WIPO Arbitration and Mediation Center


Superga Trademark S.A. v. Gilberto, Publinord S.r.l.

Case No. D2008-1890

1. The Parties

The Complainant is Superga Trademark S.A. of Luxembourg, represented by Studio Legale Sindico Serantoni & Scannerini, Italy.

The Respondent is Gilberto, Publinord S.r.l of Bologna, Italy, represented by Gianluca Della Giovampaola, Italy.

2. The Domain Name and Registrar

The disputed Domain Name <superga.org> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2008. On December 10, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 15, 2008, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 18, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on on December 18, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 December 19, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2009. The Response was filed with the Center on January 7, 2009.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on January 26, 2009. 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 a Luxembourg limited company affiliated with the Basic Group, which manufactures and distributes casual clothing, sportswear, shoes, and accessories under the SUPERGA mark in more than 50 countries. The Complainant has furnished documentary evidence of extensive advertising and sales using the SUPERGA mark in Italy and other countries. The Complainant's affiliates use at least twenty domain names that incorporate the SUPERGA mark, including <superga.com>, <superga.biz>, <superga.eu>, and <superga-usa.com>.

The Complainant holds numerous trademark registrations for the SUPERGA mark, including Italian Registration Number 872554 (July 8, 2002) and international (Madrid Agreement / Protocol) registration numbers 188655 (November 10, 1955), 619045 (May 12, 1994), 642364 (August 2, 1995), and 447896 (September 29, 1999) for the standard-character mark SUPERGA. The Complainant manages these marks for the benefit of the corporate group.

According to the Registrar, the Domain Name was created on May 5, 2008 and registered by “Gilberto”. The “organization name” of the registrant is listed as Publinord S.r.l., with an address in Bologna, Italy. No Response was submitted by “Gilberto”, but the Respondent Publinord S.r.l. filed a Response in this proceeding indicating that the registration was made on its behalf. Accordingly, Publinord S.r.l. will henceforth be referred to as “the Respondent”.

The Respondent Publinord S.r.l. is an Italian limited liability company. For nearly thirty years, it has provided advertising services in television and other media. The Respondent operates several thematic Internet portals, including one at “www.dove.it” (the “Dove website”, dove being Italian for “where”), launched in 2000. This website provides information about resorts and tourist attractions in many Italian cities and regions.

According to the Response, for more than eight years the Respondent has systematically registered thousands of domain names based on Italian place names. These domain names are used to redirect Internet visitors to the appropriate informational pages on the Dove website or other portals operated by the Respondent.

“Superga” is the name of a hill overlooking the city of Turin (Torino) and the site of an 18th Century basilica and royal tombs. The Respondent states that it registered the Domain Name in reference to this geographic location, with the intent of using it to redirect users to the Dove website and other relevant informational websites. The Response attaches evidence that the Respondent registered numerous domain names based on tourist destinations in the province of Turin between March 2002 and December 2008, one of them on the same morning that the Domain Name was registered.

The Complainant furnished a printout of the website to which the Domain Name resolved on October 21, 2008. The home page of this Italian-language website was headed “Prossima Apertura” (“opening soon”), with email and telephone contact information, suggesting that the website was not yet complete. The home page prominently featured links to the Dove website and other informational websites operated by the Respondent or third parties. However, the left frame also displayed alphabetized category links for a wide variety of topics, such as animals, automobiles, cooking, culture, hobbies, sports, and tourism. The website was not archived, and the record does not include printouts of the pages linked under these categories. The Complainant asserts that at least some of the resulting links were sponsored by third-party advertisers and redirected Internet users to websites selling various products or services. The Domain Name does not currently resolve to a website.

5. Parties' Contentions

A. Complainant

The Complainant observes that the Domain Name is identical to its SUPERGA mark and states that the Respondent has no rights or legitimate interests in that name.

The Complainant contends that the Domain Name was registered and used in bad faith, with the primary purpose of generating advertising revenues by misleading Internet users seeking the Complainant's websites.

B. Respondent

The Respondent argues that “Superga” is a well-known place name to which the Complainant cannot have exclusive rights; thus, the Domain Name is not “confusingly” similar to the Complainant's mark.

The Respondent claims a legitimate interest in using this geographic identifier in the Domain Name. The Respondent points out that it is not a competitor of the Complainant. Rather, the Respondent operates tourism and other informational websites, and the Respondent claims that it registered the Domain Name with the good-faith intent of using it in connection with those activities.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:

(i) the Domain Name is identical or confusingly similar to a trademark 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.

Under paragraph 15(a) of the Rules,

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

A. Identical or Confusingly Similar

The Domain Name is identical to the Complainant's SUPERGA mark. (The “.org” extension, like the “www” prefix, is a necessary feature of Internet addressing and is not distinctive for purposes of paragraph 4(a)(i) of the Policy.) The first element of the Complaint is therefore established.

B. Rights or Legitimate Interests

The Respondent does not claim a relationship with the Complainant or dispute the Complainant's assertion that it has not authorized the Respondent to use its SUPERGA mark. This establishes the Complainant's prima facie case on the second element of the Complaint, and the burden shifts to the Respondent to produce evidence of its rights or legitimate interests under paragraph 4(c) of the Policy. See Admiral Insurance Services Limited v. Mr. Adam Dicker, WIPO Case No. D2005-0241; Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753.

The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which the Respondent could demonstrate rights or legitimate interests in the Domain Name, including the following:

“(i) before any notice to you of the dispute, your 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 . . . ”

The Respondent used the Domain Name for an apparently incomplete website that did not itself offer goods or services relating to Superga as a tourist destination. The Respondent does not dispute the Complainant's assertion that the website associated with the Domain Name included unrelated, sponsored advertising links, presumably with the intent to generate revenue for the Respondent. The website also included a link to the home page of the Respondent's Dove website, but that website does not feature a page on Superga in its section on Turin and the surrounding region. Thus, the Respondent's stated plans for the Domain Name have not been realized, and its actual use of the Domain Name was commercial but not related to the geographic site that allegedly inspired the name.

Based on this record, it is not at all clear that the Respondent has established a right or legitimate interest in the Domain Name. However, given the Panel's holding on the element of bad faith in the following section, it is not necessary to reach a conclusion on the second element of the Complaint.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy gives a non-exhaustive list of instances of bad faith, including the following:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Complainant contends that the Respondent must have been aware of the well-known and long-established SUPERGA mark. The Respondent does not deny such knowledge.

The Complainant further contends that the Respondent must have chosen the Domain Name precisely to capitalize on the fame of the Complainant's SUPERGA mark. The Respondent expressly denies such intent. The Respondent claims instead that it selected the Domain Name in furtherance of a business model under which the Respondent registers domain names based on the names of Italian towns and tourist sites and then uses them to bring Internet users to informational portals such as its Dove website.

Essentially the same arguments were advanced in a 2006 UDRP proceeding involving the same Respondent, Granarolo S.p.A. v. Publinord s.r.l. d/b/a Gilberto Ramponi Rivelli, NAF Claim No. 653822. The Panel in that case denied the complaint, finding it more plausible that the disputed domain name was registered in connection with the Respondent's plans to use place names as domain names redirecting Internet traffic to its travel portal:

“In support of its allegations of bad faith by the Respondent, Complainant notes, correctly, that Respondent has registered a large number of domain names, many of which point to a generic publicity page. It is true that Respondent has decided to implement its portal of information on Italian towns by registering an individual domain name for each and every town, and that this is an unusual, inefficient, and surprising way of implementing the portal (as opposed to the usual method of using sub-domains within a single domain name).

“While Respondent's choice is unusual, and even surprising, the Panel does not consider that that choice, on its own, provides sufficient evidence of bad faith. Indeed, there is nothing wrong, in principle, with registering a large number of domain names, provided such registration does not conflict with the Policy.”

This Panel similarly finds that the Respondent has advanced a plausible reason, which does not conflict with the Policy, for registering the Domain Name in the first instance, even though the Respondent has yet to realize that purpose. The Respondent has unquestionably invested substantial time and money in registering a large number of domain names based on Italian place names and building an Italian tourism portal. It seems unlikely that this effort represents an elaborate cover for an attack on the Complainant's trademark, which is in fact identical to the name of an Italian geographic feature and tourist destination of some importance.

In these circumstances, the fact that the Respondent may earn advertising revenues related to the website is not dispositive. Rather, the key question is this: did the Respondent choose the Domain Name for its generic (in this case geographic) value or for its trademark value? The Panel considers that the Domain Name was more likely selected for its geographic sense, because (a) the Respondent has registered numerous domain names similarly based on Italian place names and operates a relevant information portal on Italian towns and regions, and (b) there is no evidence that the advertising linked from the Respondent's website concerned the Complainant's or competing products.

Accordingly, the Panel finds that the third element of the Complaint has not been established on this record.

7. Decision

For all the foregoing reasons, the Complaint is denied.

W. Scott Blackmer
Sole Panelist

Dated: February 24, 2009