WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lanifici Riuniti Biella S.p.A. v. Ms. Carolina Beverlizio
Case No. D2003-0906
1. The Parties
The Complainant is Lanifici Riuniti Biella S.p.A., Valdagno, Vicenza, Italy, represented by Studio Legale Jacobacci e Associati, Italy.
The Respondent is Ms. Carolina Beverlizio, Bergamo, Italy.
2. The Domain Name and Registrar
The disputed domain name <lanificiriunitibiella.com> is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 13, 2003. On November 13, 2003, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On November 13, 2003, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 20, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 10, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on January 12, 2004.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on January 22, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The language of the proceeding is English.
4. Factual Background
Complainant is an Italian company working in the field of wool and fashion, and is the owner of several trademarks including the words LANIFICI RIUNITI BIELLA. Complainantís first application for the trademark LANIFICI RIUNITI BIELLA and device in Italy dates back to February 8, 1989.
LANIFICI RIUNITI BIELLA is the trade name of Complainant.
The Respondent registered the domain name <lanificiriunitibiella.com> on September 21, 2003.
5. Partiesí Contentions
The Complainant submits that:
The domain name <lanificiriunitibiella.com> is confusingly similar with the trademark and trade name LANIFICI RIUNITI BIELLA and that the combination of the three words "Lanifici", "Riuniti" and "Biella" clearly and unequivocally identifies Complainant.
There is no way that Respondent, an individual located in Italy, where Lanifici Riuniti Biella is well-known as a company, may not have been aware of the trademark and trade name LANIFICI RIUNITI BIELLA, and registration may only have occurred in bad faith. In support of this statement, Complainant quotes several WIPO decisions, where the finding was that actual knowledge of Complainantís trademark when registering a corresponding domain name infers "opportunistic bad faith" (see 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 Quintas and Christiandior.net, WIPO Case No. D2000-0226; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137).
Upon information and belief, Respondent has no rights or legitimate interests in respect of the domain name.
In particular there is 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.
Respondent only offers pornographic images for a fee through her Web site.
Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name <lanifici riuniti biella.com>.
The use which Respondent makes of the domain name is commercial, and the possibility of a non-commercial fair use is difficult to conceive.
The domain name is used in bad faith. When first visited by Complainant and its attorneys in September 2003, the page at "www.lanificiriunitibiella.com" resolved in the offer of pornographic services connected to anal sex for a fee with a title tag "http://www.lanificiriunitibiella.com" (Annex 4 to Complaint); subsequently the title tag disappeared but "www.lanificiriunitibiella.com" resolved in a (different) pornographic page selling sexually explicit images of (allegedly) "virgin teens" (Annex 5 to Complaint).
Referring and quoting a number of previous decisions, Complainant submits that the present case is a clear example of "porno-squatting", where this term is used to describe a person who, by abusively registering a domain name (i.e. a cyber-squatter) corresponding to a well-known trademark and/or trade name, tries to take advantage from them and the confusion created, to attract Internet users to a pornographic Web site.
The Respondent did not reply to the Complainantís contentions. Thus, Respondent has failed to submit any statement. She has not contested the allegations made in the Complaint and the Panel shall decide on the basis of Complainantís submissions, and shall draw such inferences from the Respondentís default as it considers appropriate (paragraph 14(b) of the Rules).
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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 Policy lists three elements that the Complainant must prove to merit a finding that the domain name registered by the Respondent be transferred to the Complainant:
(1) the domain name is identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name;
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has demonstrated that it has rights in the LANIFICI RIUNITI BIELLA trademark and trade name, including registrations in Italy, where Respondent is located. It is unquestionable that Complainantís trademark registrations pre-date Respondentís domain name registration.
The domain name <lanificiriunitibiella.com> is identical to Complainantís trade name and registered trademark.
The Panel agrees with Complainantís statement that the combination of the three words "Lanifici", "Riuniti" and "Biella" clearly and unequivocally identifies Complainant.
In view of all the above, the Panel finds that the disputed domain name is confusingly similar to Complainantís trademark and trade name LANIFICI RIUNITI BIELLA.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) that before any notice to the respondent of the dispute, he or she used or made 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;
(b) that the respondent is commonly known by the domain name, even if he or she has not acquired any trademark rights; or
(c) that the respondent intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Respondent does not appear to have any connection or affiliation with the Complainant. Respondent does not appear to make any legitimate use of the domain name for her own commercial or non-commercial activities. Respondent has not been known under this domain name. Respondent has not filed any Response to the Complaint and has not alleged any facts or elements to justify prior rights and/or legitimate interests in the disputed domain name. Therefore, the Panel concludes that the above constitutes prima facie evidence of a lack of rights to or legitimate interests in the domain name.
Accordingly, the Panel finds that the Complainant has satisfied the burden of proof with respect to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holderís documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holderís website or other online location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the holderís website or location or of a product or service on the holderís website or location.
Accordingly, for a Complainant to succeed, the Panel must be satisfied that the domain name has been registered and is being used in bad faith.
In absence of contrary evidence, the Panel finds that, given the widespread use and fame of the Complainantís LANIFICI RIUNITI BIELLA trademark at least in Italy, the Respondent who is also located in Italy, where the Lanifici Riuniti Biella S.p.A. has a primary market, could not have ignored Complainantís mark when she registered the domain name <lanificiriunitibiella.com>. Thus, it appears that Respondent had actual knowledge of Complainantís trademark when she registered the disputed domain name. Actual knowledge of Complainantís trademark and activities at the time of the registration of the disputed domain has been repeatedly considered an inference of bad faith in prior cases (see e.g.: Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
The fact that Respondent chose to register and use a domain name corresponding to Complainantís registered trademark, firstly to directly offer through her Web site pornographic images for a fee, and subsequently to redirect to a different pornographic page containing sexually explicit materials, is inference of Respondentís bad faith registration and use of the disputed domain name.
As well explained by the Panel in the case Motorola, Inc. v. NewGate Internet, Inc. (WIPO Case No. D2000-0079), "while many adult sex sites are perfectly legal and constitute bona fide offerings of goods or services, the use of somebody elseís trademark as a domain name (or even as a meta-tag) clearly does not constitute a Ďbona fideí offering of goods or services when the web site owner has no registered or common law rights to the mark, since the only reason to use the trademark as a domain name or meta-tag is to attract customers who were not looking for an adult sex site, but were instead looking for the products or services associated with the trademark. Such use of a trademark can create customer confusion or dilution of the mark, which is precisely what trademark laws are meant to prevent. And actions that create, or tend to create, violations of the law can hardly be considered to be Ďbona fideí".
That the use of a domain name corresponding to and/or incorporating the trademark of another company to redirect unwillingly Internet users to pornographic sites is, per se, evidence of bad faith has been confirmed by several Panel decisions; see e.g. Ty, Inc. v. O.Z. Names (WIPO Case No. D2000-0370), finding that absent contrary evidence, linking the domain names in question to pornographic, adult-oriented websites is evidence of bad faith; Youtv, Inc. v. Alemdar (Nat. Arb. Forum Case No. FA 94243), finding bad faith where Respondent attracted users through a domain name similar to a trademark it did not own and linked its website to pornographic websites; Oxygen Media, LLC v. Primary Source (WIPO Case No. D2000-0362), finding bad faith even where respondent merely threatened to develop the domain name in question into a pornography site; Simple Shoes, Inc. v. Creative Multimedia Interactive (Nat. Arb. Forum Case No. FA 0008000095343), according to which "linking a domain name that is identical or confusingly similar to Complainantís mark to a pornographic site is evidence of registration and use in bad faith"; Six Continents Hotels, Inc. v. Seweryn Nowak (WIPO Case No. D2003-0022), noting that "the diversion of the domain names to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith"; Cattlemens v. Menterprises ĖWeb Development (CPR Case No. CPR0304), concluding that "a pornographic site (Ö) is [inherently] antagonistic to the legitimate activities of Complainant".
In view of all the above, Respondentís registration and use of the disputed domain name constitutes use in bad faith within the meaning of the Policy.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <lanificiriunitibiella.com> be transferred to the Complainant.
Dated: January 30, 2004