WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PRISMA Presse v. Valco S.R.L. Unipersonale
Case No. DBIZ2002-00271
1. The Parties
The Complainant in this administrative proceeding is Prisma Presse, a company of French law (commercial partnership), having its registered offices at 6 rue Daru, 75008 Paris, France. The Complainantís authorized representative in this administrative proceeding is Deprez Dian Guignot, 21, rue Clément Marot, 75008 Paris, France.
The Respondent is Valco S.R.L. Unipersonale, 27-29 Via dellí Industria, 36063 Marostica (VI), Italy.
2. The Domain Name and Registrar
The domain name at issue is <prima.biz>. The domain name is registered with Register.com, 8th Ave, New York, 10018, United States of America ("the Registrar").
3. Procedural History
The Complaint was received on June 11, 2002 (e-mail and hard copy), by the World Intellectual Property Organization Arbitration and Mediation Center (the "Center"). The Complaint was made pursuant to the Start-up Trademark Opposition Policy for <.biz> adopted by NeuLevel Inc. and approved by ICANN on May 11, 2001 ("STOP"), and the Rules under that Policy ("STOP Rules").
The STOP is incorporated into the Respondentís registration agreement with the Registrar. Respondent is obliged to submit to and participate in a mandatory administrative proceeding in the event of a Complaint concerning the domain name registered.
Having verified that the Complaint satisfied the formal requirements of the STOP and the STOP Rules, the Center, on June 12, 2002, transmitted by post-courier and by e-mail a notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also e-mailed to the Registrar and ICANN.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by e-mail. A Response was filed by the Respondent on June 29, 2002 (e-mail), and July 3, 2002 (hard copy).
The Center invited Dr. Torsten Bettinger to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence. The STOP requires that the Complaint be determined by a sole Panelist.
Dr. Torsten Bettinger advised his acceptance and forwarded to the Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the STOP Rules and the WIPO Supplemental STOP Rules.
On July 23, 2002, the Center forwarded to the Panel by courier the relevant submissions and the record.
The Panel has independently determined and agrees with the assessment of the Center that the Complaint meets the formal requirements of STOP, STOP Rules and the WIPO Supplemental STOP Rules.
The language of the administrative proceeding is English. The Complainant has paid the necessary fees to the Center. The Ticket Number assigned by the Registry operator under the STOP Rules has been verified. The Center has informed the Panel that there are further IP claims with regard to the disputed domain name.
4. Factual Background
The Complainant is the registered proprietor of the following trademarks:
- PRIMA no. 1 236 024, French trademark registered on March 24, 1983 (renewed), in classes 16, 28 and 41. This trademark was originally registered in May 29, 1973, under no. 878 909;
- PRIMA No. 96 653 289, French trademark registered on December 2, 1996, in classes 16, 35 and 41.
The trademarks PRIMA are used for the title of a magazine named "PRIMA". It is published in France since 1982 and has a strong reputation within the public, with approximately 1.000.000 copies sold per month.
The Complainant also owns the following domain names: "<prima.info> ; <prima.fr> ; <prima.tm.fr> ; <prima.presse.fr> ; <prima-mag.com> ; <prima-mag.org> ; <prima-mag.net> ; <myprima.com> ; <myprima.org> ; <laboutiqueprima.com> ; <wapprima.com> ; <wapprima.net> ; <wapprima.org>".
The Respondent is the registered proprietor of the following trademark:
- PRIMA no. 779653, Italian trademark registered on May 12, 1999, in Class 07 for pumps, motors and electric generators, compressors, valves and their parts.
5. Partiesí Contentions
The Complainant states the domain name <prima.biz> is totally identical to the registered trademarks "PRIMA" owned by the Complainant.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the domain name <prima.biz> and points to the usual indicia of the absence of a legitimate interest by the Respondent: no license to use the Complainantís trademark; no trademark corresponding to the domain name; no evidence of the Respondentís use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
The Complainant further contends that the Respondent cannot ignore the existence of the "PRIMA" magazine which has a strong reputation, and is well known in Europe and that therefore the domain name <prima.biz> has been registered in bad faith.
The Respondent states that it is the owner of the Italian trademark "PRIMA" no. 779653, registered on May 12, 1999, in Class 07 for pumps, motors and electric generators, compressors, valves and their parts and that it has used the trademark for these products and on printed catalogues, internal documentation and advertising.
The Respondent further states, that it has invested significant amounts of money in promoting the PRIMA trademark through printed catalogs, advertising, exhibitions and promotions.
6. Discussion and Findings
Under STOP, a Complaint can only be filed by an "IP Claimant" who had filed an IP Claim for a particular alphanumeric string. If that string has been registered as a .BIZ domain name, Neulevel, the Registry operator of the .BIZ gTLD, notifies the IP Claimant and invites it to initiate a STOP proceeding within 20 days. If there are multiple claimants, Neulevel determines priority orders on a randomized basis (STOP Para. 4(l)(i)). Only the priority claimant is invited to initiate a STOP complaint, who is allocated a "ticket number" which allows dispute resolution providers to verify whether a STOP Complaint is filed by the priority claimant. The service provider (in this case the Center) is required to advise the Panelist if a given domain name in dispute is subject to more than one claim. In the present case, there are further IP claims with regard to the disputed domain name.
Under STOP, the Complainant must show:
(a) That the domain name is identical to the Complainantís trademark or service mark (Para. 4(a)(i)) STOP.
(b) That the Respondent has no rights or legitimate interests in the domain name Para. 4 (a) (ii) STOP.
(c) That the domain name was either registered or used in bad faith (Para. 4(a)(iii)) STOP.
a) Identity with a mark in which the Complainant has rights
The Complainant has registered the domain name <prima.biz>. This domain name is identical to Complainantís trademark "Prima", except that the domain name adds the generic top-level-domain ".biz".
It is well established that the addition of the generic top-level-domain (gTLD) ".biz" is without legal significance in determining whether it is identical to a trademark.
Thus, this Panel finds that the domain name is identical to the Complainantís trademark "Prima".
b) Legitimate rights or interests in respect of the domain name
While Complainant satisfies the first requirement, the same cannot be said of the second and third requirements of Para. 4 (a) STOP.
The Respondent has provided documentary evidence that it is the registered proprietor of the Italian trademark PRIMA No. 779653, registered on May 12, 1999, in Class 07 for pumps, motors and electric generators, compressors, valves and their parts.
The Panel thus finds that the Respondent has a right in respect of the domain name in dispute in the meaning of Para. 4(a) (ii) STOP.
c) Bad faith
Likewise, as the Respondent has a trademark identical to the domain name in dispute it cannot be concluded that the domain name has been registered or used in bad faith.
For the above reasons, the Panel decides that the Respondent has a legitimate right in respect of the domain name and that the Respondent has not registered the domain name in bad faith.
Accordingly, in accordance with Para. 15(e)(ii) STOP the Panel rejects the Complainantís request for transfer of the domain name <prima.biz> and no subsequent challenges under STOP against the domain name shall be permitted.
Dr. Torsten Bettinger
Dated: August 19, 2002