WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Piaggio & C. S.p.A. v. Pierpaolo Breda

Case No. D2001-1075

 

1. The Parties

The Complainant is Piaggio & C. S.p.A. a joint stock Company incorporated in Pontedera (PI), Italy, with business office in viale Rinaldo Piaggio 23, Pontedera, (PI); Italy, represented by Ing. Barzanò & Zanardo Milano S.p.A.

The Respondent is Mr. Pierpaolo Breda with address in Via Michetti 4, Scafa (PE), Italy.

 

2. The Domain Name and Registrar

The domain name at issue is <vespavintage.com> and the registrar with which the domain name is registered is Network Solutions, Inc. (hereinafter "Network Solutions"), 505 Huntmar Park Drive, Herndon, Virginia 20170-5139, USA.

 

3. Procedural History

The Complaint was submitted via e-mail on August 29, 2001, and in hard copy on August 30, 2001, to the World Intellectual Property Organization Arbitration and Mediation Center (hereinafter the "WIPO Center").

On September 3, 2001, the WIPO Center requested the Registrar, Network Solutions, pursuant to Paragraphs 2(a) and 4 of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "Rules"): (1) to confirm that a copy of the Complaint had been sent by the Complainant; (2) to confirm that the domain name at issue was registered with it, (3) to confirm that the person identified as the Respondent is the current registrant of the domain name; (4) to provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es) available in the registrar's Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact); (5) to confirm that the Uniform Domain Name Dispute Resolution Policy (hereinafter the "Policy") applies to the domain name, and (6) to indicate the current status of the domain name.

On September 4, 2001, Network Solutions replied that: (1) it was the Registrar of the domain name registration; (2) Pierpaolo Breda was the current registrant of the <vespavintage.com> domain name registration. Network Solutions also provided the full contact details as requested, and confirmed that the 5.0. Service Agreement was in effect, that the language of the Service Agreement in English, and that the domain name registration <vespavintage.com> status is "Active".

In accordance with Paragraph 2(a) of the Rules, the Complaint was properly notified on September 4, 2001 (which is also the date of commencement of the administrative proceeding) to the Respondent who did not file any Response and was notified of his default on September 27, 2001. On September 28, 2001, the Respondentís authorised representative sent an e-mail to the WIPO Center informing that the Respondent did not accept the UDRP procedure and asked for additional two weeks time to "demonstrate [his] reasons". The message went on to say that "at the present time a member of Parliament (Mr. Passigli) have brought a Bill before Parliament (C6910) which will regulate those kind of controversy". On September 28, 2001, the WIPO Center acknowledged receipt of the e-mail and informed the authorised representative that the Administrative Panel who will render a decision in this case was going to be appointed. On October 3, 2001, the Parties were informed that in accordance with Paragraph 6(f) of the Rules an Administrative Panel consisting of a single member had been appointed. The sole Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence and the date scheduled for the issuance of the Panelís decision was set for October 17, 2001.

In light of the above and according to the documents filed with the Panel, the Complaint appears to have been filed in accordance with the requirements of the Rules and of the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "Supplemental Rules").

With reference to the Respondentís denial of acceptance of the application of the UDRP in the case at issue, the Panel finds that in accordance with Paragraphs 1 and 4 of the Policy, the UDRP is incorporated by reference in the disputed domain name Registration Agreement, and that the domain name holder is required to submit to a mandatory administrative proceeding in the event that a Complainant asserts to the applicable Provider, in compliance with the Rules that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the domain name holder 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.

Therefore, since the Complainant has asserted in the case at hand the occurrence of all the above indicated circumstances, the Panel rejects the Respondentís denial of application of the UDRP as inadmissible.

With reference to the Respondentís request of an extension of time to "demonstrate [his] reasons", Paragraph 5 of the Rules states that the Respondent must submit a Response to the Provider within twenty (20) days of the date of commencement of the administrative proceeding, which was the 4th of September. This term is unextendable save for exceptional circumstances (cfr. Paragraph 14(a) of the Rules which states that "In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the Complaint"). Respondent failed to show any exceptional circumstance but simply requested an extension of time. The Panel does not consider such request an "exceptional circumstance." Since the Respondent did not file his Response within 20 days of the date of commencement of the administrative proceeding, i.e., within September 24, 2001, the Panel finds, in accordance with the WIPO Center, that the Respondent shall be considered in default.

The Panel finds that the payment was properly made and agrees with the WIPO Centerís assessment concerning the Complaintís compliance with the formal requirements:

Finally, in accordance with Paragraph 11 of the Rules, since the Parties to the present administrative proceeding have not agreed otherwise, and since the Registration Agreement that relates to the domain name in question does not specify otherwise, the language of the administrative proceeding will be the language of the relevant Registration Agreement, i.e. English.

 

4. Factual Background

According to the Complaint:

"Piaggio & C. S.p.A., previously Piaggio Veicoli Europei S.p.A., is very well-known throughout the world as an international leading company in the motor vehicles industry, in particular as far as motor scooters are concerned.

The Complainant has been using the trademark VESPA for more than fifty years in respect of vehicles as well as other products and services.

In 1946, the Complainant started manufacturing a revolutionary motor vehicle marked VESPA: since then more than 15.000.000 of such motor vehicles have been sold throughout the world, in about 110 countries.

The trademark VESPA, intended to be used in respect not only of vehicles but also other products / services, was initially registered in Italy on June 8, 1946, and then regularly renewed. The Complainant has been systematically protecting its trademark VESPA in several commercial fields, by registering it not only in Italy, but also in many other countries, namely, for instance, U.S., Canada, European Union, Brazil, Argentina, Japan, Taiwan, Thailand, India, Zimbabwe, etc. (Ö). The extraordinary sales success of VESPA products throughout the world has determined the huge renown of trademark VESPA, which is still increasing: the trademark VESPA should therefore be considered as renowned in accordance with art. 6.bis of the Paris Convention. The trademark VESPA is still nowadays one of the most important, if not "the most important", among the Complainant's trademarks.

All over Europe, but also in Asia, Africa and America (both North and South) the denomination VESPA immediately recall[sic] the Complainant's motor vehicle as well as the other products / services bearing the same trade / service mark. Complainant has been very carefully looking after VESPA concept as identification of its vehicle and accessories thereof. Everywhere in the world there are VESPA's fans who consider their passion a real "myth". There are thousands of fan club spread all over the world and periodical international meetings are organized by VESPA's fans (the so-called "vespisti"). Thousands of "vespisti" took part in one of these meetings, organized by the Complainant itself in Rome in 1996, for VESPA fiftieth anniversary.

On this occasion the Italian Mail issued a special memorial stamp to celebrate the anniversary. The Complainant has recently completely renewed the vehicle marked VESPA and this latter trademark is subject of huge advertising investments amounting to several billions of Italian Lira per year.

Complainant also named VESPA VINTAGE a section of the website www.vespa.com dedicated to the famous motor scooter VESPA. According to the Complainant, "this latter wording, identical to the disputed domain name, is subject matter of four trademark applications filed by Complainant in the U.S. and Canada. All the above applications, as well as the use of the trademark VESPA VINTAGE have been prior to the registration of the disputed domain name, registered by Respondent on April 1, 2000."

The Panel notes, from the documentation attached to the Complaint, that the Internet section dedicated to the VESPA scooter is called VINTAGE VESPA and not VESPA VINTAGE as mentioned in the Complaint. Also the U.S. and Canadian applications, mentioned in the Complaint, refer to the trademark VINTAGE VESPA and not VESPA VINTAGE. The Panel also notes that, in section [12.2] of the Complaint, the Complainant makes correct reference to the trademark VINTAGE VESPA. Accordingly, the Panel takes the view that the inversion of the terms VINTAGE and VESPA in section [12.1] of the Complaint is simply due to an overlook.

All the aforementioned statements are uncontested and most of them are supported by ample documents. As far as the renown of trademark VESPA is concerned, the Panel finds it is admitted by the same Respondent since, in the initial correspondence between the Respondentís first attorney and the Complainantís representatives, (as it results from Exhibits 17 and 19), in several instances, the Respondentís authorised representative refers to VESPA as a well-known trademark.

In the light of the foregoing, the Panel takes the view that Complainantís statements are a fair representation of Complainantís activities.

 

5. Partiesí Contentions

A. Complainant

According to the Complainant,

the disputed domain name is identical or confusingly similar to a trademark in which the Complainantís has rights for the following reasons:

- The trademark VINTAGE VESPA of the Complainant is identical to the domain name VESPAVINTAGE.COM of the Respondent.

- Since the word VINTAGE is used in both the Complainantís trademark and, we assume, the Respondentís domain name as an adjective of the word VESPA to mean "high quality of a past time", the distinctive part of both the trademark and the domain name at issue has to be VESPA: in fact a trademark VINTAGE and a domain name <vintage.com> on their own would be too generic and not very likely to attract consumers. The disputed domain name is therefore to be considered also as confusingly similar to the trademark VESPA of the Complainant.

- Even if the Respondent had chosen the domain name regardless of the Complainant's trademark rights - which in our opinion is very much unlikely because of the above as well as following reasons - <vespavintage.com> is in apparent and direct conflict with the Complainant's prior rights in the registered and well-known trademark VESPA / VINTAGE VESPA.

- The domain name VESPAVINTAGE.COM is therefore likely to create confusion among the Internet consumers and deceives its purpose of being a business identifier.

The Complainant also alleges that Respondent has no rights or legitimate interests in respect of the domain name that is the subject of the Complaint because:

- The Complainant is the sole and exclusive owner of the trademarks VINTAGE VESPA and VESPA;

- There is no relation between the Complainant and the Respondent and the latter is not a licensee of the former, nor has the Respondent obtained an authorization to use the Complainantís trademarks;

- Since the disputed domain name was registered, i.e., April 1, 2000, the Respondent never used it;

- The Respondent is not commonly known by the domain name at issue.

Finally, the Complainant alleges, on the basis of several concurring arguments, that the domain name <vespavintage.com> should be considered as having been registered and used in bad faith. In particular the reasons alleged by the Complainant to support its view are the following:

- On March 7, 2001, the Complainant, through its attorneys, wrote a letter to the Respondent stating its rights in the trademark VESPA and challenging the domain name registration <vespavintage.com>. In this letter the Complainant proposed to amicably settle the matter by refunding the Respondentís registration costs upon the Respondent transferring the challenged domain name to the Complainant;

- On March 26, 2001, the Respondent, through his lawyer, challenged the Complainantís letter stating that (i) there is no law to rule domain names and the relevant case law is very much contradictory; (ii) the word VINTAGE beside VESPA has to be considered as a sufficient differentiation; (iii) the Respondentís business field is different from the Complainantís one; (iv) considering the above, the Respondent has the full right to own the disputed domain name registration and in any case would consider the possibility to transfer it;

- On April 10, 2001, the Complainant through its attorneys, replied to each of the Respondentís arguments stating that: (i) the domain names related issues have been solved in most cases by applying the trademark law and the majority case law has been consistent; (ii) the Complainant also owns some applications for the trademark VINTAGE VESPA; (iii) apart from the fact that the Respondent has never used and is still not using the domain name <vespavintage.com>, VESPA should enjoy protection in respect of all products and services for being a renowned trademark and moreover is subject matter of many trademark registrations / applications in respect of products / services different than motor vehicles. In order to settle the matter, in exchange for the assignment of the domain name registration at issue, the Complainant stated to be prepared to give the Respondent one of its motor vehicles, the value of which would certainly be higher than the out-of-pocket costs directly related to the domain name;

- On March 17, 2001, the attorney of the Respondent refused to acknowledge legal grounds on the basis of which the domain name VESPAVINTAGE.COM had been disputed and, although on the one hand acknowledged the renown of the trademark VESPA but not of VINTAGE VESPA, on the other hand considered the Complainantís purchase offer "odd and inadequate" due to the "high commercial value" of the disputed domain name. In accordance with the Respondentís reasoning, the Complainant wonders why the domain name at issue should be considered as having a "high commercial value" if not for the fact that it includes the Complainantís renowned trademark VESPA;

- On June 11, 2001, the Complainantís attorneys reaffirmed the Complainantís position on the matter and, as a further attempt to reach a friendly settlement, asked the Respondent to quantify the consideration requested for the disputed domain name;

- On July 3, 2001, the Respondent himself replied stating that (i) he was willing to sell the domain name <vespavintage.com>; (ii) the consideration value of the domain name at issue had to be calculated in connection with the turnover of the motor scooters vintage field, being VESPA a "symbol" of the latter; (iii) such consideration would refund the Respondent of the lack of earnings, since the Respondent intended to use the domain name at issue for commercial purposes; (iv) the consideration requested to sell the domain name <vespavintage.com> is USD 80,000 and the negotiations had to be handled by the Respondent himself.

In view of the above, the Complainant states that "the Respondent seems to have acquired the domain name <vespavintage.com> primarily for the purpose of selling it to the Complainant who is the owner of the corresponding trademark, for valuable consideration far in excess of the out-of-pocket costs directly related to the domain name." In case the Complainant did not accept to purchase the disputed domain name by paying the consideration requested, "the Respondent seemed to be ready to use the domain name <vespavintage.com> with the attempt to attract, for commercial gain, Internet users to the corresponding web site, by creating a likelihood of confusion with and taking unfair advantage of the renown of the Complainantís trademark VESPA / VINTAGE VESPA."

B. Respondent

The Respondent did not submit any Response, as indicated above, and therefore is to be considered in default.

 

6. Discussion and Findings

According to Paragraph 4(a) of the Policy, in an administrative proceeding, the Complainant must prove that each of the following three elements are present: (1) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (2) that the Respondent has no rights or legitimate interests in respect of the domain name; and (3) that the domain name was registered and is being used in bad faith.

1) The Panel believes that the domain name at issue <vespavintage.com> is confusingly similar to a trademark in which the Complainant has rights. The Complainant asserts that "The trademark VINTAGE VESPA of the Complainant is identical to the domain name VESPAVINTAGE.COM of the Respondent". The Panel does not share this view. "Identical" means "similar or alike in every way; the very same" (Random House Websterís Dictionary, Third Edition). Accordingly, "identity" is a concept which does not apply in the case at stake since the terms VINTAGE and VESPA adopted in the Complainantís trademark and in the domain nameVESPAVINTAGE.COM are reversed. The Panel might have found that the Complainantís trademark VINTAGE VESPA and the disputed domain name were confusingly similar, but the Complainant failed to introduce this argument in the Complaint. Since it is not the role of the Panel to conduct independent investigations outside the materials submitted in the records (see Benefitslink.com, Inc. v. Mike Haynes NAF, Case FA0007000095164), the Panel can only conclude that the Complainantís trademark and the disputed domain name are not identical.

However, the Complainant stated that

"Since the word VINTAGE is used in both the Complainantís trademark and, we assume, the Respondentís domain name as an adjective of the word VESPA to mean "high quality of a past time", the distinctive part of both the trademark and the domain name at issue has to be VESPA: in fact a trademark VINTAGE and a domain name <vintage.com> on their own would be too generic and not very likely to attract consumers. The disputed domain name is therefore to be considered also as confusingly similar to the trademark VESPA of the Complainant. Even if the Respondent had chosen the domain name regardless of the Complainantís trademarks rights Ė which in our opinion is very much unlikely because of the above as well as of following reasons Ė VESPAVINTAGE.COM is in apparent and direct conflict with the Complainantís prior rights in the registered and well-known trademark VESPA / VINTAGE VESPA. The domain name VESPAVINTAGE.COM is therefore likely to create confusion among Internet consumers and deceives its purpose of being a business identifier."

This Panel shares the Complainantís view.

The word VINTAGE is undoubtedly used as an adjective of the word VESPA meaning: "the best of a past time" ((Random House Websterís Dictionary, Third Edition) while the distinctive part of both the trademark and the domain name at issue is VESPA. The fact that the term VINTAGE is adopted as an adjective to define a certain kind of scooter VESPA is also indirectly confirmed by the Respondent himself, in a letter Enclosed as Exhibit 21 of the Complaint, sent by the Respondent to the Complainantís representatives and referring to the "vintage field of the entire field of scooters" (see point 3 below, for further details).

Therefore, the Panel finds that <vespavintage.com>, by making an unauthorised use of a sign, VESPA, upon which the Complainant has rights, is in apparent and direct conflict with the Complainantís prior trademark rights and is likely to create confusion among Internet users.

Therefore, the Panel is satisfied that the first condition is met.

2) The Panel finds that the Respondent has neither rights nor legitimate interests in respect of the domain name.

It is a consolidated principle that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondentís rights or legitimate interests in respect of the domain name according to Rule 4 (a) of the Policy is quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one. Accordingly, and in line with other prior decisions, the Panel holds that it is sufficient that Complainant shows a prima facie evidence in order to shift the burden of proof on Respondent (Anti Flirt S.A. and Mr. Jacques Amsellem v. WCVC, WIPO Case No. D2000-1553, Intocast AG. v. Lee Daeyoon, WIPO Case No. D2000-1467).

The Complainant alleged several circumstances that, in the Panelís view, render it appropriate this shifting of the burden of proof. In particular, the Complainant states that: (i) "the Complainant is the sole and exclusive owner of the trademarks VINTAGE VESPA and VESPA;" (ii) "there is no relation between the Complainant and the Respondent and the latter is not a licensee of the former, nor has the Respondent obtained an authorization to use the Complainant's trademarks;" (iii) "the disputed domain name was registered, namely April 1, 2000, the Respondent has never used it;" and (iv) "the Respondent is not commonly known by the domain name at issue."

Since the Respondent failed to file a Response, the Panel cannot but determine that Complainantís allegations are credible and that Respondent has not proved his entitlement or the existence of legitimate interests in respect of the disputed domain name.

Therefore, this Panel is satisfied that the second condition is met.

3) This Panel finds that the domain name was registered and is being used in bad faith.

In order to reach this conclusion, the Panel examined separately two issues:

1) whether or not bad faith existed when the domain name was registered; and

2) whether or not the domain name was used in bad faith.

As far as the first issue is concerned, the Panel finds that Complainant has given enough and supported evidence of the fact that the domain name <vespavintage.com> was registered in bad faith. The Complainant alleges that the Respondent "seems to have acquired the domain name (Ö) primarily for the purpose of selling it to the Complainant who is the owner of the corresponding trademark, for valuable consideration far in excess of the our-of-pocket costs directly related to the domain name." Furthermore, the Complainant alleges that "should the Complainant not accept to purchase the disputed domain name by paying the consideration requested, the Respondent seems to be ready to use the domain name VESPAVINTAGE.COM with the attempt to attract, for commercial gain, Internet users to the corresponding web site, by creating a likelihood of confusion with and taking advantage of the renown of the Complainantís trademark VESPA and VINTAGE VESPA".

This Panel believes, in accordance with the Complainant, that the disputed domain name was registered "for the purpose of selling (Ö) the domain name registration to the complainant (Ö) for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name" as mentioned in Paragraph 4(b)(i) of the Policy. Indeed, the Complainant enclosed copy of the correspondence between the Complainantís representatives and the Respondentís attorney, as well as a letter of the Respondent himself (Exhibits 16-21 of the Complaint) whereby it results that the Respondentís refused to transfer the domain name to the Complainant in exchange of the refund of the expenses incurred by the Respondent for the registration of the domain name, or even of the supply of a VESPA vehicle to the Respondent. The Respondent was only willing to assign the disputed domain name for a compensation of 80,000 USD. Such amount was calculated taking into account "the volume of sales of the vintage field of the entire field of scooters, which is in continuous growing, of which VESPA represents the symbol" (Exhibit 21 of the Complaint). By doing so, the Respondent has demonstrated to be aware of the existence of the "vintage field", of the fact that, within this field, the scooter VESPA is a symbol, and that the domain name <vespavintage.com> has a specific value which is to be calculated on the basis of the volume of sales of the vintage field within the field of scooters.

In the absence of any Response, and taking into account the fact that according to the materials filed by the Complainant, the trademark VESPA is a well-known trademark in Italy and abroad, and the Respondent does not appear to have rights or legitimate interests in respect of the domain name <vespavintage.com>, this Panel finds the above evidence sufficient to conclude that the domain name <vespavintage.com> was registered in bad faith in accordance with Paragraph 4(b)(i) of the Policy.

Having deemed satisfied the first condition, the Panel must now establish whether or not there has been use in bad faith.

The Complainant alleges that the Respondent never used the domain name <vespavintage.com> since its registration date (April 1, 2000). Passive holding of domain names is considered as a use, and a use in bad faith if the Respondent has acted in bad faith in the light of the specific circumstances of the case (WIPO Case No. D2000-0003 Telstra Corporation Ltd. v. Nuclear Marshmallow, WIPO Case No. D2001-0800, Telstra Corporation Limited v. Jinseok Yang / JYT112).

This Panel agrees with this view and holds that even the second issue is to be solved positively.

However, the Panel, in accordance with the powers conferred by Paragraph 14 of the Rules, has noted that Respondent, in his letter of July 3, 2001 (Enclosure 21 of the Complaint) - where the Respondent asks for a consideration of USD 80,000 for the transfer of the domain name - stated that "In addition, this amount compensate me for the loss of profit as I have the intention to exploit the captioned site for commercial purposes (emphasis added). Since the Respondentís statement did not necessarily imply that the domain name <vespavintage.com> was not actually used, but simply that on July 3, 2001, the corresponding website was not exploited for commercial purposes, this Panel deemed appropriate to verify that the disputed domain name was not used.

This Panel finds that contrary to the Complainantís statement by typing the address www.vespavintage.com one reaches a web page displaying the logo of "Domains Are Free". At the center of this page, before a list of other general information on the Technology Industry, is the script "welcome to www.vespavintage.com". The aforementioned page is a promotional page probably offered by the provider "Domains are Free" to its clients who registered domain names.

This Panel believes that even the mere presentation of a promotional page of the provider with whom a domain name has been registered amounts to a use of the domain name. Indeed, in the case at issue, on the one side the promotional page makes explicit reference to the disputed domain name by displaying the wording "Welcome to www.vespavintage.com". On the other side, even assuming that the Respondent was obliged to accept the promotional page, he still performed a positive action by choosing to apply for the registration of the disputed domain name through a provider which required the displaying of its promotional page in case the registered domain name did not lead to a different web site.

Furthermore, this Panel believes that such use may be considered as a use in bad faith under Paragraph 4(a)(iii) of the Policy. In fact, in the Panelís view, the actual use of the domain name in a way which is inconsistent with the name of the domain itself, the fact that the VESPA trademark is a well-known trademark in Italy and abroad, and that the Respondent has not rights or legitimate interests in the disputed domain name, combined with the offering for sale of the domain to the Complainant for an amount of USD 80,000 calculated on the basis of the volume of sales of the "vintage field in the scooters field", and with the statement that this amount would have compensated the Respondent for the loss of profit arising from the non-commercial exploitation of a web site corresponding to the domain name <vespavintage.com> amounts to a use in bad faith.

Therefore this Panel is satisfied that also the third condition is met.

 

7. Decision

In light of the foregoing, the Panel finds that Respondentís disputed domain name <vespavintage.com> is identical to Complainantís trademark, that Respondent has no legitimate rights or interests in the disputed domain name, and that Respondent has registered and made use of the domain name in bad faith. Accordingly, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <vespavintage.com> be transferred to the Complainant.

 


 

Angelica Lodigiani
Sole Panelist

Dated: October 17, 2001