WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Becchis, Nunziante & Partners v. Giovanni Cucchiaro
Case No. D2000-1141
1. The Parties
The Complainant is Becchis, Nunziante & Partners, a professional association duly organized and existing under the laws of Italy, with postal address at Piazza di Pietra 26, 00186, Rome, Italy.
The Respondent is Mr. Giovanni Cucchiaro, with postal address at 1368 Carroll Street, Brooklyn, NY 11213, USA.
2. The Domain Names and the Registrar
The domain names at issue are "becchisnunziante.com", "becchis-nunziante.com" and "bnp-law.com" (hereinafter the "Domain Names"). The registrar is Network Solutions, Inc. (hereinafter the "Registrar").
3. Procedural History
On August 29, 2000, the Complainant filed by e-mail a complaint (hereinafter the "Complaint") with the WIPO Arbitration and Mediation Center (hereinafter the "Center"). The Center received a hard copy of the Complaint on August 31, 2000.
The Center then proceeded to verify whether the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (hereinafter the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "ICANN Rules") and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "WIPO Rules"), including the payment of the requisite fees.
On September 1, 2000, the Center sent an Acknowledgment of Receipt of Complaint to the Respondent with an electronic copy of a Complaint in accordance with the Policy.
On September 6, 2000, the Center informed the Registrar about the Complaint and requested verification of the Domain Names.
On September 8, 2000, the Respondent sent an e-mail to the Center denying the allegations contained in the Complaint.
On September 10, 2000, the Registrar confirmed that the Domain Names have been registered via the Registrar's registration services, that the current registrant of the Domain Names is Mr. Giovanni Cucchiaro and that the Domain Names are in "active" status. The Registrar also confirmed that Network Solutions' 5.0 Service Agreement is in effect.
On October 9, 2000, the Center confirmed that the Complaint satisfies the formal requirements of the Policy, Rules and Supplemental Rules. On the same date, the Center notified the Respondent that an administrative proceeding has been commenced against him and that the last day for sending a response to the Complaint was October 28, 2000.
On October 30, 2000, the Center notified the Respondent that he has failed to meet this deadline and was, therefore, in default.
On the same date, the Center informed the Complainant about Respondent's letter of September 8, 2000, and asked how the Complainant wished the Center proceed in the matter. On November 7, 2000, the Complainant asked the Center to proceed under the Policy.
On November 30, 2000, the Center informed the Parties that an administrative panel (the "Panel") has been appointed and transferred the file to the Panel.
The Panel finds it was properly constituted in compliance with the ICANN Rules and the WIPO Rules and the panelist issued a Statement of Acceptance and Declaration of Impartiality and Independence.
4. Factual Background
The Complainant Becchis, Nunziante & Partners is an Italian law firm formed on May 2, 2000 from the merger of the law firm Becchis & Masetti with the firm Cesaris, Nunziante & Breveglieri. Prior to the merger, the two firms had provided legal services for several years.
The Complainant claims that it has a use based service mark for the name BECCHIS NUNZIANTE and of the acronym BNP-LAW for legal services. It is undisputed that the Complainant does not own a registration of these service marks.
The Respondent is an individual who registered the Domain Names on May 10, 2000.
5. Parties' Contentions
- that the Domain Names "becchisnunziante.com", becchis-nunziante.com" and "bnp-law.com" are identical and/or confusingly similar to its use based service marks because the first two refer to the Complainant's name and the third to the Complainant's acronym with the suffix "law";
- that the Respondent has no rights or legitimate interests in the Domain Names because he is not named "Becchis" or "Nunziante", is not a licensee nor in any way related to Complainant. Moreover, Complainant submits that the acronym "BNP" does not relate to the Respondent's name or business and the Respondent is not a member of a law firm, does not practice law, nor does he offer any legal services to justify the use of the word "law" in his domain name;
- that the Respondent registered the Domain Names in bad faith, because he offered to transfer them for $2,800 in addition to the registration fees (Exhibit H to the Complaint). The Complainant considers this amount "far in excess of the cost of registering";
- that the Respondent's non-use of the Domain Names is an indication of his bad faith. The Complainant states that the Respondent has never used the Domain Names in connection with any business or advertising for goods or services. When entering the Domain Names one finds an announcement indicating that the site is under construction (Exhibit I to the Complaint);
- that the Respondent was aware of Claimant's service mark for legal services when he registered the Domain Names.
The Respondent has not filed a formal Response to the Complaint. However, in his correspondence addressed to Complainant (Exhibit F to the Complaint) and to the Center (September 8, 2000), Respondent contends:
- that he intends to use the disputed Domain Names for a group in Central Africa and that the sites were created for the free exchange of information in the international engineering community of thermodynamics;
- that he worked with two researchers named Dr. F. Becchis working for an Italian governmental research institute and Dr. C. Nunziante working for the French government, and helped them register the sites while living in Brooklin;
- that he offered to transfer the Domain Names to the Complainant for USD 2,800 on top of the registration fees because his colleagues did not have the resources to pursue their project.
6. Discussion and Findings
To have the disputed Domain Names transferred to it, Complainant must prove each of the following (Policy, paragraph 4(a)):
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the Respondent's domain name has been registered and is being used in bad faith.
Identity or Confusing Similarity
Complainant claims that it owns use based service mark rights in the marks BECCHIS NUNZIANTE and BNP-LAW. The Policy does not require that a trademark be registered by a governmental authority for such right to exist; rather, the Policy is also applicable to use based trademark rights (The British Broadcasting Corporation v. Jaime Renteria, D2000-0050; Adobe Systems Inc. v. Domain OZ, WIPO D2000-0057). The issue, therefore, is whether the Complainant owns any unregistered use based service mark rights in any jurisdiction. The Complainant started using the name "Becchis Nunziante & Partner" on May 2, 2000 as a name of a law firm and it currently provides legal services in Italy under this name (see "lawyers.martindale.com"). Italian law provides that a mark which has been used but not registered enjoys a certain degree of trademark protection as de facto mark ("marchio di fatto" see Art. 2569 and 2571 of the Italian Civil Code; Art. 9 of the Italian Trademark Act). Therefore, Complainant has provided prima facie evidence that it has use based rights in the de facto mark BECCHIS NUNZIANTE.
The disputed Domain Names "becchisnunziante.com" and "becchis-nunziante.com" are confusingly similar to Complainant's mark BECCHIS NUNZIANTE.
Conversely, the Complainant has not provided any evidence to show that it has also used the acronym BNP-LAW. Therefore, Complainant has not shown that it owns a use based service mark with regard to this acronym.
Legitimate Rights or Interests
The Respondent claims that he intends to use the disputed Domain Names for a group in Central Africa (Exhibit F to the Complaint) and for "a free exchange of information in international engineering community of thermodynamics" (Respondent's letter to the Center on September 8, 2000). However, the Respondent has neither used the Domain Names in any way, nor has he taken any demonstrable steps towards his alleged goal. The Respondent is not commonly known by the either of the names "Becchis" or "Nunziante". The allegations made by Respondent in his e-mail of September 8, 2000, to the Center are not plausible: Respondent has not filed any evidence of the existence of the researchers Dr. F. Becchis and Dr. C. Nunziante and of their activities in the field of "thermodynamics and rheology". Further, when viewed in the whole context, his allegations that the suffix "law" was meant to refer to the laws of physics (as opposed to statutory law) is not credible. Finally, the fact that Respondent did not use the Domain Names and was prepared to sell them for US$ 2,800 may be a further indication that he and his alleged partners did not have a genuine interest in the Domain Names. Therefore, the Respondent has not demonstrated legitimate rights or interest in the disputed Domain Names.
Registration and Use in Bad Faith
First, the fact that the Respondent offered to transfer the Domain Names to the Complainant for $2,800 "on top of the registration fees", i.e. in excess of the registration and transfer costs, is evidence that the Domain Names were registered and are being used in bad faith (World Wrestling Federation v. Bosman, WIPO D1999-0001). Second, the Respondent has not made any use of the Domain Names. The web sites indicate that they are still under construction. Panels have repeatedly held that the mere holding of a domain name may constitute "use" in the sense of paragraph 4 (a) (iii) of the Policy (Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO D2000-0003). While Respondent appears not to have a real interest in the Domain Names, the Complainant is prevented from reflecting the name of its law firm in a corresponding ".com" domain name. Third, Respondent's story is inconsistent: In his fax of June 20, 2000, (Exhibit F to the Complaint) he stated that he registered the Domain Names with the intention of creating "a group in Central Africa". Later he claimed that he intended to "create a site for the free exchange of information in the field of thermodynamics and rheology" (e-mail of September 8, 2000, to the Center). Respondent has not supported these allegations nor the existence of his partners with any evidence. Although each of these facts alone might be inconclusive, when viewed together and combined with the fact that Domain Names have been registered a few days after the Claimant's merger, the preponderance of the evidence leads to the conclusion that Respondent has not acted in good faith with respect to the Domain Names.
For all of the foregoing reasons, this Panel decides that the Domain Names "becchisnunziante.com" and "becchis-nunziante.com" registered by Respondent are confusingly similar to the use based mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of these Domain Names, and that the Respondent registered and used these two Domain Names in bad faith. Accordingly, pursuant to paragraph 4 (i) of the Policy, the Panel requires that the registration of the Domain Names "becchisnunziante.com" and "becchis-nunziante.com" be transferred to the Complainant.
With regard to the Domain Name "bnp-law.com", Complainant has not demonstrated that it owns an identical or confusingly similar use based mark. Therefore, with regard to the Domain Name "bnp-law.com" the Complaint is denied because the Complainant has not succeeded in providing the evidence required by paragraph 4(a) of the Policy.
Dated: December 18, 2000