WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bennetton Group S.p.A v. Nordica Inc
Case No. DBIZ2002-00052
1. The Parties
The Complainant is Bennetton Group S.p.A, an Italian company having its principal place of business at Villa Minelli, n.1, 31050 Ponzano Veneto, Italy. The Complainantís authorized representative is Jenny Settergren, Legal and Professional Services Manager, Net Searchers International Ltd, London, United Kingdom.
The Respondent is Nordica Inc, 1338-40 NW 78th Avenue, Miami, Florida 33126, United States of America.
2. The Domain Name and Registrar
The disputed domain name is <nordica.biz>. The Registrar with which the disputed domain name is registered is Core Internet Council of Registrars ("Registrar").
3. Procedural History
The Complaint was submitted for decision in accordance with the Start-up Trademark Opposition Policy ("STOP") for .BIZ, adopted by NeuLevel, Inc. and approved by Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001, in accordance with the Rules for Start-up Trademark Opposition Policy for .BIZ, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, ("STOP Rules"), and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ ("WIPO Supplemental STOP Rules").
The Complaint was received by the WIPO Arbitration and Mediation Center ("Center") on April 25, 2002.
On May 14, 2002, the Center sent a Notification of STOP Complaint and Commencement of Administrative Proceeding to the Respondent.
No Response was received, and on July 10, 2002, the Center transmitted a Notification of Respondent Default to the parties.
In accordance with Paragraph 4(a) of the STOP Rules, the Center has verified that the Complaint satisfies the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules. The Panel has reviewed the Complaint and is satisfied with the Centerís assessment that the Complaint satisfies the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules.
4. Factual Background
The Complainant states that the Benetton Group conducts business in 120 countries around the world. It operates in the clothing sector under the brands United Colors of Benetton, Colors and Sisley and in the sportswear and equipment sector under the brands Playlife, Nordica, Prince, Rollerblade and Killer Loup.
The Complainant states that the NORDICA brand was founded in the 1930ís. It began as a cobbler shop manufacturing leather mountain shoes and ski-boots and following the World War II, was the worldís leading brand of ski-boots. The NORDICA brand currently has a 26% market share for these products. Nordica also produces a complete line of skis, ski-boots and bindings as well as a collection of mountain and ski-wear.
The Complainant provided evidence that it is the registered proprietor of the trademark NORDICA in a significant number of countries world-wide (including the United States of America, where the Respondent is located).
The Complainant claims that the NORDICA trademark is widely used for goods distributed by Benetton Group all over the world. The volume of sales of NORDICA marked goods for 2001, in the United States of America and the Caribbean Area is amounted to US$14,016,852.29. The trademark has also been subject of a number of advertising campaigns.
The Complainant also owns the following domain names:
The Respondent registered the disputed domain name <nordica.biz>
on March 27, 2002.
5. The Partiesí Contentions
A. The Complainant
The Complainant states that the disputed domain name consists of the Complainantís registered trademark NORDICA in combination with the generic Top Level Domain <.biz> and that the disputed domain name is identical or confusingly similar to the Complainantís numerous trademark registrations for the word NORDICA.
The Complainant states that searches of the Trademark Electronic Search System for US Federal trademarks and Community Trademark registry for European Trademarks do not reveal the Respondent to be the owner or beneficiary of any trademark or service mark identical to the disputed domain name.
The Complainant claims that the disputed domain name was registered and used in bad faith, for the following reasons:
(a) At the time the disputed domain name was registered on March 27, 2002, the NORDICA trademark had been widely used and promoted in respect of the Complainantís business all around the world, including the United States; and
(b) The Respondent was informed about the Complainantís trademark rights to the name via the Complainantís IP Claim.
Further, the website <nordica.biz> has not been used to date, and the Complainant claims that when taken with the other factors mentioned above, this passive holding of the disputed domain name indicates that the name was registered in bad faith.
The Complainant confirms that it has not given any consent, license or authorization to the Respondent for the use or registration of the Domain Name registered by the Respondent.
B. The Respondent
The Respondent did not file a Response.
6. Discussion and Panel Findings
Paragraph 15(a) of the STOP Rules provides that the Panel is to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Domain name is identical to a trademark or service mark in which the Complainant has rights
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property IP claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the <.biz> generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
It is plain from its numerous trademarks registrations that the Complainant has rights in the trademark NORDICA. The Panel therefore finds that the disputed domain name is identical to a trademark in which the Complainant has rights.
No rights or legitimate interests in respect of the domain name
Paragraph 4(c) of the STOP sets out certain circumstances that, in particular but without limitation, demonstrate the Respondentís rights or legitimate interest in the disputed domain names:
(i) that the Respondent is the owner or beneficiary of a trade or service mark that is identical to the disputed domain name; or
(ii) before any notice to the Respondent of the dispute, the Respondent has used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(iii) that the Respondent, as an individual, business or other organization, has been commonly known by the disputed domain name, even if the Respondent has not acquired any trademark or service mark rights.
The Complainant has provided evidence that the trademark NORDICA is well known in many countries for ski boots. It more recently moved into other ski products.
It is difficult for the Complainant to prove a negative i.e. that the Respondent has no rights or legitimate interest in the domain name. Here, the Panel finds that the Complainant has adduced sufficient proof of its trademark. The Complainant has also shown that trademark searches in the US and of the Community trademark register do not reveal the Respondent to be the owner or the beneficiary of any trademark comprising the word NORDICA.
In such circumstances the Panel finds that the Complainant has done enough to meet this second requirement and the onus of proof shifts to the Respondent to prove that it has a legitimate right or interest in the disputed domain name. There has been no Response from the Respondent. The Panel has noted that the Respondentís name is recorded as Nordica Inc, which, on the face of it, could possibly show that the Respondent does have some right or legitimate interest. However, there is no indication as to when the Respondent adopted that name or what (if any) trading history it has under that name. In the absence of any Response or attempt to justify its action in registering the domain name, the Panel finds that the Complainant has done enough to satisfy the second element in the test in paragraph 4(a) of the STOP.
Domain name was registered or is being used in bad faith
Under the STOP Policy, Complainant must only show either bad faith registration or bad faith use, not both as are required under the UDRP. The STOP provides that:
The following circumstances, in particular but without limitation, if found by the Panel to be present, shall be considered evidence of the registration or use of a domain name in bad faith:
i. Circumstances indicating that you have registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
ii You have registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name; or
iii. You have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
This is not an exhaustive list but provides illustrations of what may amount to bad faith. Again the onus is on the Complainant.
Under the STOP Procedures, the "Notice of a .BIZ Intellectual Property Claim" form is sent to every potential registrant where there is a pre-filed IP Claim. The form contains the following notice to potential registrants:
According to our records you have applied for the above listed .BIZ domain name. The purpose of this E-mail is to formally notify you that the domain name for which you applied matches one or more Intellectual Property (IP) Claims that were received by the .BIZ Registry. In other words, one or more intellectual property owners believe that they have intellectual property rights in the domain name for which you have applied. You should be aware that if you choose to continue the application process, your domain name registration may be challenged under several Internet Corporation for Assigned Names and Numbers (ICANN)-approved dispute resolution mechanisms, including the Start-up Trademark Opposition Policy (STOP) http://www.neulevel.BIZ/countdown/stop.html and the Uniform Dispute Resolution Policy (UDRP) http://www.icann.org/udrp/udrp.htm.
The Complainantís case is that the domain name was registered and is being used in bad faith because:
h by the date of registration, the NORDICA trademark had widely and extensively used and promoted by the Complainant. In addition, the Respondent would have received the pre-filed IP claim but ignored this.
h The disputed domain name does not point to a site. It is contended that passive holding of a site, having been informed of an IP claim, indicates that the domain name was registered in bad faith.
The Panel has been troubled by this aspect of the case but overall finds that the Complainant has failed to establish this third element. The Panelís reason for these conclusions are:
(a) Overall the Complainant bears the onus of proving that the domain name was registered and is being used in bad faith. This is an essential aspect of the whole jurisdiction under both the UDRP and the STOP. The jurisdiction to order transfer of a domain name is not to be made lightly just because a domain name is similar to another partyís trademark;
(b) In this case the Complainant has not made any approach to the Respondent seeking an explanation for the registration or putting its claim that the domain name was registered and is being used in bad faith. There is thus no Response or material on which the Panel can make any finding of bad faith. There is no indication that the domain name is for sale. Furthermore, as noted earlier, the Respondentís name is recorded as Nordica, Inc;
(c) The trademark NORDICA has a relatively low degree of distinctiveness. It comprises the well established adjective "Nordic" and the unremarkable suffix "a". The word "Nordic" is defined in the Shorter Oxford Dictionary as:
1. Of or pertaining to the countries of Scandinavia, Finland and Iceland or their people or languages; of or pertaining to a physical type of northern Germanic peoples characterised by tall stature, a bony frame, light colouring Ö
2. Of skiing: involved in cross-country work and jumping.
The first definition of the adjective could potentially cover a very broad sweep of goods or services. Plainly the mark in issue is not NORDIC but NORDICA. But the low degree of inherent distinctiveness and the potentially wide allusions of the mark, make it much more difficult to conclude that this domain name must have been registered in bad faith. The mere fact of receipt of an IP claim does not mean that the domain name could not have been used for goods and services other than those covered by the Complainantís trademarks.
(d) The Panel notes that the domain name <nordica.org> is in fact held by a separate Danish computer services company.
(e) There is no obligation on a Respondent to respond to a Complaint. Sometimes, Panels have used a failure to respond as some confirmation of bad faith registration. This is particularly where there is a highly distinctive and well-known mark and there could be no other explanation for registration of this as a domain name. But in the view of the Panel, the mark NORDICA does not fall into this category of highly distinctive mark.
The Panel therefore finds that the Complainant has failed to establish the disputed domain name was registered in bad faith.
The Panel finds that:
(a) The disputed domain name is identical to a trademark or service mark in which the Complainant has rights;
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) The Complainant has failed to establish the disputed domain name was registered in bad faith.
The Panel therefore finds that the Complainantís application must be refused. According to STOP paragraph 15(e), the Panel further decides that subsequent challenges under STOP against the domain name shall be permitted.
A H Brown QC
Dated: July 23, 2002