WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Il Sole 24 ORE S.p.A. v. Host Master
Case No: D2002-0233
1. The Parties
Complainant: Il Sole 24 ORE S.p.A.
Via P. Lomazzo
Represented by: Kivial s.a.s. di Danelon Luca & C.
Piazzale Cavedalis, 6/2
Respondent: Host Master
U1. Purkyniego 12
2. The Domain Name and Registrar
Domain Name: <wwwilsole24ore.com>
Registrar: GoDaddy Software Inc.
3. Procedural History
The Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") on March 11, 2002, by email and on March 12, 2002, in hard copy form. The Center has verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case. The Complaint was properly notified in accordance with the Rules, paragraph 2(a).
On March 15, 2002, GoDaddy Software Inc. ("the Registrar") confirmed that the domain name <wwwilsole24ore.com> ("the Domain Name") was registered through the Registrar and that Host Master ("the Respondent") is the current registrant. By that date the contact details for the Respondent had changed. When the Complaint was filed, the Respondentís address was in Belize. On March 15, 2002, it was in Poland. It is not known precisely when the change was made, but from correspondence that the Center has subsequently had with the Registrar, it seems likely that the change took place on March 14, 2002. The Registrar has further confirmed that the Policy is applicable to the Domain Name.
On March 19, 2002, the Center notified the Respondent (at the Polish address) of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to the Center was April 8, 2002.
No Response was received and on April 10, 2002, the Center issued a Notification of Respondent Default.
The Panel was properly constituted. The undersigned Panelists submitted Statements of Acceptance and Declarations of Impartiality and Independence.
No further submissions were received by the Center, as a consequence of which the date scheduled for the issuance of the Panelís Decision is May 16, 2002.
4. Factual Background
The Complainant is a publishing company, which was incorporated in Italy in 1965. It is amongst other things a newspaper publisher. It was incorporated to take over the businesses of two companies, one being the publisher of a newspaper entitled "Il Sole" and the other being the publisher of a newspaper entitled "24 Ore."
The Complainant claims and in the absence of any contradiction from the Respondent the Panel accepts that the Complainantís newspaper "Il Sole 24 Ore" is "the largest Italian economic daily and one of the most important economic dailies in Europe".
The Complainant is the proprietor of various Italian and Community trade mark registrations of marks comprising and/or including the name Il Sole 24 Ore, the earliest being Italian registrations numbers 497,042 and 528,087 dated April 28, 1988, and last renewed on April 29, 1998, under numbers UD98C000164 and UD98C000165 respectively. The former registration is a device mark, the latter is a word mark.
The Complainant claims and the Panel has no reason to doubt that the Complainantís website at "www.ilsole24ore.com" was created in 1996, and now attracts 950,000 visitors and 45 million "page views" per month.
The Complainant is the proprietor of six domain names comprising its name being registrations in the ".com", ".biz", ".info", ".it", ".net" and ".org" domains.
From a Whois search carried out by the Complainant on March 8, 2002, the Domain Name appears to have been first registered with the Registrar on February 16, 2001, in the name of the Respondent at an address in Belize. At March 8, 2002, the contact address for the Respondent was still in Belize.
The Complaint was filed on March 11, 2002.
According to the Registrar, as at March 15, 2002, the Domain Name was registered in the name of the Respondent at the Polish address appearing above. From the Registrarís records, it appears that the change of address took place on March 14, 2002.
5. Partiesí Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to a trademark in which it has rights. The Complainant points to its trademark and domain name registrations.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant points to the unique nature of its trademark which the Respondent has reproduced precisely in the Domain Name but with the addition of the www prefix without an intervening stop. The Complainant states that it has granted the Respondent no rights to use its trademark. The Complainant observes that the Domain Name is connected to a website at "www.wwwilsole24ore.com" which advertises pornographic services, games, lotteries etc which bear no obvious relation to the name Il Sole 23 Ore.
The Complainant contends that the Respondent registered the Domain Name in bad faith and is using it in bad faith. The Complainant claims that the Respondent selected the Domain Name and is using it with a view to attracting visitors to its website for commercial purposes. It claims that visitors will be deceived because they will have anticipated that they will be visiting the Complainantís site. They will have reached the Respondentís site because in error they omitted to include the stop after the www prefix.
The Respondent has not responded.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
Where a Respondent who has been properly notified of the Complaint fails to respond, the Panel is entitled to draw such inferences as it considers appropriate (Rule 14(b)).
Identical or confusingly similar
The Domain Name comprises the Complainantís trademark and the generic www prefix (albeit omitting the stop) and the generic ".com" domain suffix. It also precisely replicates the address of the Complainantís website apart from the omission of the stop after the www prefix.
In the circumstances the Panel has no hesitation in finding that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.
Respondentís Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances, any one of which if found by the Panel to have been proved shall demonstrate the Respondentís rights or legitimate interests in respect of the Domain Names.
However, the need for the Respondent to demonstrate anything only arises once the Complainant has shown a prima facie case, the burden of proof under paragraph 4(a) being on the Complainant.
The Complainantís case is that the trademark is long standing and well known and comprises a unique combination of words and numerals. In these circumstances it is to be inferred that the Respondentís selection of the Domain Name was not a coincidence. The Respondent must have been aware of the Complainantís trademark and deliberately selected the Domain Name because it was the Respondentís trade mark. The Respondent has no licence from the Complainant to use the Domain Name and the Respondent has no obvious legitimate reason to use the Domain Name. The use that the Respondent is currently making of the Domain Name has no obvious connection with the name. The name does not feature in the content of the site.
The Panel finds that the Complainant has made out a prima facie case under this head and that the Respondent has a case to answer. There is no answer. The Respondent has not responded. In these circumstances and in the absence of any obvious reason why the Respondent could be said to have any right or legitimate interest in respect of the Domain Name the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
As indicated above, the Respondent must have had the Complainant in mind when registering the Domain Name. The Panel agrees with the Complainant that in these circumstances and on the balance of probability, the Respondentís objective in registering the Domain Name and using the Domain Name in the manner that it has, was to catch unwary would-be visitors to the Complainantís website who forget to insert the stop after the World Wide Web prefix. In so doing, the Respondent is attracting visitors to its site by a deceit and for the commercial purpose of marketing its services to persons who would not otherwise have visited its site.
The circumstances surrounding the Respondentís change of address immediately following the filing of the Complaint do not suggest a serious, good faith approach to the Domain Name registration.
In the circumstances the Panel finds that the Domain Name was registered in bad faith and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.
In light of the foregoing findings namely that the Domain Name is confusingly similar to a trade mark or service mark in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered in bad faith and is being used in bad faith the Panel directs that the Domain Name <wwwilsole24ore.com> be transferred to the Complainant.
Clive Lincoln Elliott
Dated: May 16, 2002