WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
R.T.I. - Reti Televisive Italiane - S.p.A. v. Mr. Fabrizio Caldera
Case No. DTV2004-0004
1. The Parties
The Complainant is R.T.I. - Reti Televisive Italiane - S.p.A., Cologno Monzese (Milan), Italy, represented by Studio Legale Cantamessa, Italy.
The Respondent is Mr. Fabrizio Caldera, Milan, Italy.
2. The Domain Name and Registrar
The disputed domain name <striscialanotizia.tv> is registered with .tv Corporation International.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2004. On April 14, 2004, the Center transmitted by email to .tv Corporation International a request for registrar verification in connection with the domain name at issue. On April 14, 2004, .tv Corporation International 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 April 22, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was May 12, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 26, 2004.
The Center appointed Edoardo Fano as the sole panelist in this matter on June 1, 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 Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of the Respondent’s default in responding to the Complaint).
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, Paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of the Respondent’s response.
The language of the proceeding is English, being the language of the Registration Agreement.
4. Factual Background
The Complainant is R.T.I. - Reti Televisive Italiane - S.p.A., a well-known Italian TV broadcasting company.
The Complainant is the owner of the following trademark registration on which the Complaint is based:
- Italian registration for “STRISCIA LA NOTIZIA” No. 847.300, renewal of the previous registration No. 544.822.
The Complainant’s trademark rights in the wording “STRISCIA LA NOTIZIA”, associated with its well-known satirical/humoristic TV news program, dates back to 1988.
The Respondent’s domain name <striscialanotizia.tv> was registered on November 17, 2000. It does not point to a specific website but to the “www.tv homepage”, that is the Registrar’s website.
5. Parties’ Contentions
The disputed domain name is identical to the Complainant’s trademark STRISCIA LA NOTIZIA, not having the suffix “.tv”, as well as any other TLD suffix, a relevant distinguishing function in determining whether a domain name is identical to or confusingly similar with a Complainant’s trademark (see e.g.: Red Bull GmbH v. Markus Bernhardt, WIPO Case No. DTV2001-0019).
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
In fact, the Respondent has no connection or affiliation with the Complainant, and has not received any license or consent, express or implied, nor is authorized to use the Complainant’s trademarks and TV show names, and, on the Complainant’s information and belief, he is not the owner of any registered trademark or common law right containing the wording STRISCIALANOTIZIA, or the words STRISCIA LA NOTIZIA individually or collectively, or any permutations thereof and he is not commonly known by the disputed domain name. Furthermore, on the Complainant’s information and belief, the domain name is not, nor could it be contended to be, the name or nickname of the Respondent, nor does it in any other way identify a legitimate interest of the Respondent. Conversely, the wording STRISCIALANOTIZIA is clearly and strongly associated with the relevant and popular TV news created by the Complainant, and thus the latter contends that it is not a designation that everybody may legitimately choose unless seeking to create the impression of an association with the Complainant.
The Respondent registered the domain name in bad faith.
The TV news Striscia la Notizia, its own relevant trademark and its own relevant official web site (“www.striscialanotizia.it”), are undoubtedly well-known, and it is therefore inconceivable that the Respondent was not aware of this fact when registering the domain name at issue. The Complainant points out that “Striscia la notizia” is a fancy Italian word (it is as a matter of fact the combination of the words that is original and fantastic) and the Respondent is domiciled in Italy which is the home country of the Complainant’s famous program. Such circumstance has been considered in e.g. Guccio Gucci S.p.A. v. Mark O Flynn, WIPO Case No. D2001-0270 as an evidence of domain name registration in bad faith. Therefore, the choice of such fancy wording as domain name was obviously not casual. For these reasons, it is evident that the Respondent was, and is, aware and had full knowledge of the existence and of the fame of Striscia la notizia TV news program.
In support of this contention, the Complaint relies upon the following Decisions under the Policy. As stated in RAI-Radiotelevisione Italiana v. Alessandro Pescetelli, WIPO Case No. D2002-0716, the Panel found that the Respondent had registered the domain name in bad faith for the following reasons: “Respondent was obviously aware of the existence of the TV show l’Ottavo Nano...Respondent was aware or should have been aware that TV show names are the subject of trademark and service mark rights...and decided not to contact Complainant for authorization. Thus, registration occurred in bad faith”.
The Respondent uses the domain name in bad faith.
When registering the domain name, the Respondent knowingly choose a domain name identical to a mark of strong reputation and fame, and identical to the name of the TV news, produced by Complainant and to the Complainant’s domain name <striscialanotizia.it>.
These circumstances constitute per se bad faith use of a domain name, in spite of the fact that such domain name does not point to an active web site. As stated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, “... Inaction can in appropriate circumstances constitute use in bad faith. Thus, the passive holding of a domain name... can amount to bad faith use. Relevant circumstances include:
- where the Complainant’s trademarks has a strong reputation and is widely known;
- where it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent which would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law”.
The Respondent ritually received, on December 18, 2003, a warning letter in which the registration of the disputed domain name was contested. In spite of that, the Respondent not only did not reply to the warning letter, but also continues to use, contra legem, the domain name.
Such circumstance points out a further bad faith use.
Moreover, the Complainant points out that the Respondent has taken deliberate steps to hide his identity when he registered the domain name. As it results from by the WHOIS record for the domain name, the Respondent did not provide his address. Furthermore, after further investigations, the Complainant discovered that the Respondent has indicated three e-mail addresses and four home/office addresses. Such circumstances obliged the Complainant to ask the “Camera di Commercio Industria Artigianato Agricoltura di Milano” (that is the Milan Chamber of Commerce) for the certificate containing the exact address of the Respondent, including both his principal place of business and residence. The aforementioned circumstances have been considered as domain name registration and use in bad faith (Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
The Complainant may therefore affirm that all the above circumstances constitute bad faith registration and use of the domain name, as stated in Red Bull GmbH v. Harold Gutch, WIPO Case No. D2000-0766, where “the Panel found bad faith use citing as relevant circumstances: the well-known status and reputation of the Complainant’s mark; that any use by the Respondent would lead members of the public to associate it with the Complainant; and that any such use would constitute passing-off, trademark infringement and breaches of unfair competition law”.
The Respondent did not reply to the Complainant’s contentions and is in default: no exceptional circumstances explaining the default have been put forward.
A Respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the Complainant, in accordance with Paragraph 14(b) of the Rules (see also Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International plc v. Mark Freeman, WIPO Case No. D2000-1080; Alta Vista Company v. Grandtotal Finances Limited et al., WIPO Case No. D2000-0848).
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three tests which a Complainant must satisfy in order to succeed:
(i.) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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.
A: Identical or Confusingly Similar
As far as the first of these tests is concerned, the Panel finds that the Complainant is the owner of the trademark STRISCIA LA NOTIZIA both by registration and acquired reputation.
The disputed domain name <striscialanotizia.tv> is confusingly similar to the trademark STRISCIA LA NOTIZIA.
The Complainant has therefore met its burden of proving that the domain name at issue is confusingly similar to Complainant’s trademark, pursuant to the Policy, Paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Respondent has failed to file a Response in accordance with the Rules, Paragraph 5 and has no obvious connection with the disputed domain name.
This and the fact that the Complainant asserts that the Respondent has no rights or legitimate interests in the domain name is enough to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest exists.
However, the Respondent has not presented any evidence of rights or legitimate interests in using the disputed domain name and the Panel therefore finds that also test (ii) of the Policy’s Paragraph 4(a) has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes 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 a domain name in bad faith:
(i) circumstances indicating that the Respondent 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 its documented out-of-pocket costs directly related to the domain name; or
(ii) that the Respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, the Respondent had intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.”
As regards the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark has been already established and the Panel finds that the Respondent, especially because located in Italy where the Complainant is also located and its trademark is especially well-known, knew or should have known that the disputed domain name <striscialanotizia.tv> was confusingly similar to a well-known trademark of a third party.
As pointed out by the Complainant, further evidence of the registration in bad faith of the disputed domain name lies on the fact that the Respondent did not provide his full address and was therefore very difficult if not impossible to get in contact with him (see e.g.: VEDA GmbH v. Mr. Nicholas Silverstone, WIPO Case No. D2002-1040; Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362; Southern California Edison Company v. John Simms, WIPO Case No. D2002-0369; or Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775).
As regards the use in bad faith of the disputed domain name, the Panel considers valid the Complainant’s allegation of “passive holding” as set forth in the landmark decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, for proceedings in which the disputed domain name resolved in a “not active” web page.
Moreover, the Respondent is preventing the Complainant from reflecting its well-known trademark in the corresponding .tv domain name, which is a more and more popular TLD as far as TV programs are concerned, and this constitutes bad faith in accordance with Paragraph 4(b)(ii).
Considering the above, the Panel finds that the Complainant has presented sufficient evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and used the disputed domain name in bad faith.
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 <striscialanotizia.tv> be transferred to the Complainant.
Dated: June 9, 2004