WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Reti Televisive Italiane S.p.A. v. Antonio Frezza, Frezza Network Srl, Teramo
Case No. D2018-1595
1. The Parties
The Complainant is Reti Televisive Italiane S.p.A. of Rome, Italy, represented by Avvocato Carlo Sala, Italy..
The Respondent is Antonio Frezza, Frezza Network Srl, Teramo of Giulianova, Italy.
2. The Domain Name and Registrar
The disputed domain name <canale5.net> is registered with Sea Wasp, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 16, 2018. On July 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 24, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on July 26, 2018.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 16, 2018.
The Center appointed Angelica Lodigiani as the sole panelist in this matter on August 21, 2018. 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 the biggest Italian broadcasting company, belonging to the Mediaset group, with an annual turnover of approximately EUR 1.5 billion.
The Complainant broadcasts several TV channels, the most important of which is named "Canale 5". This Italian TV channel is one of the most popular Italian channels, with peaks of audience share ranging from 25 to 42 percent, and an average monthly audience share of over 30 percent.
The Complainant is the owner of many CANALE 5 and CANALE CINQUE trademarks registered in several jurisdictions, the first of which was registered over 30 years ago (e.g., International trademark registration No. 496372, registered on May 30, 1985). In consideration of the spread of the "Canale 5" channel, the trademarks CANALE 5 and CANALE CINQUE have gained reputation, at least in Italy.
The Respondent is a company operating in the Internet field. The Respondent is the owner of other domain names corresponding to third parties' distinctive signs, such as <amarone.info>, <misterchef.tv>, <italiauno.it>, the latter corresponding to another of the Complainant's TV channels, named "Italia 1".
The disputed domain name was registered on March 14, 2002, and does not resolve to an active webpage.
5. Parties' Contentions
The Complainant contends that the disputed domain name is identical or at least confusingly similar to its CANALE 5 trademark.
The Complainant further contends that the Respondent lacks rights or legitimate interests in the disputed domain name because the Respondent has no connection or affiliation with the Complainant, is not an authorized licensee of the Complainant, and the Complainant has never consented to, or authorized, the registration of a domain name containing its well-known trademark.
Furthermore, the Complainant maintains that the Respondent is not the owner of any registered trademark or common law right containing the words "Canale 5", and is not commonly known by the disputed domain name. The disputed domain name does not correspond to the Respondent's name or nickname, nor does the Respondent own any other legitimate interest in the disputed domain name.
Rather, the trademark CANALE 5 is only associated with the popular TV channel belonging to the Complainant. Thus, no third party can register the disputed domain name unless to unduly create the impression of an association with the Complainant.
Finally, the Complainant contends that the disputed domain name has been registered and is being used in bad faith.
In particular, the Complainant notes that the Respondent is Italian and therefore is fully aware of the high distinctive character and reputation of the CANALE 5 trademark. Moreover, the Respondent operates in the field of the development and managing of web portals and websites and is the owner of other domain names corresponding to third parties' distinctive trademarks.
The registration of the disputed domain name corresponding to the Complainant's well-known trademark is likely to cause confusion among Internet users who are likely to believe that the website they have reached is endorsed by the Complainant, when in fact it is not. Thus, there cannot be a plausible good faith use of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant is the owner of at least one CANALE 5 word mark, registered in 1985 in Italy in several classes, including for "communication" services in class 38.
The Panel finds that the disputed domain name is identical to the Complainant's trademark since it fully reproduces the Complainant's trademark followed by the non-distinctive generic Top-Level Domain (gTLD) ".net".
B. Rights or Legitimate Interests
The second condition to be proved in order to succeed in a UDRP proceeding, is that the Respondent lacks rights or legitimate interests in the disputed domain name.
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name.
In the instant case, the Complainant has pointed out that the Respondent has no connection or affiliation with the Complainant, that it does not own any registered or other common law right over the terms "Canale 5", and that the Complainant never authorized the Respondent to reflect its trademark in a corresponding domain name.
The disputed domain name does not actually resolve to an active webpage, and the Complainant has proved that also other domain names corresponding to third parties' distinctive signs are used in a similar manner. In consideration of the high distinctive character and reputation of the trademark CANALE 5, at least in Italy, which is due to its extensive and longstanding use as the name of one of the most popular Italian TV channels, such use cannot amount to a bona fide use of the disputed domain name under any of the circumstances listed in paragraph 4(c) of the Policy.
In view of the above and in the absence of any contrary allegation from the Respondent, the Panel opines that the Complainant has established at least a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the second condition under the Policy is met.
C. Registered and Used in Bad Faith
As the Complainant correctly pointed out, the Respondent is located in Italy and therefore it is very unlikely, if not impossible, that it was not aware of the Complainant's trademark at the time of the registration of the disputed domain name. This is even more so considering that the Respondent has also registered the domain name <italiauno.it>, identical to another of Complainant's well-known trademarks, showing a specific knowledge of the Complainant and of its activities, and an intention to target the Complainant, its activity and its well-known trademarks.
The disputed domain name leads to a webpage containing the information that the website is currently being updated. The Panel notes that the Respondent has engaged in a pattern of conduct according to which the Respondent registered several domain names, identical or confusingly similar to third parties' well-known distinctive trademarks. All these domain names lead to web pages identical to the one corresponding to the disputed domain name.
According to section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), UDRP panelists have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response, (iii) the implausibility of any good faith use to which the domain name may be put, etc.
The Panel finds that most of the circumstances listed in section 3.3 of the WIPO Overview 3.0, apply in this case. First, the disputed domain name corresponds to a trademark, which is highly distinctive and enjoys extensive reputation in the country of origin of the Respondent. Secondly, the Respondent did not submit a response. Thirdly, the Panel notes that the disputed domain name was registered as early as in 2002 and that the Respondent had plenty of time to start using the disputed domain name in a way that could support its rights. However, this did not happen and could not happen since there is no plausible good faith use that the Respondent could make of the disputed domain name.
Thus, the Panel concludes that the disputed domain name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <canale5.net> be transferred to the Complainant.
Date: September 4, 2018