WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arturo Salice S.p.A. v Paul Izzo & Company
Case No. D2000-0537
1. The Parties
The Complainant is Arturo Salice S.p.A., a corporation incorporated under the laws of Italy, with a place of business at Via Provinciale Novedratese, 10 � 22060 Novedrate (CO) Italy.
The Respondent is Paul Izzo & Company, whose full post office address is 21 Heritage Dr. � Howell, NJ 07731, United States of America.
2. The Domain Name(s) and Registrar(s)
The domain name in issue is ""; the Registrar with which the disputed domain name is registered is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, VA 22070, United States of America.
3. Procedural History
The Complaint was filed on June 1, 2000 by e-mail and on June 8, 2000 in hardcopy. The Center acknowledged receipt of the Complaint on June 5, 2000. A request for Registrar verification was forwarded to Network Solutions Inc. on June 5, 2000 by e-mail. On June 6, 2000, Network Solutions Inc. confirmed by e-mail that Network Solutions is the Registrar of the domain name in dispute and that Paul Izzo & Company, 21 Heritage Dr., Howell, NJ 07731, United States of America is the current registrant of the domain name in dispute.
On June 8, 2000, the Center sent a Complaint Deficiency Notification by e-mail to the Complainant�s representative advising that as of June 8, 2000 the Center had not received the required fees and requested proof of payment. The Center also advised that the Complaint was not submitted in one original and four copies as required by Rules, Paragraph 3(b) and Supplemental Rules, Paragraph 3(c). The Center advised that the deficiencies must be cured within 5 calendar days of the date of the notification. On June 13, 2000 the Complainant confirmed that payment could be charged directly to its account at WIPO and that four copies of the complaint had been sent by registered mail on June 1, 2000. On June 14, 2000 the Center completed a Formal Requirements Compliance Checklist showing that the formal requirements of the Complainant had been completed.
On June 14, 2000 the Center forwarded Notification of Complaint and Commencement of Administrative Proceeding to the Respondent Paul Izzo & Company by post/courier, e-mail and facsimile. The Center advised the Respondent that a response was due within twenty (20) calendar days from the day of receipt of the notification. The Respondent was advised that the last day for sending the Response to the Complainant and the Center is July 3, 2000.
On July 3, 2000 the Respondent sent a letter in response to the Complaint by e-mail to the Center. On July 4, 2000 the Center sent an Acknowledgement of Receipt (Response) to the Respondent and to the Complainant by e-mail.
On July 14, 2000 the Respondent sent a Notification of Appointment of Administrative Panel and Projected Decision Date by e-mail to the Complainant and the Respondent advising that an Administrative Panel consisting of a single member had been appointed and that the Administrative Panel was required to forward its decision to the Center by July 27. 2000.
On July 21, 2000 the Complainant sent a letter by e-mail to the Center providing some arguments in reply to the Response of the Respondent dated July 3, 2000
On July 24, 2000 the Panelist sent a document entitled Administrative Panel Preliminary Rulings to the Center. The Panelist requested that the Complainant file evidence by 31 July 2000 supporting the statements of use of the trademark SALICE made in the Complaint. The Preliminary Ruling also provided that the Respondent may file statements and evidence by 7 August 2000 and is required to file a revised Response containing the Respondent�s statement with the signature of the Respondent as set out in ss. 5.b.(viii) of the Rules.
4. Factual Background
The Trademarks
The Complainant is the owner of the following trademark registrations (see Annex C to the Complaint):
Canadian trademark no. TMA 340,182 registered 13 May 1988 for the trademark SALICE.
Italian trademark no. 421610 registered 12 May 1986 for the trademark SALICE.
Trademark no. 505 954 registered 12 May 1986 under the Madrid Agreement for the trademark SALICE, registered in Germany, Austria, Benelux, Spain, France, German Democratic Republic, Korea, USSR; also registered in Yugoslavia, Czech Republic and Slovenia in 1997.
United States trademark no. 1,367,302 registered October 29, 1985 on the Principal Register for the trademark SALICE.
Complainant has registered and used the trademark SALICE in numerous countries around the world in respect of goods such as hinges, locks, keys, locksmith�s hardware, cabinet hardware, furniture hardware, curtain rods, curtain rod hardware, frames for mirrors, castors, brackets and metal chains.
Complainant has been using its trademarks in connection with sales of its products going back as far as 1962 in some countries, see U.S. Registration No. 1,367,302. The Complainant also filed evidence of recent continuing use of the trademark SALICE (see Enclosure 2 to Complainant�s further submission dated July 27th, 2000 including copies of invoices from 1996-1998 for sales in Poland, Australia, Amman, U.S.A. and several other countries as well as sample sales catalogues of the Complainant showing numerous goods bearing the trademark SALICE).
Complainant has advertised its products bearing the trademark SALICE in magazines in U.S.A., Spain, Australia, Brazil, Germany, Argentina, China and Denmark since at least as early as 1994 (see Enclosure 1 to Complainant�s further submission dated July 27th 2000).
The Respondent is not a licensee of Complainant, nor is Respondent otherwise authorised to use the Complainant�s mark.
The Domain Name in dispute "" is reported by Network Solutions to be in "Active" status as of June 6, 2000. However, the domain name in dispute is not being used by the Respondent to identify a website.
5. Parties� Contentions
A. Complainant
(i) The Complainant submits that the Respondent has registered the domain name which is identical or confusingly similar to the Complainant�s registered trademark SALICE.
(ii) The Complainant submits that the Respondent has no rights or legitimate interest in respect of the domain name .
(iii) The Complainant further submits that the domain name was registered and is being used in bad faith.
The Complainant is the owner of registered trademarks for the word SALICE in at least ten countries. Said trademarks are registered and used for hinges, locks, keys, locksmith�s hardware, cabinet hardware, furniture hardware, curtain rods, curtain rod hardware, frames for mirrors, castors, brackets and metal chains". The Complainant has provided copies of trademark registrations for SALICE in Canada, the United States, numerous countries under the Madrid Agreement and in Italy. As evidence of use of the trademark, the Complainant has submitted copies of invoices, advertising and brochures in several languages.
With respect to the first element (i), that the Respondent has registered the domain name which is identical or confusingly similar to the Complainant�s registered trademark SALICE. the domain name contains the whole of the Complainant�s registered trademark SALICE. The additional element .com is irrelevant in trademark terms, since it is wholly descriptive and non-distinctive, identifying a top level generic domain name.
With respect to the second element (ii), whether the Respondent has no rights or legitimate interest in respect of the disputed domain names, and the third (iii) element whether the domain name in dispute was registered by the Respondent in bad faith and is being used in bad faith, Complainant submits that "Paul Izzo & Company certainly knew at the moment of the registration of the Domain Name in issue the importance and the notoriety of all the SALICE trademarks, he certainly registered the Domain Name in bad faith to the purpose of taking advantage from an unlawful use of the Salice world famous trademarks".
B. Respondent
In his Response dated July 3, 2000, the Respondent asserted that the name is not the same as the name Salice but is representative of a location on the internet.
The Respondent advises that he has not yet made use of the domain name.
With respect to 4.a.(i) of the Uniform Domain Name Dispute Resolution Policy the Respondent further asserts that is representative of a location and is not identical to Salice. Respondent submits that Salice is a common word and there are many companies with that name, anyone of which would have the same weight of claim to the name as is claimed by Arturo Salice S.pA. Respondent claims that he could start his own company called Salice, or S whose purpose would be completely different from that or Arturo Salice S.p.A.
With respect to 4.a.(ii) of the Uniform Domain Name Dispute Resolution Policy, Respondent claims that his rights in the domain name rest in the fact that he is the legal registrant and owner.
With respect to 4.a.(iii) of the Uniform Domain Name Dispute Resolution Policy, Respondent submits that he has never used the domain name
