furthermore, the Respondent indicates that the Complainant did not support its allegations with evidence that the trademark is a well-known trademark.
Addressing the issue of bad faith the Respondent states that the website <arenaverona.com> results to be a website which contains general information on the activity of Arena di Verona Theatre and also provides useful information regarding hotels in Verona and nearby towns. Amongst those hotels also appears the name of the Hotel Terme Rio díOro s.r.l. of the Resistant. This fact does not affect the importance of the services offered to all opera lovers, that may choose easily through the services appearing on the website, the most suitable hotel depending on the price and location clearly shown. The Respondent concludes that it is making a legitimate fair use of the domain name, with no intent of commercial gain or misleading consumers.
The Respondent states that the domain names were not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant. The respondent concludes that according to most of the Panelís decisions when the Domain Name consists of a "generic name", another party might legitimately register the common name because of its primary meaning quoting E-Resolution Decision No. AF-0422 <tombola.org> and E-Resolution No. AF-0131 <fido.com>.
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 Names registered by the Respondent are 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 Names; and,
(iii) that the Domain Names have been registered and are being used in bad faith.
6.1. Domain Name identical or confusingly similar
The Complainant has provided evidence of ownership of the following registration and applications for the word mark "FONDAZIONE ARENA DI VERONA": Italian trademark application No. 813097, filed on February 24, 2000; Community trademark application No. 1571470, filed on March 23, 2000; international trademark registration No. 735465, filed on March 27, 2000; U.S. trademark application No. 76/002,351, filed on March 16, 2000, and Canadian trademark application No. 1049785, filed on March 3, 2000, for the word mark ARENA DI VERONA.
According to the Rules, a Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Thus, the Panel has also considered relevant for the scope of the present decision the specific position of the Complainant as the former public entity entrusted with developing musical programs for the specific site of Arena in Verona and later converted, by virtue of the above-referenced Italian law, into a private non-profit organization. It should be noted that Article 15 of the same Law Decree No. 367 of June 29, 1996, warrants to the Complainant, since its constitution on March 22, 1999, "the exclusive right to use its own name, and the name and device of the theatre which is owned by the Foundation, as well as the names of the theatre performances" .
The Panel furthermore finds that the Policyís only requirement is that the Complainant should be entitled to rights in a mark which are identical or confusingly similar to the disputed names. There is no mention in the Policy of goods and services to which the marks may relate. Therefore, the issues of the well-known status (with the consequent possible enlarged protection) and the alleged descriptive character of the trademarks are deemed by the Panel not relevant in the present administrative procedure.
In view of the above, the Panel finds that the Complainant has proved that the Domain Names are confusingly similar to the trademark of the Complainant according to paragraph 4(a)(i) of the ICANN Policy.
6.2. Rights and legitimate interest
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the dispute domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made 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 prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Respondent has not provided the Panel with convincing evidence of the applicability of any of the criteria provided for in Policy paragraph 4(c).
The Panel also finds that Respondent prima facie may have rights to maintain part of his present website on another domain name, corresponding for instance to the name of his own city, his business or others. On the basis of the annexes provided to the Panel, it is not essential that the kind site online at the time of the Complaint, is located at a domain name that seems to indicate that it is connected to or endorsed by the Fondazione Arena di Verona. It should be noted that, at the time the Complaint was filed, the website contained no indication that it was not the "official site" of the Complainant.
The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the Domain Names, 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 Names 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 Complainantís 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.
The panel finds the fourth element of Paragraph 4(b) of the Policy applicable in the instant case. As the respondent was certainly aware of the existence of the Arena di Verona and of the rights of the Complainant, by registering and using the domain name <arenaverona.com> has intentionally attracted internet users by creating a likelihood of confusion with the Complainantís trademark as to the source, sponsorship, affiliation, or endorsement of the website. The commercial gain was derived by the advertisement of the Respondentís hotel. It should be noted that, at the time of the initiation of the present arbitration procedure, the website of the Respondent did not contain any element which could easily differentiate it from the "official" website of the Complainant.
As indicated above, a preliminary injunction was granted in Italy for the Complainant on the domain name <arenaverona.com> and, probably pursuant to that decision, the website corresponding to the domain name is not online anymore.
With reference to <arenaverona.tv>, <arena-verona.tv> and <arenadiverona.tv>, it should be noted that they were registered by respondent only after the Respondent was summoned for the Court proceeding referred above. It might also be taken into account that, to date, the use is limited to a "work in progress" web page.
Pursuant to the interpretation of the ICANNís Uniform Domain Name Dispute Resolution Policy in cases of passive holding of the domain name first provided in Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003) 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), also the Panel in this case has taken into consideration the following particular circumstances for the assessment of bad faith with reference to <arenaverona.tv>, <arena-verona.tv> and <arenadiverona.tv>:
(a) Complainantís trademark it is widely known, at least, in Italy;
(b) Respondent knew or should have known of the existence of the Complainant trademark;
(c) Respondent has provided no evidence of nor alleged any actual or contemplated good faith use of the Domain Names;
(d) The registration of <arenaverona.tv>, <arena-verona.tv> and <arenadiverona.tv> took place only after the initiation of a legal procedure in Italy.
In view of the above, the Panel finds that Respondent registered and used the Domain Names in bad faith, according to paragraph 4(a)(iii) of the ICANN Policy.
In light of the foregoing, the Panel decides that the Domain Names registered by the Respondent are confusingly similar to the Complainant's trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Domain Names have been registered and used in bad faith.
Accordingly, the Panel requires that the registration of the domain names, <arenaverona.com>, <arenaverona.tv>, <arena-verona.tv> and <arenadiverona.tv> be transferred to the Complainant.
Eduardo Magalhaes Machado
Dated: August 16, 2001