WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BolognaFiere S.p.A. v. Bonopera Daniele
Case No. D2003-0295
1. The Parties
Complainant is BolognaFiere S.p.A., Bologna, Italy, represented by Dr. Modiano & Associati S.p.A. of Italy.
Respondent is Daniele Bonopera, Riccione, Italy.
2. The Domain Name and Registrar
The disputed domain name is <bolognafiere.com> and is registered with Network Solutions, Inc. (the Registrar).
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 16, 2003, and subsequently in hard copy on April 17, 2003. On April 16, 2003, the Center sent an Acknowledgment of Receipt of Complaint to Complainant.
On April 16, 2003, a request for Registrar Verification in connection with this case was transmitted to Registrar. On the subsequent day 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 contact details for the administrative, billing and technical contact.
On April 22, 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 12, 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 14, 2003.
On May 20, 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 3, 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 is a company based in Italy and having its main place of business in Bologna. Complainant claims, and in the absence of any contradiction from Respondent the Panelist accepts that Complainant is one of Europeís leading exhibition centres (hosting every year up to 30 specialist exhibitions and about 500 conferences over 23,000 exhibitors and 1,400,000 Italian and foreign visiting professionals -see Annexes 3, 6 and 7) and that Complainantís activity, trade name and trademark are well known especially in Italy where they have been extensively used by Complainant since 1985.
Complainant is the proprietor of various Italian, international and Community trademark registrations for the name "BolognaFiere" (see Annexes 4 and 5.1, 5.2 and 5.3). The first filing of the Italian trademark dates back to 1992 but, according to Complainant, its use goes back to 1985.
The above trademark registrations cover the following International classes: class No. 35 including "organizations of exhibitions for commercial or advertising purposes and fairs"; class No. 41 including "the organization of Ö.. fairs for cultural, educational, sporting and entertainment purposes" and class No. 42 covering "providing facilities for exhibitions, colloquiums and fairs".
Complainant has also submitted a list of various domain names registered by Complainant including the trademark "BolognaFiere"(see Annex 8), amongst which <bolognafiere.it> corresponds to Complainantís official website where it publishes information about its commercial activities.
From a Whois search carried out by Complainant (see Annex 13) the Domain Name was registered by Respondent on December 23, 1999. The Complaint was filed on April 14, 2003.
5. Partiesí Contentions
Complainant contends that:
• the Domain Name is identical or confusingly similar to Complainantís trademarks "Bolognafiere";
• 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;
• Complainantís trade name and trademarks are well known, especially in Italy;
• Respondent is resident in Riccione, which is close to Bologna where Complainant is located, he is the director and legal representative of the company Elettrica System S.N.C. dealing with "the design, the production and assembly of stands, also for fairs and congress services of any kind and type" (see Complaint, at 10) and this implies Respondentís knowledge of the Italian fair sector and especially of Bologna fairs;
• Respondent had therefore actual knowledge of Complainantís trademark when registering the Domain Name;
• Respondent has not used the Domain Name for a long time after registration, until the end of March 2003. Since then a calendar of various exhibitions and fairs has been appearing on the home page, and Internet users are redirected to Respondentís website <italiafiere.it> which displays information on Italian fairs. Information given on Complainantís exhibitions is not authorized, nor correct or updated;
• Respondentís use of the Domain Name misleads Internet users and creates a likelihood of confusion with Complainantís trademark and domain names;
• as soon as it became aware of the above, Complainant sent a cease and desist letter which Respondent never replied to, and subsequent filed the Complaint.
Based on the above, Complainant requests the transfer of the Domain Name.
Respondent has not submitted a Response.
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 <bolognafiere.com>. As mentioned above, Complainant is the owner of a number of trademark registrations for "BolognaFiere".
Apart from the generic ".com" domain suffix, the Domain Name exactly corresponds to Complainantís trademark. Therefore the Panelist finds that the Domain Name is identical to Complainantís trademarks pursuant to Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
According to Paragraph 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 and repeatedly established by WIPO panelists 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 under this head. Respondent has not responded and failing any obvious reason for Respondentís having any rights or legitimate interest in the Domain Name, the Panelist finds that Complainant has succeeded in establishing factor (ii) under Paragraph 4(a)of the Policy.
C. Bad Faith
Under Paragraph 4(a)(iii) of the Policy, Complainant must prove that the Domain Name was registered and is being used in bad faith by Respondent. The four criteria set forth under Paragraph 4(b) are nonexclusive (see eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 (January 18, 2001); The Channel Tunnel Group Ltd. v. John Powell, WIPO Case No. D2000-0038 (March 17, 2000)); therefore, in addition to these criteria, other factors alone or in combination can support a finding of bad faith.
A well-established principle under WIPO case law (see for instance Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022 (March 4, 2003); Nokia, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397 (December 21, 2000)) and under Sec. 2 of the ICANN Policy, is that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. In the Panelistís view it is highly probable that Respondent had Complainantís trademark in mind when registering the Domain Name. This is suggested by the fact that Complainantís trademark is well known, that Respondent resides in Riccione, an Italian town very near to Bologna where the main place of business of Complainant is located, and that Respondent is the director and legal representative of a company dealing with the management and organization of fairs and exhibitions (which is also Complainantís core business see Complaint, page 10). Actual knowledge of Complainantís trademark is a factor supporting bad faith (see, for instance, RRI Financial, Inc. v. Ray Chen, WIPO Case No. D2001-1242 (December 11, 2001); Infospace, Inc. v. Siavash Jimmy Behain, et al., WIPO Case No. D2000-1631 (March 30, 2001); Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (April 18, 2000)).
According to Complainant the Domain Name has been kept inactive for a long period of time (i.e. almost three years) and has not been used for Respondentís commercial activities. Since March 2003, the Domain Name is being used by Respondent just to redirect Internet users to Respondentís website <italiafiere.it> whereby general information on Italian fairs and exhibitions are displayed (see Annexes 11-14) .
In addition, the fact that Complainantís entire trademark is used in the Domain Name, makes it difficult to infer a legitimate use of the Domain Name by Respondent (see eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 (January 18, 2001)). No plausible explanation exists as to why Respondent selected the name "bolognafiere" as domain name other than to mislead Internet users and create a likelihood of confusion with Complainant and to prevent Complainant as holder of the trademark "BolognaFiere" from reflecting the mark in a corresponding domain name.
Finally, as consistently established by WIPO case law, the circumstances that Respondentís registration is identical or confusingly similar to Complainantís trademarks, that Respondent failed to reply to Complainantís cease and desist letter and that Respondent failed to file a Response to the Complaint, can suggest that the Domain Name was registered and is being used in bad faith (see amongst othersDitting Maschinen AG v. I.C.T. Company, WIPO Case No. D2003-0170 (April 30, 2003); Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000)).
In the light of the above, and in the absence of any Response, the Panelist finds that Complainant has shown sufficient facts in order to support a finding that the Domain Name was registered and is being used in bad faith according to the Policy, Paragraph 4(a)(iii).
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 <bolognafiere.com> be transferred to Complainant.
June 3, 2003