WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Servizi Consortili Costa Smeralda S.p.a. v. Mr. Giovanni Piras
Case No. D2001-1197
1. The Parties
The Complainant is Servizi Consortili Costa Smeralda S.p.a., Località Porto Cervo, Arzachena, Sassari, Italy.
The Respondent is Mr. Giovanni Piras, Muravera, Cagliari, Italy.
2. The Domain Name and Registrar
The domain name at issue is <costasmeralda.net> (Domain Name), which Domain Name is registered with Tucows Inc., Toronto, Ontario, Canada (the Registrar).
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 (the Policy), to the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (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 October 2, 2001. The signed original with attachments was received by the Center on October 5, 2001.
On October 5, 2001, the Center transmitted to Register.com, which was indicated as the registrar in the Complaint, a request for Registrar Verification in connection with this case. Following Register.com reply that they were not the registrar for the Domain Name, on October 8, 2001, the Center transmitted to the Complainant a Notification of Complaint Deficiency.
On October 9, 2001, the Center received from the Complainant the Amended Complaint indicating that the registrar for the Domain Name is Tucows Inc., Toronto, Ontario, Canada and adding a paragraph under point 8.c) regarding the offer made by the Respondentís lawyer on October 3, 2001, to sell the Domain Name for the sum of 8,000,000 Lira (Attachment 13 to the Amended Complaint), as evidence of use of the Domain Name in bad faith.
On October 8, 2001, the Center transmitted to the Registrar a request for Registrar Verification, and on October 10 the Registrar confirmed, inter alia, that: (i) Tucows Inc. is the Registrar of the Domain Name <costasmeralda.net>; (ii) the current registrant of the Domain Name is the Respondent; (iii) the administrative and billing contact is Giovanni Piras and (iv) the domain name registration was put on hold pending the dispute.
On October 11, 2001, the Center completed the Formal Requirements Compliance Checklist and on the following day transmitted to the Respondent a Notification of Complaint and Commencement of Administrative Proceedings (Commencement Notification) electronically and by courier. In the Commencement Notification the Center advised the Respondent that a response was due on November 1, 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 November 6, 2001, the Center transmitted to the Respondent a Notification of Respondent Default, copy to the Complainant.
On November 22, 2001, the Center notified the parties that Anna Carabelli, Eva Fiammenghi and Luca Barbero had been appointed as the Administrative Panel in this proceeding, indicating that, absent exceptional circumstances, the Administrative Panel was required to send its decision to the Center by December 6, 2001.
The Panel has independently determined and agreed with the assessment of the Center that the Complaint as amended by the Amended Complaint formally complies with the requirements of the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant has provided evidence of a number of trademark registrations for the words COSTA SMERALDA (Attachments 2 to 8 to the Complaint) for Italy, (Attachment 2), the European Community (Attachment 3), Japan (Attachments 4 and 5), the United Kingdom (Attachments 6 and 7), and the U.S.A. (Attachment 8). The Panel notices that while the registrations under Attachments 3 to 7 are in the name of the Complainant, the registrations under Attachment 2 and 8 are in the name of Consorzio Costa Smeralda.
The Complainant also submitted copy of the decision rendered by the Court of Appeal of Rome dated April 18, 1997 (a final decision) in the case brought by the Complainant and Consorzio Costa Smeralda against the well-known fashion company Mario Valentino S.p.a. in connection with the Italian trademark COSTA SMERALDA. The Court of Appeal of Rome found in favor of the Complainant and assessed that COSTA SMERALDA is not primarily a geographical name but a fancy name resulting from the activities of the Consortium including as its members real estate owners and tourist operators that in 1962 created and used this name to designate a certain portion of the North Eastern Sardinian Coast. (Attachment 9 to the Complaint).
Based on Attachment 9 it results that: (i) the Italian registered trademark (Attachment 2) was assigned to the Complainant (see Attachment 9, page 7) and (ii) the Complainant and Consorzio Costa Smeralda are somehow related. Based on the above, in the Panelís opinion, there is no conflict amongst the trademark registrations referred to in the Complaint.
In addition, the Complainant submitted a copy of the letter dated October 3, 2001, sent by the Respondentís lawyer (Attachment 13 to the Complaint), containing an offer to sell the Domain Name for the sum of Lire 8,000,000.
5. Partiesí Contentions
The Complainant contends that:
- the Complainant is a consortium including as its members: all major hotels, real estate agencies, magazines, and travel agencies using the name COSTA SMERALDA;
- COSTA SMERALDA is not primarily a geographical name. It was created in 1962 when the Complainant was established and decided to use the trademark COSTA SMERALDA as a name for the hotels, resorts and real estate properties owned by the members of the Consortium in a specific area of North-Eastern Sardinia, Italy;
- the above was asserted by the final decision dated April 18, 1997, rendered by the Court of Appeal of Rome referred to under paragraph 4;
- the Respondentís Domain Name is confusingly similar to the Complainantís trademarks COSTA SMERALDA;
- the Respondent has no rights or legitimate interests in the Domain Name;
- the Respondent, an Italian citizen, has registered the Domain name in bad faith since by the time of registration he could not be unaware of the Complainantís well-known trademark COSTA SMERALDA;
- the Respondentís bad faith in using the Domain Name is demonstrated by: (i) the lack of any evidence as to the Respondentí use or demonstrable preparation to use the Domain Name; (ii) the fact that the Respondent has advertised the Domain Name as for sale (Attachment 11 to the Complaint); and (iii) the offer to sell the Domain Name for a sum (Lire 8,000,000) in excess of the out of pocket costs directly related to the Domain Name, made by the Respondentís lawyer on October 3, 2001 (Attachment 13).
Based on the above, the Complainant requests the transfer of the Domain Name.
The Respondent did not file any Response and is in default.
6. Discussion and finding
1. Art. 15.a. of the Rules instructs the 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 4.a of the Policy, the Complainant must prove each of the following:
(i) The domain name in issue is identical or confusingly similar to the Complainantís trademark or service mark; and
(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.
Paragraph 4.c of the Policy sets out three illustrative circumstances any one of 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) above.
(a) Identity or confusing similarity
The Domain Name is identical with the Complainantís trademarks except that the Domain Name (i) employs lower case letters while the Complainantís trademark is generally used in capital letters (Attachment 2 to 8 to the Complaint) and (ii) adds the generic TLD <.net>. None of the above factors has any legal significance in comparing the Domain Name to the Complainantís trademarks. In particular, gTLDs clearly do not have any distinctive character.
Therefore, the Panel finds that the Domain Name is identical to the Complainantís trademark COSTA SMERALDA.
On this record, this element had been established.
(b) Rights or legitimate interests
Based on the Complaint it is clear that the Complainant has never authorized or licensed the Respondent to use the Complainantís trademark COSTA SMERALDA. It also appears that the Respondent is not commonly known by the Domain Name.
In addition, the trademark COSTA SMERALDA has been recognized as a fancy trademark (Attachment 9) and this recognition puts the Respondent in the position of not having any relation with the Complainantís trademark.
There is no evidence of any use or demonstrable preparation to use the Domain Name by the Respondent, either in connection with a bona fide offering of goods or services or for non-commercial purposes.
The Panel finds, therefore, that the Complainant has established a prima facie evidence that the Respondent has no rights or legitimate interests in the Domain Name.
In addition, the Panel considers that by submitting no Response, the 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; Deutsche Bank AG v. Diego-Arturo Bruckner WIPO Case No. D2000-0277; Talkcity Inc. v. Robertson WIPO Case No. D2000-0009).
The Panel concludes therefore that the Respondent has no rights or legitimate interests in the Domain Name.
(c) Bad Faith
Under the Policy, the Complainant is also required to prove the third element provided for in paragraph 4.a (iii), namely that the domain name "has been registered and is being used in bad faith".
As demonstrated by the Complainant, at least factor (i) of Paragraph 4.b of the Policy is applicable here and establishes bad faith registration and use of the Domain Name.
The letter of October 3, 2001, sent by the Respondentís lawyer leads to conclude that the Respondent has registered or acquired the Domain Name "primarily for the purpose of selling, renting 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".
Further, the Respondent has acted with passive holding, which has been repeatedly and consistently regarded by the Panelsí decisions as use in bad faith, since the very early decision Telstra Corporation Ltd. v. Nuclear Marshmallows (WIPO Case No. D2000-0003).
In addition, the Respondent should have known of the renown of the Complainantís trademarks, particularly considering his geographical location, as an individual residing in Sardinia, when he registered the Domain Name. This suggests opportunistic bad faith (Veuve Clicquot Ponsardin v. The Polygenix Group Co. WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia WIPO Case No. D2000-0226). In addition, the Respondent has no rights or legitimate interests in the Domain Name (as established in paragraph 6.b above) and, therefore, could not possibly make any plausible actual or contemplated use of the Domain Name other than illegitimate use, under fair competition and trademark law principles.
Therefore, the Panel concludes that the Domain Name has been registered and used in bad faith.
The Panel decides that: (a) the Domain Name <costasmeralda.net> registered by the Respondent is identical to the Complainantís trademark; (b) the Respondent has no rights or legitimate interests in respect of the Domain Name <costasmeralda.net>; and (c) the Domain Name <costasmeralda.net> has been registered and is being used in bad faith by the Respondent.
Accordingly, the Panel requires that the Domain Name <costasmeralda.net> be transferred to the Complainant.
Dated: December 5, 2001