WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Baldini Vernici S.p.A v. Web Address Bank
Case No. D2001-1062
1. The Parties
The Complainant is Baldini Vernici S.p.A. Via IV Novembre, 55016 Porcari (LU), Italy.
The Respondent is Web Address Bank Via Carlo Goldoni, 20, 54011 Bibola (MS) Italy.
2. The Domain Name and Registrar
The domain name at issue is <baldinivernici.com> (Domain Name), which is registered with Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170 USA.
3. Procedural History
A Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, and approved on October 24, 1999 (the Policy), to the Rules for Uniform Domain Name Dispute Resolution Policy, (the Rules), and to the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules), was submitted electronically to the WIPO Arbitration and Mediation Center (the Center) on August 24, 2001. The hard copies were received on August 27, 2001.
On August 31, 2001, the Center transmitted to the Registrar a request for Registrar Verification in connection with this case. On September 4, 2001, the Registrar confirmed that: (i) Network Solutions is the Registrar of the Domain name <baldinivernici.com>; (ii) the current registrant of the Domain Name is Web Address Bank, Via Carlo Goldoni, 20, 54001 Bibola (MS); (iii) the administrative and billing contact is Gian Roberto Caldana; and (iv) the current status of the Domain Name is "Active".
On September 4, 2001, the Center completed the Formal Requirements Compliance Checklist and, on the same date, transmitted to the Respondent a Notification of Complaint and Commencement of Administrative Proceedings (Commencement Notification) electronically; the notification by courier was transmitted on September 5, 2001. In the Commencement Notification, the Center, inter alia, advised the Respondent that a Response was due on September 24, 2001. On the same date, the Commencement Notification was copied to the Complainant and to ICANN and the Registrar.
Having received no Response from the Respondent, on September 27, 2001, the Center transmitted electronically to the Respondent a Notification of Respondent Default, copy to the Complainant.
On October 4, 2001, the Center notified the parties that Ms. Anna Carabelli had been appointed as the Sole Panelist in this proceeding, indicating that, absent exceptional circumstances, the Panelist was required to send her decision to the Center by October 18, 2001.
The Panelist independently determined and agreed with the assessment of the Center that the Complaint formally complies with the requirements of the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complaint is based on the following trademark registrations:
- for the words BALDINI VERNICI PROTAGONISTI DEL COLORE, Italian Registration No. 617963, application filed on May 23, 1991, (renewal application No. FI2001C000352) (Attachment G); and
- for the words GB BALDINI VERNICI PROTAGONISTI DEL COLORE (Attachment G):
i) Community Trademark Registration No.705376 (application filed on December 16, 1997);
ii) Argentinean Registration No. 1730517 (application filed on January 6, 1998);
iii) Turkish Registration No. 193872 (application filed on January 9, 1998);
iv) Uruguayan Registration No. 300600(application filed on January 7, 1998).
The Complainant is also the owner of the domain name <baldinivernici.it> and has developed the correspondent Web site whereon it promotes its business and products (Attachment H).
The Domain Name was registered by the Respondent on August 12, 1999 (Attachment A), with Network Solutions Inc. There is no active web site for the Domain Name.
On October 2, 2000, the Complainant sent to the Respondent a cease and desist letter, claiming its rights in the name "Baldini Vernici" and corresponding trademarks and requesting the transfer of the Domain Name (Attachment M).
Having received no reply, the Complainant sent a reminder on November 10, 2000, (Attachment N). On July 30, 2001, the Complainant then sent to the Respondent a further communication (Attachment O) offering to purchase the Domain Name for the out of pocket expenses covering the costs for registration and maintenance of the Domain Name. Respondent was advised that in the absence of a reply, Complainant would be compelled to initiate the present administrative proceedings.
5. Partiesí Contentions
The Complainant contends that:
- the Respondentís Domain Name is identical with the Complainantís de facto trademark GB BALDINI VERNICI which is used on Complainantís products and on its promotional material;
- the Respondentís Domain Name is confusingly similar to the Complainantís registered trademark BALDINI VERNICI PROTAGONISTI DEL COLORE and to its registered trademarks GB BALDINI VERNICI PROTAGONISTI DEL COLORE;
- the Respondentís Domain Name is identical with Complainantís corporate name;
- the Respondentís Domain Name is identical with Complainantís domain name <baldinivernici.it>;
- the Respondent has no rights or legitimate interests in the Domain Name since it is not a licensee nor an affiliate of the Complainant, and it has never been otherwise authorized to use the BALDINI VERNICI name or trademark or to apply for any Domain Name incorporating the Complainantís name and trademark;
- the Respondent registered and has been using the Domain Name in bad faith for the purpose of making a profit on its transfer, or of preventing the Complainant from reflecting the mark in a corresponding domain name. Evidence of the Respondentís bad faith in particular is the Respondentís business activity which consists in providing "advice and mediation for evaluation and buying Internet sites and domains" and the fact that the Respondent is the owner of several domain names which correspond to well known Italian trademarks registered by third parties;
- since registration (which occurred in 1999), the Respondent has not developed a web site using the Domain Name, nor made any good faith use of it.
The Respondent did not file any Response and is in default.
6. Discussion and findings
Paragraph 15.a. of the Rules instructs the Administrative Panel to decide the 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. Under paragraph 14.b of the Rules, if a party, in the absence of exceptional circumstances, does not comply with a provision of or requirement under these Rules, the Panel shall draw such inferences therefrom at it considers appropriate. Since the Respondent has not filed any Response and consequently has not contested any of the Complainantís contentions, this case shall be decided based on the allegations and documents submitted by the Complainant.
Under paragraph 4.a of the Policy, the Complainant must prove each of the following:
(i) the domain name at issue is identical or confusingly similar to the Complainantís trademark or service mark;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4.b of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4.a(iii) shall be evidence of the registration and use of a domain name in bad faith, as follows:
(i) circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to 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 Respondentís documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent 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 Respondent has engaged in a pattern of such conduct;
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondentís web site or on line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation or endorsement of the Respondentís web site or location or of a product or service on the Respondentís web site or location.
Paragraph 4.c sets out in particular but without limitation three circumstances which, if proved by Respondent, shall be evidence of the Respondentís rights to or legitimate interests in the domain name for the purpose of paragraph 4.a(ii), namely:
(i) before any notice of the dispute to the Respondent, the Respondentís use of, or 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; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making 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 or service mark at issue.
I) Identity or confusing similarity
The Domain Name is a combination of the words "baldini" and "vernici" which are both included in the Complainantís registered trademarks "BALDINI VERNICI PROTAGONISTI DEL COLORE" and "GB BALDINI VERNICI PROTAGONISTI DEL COLORE".
The Panel finds that the Domain Name is confusingly similar to the Complainantís trademarks whose dominant elements (in that they are distinctive and visually prominent) are the words Baldini and Vernici, while the logo GB is rather decorative and the expression PROTAGONISTI DEL COLORE (in English: THE COLOUR PROTAGONISTS) appearing in smaller type is allusive to the Complainantís business activity.
The Panelist also finds that the Domain Name is identical with or confusingly similar to the Complainantís corporate name BALDINI VERNICI S.p.A. and the Complainantís de facto trademark "GB BALDINI VERNICI". According to paragraph 15(a) of the Rules, the Administrative Panel decides the Complaint in accordance with any rules and principles of the law that it deems applicable. The principle of protection of the de facto trademark is widely accepted in different countries, and, in particular in Italy, where both the Complainant and the Respondent are based. In particular, the Italian Supreme Court has established that the constant and public use of a trademark which determines in the mind of the consumer the association between the adopter of the trademark and his products, is sufficient to establish the ownership of the trademark in favor of the adopter, and (as a consequence) it is sufficient to allow its protection.
Therefore, the Complainant succeeds in head (i) of paragraph 4(a) of the Policy.
II) Rights or legitimate interests
The Panelist finds that the Complainant has established a prima facie evidence that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant has not licensed or otherwise authorized the Respondent to use the Complainantís trademarks and there is no evidence in the record that Respondent is commonly known by the Domain Name or that he has made any actual or contemplated good faith use of the Domain Name.
On the other hand, the Panelist considers that by not submitting a Response, Respondent has failed to invoke any circumstance under paragraph 4.c of the Policy, which can demonstrate any rights or legitimate interests in the Domain Name (Spadel S.A v. Peter Kisters WIPO Case No. D2000-0526 (July 19, 2000); Deutsche Bank AG v. Diego-Arturo Bruckner WIPO Case No. D2000-0277 (May 30, 2000); Talkcity Inc. v. Robertson WIPO Case No. D2000-0009) (February 29, 2000).
Based on the arguments and evidence brought by the Complainant, the Panelist finds that the Respondent has no rights or legitimate interests in the Domain Name.
III) Bad Faith
The Panelist finds that the Respondentís activity amounts to bad faith registration and use of the Domain name, based on the following circumstances:
a) as described in paragraph II)6 above, the Respondent has no rights or legitimate interests in the Domain Name;
b) as described in the Respondentís web siteís home page (Attachment k to the Complaint), the Respondentís business activity consists in providing "Advice and mediation for evaluation and buying Internet sites and domains". At the mentioned web site, the visitor is clearly offered the possibility to buy or sell registered domain names ("Do you like to sell a Domain name? Do you mean to buy a Domain name already registered? Call us").
c) the Respondent is the owner of a number of domain names which correspond to third partiesí registered trademarks (Attachment L). The Panel decisions have established that ownership of numerous domain names which are the names or marks of well known business entities suggests the intent to profit from the activity of others (Stella DíOro Biscuit Co. Inc. v. The Patron Group Inc., WIPO Case No. D2000-0012; Nabisco Brands co. v. The Patron Group Inc., WIPO Case No. D2000-0032; Parfums Christian Dior v. 1 Network Inc., WIPO Case No. D2000-0022; J.P. Morgan v. Resource Marketing, WIPO Case No. D2000-0035);
d) the circumstances under points b) and c) above suggest Respondentís intent to sell the domain names for valuable consideration in excess of any out of pocket costs;
e) since registration, the Respondent has not developed any web site under the Domain Name and there is no evidence or indication of any good faith use of the Domain Name by Respondent. It is an established principle since the Telstra case (No. D2000-0003) that the concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept;
f) by not submitting a Response, the Respondent has failed to address any of the Complainantís contentions.
The Panelist decides that: (a) the Domain Name <baldinivernici.com> is confusingly similar to the Complainantís registered trademarks; (b) the Respondent has no rights or legitimate interests in respect of the Domain Name <baldinivernici.com>; and (c) the Domain Name <baldinivernici.com> has been registered and is being used in bad faith by the Respondent.
Accordingly, the Panelist requires that the Domain Name <baldinivernici.com> be transferred to the Complainant.
Dated: October 18, 2001