WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Antico Cadore S.r.l. v. Keyword Marketing Inc.
Case No. D2007-0402
1. The Parties
The Complainant is Antico Cadore S.r.l., established in Belluno, Italy, represented by BSVA Studio Legale Associato, established in Milan, Italy.
The Respondent is Keyword Marketing Inc., established in Charlestown, Nevis, West Indies. The Respondent did not appoint a representative.
2. The Domain Name and Registrar
The disputed domain name <anticocadore.com> (hereinafter referred to as the “Domain Name”) is registered with Belgium Domains, LLC.
3. Procedural History
The Complaint was filed by e-mail with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2007 and in hard copy on March 27, 2007. On March 22, 2007, the Center transmitted by email to Belgium Domains, LLC a request for registrar verification in connection with the domain name at issue. On March 22, 2007, Belgium Domains, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On May 9, 2007, following the resolution of a number of administrative matters with the Complainant, 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 May 9, 2007. No Response was submitted to the Center, and the notification of Respondent Default was notified to the Parties on May 31, 2007.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on June 12, 2007. 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.
4. Factual Background
The Complainant is an Italian company, which has its business in decorating homes by using old building materials (i.e. wooden floors from ancient homes, etc.).
The Complainant is the holder of the domain name <anticocadore.it> and of the domain names <anticoe.com>, <anticoe.biz>, <anticoe.info>, <anticoe.net> and <anticoe.it>. On August 5, 2004, the Complainant filed for the registration of the domain names <anticocadore.com>, <anticocadore.biz>, <anticocadore.info> and <anticocadore.net>.
The Respondent registered the Domain Name on October 1, 2006. The Domain Name links to a website which is used for a landing page containing links to Italian websites offering (inter alia) antique building products and wooden floors.
On January 18, 2007, the Complainant’s representative sent letters of warning to the holders of the sponsored links on the website “www.anticocadore.com”.
5. Parties’ Contentions
A. The Complaint
Identical or Confusingly Similar
For the purpose of substantiating that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, the Complainant has produced a print-out of its website “www.anticocadore.it”, a request for registration of the domain names <anticocadore.com>, <anticocadore.biz>, <anticocadore.info> and <anticocadore.net>, a hosting agreement for the domain name <anticocadore.it> and registration agreements of the domain names <anticoe.com>, <anticoe.biz>, <anticoe.info>, <anticoe.net> and <anticoe.it>.
Rights or Legitimate Interests
The Complainant contends that the Respondent does not have any rights or legitimate interests in respect of the Domain Name. The Complainant substantiates this by stating that the website “anticocadore.com” links to other websites offering services which are closely related to the services offered by the Complainant and that the Respondent is (therefore) making a commercial and unfair use of the Domain Name to divert, for lucrative purposes, Internet users looking for Complainant’s website.
Registered and Used in Bad Faith
The Complainant states that there are circumstances indicating that the Domain Name was registered primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of- pocket costs directly related to the Domain Name.
The Complainant furthermore states that the Domain Name was registered after the registration of Complainant’s trademarks and domain names. According to the Complainant, bad faith is furthermore established by the fact that the Domain Name consists of the corporate name and trademarks of the Complainant which are well known in Italy.
B. The Response
The Respondent did not file a Response.
6. Discussion and Findings
A. Identical or Confusingly Similar
In order to initiate a UDRP Proceeding, the Complainant has to provide evidence of the trademark right on which it relies. This requires that the Complainant submits evidence of a trademark registration (for example, a copy of a registration certificate or a Trademark office database print out) or provides evidence of unregistered trademark rights .
In the latter case, panels have sometimes assumed that unregistered trademark rights may also arise in countries with a civil law jurisdiction, such as Italy.
In order to provide evidence of such unregistered trademark rights, the Complainant must show that the name has become a distinctive identifier associated with the Complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.
The Complainant has claimed trademark rights and rights in the corporate name Antico Cadore. Rights in a corporate name cannot of themselves (i.e. in the absence of trademark rights) form the basis of a claim under the UDRP.
To substantiate its claim to trademark rights, the Complainant has submitted only print-outs of its website “www.anticocadore.it”, a request for registration of the domain names <anticocadore.com>, <anticocadore.biz>, <anticocadore.info> and <anticocadore.net>, a hosting agreement for the domain name <anticocadore.it> and registration agreements of the domain names <anticoe.com>, <anticoe.biz>, <anticoe.info>, <anticoe.net> and <anticoe.it>.
As has been decided by previous panels, rights in a domain name do not as such amount to rights in a trademark.
If and to the extent that Complainant intends to rely on unregistered trademark rights, the print out of the “www.anticocadore.it” website shows use of the name “Antico Cadore” at least on the internet. However, the Complainant has failed to provide any evidence of length and amount of sales under that name, the nature and extent of advertising, consumer surveys and media recognition. Therefore, the Complainant has not provided evidence of its rights in an unregistered trademark “Antico Cadore”, leaving aside whether and to what extent such rights are recognized in Italy.
Therefore, the Complainant has failed to meet the first requirement of paragraph 4 (a) of the Policy.
B. Rights or Legitimate Interests and Registered and Used in Bad Faith
Given that the Panel finds, as discussed above, that the Complainant has failed to prove the first element of the Policy, the Panel makes no findings with respect to the second and third elements of the Policy (See, e.g., Admerex Limited v. Metyor Inc., WIPO Case No. D2005-1246 and Micro Electronics, Inc. v. MicroCenter, WIPO Case No. D2005-1289).
For all the foregoing reasons, the Complaint is denied.
Wolter Wefers Bettink
Dated: June 26, 2007