WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cassa di Risparmio di Parma e Piacenza S.p.A. v. GFA Garavaglia Fragetta, Angelo
Case No. D2001-0734
1. The Parties
Complainant is the Italian company Cassa di Risparmio di Parma e Piacenza S.p.A. (hereinafter CRPP), having its registered offices in Parma, Via dell'Università 1, 43100 Parma, Italy. The Complainant’s authorized representative is Mr. Fabio Angelini c/o Società Italiana Brevetti, Piazza di Pietra 38, 00187 Rome, Italy.
Respondent is GFA, Angelo Garavaglia Fraggetta, domiciled in Via dei Fiordalisi 5, Milano, Italy.
2. The Domain Name and Registrar
The domain name at issue is <cariparma.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) by email on June 1, 2001 and in hardcopy and exhibits on June 5, 2001. On June 6, 2001, the Center acknowledged receipt. On June 8, 2001, the Center transmitted via email to Network Solutions, Inc., a request for registrar verification in connection with this case. On June 11, 2001, Network Solutions, Inc. transmitted via email to the Center, Network Solutions, Inc.'s Verification Response, confirming that the registrant is GFA, Angelo Garavaglia Fraggetta and that the Domain Name registration is in "active" status.
The Center transmitted on June 12, 2001, to GFA, Angelo Garavaglia Fraggetta the Notification of Complaint and Commencement of the Administrative Proceeding by post (with attachment), and by fax and email without enclosures.
On June 29, 2001, the Center received the Response from the Respondent and on July 4, 2001, acknowledged receipt.
On July 6, 2001, in view of the Complainant’s 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 July 10, 2001, 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.
4. Factual Background
The Complaint is based on Italian trademark registration no. 627732 of November 11, 1991 (copy of the registration was enclosed to the Complaint).
The Respondent registered the domain name <cariparma.com> on December 28, 1998.
5. Parties’ Contentions
Cassa di Risparmio di Parma e Piacenza (hereinafter also CRPP) is declared to have been established in 1860 and to be presently a leader in the banking and saving and loans sector of central and northern part of Italy. Besides being the largest bank in the Emilia Romagna region of Italy, it is also present in six regions with more than 300 offices, with more than 4,000 employees and serving hundred of thousands of customers. Since 1998, it is part of the group BCI- Intesa, the largest banking group of Italy, in a merger-and acquisition operation which was widely reported all over Italian newspapers and media.
According to the Complainant, the mark CARIPARMA, however, is not only known due to its economical success, but also is the result of years and years of a constant and intense activity in the social, cultural and sporting fabric of the all the territories where CRPP operates, thus the name CARIPARMA has acquired throughout the years national recognition and appreciation. By way of example, CARIPARMA is a recognized name in the education and scientific sector, as shown, for instance by the financial support given, along with other prestigious companies, to the Media Science and Technology School.
The Complainant highlights that CARIPARMA is also the name of the homonymous Foundation (Fondazione Cariparma) which was created (and recognized by the Italian Government) as separate but closely connected entity from CRPP to promote sciences, education, liberal arts and charity activities. Fondazione Cariparma manages the largest Museum in Parma, and organizes art exhibitions of great interest, and is particularly involved in the preservation of Giuseppe Verdi's cultural heritage, owning and maintaining the Library in Busseto (birthplace of Giuseppe Verdi).
Besides these activities, CARIPARMA is also a familiar name in the sport field, not only because it is one of the sponsors of the soccer team AC Parma, one of the best in Italian "Serie A" championship, but also for its involvement and support of the so called "minor league" sports. The Complainant states that all of the above undoubtedly indicates that CARIPARMA, at least in Italy, is an instantly recognized trademark and brand name and it is an undeniable circumstance that it is immediately associated with the activities of the Complainant.
The Complainant, seeking to register CARIPARMA as domain name under the gTLD .com, discovered that the domain name <cariparma.com> had been registered by GFA. At the time the discovery was made, the website corresponding to <cariparma.com> appeared as shown to the Panel and as it currently appears on the Internet.
Since the domain name appeared in the Whois database of Network Solutions, Inc. (NSI) to have expired on December 28, 2000, before making recourse to other means, CRPP instructed, on February 6, 2001 its legal Counsels to approach Network Solutions, Inc. requesting NSI to make the domain name available. NSI refused by saying that the date of expiration as listed in the Whois was not the date of availability and for "security reasons it could not discuss privileged domain information with third parties". Copy of the correspondence is annexed to the Complaint.
CRPP instructed consequently its Counsel to approach the domain name registrant requesting the transfer of the domain name to CRPP. The letter, which was sent on February 9, 2001, in absence of further reference to GFA, was addressed to Mr. Angelo Garavaglia Fraggetta who appeared as administrative contact. Copy of the mail is annexed to the Complaint.
On February 20, 2001, attorneys representing Mr. Fraggetta replied, expressing their belief that their Client's registration was perfectly lawful and denying that CRPP had any right under Italian Trademark Law, especially because " your Client's trademark is written in capital letters thus cannot function as domain name, since the domain name is in lower letters and there is no confusion with CRPP's trademark which -in the form in which it is known- cannot be identical to the domain name". In light of the above the letter so concluded "Therefore, please quantify the amount of money the banking institution you represent is available to offer to our Client to acquire the ownership of the domain, warning that lacking a prompt reply, to the development of the site (which is suspended for few days) will correspond in an inversely proportional way the possibility that Mr. Fraggetta may giving it away". In light of such reply, CRPP instructed its Counsel to find out how much Mr. Fraggetta expected; in response Mr. Fraggetta's Counsel "pro bono pacis" stated that "in order to conclude the controversy with the transfer of the domain to CRPP and the renunciation of any further right -included that of registering other domain names confusingly similar with <cariparma.com> (emphasis added by the Complainant) - an amount of ITL 15 millions (approximately USD 7,500) was necessary". Copy of these letters are annexed to the Complaint.
Complainant, in light of the monetary request, and for the explicit threat that had been made (pay the amount or be prepared to have other confusingly similar domain names be registered), determined that no negotiations needed to continue and recourse to the UDRP was necessary also "to avoid further imperilment's to its trademark rights".
Under these circumstances, Complainant's belief is that the domain name at issue is confusingly similar to trademarks in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of such domain name and that such domain name was registered and is being used in bad faith.
The domain name <cariparma.com>, being absolutely identical to Complainant's registered trademark CARIPARMA is per se confusingly similar and make an unauthorized use of such trademark. The addition of the gTLD .com is irrelevant, being instrumental to the use on the Internet.
CARIPARMA is the distinctive acronym of three words CAssa di RIsparmio di PARMA and is immediately perceived by the public as making reference to the activities of Complainant. No other meaning or conceptual link may be made and thus its adoption as domain name is intentionally aimed to establish in the consumer mind such an association.
According to the Complainant, the domain name being confusingly similar to Complainant's trademark CARIPARMA is likely to cause confusion and mistake consumers, dilutes and impairs the distinctive reputation of the Complainant's trademarks and goodwill and considerably harms the Complainant commercial interest.
With reference to the Respondent’s rights or legitimate interests in respect of the domain name, Complainant underlines that the domain name is neither the legal name of the Respondent, nor has the Respondent been commonly known by the domain name.
Complainant states that the Respondent has no right in the domain name: an on-line search made among Italian as well as International registrations extended to Italy and into Community trademarks, did not disclose the Respondent owning any trademark registration or application for the domain name (copy of the online trademark search results is annexed attached to the Complaint).
The Complainant evidences that Respondent's present activity on the Internet cannot be considered as falling under UDRP Rules ( i.e. that "before any notice of the dispute [the Respondent] has used or made demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services to the public"): for more than two years there has not been (and there is not right now) any offering to the public, but the use is simply an occupation on the Internet of somebody else's name.
The Complainant also believes that the aforementioned circumstances indicate that the domain name was registered and is being used in bad faith as it seems incredible that the Respondent who is Italian may have registered and used <cariparma.com> in the ignorance of CRPP's rights on CARIPARMA.
Furthermore, the sequence of events shows a pattern of conduct which, on the one side is plainly inconsistent with a bona fide attitude and, on the other, reveals a scheme designed to receive consideration well in excess of the reasonable costs of registration and maintenance.
Complainant states that, since the first reply, it was clear that Respondent "was aiming at gaining considerably at the expenses of Complainant, and to reinforce the pressure, Respondent already from his first reply indicated that the longer Complainant took in accepting Respondent's requests, the more difficult would be (i.e. the more money would be necessary) to get the domain name back". When Complainant tried to understand and to resolve the matter in an amicable way, not only Respondent actually requested ITL. 15 millions (about 200 times more than the average cost of registering a domain name with Network Solutions, Inc.), but even implied that, if a solution was not achieved, other confusingly similar domain names could be registered.
Complainant also submitted a search in the Network Solutions Registry showing that GAF (or Angelo Garavaglia Fraggetta) is the owner of many domain names (as shown below) among which there are many famous trademarks (in Italy) such as EDITRICEGIOCHI (a major Italian publisher) or, evidently for a predilection for the bank sector, BANCACRT, which is the name of Cassa di Risparmio di Torino (copy of the records from the Whois Registry are annexed to the Complaint).
According to Complainant, all of the foregoing indicates that registration of CARIPARMA was intentionally pre-ordinate to gain unlawful advantages by the illicit exploitation of CARIPARMA's renown, since:
- "it was either Respondent's intention to abusively benefit of CARIPARMA's renown to attract Internet users on its website (given the immediate association that Italian consumers would make with CARIPARMA seems indeed quite indisputable that Respondent by using the domain name, has -and is - intentionally attempted(ing) to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his web site), or
- to create the conditions by which Complainant would be forced (cf. the Respondent's letters) to offer good and valuable consideration well in excess of the registration costs to acquire the domain name".
The Complainant concludes that all circumstances above show therefore the existence of a bad faith at registration date, bad faith which continues and is also evident in the present Respondent's conduct: as mentioned before, notwithstanding Respondent has had notice of Complainant's claims, Respondent continues the operation of his website with the greatest disregard for Complainant's rights and Complainant is also now at great risk that further confusingly similar domain names may be registered by Respondent.
In the light of the foregoing, and having proven the occurrence of circumstances indicated in paragraph 4(b) of the Policy, the Complainant believes that the existence of the Respondent's bad faith, both at registration date and subsequent to such date, is established.
The Respondent underlines that the Complainant and the Respondent are not competitors. Therefore, the domain name was not registered by the Respondent primarily to disrupt the Complainant’s business.
Furthermore, according to the Respondent, the trademark "cariparma" in Italian sounds like "dear-Parma" and is, in any case, a weak trademark unlikely to generate business interest related to the town of Parma or involving citizens of such an important Italian town.
The Respondent presumes that Cassa di Risparmio di Parma e Piacenza Spa has no rights to the Cariparma trademark because Cassa di Risparmio di Parma e Piacenza S.p.A. no longer exists since June 28, 2000, when it was dissolved. The Complainant merged to become INTESA S.p.A. which is the only surviving company of the merger and the only owner of the Complainant’s trademarks. The Cassa di Risparmio di Parma e Piacenza (the Complainant) was not established in 1860 (as stated at page 6, paragraph 12 A 1 of the Complaint), but only in 1993, after the merger of the Cassa di Risparmio di Piacenza e Vigevano with the Cassa di Risparmio di Parma (the Bank that registered the trademark Cariparma, an acronym of its name) forming the current Cassa di Risparmio di Parma e Piacenza.
The Respondent states that only in 1998, on December 28, did the Respondent register the domain name which is the subject of the Complaint. This followed a seeming lack of interest by the Complainant in the name "cariparma", which was not used at all in the World Wide Web. Furthermore, the Complainant did not register any domain name such as <cariparma.net> or <cariparma.org>, neither before nor after December 28, 1998, and the domain name <cariparma.it> has recently been registered by Mr. Simone De Cicco, who has nothing to do with Cassa di Risparmio di Parma e Piacenza and who created the domain on the September 18, 2000.
The Respondent asserts that the Complainant tries to argue the familiarity of the name Cariparma with very weak evidences, such as:
in <fondazionecrp.it> the name "cariparma" appears once only as well as in the web site in acparma.it the name "cariparma" appears once only.
According to the Respondent, other arguments of the Complainant are incorrect. For instance, the excerpts shown from the letter written by the Respondent’s lawyer, Mr. Zanchetta, have been chosen in bad faith. The Respondent denies any blackmailing intention in Mr. Zanchetta’s offer stating that only the Complainant interprets this as an implied threat in the offer.
Concluding with regard to presumed bad faith, the Respondent mentions that in the leading cases of this Honorable Authority (for instance, WIPO Case No. D2000-0003, Telstra Corp. Ltd. v. Nuclear Marshmallows) Web reputation is the principal evidence of the Respondent’s awareness (at the time of registration of the disputed domain name) of the notoriety of the disputed name. In this case Respondent notes that, at the time of registration, <cariparma.com> domain name was not registered by the Complainant who preferred to register <cariprpc.it> domain and never (after or before the registration) registered other domains with cariparma name (.net or .org), giving a reason to assume that the Complainant was not interested in using that name in the Web.
Respondent states that "cariparma" name is a very useful name for businesses involving Parma: Cari amici di Parma (dear friends of/from Parma); Cari prodotti di Parma (dear goods of/from Parma), or CAse di RIposo di PARMA (nursing/retirement homes of Parma). Respondent informs the Panel that <cariparma.com> was registered and maintained in the light of the many nursing homes in Parma Province, providing the Panel with the full list of the retirement houses of Parma and surroundings (about 15). The Respondent indicates that in 1998, he was to study the possibility of maintaining a web site to help the coordination of companies involved in building of some "case di riposo" in Region Emilia Romagna (where Parma is), providing the Panel with a copy of a letter on letter headed paper but without signature. Therefore, the Respondent registered the domain name <cariparma.com>, then, when the project vanished, the Respondent believed that the domain name could be used for other activities indicated in the Response but with the express request to the Panel to maintain the information "confidential and summons the readers of this Response to maintain secret".
Nevertheless, according to the Respondent, a lot of time was spent ("7,500 US dollars worth…") preparing the site and starting the related activities. When the "offer" of Cassa di Risparmio di Parma e Piacenza arrived the Respondent stopped the preparation of the new business, which the Respondent wants to remain confidential. The Panel, acknowledging the request, did not make reference to it in the present decision, but has duly evaluated all the information provided in the Response.
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 Italian trademark registration No. 627732 of November 11, 1991, for the word mark CARIPARMA.
In view of the above, the Panel finds that the Complainant has proved that the domain name is identical (obviously but for the suffix .com), 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 the Policy paragraph 4(c).
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 Complainant’s 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 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 Complainant’s 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.
Panel finds the paragraph i) applicable in the present case since the Respondent has first solicited via its lawyer’s letter of February 20, 2001, to "… quantify the amount of money" the Complainant "... is available to offer … to acquire the ownership of the domain … , being advised that, in absence of a prompt reply, to the development of the site … will correspond in an inversely proportional way the possibility that Mr. Fraggetta may giving it away". Furthermore, in the subsequent letter of March 7, 2001, Respondent indicated that "in order to conclude the controversy with the transfer of the domain … and the renunciation of any further right (included the registration of other domain names confusingly similar with cariparma.com) an amount of ITL 15 millions was necessary", which is clearly a consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name.
As the Panel is not limited to evaluate only the above listed circumstances as evidence of bad faith, it was considered an interesting coincidence that the Respondent registered on December 28, 1998, the same day of the registration of <cariparma.com>, the domain name <bancacrt.com>, which is identical to the name of another Italian large bank headquartered in Torino (Banca Cassa di Risparmio di Torino).
Furthermore, both domain names currently point at web pages with the indication "this site is currently under construction" (in different languages) but various services of the domain name maintainer, including domain name registration and web hosting solutions, are advertised and for sale on line. It cannot be excluded that such commercial activities were requested or at least authorised by the Respondent and that a commercial gain is generated also for the Respondent. The Panel finds that such web site is likely to create confusion as to the source, sponsorship, affiliation or endorsement by the Complainant as may attract Internet users seeking information about the corresponding banks.
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 <cariparma.com> be transferred to the Complainant.
Dated: July 21, 2001