WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Confederazione Generale Italiana del Commercio del Turismo, dei Servizi e delle Piccole e Medie Imprese (Confcommercio) v. Nicola Pasquini
Case No. D2003-0284
1. The Parties
Complainant is Confcommercio - Confederazione Generale Italiana del Commercio, del Turismo, dei Servizi e delle Piccole e Medie Imprese, Rome, Italy, represented by Società Italiana Brevetti S.p.a., Italy.
Respondent is Nicola Pasquini, Zona Industriale, Chieti, Italy.
2. The Domain Name and Registrar
The disputed domain name <confcommercio.info> is registered with Tucows.
3. Procedural History
A Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 ("the Policy"), to the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("the Rules") and to the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on April 11, 2003, and subsequently in hard copy on April 14, 2003. On April 11, 2003, the Center sent an Acknowledgment of Receipt of Complaint to Complainant.
On the same day, a request for Registrar Verification in connection with this case was transmitted to the Registrar. On April 14, 2003, the Registrar replied by e-mail confirming that Respondent is listed as the registrant and the language of the Service Agreement is English and providing the details for the administrative, billing and technical contacts.
On April 25, 2003, the Center formally notified Respondent of the Complaint and of the Commencement of Administrative Proceeding by the required means, setting a deadline at May 15, 2003, by which Respondent could file a Response to the Complaint.
Given that no Response was submitted within said deadline, the Center notified Respondentís default on May 19, 2003.
On May 27, 2003, the Center notified the parties that Ms. Anna Carabelli had been appointed as the Panelist in this proceeding and the projected date for decision was June 10, 2003, in the absence of any exceptional circumstances.
The Panelist has independently determined and agreed with the assessment of the Center that the Complaint formally complies with the requirements of the Policy, the Rules and the Supplemental Rules.
4. Factual Background
Complainant was established in Rome on April 29, 1945. In the beginning, Complainant represented 38 Associations of Traders, under the name of "Confcommercio Ė Confederazione Generale Italiana del Commercio". In 1952, Complainant started to represent the interests of companies operating in the field of tourism and changed its name into "Confcommercio Ė Confederazione generale Italiana del Commercio e del Turismo". During the 1980s, Complainant also began to represent companies operating in the transport, telecommunication, TV-radio broadcasting, communication and instruction fields. In 1985 Complainant changed its name to "Confcommercio Ė Confederazione Generale Italiana del Commercio, del Turismo e dei Servizi". Finally, in 1998 Complainant adopted its current name "Confcommercio Ė Confederazione Generale Italiana del Commercio, del Turismo, dei Servizi e delle Piccole e Medie Imprese". Presently, Complainant is the largest confederation of Italian enterprises in Italy representing more than 780,000 enterprises working in the trade, tourism, service and transportation fields. Complainant operates in Italy through 21 regional unions, 103 provincial organizations and 152 national category organizations.
The main activity carried out by Complainant is to represent its members before public and private institutions, political, economic and social organizations, and trade unions. In performing this activity, Complainant carries out several functions namely the drafting and execution of labor collective agreements, the promotion of education services in the field of business services, legislation, environmental quality, safety at work and so on. Complainant also organizes informative companies on delicate and relevant fields having a particular impact on its members and on the general community.
The above circumstances are evidenced by the attachments to the Complaint and, in the absence of any submission of Respondent to the contrary, the Panelist is satisfied that the documents submitted by Complainant truthfully reflect the factual circumstances of the case.
Complainant is the owner of two registered Italian trademarks covering the full heading of Italian class 41 (which includes "education, training, entertainment, sports and cultural activities") and consisting in the combination, respectively, of the word "confcommercio" with Complainantís logo (see Annex 4) and with the wording "commercio turismo servizi Ė p.m.i." lying beneath (see Annex 5). For both trademarks filing dates back to 1999.
Moreover, Complainant claims, and in the absence of any submission of Respondent to the contrary, the Panelist accepts that Complainant owns de facto trademark rights in the term "confcommercio" "by virtue of more than 50 years (since 1945) of protracted, uninterrupted, manifest, public, unchallenged and exclusive use of this term in Italy" (see Complaint, at page 6).
Complainant submits that the trademark "CONFCOMMERCIO" is a well-known mark and the Panelist, based on her own knowledge, is also personally convinced that the mentioned trademark is well-known at least as far as the Italian territory is concerned.
Complainant operates a web-site under the domain name <confcommercio.it>, registered on July 7, 1997, and has also registered the domain name <confcommercio.biz> on March 27, 2002.
On April 8, 2002, Complainantís representatives sent a cease and desist letter (see Annex 8) requesting the immediate transfer of the Domain Name which Respondent never replied to. The same letter was sent to Respondent again on May 3, 2002 (see Annex 9), and subsequently, on November 28, 2002, Complainantís representatives made a last attempt to amicably settle the dispute (see Annex 10). Further to these letters, on December 2, 2002, Respondent sent an e-mail to Complainant stating that "as already discussed with you on the phone, we are available to a possible assignment of the domain name <confcommercio.info> provided you make a concrete offer in the range of the already mentioned amount, which we will evaluate" (see Annex 11). Complainant has evidenced that the original amount of this offer, which was put forward on a verbal basis only, amounted to 10,000 USD, subsequently lowered to 5,000 USD as indicated in the letter Complainantís representative sent to Complainant on December 12, 2002, to summarize Respondentís request and instructions to Complainant (see Annex 12). Complainant did not accept the offer and counter-offered the amount of 1,000 USD for obtaining the immediate transfer of the Domain Name (see Annex 13). Respondent did not accept Complainantís offer and asked for about USD 3,000 for the transfer (see Annex 14). After that, Complainant moved to file the Complaint.
From a Whois search carried out by Complainant (see Annex 1) the Domain Name was registered by Respondent on October 4, 2001. The Complaint was filed on April 11, 2003.
Complainant has also alleged that Respondent registered under the gTLD ".info" several domain names corresponding to well-known trademarks, such as: <ilmessaggero.info>, <corrieredellasera.info>, <ilmattino.info>, <alpitour.info>, <francorosso.info>, etc. In the lack of any Response by Respondent, the Panelist deems this assertion to be true.
5. Partiesí Contentions
Complainant contends that:
- the Domain Name is both identical and confusingly similar to Complainantís trademark CONFCOMMERCIO;
- Respondent has no rights or legitimate interests in the Domain Name since he has not been authorized or licensed by Complainant and he is not commonly known by the Domain Name;
- Respondent owns neither International nor Community nor Italian trademark applications and registrations in the term "confcommercio" (see Annex 15);
- Complainantís trade name and trademarks are well-known, especially in Italy, where Respondent is located; Complainantís contention is supported by printouts of the results of a research made out on the Internet both on the "Google" search engine (see Annex 6) and the search engines of some of the most important Italian newspapers (such as Corriere della Sera, La Stampa, Il Messaggero) (see Annex 7) and showing the large number of web pages and articles making reference to the term "confcommercio" in connection with Complainantís activities;
- at the last check by Complainant (on April 10, 2003, Ė see Annex 17), there is no web-site corresponding to the Domain Name; moreover, Respondent has never provided evidence attesting possible preparations to use the Domain Name;
- the Domain Name was registered and has been used in bad faith;
- the Domain Name was primarily registered for the purpose of selling it to Complainant in excess of Respondentís out-of-pocket costs related to the Domain Name;
- Respondent has also registered other ".info" domain names corresponding to well-known trademarks for newspapers (for instance, <ilmessaggero.info> <corrieredellasera.info>, <ilmattino.info>), tour operators (such as <alpitour.info>, <francorosso.info>), public institutions (for example, <ministerodellavoro.info>), banks (namely, <rolobanca.info>, <intesa.info>) and other renowned Italian marks in the name of third parties (such as <zoppas.info>, <giugiaro.info>, <caltanet.info>).
Based on the above, Complainant requests the transfer of the Domain Name.
Respondent did not reply to Complainantís contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panelist to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) the domain name in issue is identical or confusingly similar to the complainantís trademark or service mark;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a) (iii) shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(c) sets out in particular but without limitation three circumstances which, if proved by the respondent, shall be evidence of the respondentís rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii).
Where a respondent fails to respond, the Panelist is entitled to draw such inferences as it considers appropriate (Rule 14(b)).
A. Identical or Confusingly Similar
The Domain Name is <confcommercio.info>. As mentioned above, Complainant is the owner of a number of trademark registrations for CONFCOMMERCIO alone or combined together with other words and of the de facto trademark upon the term CONFCOMMERCIO.
Irrespective of the generic ".info" domain suffix, the Domain Name totally corresponds to Complainantís de facto trademark "confcommercio" and is confusingly similar to Complainantís registered trademarks. Therefore the Panelist finds that the Domain Name is identical or confusingly similar to the trademarks in which Complainant has rights.
B. Rights or Legitimate Interests
Pursuant to Para. 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in the Domain Name.
In this regard, it has been consistently established by WIPO case law that "once a Complainant establishes a prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to Respondent to rebut the showing" (see among others, Ditting Maschinen AG v. I.C.T. Company, WIPO Case No. D2003-0170 (April 30, 2003); Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784 (October 1, 2001)).
The Panelist finds that Complainant has made out a prima facie case. Respondent has not submitted the Response and failing any obvious reason for Respondentís having any rights or legitimate interest in the Domain Name, the Panelist holds that Complainant has succeeded in establishing factor (ii) under Para. 4(a )of the Policy.
C. Bad Faith
Respondentís written offers to Complainant, before the filing of the Complaint, to sell the Domain Name to Complainant for USD 10,000, subsequently lowered to USD 5,000 and finally to about USD 3,000 are indications that the Domain Name was registered primarily for the purpose of selling it for a consideration in excess of the documented out-of-pocket costs (see for instance Caterpillar Inc. v. Roam the Planet, Ltd., WIPO Case No. D2000-0275 (March 25, 2000)). No evidence was produced by Respondent to establish that the actual cost of registration and maintenance of the Domain Name could approach neither the maximum nor the minimum requested amount; in this regard, Respondentís generic statement that the request of USD 3,000 for the transfer of the Domain Name was justified by his investments and costs of the management of the entire activity is unsupported, therefore the Panelist finds it to be irrelevant.
Complainant has indicated the list of domain names registered by Respondent under the gTDL ".info" and corresponding to renowned Italian trademarks (see page 11 of the Complaint). This suggests that Respondent has been in the business of registering or acquiring domain names for the purpose of selling them, not for the purpose of carrying on business under any particular domain name. In fact, Respondent could not possibly make any plausible actual or contemplated active use of each of the domain names which it is stated to own, in providing goods and services in commerce. No evidence has been adduced by Respondent that it intended to use the Domain Name, or any of the domain names so listed, for any purpose other than to sell them at a profit. Respondentís offer to transfer the Domain Name to Complainant for an amount of money in excess of the documented out-of-pocket costs directly related to the Domain Name is a confirmation of the above (see for a similar case Caterpillar Inc. v. Roam the Planet, Ltd., WIPO Case No. D2000-0275 (March 25, 2000)).
In addition, a review of prior WIPO decisions reveals that a significant number of decisions are predicated on the notion that the passive holding of a domain name, without putting it to any use, when considered in conjunction with the other circumstances of the case may support a finding of bad faith (see, among others, Advanced Comfort Inc. v. Frank Grillo, WIPO Case No. D2002-0762 (October 18, 2002); Redcats S.A. And La Redoute S.A. v. Tumay Asena, WIPO Case No. D2001-0859 (September 19, 2001); CBS Broadcasting Inc. vs. Edward Enterprises, WIPO Case No. D2000-0242 (May 24, 2000); Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000)).
At hand Complainant's trademarks are well-known and have a strong reputation, consequently it is reasonable to infer that Respondent registered the Domain Name having knowledge of them. On the other hand, Respondent has provided no evidence of any good faith use of the Domain Name: as a matter of fact, the Domain Name "confcommercio.info", which was registered by Respondent on October 4, 2001, currently does not relate to any web site and there is no evidence that a web site or other on-line presence is in the process of being established.
In an overall assessment of the contentions and the facts reported above, the Panelist concludes that the requirements of paragraph 4(a)(iii) of the Policy have been sufficiently made out by Complainant, and that Respondentís bad faith registration and use of the Domain Name have been successfully proven.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panelist orders that the domain name <confcommercio.info> be transferred to Complainant.
Dated: June 10, 2003