WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

De Agostini S.p.A. v. Marco Cialone

Case No. DTV2002-0005

 

1. The Parties

Complainant is De Agostini S.p.A. a company with registered offices at Via G. Da Verrazzano 15, Novara, Italy.

Respondent is Mr. Marco Cialone, Viale dei Colli Portuense 152, Rome, Italy.

 

2. The Domain Name and Registrar

The disputed domain name is <deagostini.tv>. The Registrar with which the domain name is registered is The .TV Corporation International (hereinafter the ".TV Corporation"), 1100 Glendon Avenue, Eight Floor, Los Angeles, California, United States of America.

 

3. Procedural History

The Complaint was submitted for decision, on July 25, 2002, by e-mail, and on July 26, 2002, in hard copy, in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "Rules"), and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On July 25, 2002, the Center sent to the .TV Corporation the Request for Registrar Verification, to which on July 26, 2002, the .TV Corporation replied stating that: (i) .TV Corporation is the Registrar for the domain name <deagostini.tv>; (ii) the Registrant, Administrative, Technical and Billing Contact is Mr. Marco Cialone, Viale Colli Portuensi 152, 00151 Rome, Italy; (iii) the status of the domain name registration is "active"; (iv) the language of the Service Agreement is English; (v) the Registrant submitted to the jurisdiction ad the location of the principal office of the Registrar (Los Angeles County-California) for court adjudication of disputes concerning or arising from the use of the domain name.

On July 29, 2002, after having verified the compliance with the requirements of the Rules and the Supplemental Rules, the Center sent the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent.

The Respondent failed to submit its Response within the requested deadline and therefore, on August 20, 2002, the Center issued a Notification of Respondent Default.

On August 23, 2002, the Center invited the undersigned to serve as Panelist in this administrative proceeding and, on the same date, the Panel submitted the Statement of Acceptance and Declaration of Impartiality and Independence. In accordance with Paragraph 15 of the Rules, the Panel's decision must be forwarded to the Center by September 10, 2002.

The Panel, after having verified all documents submitted by the Center, agrees with the Center's assessment concerning the Complaintís compliance with the formal requirements, set forth by the Policy, the Rules, and the Supplemental Rules, including the fact that the payment was properly made, and that the Complaint was properly notified in accordance with the Rules, Para. 2(a).

In addition to the foregoing, the Panel finds that in compliance with Para. 11 of the Rules, since the Parties have not agreed otherwise, the language of the proceeding shall be the language of the Registration Agreement, i.e., English.

 

4. Factual Background

According to the documents filed by the Complainant, the domain name <deagostini.tv> was registered on July 27, 2000, by Mr. Marco Cialone of Rome, Italy.

According to the Complaint, the Complainant in this Administrative Proceeding is De Agostini S.p.A., an important and well-known Italian company, which was founded in 1901, operating in the field of editing (Annex H). For the first years, the Complainant's activity mainly consisted in the edition of cartography products Ė such as the famous ĎCalendario Atlante De Agostini' published for the first time in 1909 (Annex D), and the ĎGrande Atlante Geograficoí published for the first time in 1922 (Annex E). During the years, the Complainant started to edit new products, such as encyclopedia, illustrated books dedicated to different topics, children books, language courses, tourist guides and, in the past few years, multimedia products (Annex F). From 1984 onwards, the Complainant expanded its production, and it currently operates in 33 countries worldwide. Thus, the Complainant became a leading company in its field.

At the same time, the Complainant carried out a widespread and extended advertising and publicity campaign for its products which has further reinforced the substantial distinctive strength of the trademarks of which it is the owner.

The Complainant owns several trademarks worldwide, consisting of, or at least including the ĎDe Agostinií name. Said trademarks are used for different goods, such as maps and topographic maps, magazines, books, photos, stationery, instructional and teaching material, computer, video, keyboards, compact disk etc., and are registered worldwide.

According to the Complaint, in view of the circumstances mentioned above, the several DE AGOSTINI trademarks registered in Italy and abroad have become well-known or famous trademarks. The several articles appeared in the magazines and newspapers circulating in Italy (Annex H), and the television spots on the main national and overseas television networks (Annex I), are a clear demonstration of the distinctive character and renown of the Complainant's trademarks and activities.

 

5. Partiesí Contentions

A. Complainant

According to the Complainant, there is an "absolute identity" between the disputed domain name and the Complainantís registered trademarks.

As far as the Respondentís absence of rights and legitimate interests is concerned, the Complainant states that:

- "The Registrant appears to be a subject named Mario Cialone, resident in Rome, Italy; as far as the Complainant can tell, there are no elements which can connect in any way Mr. Cialone to the name ĎDe Agostinií, nor is he in any way connected or affiliated to the company ĎDe Agostinií nor, all the less, is he authorised to carry out activities, commercial or otherwise, with such name;

- The registrant is not known through the web site corresponding to the domain name under Complaint, nor through such web site does he carry out any activity which could be referred thereto; the site corresponding to the domain name under Complaint, even if it was registered almost two years ago, is not used, and its home-page is the .TV Corporation holding page (annex L)."

According to the Complainant, the Respondentís bad faith in the registration and use of the domain name at stake is based upon several circumstances.

First of all, according to the Complainant, being the DE AGOSTINI trademarks renown in the world and, above all, in Italy, where the Respondent is located, the Respondent could not ignore the Complainantís existence, and the renown of its trademarks when he registered the domain name <deagostini.tv>. Thus, according to the Complainant, "the purpose which Mr. Cialone set himself at the moment of registration was that of exploiting the renown of that trademark and its high pulling power for carrying out his own activity or, more probably, of reselling the domain name to the owner of the homonymous trademark for a much higher sum with respect to the costs sustained for its registration."

To support the above considerations, the Complainant further indicates that having come across the registration of the domain name <deagostini.tv>, it sent a cease and desist letter to the Respondent who replied through his lawyer stating that the registration of the domain name was legitimate, but declaring himself available to amicably solve the matter. In the Complainant's view, the renown and widespread of the Complainantís name was recognised by the Respondentís lawyer in his letter. In reply to the Respondentís letter, the Complainantís attorney asked the other party "for a generic indication of the conditions under which he was willing to bring the dispute to an amicable conclusion (annex O) and to the request, formulated by the counterparty to Ďput forward an economic offerí (annex P), the [Complainantís] lawyer declared herself prepared to refund Mr. Cialone for the registration costs because of the obvious infringement of the exclusive rights perpetrated to the damage of De Agostini by Mr. Cialone himself (annex Q). The Respondent refused such proposal declaring himself prepared to bring the affair to an amicable conclusion under different conditions (annex R): the indication of such conditions were indicated by phone and were refused due to their excessiveness."

Secondly, the Complainant alleges that in the absence of any use of the domain name <deagostini.tv> despite the fact that its registration occurred two years ago (by digiting the address "www.deagostini.tv", one leads to the web site of the .TV Corporation which is the Registrar of the disputed domain name). No additional element appears to exist proving that "the Respondent has objectively prepared himself to use the domain name." The Complainant refers to the several WIPO decisions stating that the non use of the domain name indicates a lack of interest by the registrant and which "must also be taken into consideration for the purposes of proving the bad faith of the registrant himself in the registration and use of the domain name. In most of the precedents it has therefore been stated that the lack of use of a domain name that is not backed up by any trademark and that coincides with a known, well-known or renowned trademark owned by someone else, does not indicate other than bad faith in the sense of paragraph 4(b) of the Policy."

Therefore, according to the Complainant, the Respondent registered the domain name <deagostini.tv> in bad faith.

B. Respondent

Respondent did not submit any Response and should therefore be considered in default. The Panel, in compliance with Paragraph 14 of the Complainant, shall therefore proceed to a decision on the Complaint, and shall draw such inferences therefrom as it considers appropriate.

 

6. Discussion and Findings

According to Paragraph 4(a) of the Policy, in an administrative proceeding, the Complainant must prove that each of following three elements are present: (1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name was registered and is being used in bad faith.

1) The Complainant asserts that there is an absolute identity between the domain name <deagostini.tv> and the registered trademarks in which the Complainant has rights.

The Complainant has enclosed to its Complaint several certificates of registration or applications of the DE AGOSTINI trademarks (Annex C). The Panel has examined all the enclosed documents and has noticed that several of the enclosed trademarks do not appear to be in the Complainantís name, but in the name of Fidea S.p.A., Finanziaria De Agostini S.r.l., Istituto Geografico De Agostini S.p.A., or De Agostini Ė Comercio de Propriedade Industrial e Intelectual Lta. The Complainant has not mentioned a possible assignment of these trademarks to De Agostini S.p.A., and the documents enclosed to the Complaint do not show any such assignment. Furthermore, at least as far as the Istituto Geografico De Agostini S.p.A. is concerned, the Complainant has not indicated that this is the full name of the Complainant, and that De Agostini S.p.A. is the relevant abbreviation, or that Istituto Geografico Agostini S.p.A. is the former name of De Agostini S.p.A. Therefore, although due to the coincidence of part of the company name it is likely that Istituto Geografico De Agostini S.p.A. is somehow related to the Complainant De Agostini S.p.A., the Panel must conclude that the Complainant failed to prove that Istituto Geografico De Agostini S.p.A. and De Agostini S.p.A. are the same entity.

In the light of the foregoing, in the Panelís view, all the cited trademarks which do not appear to be in the name of De Agostini S.p.A., cannot be taken into consideration for the purposes of this decision.

However, the Complainant has also cited several trademarks which, according to the documents enclosed to the Complaint, are in the Complainantís name. The details of these trademarks are the following:

- DE AGOSTINI (word), Italian application No. MI2001C010580, filed on October 16, 2001, and being the renewal of a prior registration dating back to 1981, for goods in class 16;

- DE AGOSTINI (script), International registration No. 552914, of April 24, 1990, covering goods in class 16;

- DE AGOSTINI (script), Community trademark registration No. 1865286, filed on September 19, 2000, and granted on October 19, 2001, covering goods and services in classes 9, 16, 38 and 41;

- DE AGOSTINI (script), Chilean trademark registration No. 585272 of March 5, 2001, renewal of a prior registration dating back to 1990, for goods in class 16;

- DE AGOSTINI (script), South Africa registration of March 31, 2000, renewal of registration No. 90/2310, covering goods in class 16;

- DE AGOSTINI JUNIOR (script), Italian application No. MI2001C04761, filed on May 2, 2001, and being the renewal of a prior registration dating back to 1991, for goods in class 16;

- ISTITUTO DE AGOSTINI (word), Italian application No. MI2001C010581, filed on October 16, 2001, and being the renewal of a prior registration dating back to 1981, for goods in class 16;

- ISTITUTO GEOGRAFICO DE AGOSTINI (word), Italian application No. MI2001C010578, filed on October 16, 2001, and being the renewal of a prior registration dating back to 1981, for goods in class 16;

- ISTITUTO GEOGRAFICO DE AGOSTINI and device, Italian application No. MI2000C007499, filed on June 27, 2000, and being the renewal of a prior registration dating back to 1990, for goods in class 16;

- ISTITUTO GEOGRAFICO DE AGOSTINI (words), International registration No. 505463, of September 22, 1986, covering goods in class 16, and services in class 42;

- ISTITUTO GEOGRAFICO DE AGOSTINI (script), International registration No. 552200, of April 24, 1990, covering goods in class 16;

- ISTITUTO GEOGRAFICO DE AGOSTINI (words), U.S. registration No. 1,505,808, filed on June 18, 1987, and granted on September 27, 1988, covering goods in class 16;

- ISTITUTO GEOGRAFICO DE AGOSTINI and device, Chilean registration No. 585271 of March 5, 2001, covering goods in class 16;

- ISTITUTO GEOGRAFICO DE AGOSTINI and device, South Africa registration of March 31, 2000, renewal of registration No. 90/2311, covering goods in class 16.

Not all the aforesaid trademarks correspond to the domain name <deagostini.tv>, but some of them do. Therefore, the Panel must conclude that the disputed domain name is identical to some of the Complainantís trademarks, and in particular to those merely consisting of the wording DE AGOSTINI.

As far as the other trademarks mentioned above are concerned, they all consist of the wording DE AGOSTINI, either preceded by ISTITUTO or ISTITUTO GEOGRAFICO, or followed by JUNIOR. The Panel believes that being all these additional terms deprived of distinctive character in Italy (where the Respondent is located), the distinctive part of these trademarks lies in the DE AGOSTINI component. Hence, in the Panelís view, the domain name <deagostini.tv> should also be considered confusingly similar to the other trademarks listed above.

Therefore, the Panel is satisfied that the first condition is met.

2) The Panel finds that the Respondent has neither rights nor legitimate interests in respect of the domain name <deagostini.tv>.

It is a consolidated principle that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondentís rights or legitimate interests in respect of the domain name according to Para. 4(a)(ii) of the Policy is quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one. Accordingly, and in line with other prior decisions, the Panel holds that it is sufficient that the Complainant shows a prima facie evidence in order to shift the burden of prove on the Respondent (Anti Flirt S.A. and Mr. Jacques Amsellem v. WCVC, WIPO Case No. D2000-1553, Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467).

The Complainant alleged the following circumstances that, in the Panelís view, create a sufficient prima facie evidence that justifies an inversion of the burden of proof:

- the registrant is named Marco Cialone. No elements appear to exist that can link Mr. Cialone to the name ĎDe Agostinií, nor is he in any way connected or affiliated to the company ĎDe Agostinií, or authorised to carry out activities, either commercial or non commercial, on behalf of the Complainant;

- the registrant is not known through the web site corresponding to the disputed domain name, nor through such web site does he carry out activities which could refer thereto. The site corresponding to the domain name <deagostini.tv>, even if registered almost two years ago, is not used for the Respondentís activities, but resolves to the Registrar's home-page.

In other words, the Complainant states that none of the circumstances listed in Para. 4(c) of the Policy that would have proved the Respondent's right or legitimate interest in the disputed domain name exist. The Respondent might have rebutted all the Complainant's arguments but failed to do so and thus, the Panel must conclude that the Complainantís allegations are sufficient to establish a prima facie evidence of the Respondentís lack of rights or legitimate interests in respect of the domain name <deagostini.tv>.

In the light of the foregoing, the Panel is satisfied that also the second condition is met.

3) This Panel finds that the domain name was registered and is being used in bad faith.

In order to reach this conclusion, the Panel examined separately two issues:

1) whether or not bad faith existed when the domain name was registered; and

2) whether or not the domain name was used in bad faith.

The first argument in support of the Complainantís assertion of the Respondentís bad faith in the registration of the domain name <deagostini.tv> is based on the renown of the DE AGOSTINI trademarks and the Complainantís activity. According to the Complainant, such renown is worldwide but, obviously, is even more marked, in Italy, where both the Complainant and the Respondent are located. Hence, the Respondent could not ignore the Complainantís existence and renown when he registered the domain name <deagostini.tv>.

The Panel shares the Complainantís view.

From the evidence enclosed to the Complaint, it results that the Complainantís activities date back to the beginning of the XXth century (1901), and that throughout the years the Complainant has acquired a substantial share of the market of reference - 50% of the world market Ė (Annex H). In one year (2001), the Complainant launched 54 new products on the market (Annex I). Year after year, the Complainant expanded its activities, from the mere publication of maps or geographic books, to the publication of books in several other fields, encyclopaedia, magazines, multimedia products, etc., to the performance of instructional services, the production of films, etc..

In the light of the evidence filed by the Complainant, and in the absence of any contrary argument by the Respondent, the Panel concludes that the Complainantís trademarks and activities should be considered as renown, at least in Italy, where the Respondent is located. Accordingly, in the Panelís belief, Respondent could not ignore the Complainantís existence and rights at the time of the registration of the domain name <deagostini.tv>. In line with other prior decisions (Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Clicquot Ponsardin v. The Polygenix Group Ltd., WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia, WIPO Case No. D2000-0226; Ferrero S.p.A. v. Mario Pisano, WIPO Case No. D2000-1794; Ferrero S.p.A. v. Publinord S.r.l., WIPO Case No. D2002-0395) the Panel believes that, in the absence of any right or legitimate interest, and lacking any contrary evidence by the Respondent, the Respondentís registration of a domain name identical and confusingly similar to the Complainantís well-known trademarks suggests opportunistic bad faith.

The above is confirmed by the additional circumstances mentioned and proved in the Complaint, which show that the Respondent registered the domain name at stake primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant, for a valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name.

The Panel reached this conclusion based on the fact that the Respondentís lawyer in his letter of February 2, 2001, expressly refused, on behalf of his client, to transfer the registration of the domain name to the Complainant, for a consideration equal to the costs borne by the Respondent for the registration of the domain name. The Panel is not aware of which was the Respondentís specific request for the transfer of the domain name, as this was made verbally. However, in the Panelís view, in the absence of any contrary statement by the Respondent, the above is sufficient to prove that the Respondent registered the domain name <deagostini.tv> in bad faith under Paragraph 4(b)(i) of the Policy.

As far as use in bad faith is concerned, the Complainant states that "the site corresponding to the domain name under Complaint, even if it was registered almost two years ago, is not used and its home-page is the .TV Corporation holding page (annex L)." Furthermore, according to the Complainant, "a click on that domain name gives rise to a Ďredirectí to the site of Ďthe .TV Corporationí (Ö)."

In the Panel's view, it is likely that the redirection to the .TV Corporation Registrarís home page has been automatically activated by the Registrar itself, as it often occurs when a domain name does not lead to a specific web site. Accordingly, even if a certain use of the domain name <deagostini.tv> exists, since this use is not referable to the Respondent, it should be compared to a mere passive holding of the same domain name by the Respondent.

It is known that several WIPO decisions held that use in bad faith does not necessarily entail a positive action, but also inaction in the presence of particular circumstances. (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Compaq Computer Corporation v. Boris Beric, WIPO Case No. D2000-0042; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090).

In the case at issue, the Panel found that: (i) the Respondent lacks of any right or legitimate interest in respect of the domain name <deagostini.tv>; (ii) the Complainantís trademarks are renown in Italy, where the Respondent is located; (iii) the Respondent registered the domain name at stake primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant, for a valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name <deagostini.tv>; and (iv) the Respondent has not taken any step to use the domain name in connection with a bona fide offering of goods and services, or for noncommercial purposes without intent for commercial gain to misleadingly divert consumers or to tarnish the DE AGOSTINI trademarks.

The aforesaid circumstances altogether lead the Panel to believe that the domain name <deagostini.tv> is being used in bad faith.

In light of the foregoing, the Panel is satisfied that also the third condition is met.

 

7. Decision

For all the aforementioned reasons, the Panel finds that Respondentís disputed domain name <deagostini.tv> is identical and confusingly similar to the Complainantís trademarks, that the Respondent has no legitimate rights or interests in the disputed domain name, and that the Respondent has registered and made use of the domain name in bad faith.

Accordingly, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <deagostini.tv> be transferred to the Complainant.

 


 

Fabio Angelini
Sole Panelist

Dated: September 9, 2002