WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
RAI Radiotelevisione Italiana S.p.A. v. Alessandro Pescetelli
Case No. D2002-0716
1. The Parties
Complainant is RAI Radiotelevisione Italiana S.p.A. ("Complainant"). Respondent is Mr. Alessandro Pescetelli ("Respondent").
2. The Domain Name and Registrar
The domain name the subject of this Complaint is <ottavo-nano.com>.
The Registrar is Tucows, Inc. The remedy sought by Complainant is the transfer of the domain name <ottavo-nano.com> to Complainant.
3. Procedural History
On July 29, 2002 (by e-mail), and August 1, 2002 (in hard copy), Complainant submitted to the WIPO Center a Complaint under the Uniform Domain Name Dispute Resolution Policy and the Rules for Uniform Domain Name Dispute Resolution Policy. The Panel agrees that payment was properly made, that the Center rightly assessed the Complaint’s compliance with the formal requirements; that the Complaint was properly notified in accordance with paragraph 2(a) of the Rules. On August 23, 2002, Respondent was declared in default. The Panel agrees that it was properly constituted and that the Panelist submitted a Statement of Acceptance and Declaration of Impartiality. The Panel also acknowledges that no other proceedings are pending before any Justice Court.
4. Factual Background
Complainant is Italy’s State TV network. On January 16, 2001, it started the nation-wide broadcasting of a successful TV show known as "L’Ottavo Nano" (The Eighth Dwarf).
Respondent, Mr. Alessandro Pescetelli (Rome, Italy), has registered its domain name <ottavo-nano.com>, without dispute, well after the show was first aired, although the domain name registration occurred on March 21, 2001, before RAI, in turn, applied for the registration of its trademark L’OTTAVO NANO (April 19, 2001).
<ottavo-nano.com> is used for a reasonably large fan site discussing the RAI show, reproducing photographs and video clips from the same show, and is introduced in the welcome page as "The first official unofficial site".
5. Parties’ Contentions
a. Complainant claims that it has acquired rights in the trademark or service mark "L’OTTAVO NANO" or "OTTAVO NANO" even before its trademark application, through its use of the name for a famous and extremely popular show.
b. Complainant claims that the domain name <ottavo-nano.com> has been registered by Respondent in bad faith. Respondent could not ignore Complainant’s trademark rights, nor has Respondent any rights or legitimate interests in respect of the domain name. Operating a "fan site" cannot be construed as legitimate interest.
c. Complainant claims that the domain name <ottavo-nano.com has been, or is being, used by Respondent in bad faith, particularly by infringing Complainant’s copyrights and including the ambiguous notice "The first official unofficial site". Respondent’s site is also of poor quality and likely to damage Complainant’s reputation.
a. Respondent is in default and, accordingly, has not challenged the conclusions of Complainant.
6. Discussion and Findings
A. General Principles
Under Paragraph 4(a) of the Policy, the Panel should be satisfied that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name;
(iii) the domain name has been registered in bad faith;
(iv) the domain name is being used in bad faith.
B. Confusion with Complainant’s Trademark
The Panel finds that Complainant has established that it was the owner of a common law service mark L’OTTAVO NANO for TV shows and related services, at least as of January 16, 2001, and even before it applied for a trademark registration. Common law trademarks are recognized under Italian law under the name of "de facto trademarks". Generally speaking, Paragraph 4(a)(i) of the Policy does not expressly limit the Policy’s scope to registered trademarks. In the case of TV shows and similar products and services, the existence of valuable goodwill has been recognized as sufficient under the Policy even in absence of a registered trademark. See for example Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784.
Respondent’s domain name is identical to Complainant’s common law service mark.
C. Respondent’s Absence of Rights or Legitimate Interests in the Domain Name
Respondent has no relationship with, or permission from Complainant, to use the "OTTAVO NANO" mark, nor does Respondent have a corporate name, fictional name, business name or other indication that he has been commonly known by the name "Ottavo Nano". Respondent has not made a bona fide offering of goods or services because the content of the Web site includes video clips and other images obviously infringing Complainant’s copyrights. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interest in the domain name. Operating a fan site has not generally being regarded as a "legitimate interest" under the Policy, although it may be relevant for the discussion of whether there is a use in bad faith (see below).
D. Registration in Bad Faith
Respondent was obviously aware of the existence of the TV show L’Ottavo Nano, and in fact this is what his Web site is all about. Respondent was aware, or should have been aware, that TV show names are the subject of trademark and service mark rights under Italian law and decided not to contact Complainant for authorization. Thus, registration occurred in bad faith.
E. Use in Bad Faith
The "first official unofficial site" <ottavo-nano.com> claims to be a fan site. There are several precedents on domain names used for Web sites operated by fans, or fan clubs, dedicated to either authors, performers, sport champions or teams, famous cars, movies, or TV shows. These precedents are by no means uniform, but a general pattern has emerged. From The Estate of Tupac Skakur v. R.J. Barranco, AF-0348 a and b (eResolution, October 23, 2000), one may infer that fan and fan clubs have an unlimited right to register domain names and use them for sites devoted to their favorite personalities. This, however, is not the position of the majority of decisions. They have regarded as crucial whether Respondents’ "fan sites" are commercial or non-commercial. Operating a "non-commercial" fan site has been generally regarded as legitimate: see e.g. Nintendo of America, Inc. v. Alex Jones, WIPO Case No. D2000-0998; and, with respect to the mere intention of launching a fan site, Edward Van Halen v. Deborah Morgan, WIPO Case No. D2000-1313. On the other hand, in a fan Web site where the fan also tries to make money, the domain name has been regarded as used in bad faith (see for example Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784). The Panel agrees that, while use for purely a non-commercial fan site would not constitute use in bad faith, use for a commercial fan site does. While a Respondent using its domain name for a non-commercial fan site may not have a "legitimate interest" under the Policy, its use may be regarded as in good faith, absent other incriminating circumstances.
The issue, thus, resolves in a factual question: is Respondent’s fan site commercial or non-commercial? The answer is provided by the Web site itself, which emphasizes that among its "team" there is a Mr. Gianluca Cipriani whose job description is, inter alia, "managing relations with the sponsors … in short, gaining our daily bread". The Web site also includes publicity banners. It may be safely concluded that the domain name is used for a commercial (as opposite to a non-commercial) fan Web site, and such use should be regarded as use in bad faith under the Policy.
In addition, the domain name is used for a Web site where infringement of Complainant’s copyrights seems to be a regular routine. Complainant’s contention that Respondent’s Web site is of low quality, on the other hand, appears irrelevant and perhaps is also factually untrue.
Pursuant to Paragraph 4(i) of the Policy and Rule 15 of the Rules for Uniform Domain Name Dispute Resolution Policy, this Panel orders that the domain name <ottavo-nano.com> be transferred to Complainant.
Dr. Massimo Introvigne
Dated: August 30, 2002