WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Molinari Int'l S.p.A v. L
Case No. D 2000-1169
1. The Parties
The Complainant is Molinari Int'l S.P.A., an Italian Corporation having registered offices in Via N. Porpora 12, Rome (Italy) represented by Ing. Barzanò & Zanardo.
The Respondent is L, a non-specified entity, with address in Via dei Pini 12, 01245, Augusta (Italy).
2. The Domain Name and Registrar
The domain name at issue is "l" and the corresponding registrar with which the domain name is registered is Network Solutions, Inc. (hereinafter "Network Solutions"), 505 Huntmar Park Drive, Herndon, Virginia 20170-5139 (USA).
3. Procedural History
The complaint was submitted via e-mail on September 5, 2000, to the World Intellectual Property Organization Arbitration and Mediation Center (hereinafter the "WIPO Center").
On September 11, 2000, WIPO Center requested the Registrar, Network Solutions, pursuant to Paragraphs 2(a) and 4 of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "Rules"): (1) to confirm that a copy of the Complaint had been sent to Network Solutions by the Complainant; (2) to confirm that the domain name at issue was registered with Network Solutions, (3) to confirm that the person identified as the respondent is the current registrant of the domain name; (4) to provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es) available in the registrar's Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact); (5) to confirm that the Uniform Domain Name Dispute Resolution Policy (hereinafter the "Policy") applies to the domain name, and (6) to indicate the current status of the domain name.
On September 12, 2000, Network Solution replied that: (1) Network Solutions was in receipt of the Complaint sent to them by the Complainant; (2) Network Solutions was the Registrar of the domain name registration; (3) L was the current registrant of the l domain name registration. Network Solutions also provided the full contact details as requested and confirmed that Network Solutions' 5.0. Service Agreement was in effect and the domain name registration l was in "Active" status.
In light of the above and according to the documents filed with the Panel, the Complaint appears to have been filed in accordance with the requirements of the Rules and of the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "Supplemental Rules"). The Panel finds that the payment was properly made and agrees with the WIPO Center�s assessment concerning the Complaint�s compliance with the formal requirements: in accordance with paragraph 2(a) of the Rules, the Complaint was properly notified on September 14, 2000 to the Respondent who did not file any Response and was notified of his default on October 4, 2000. On October 12, 2000, the Parties were informed that in accordance with Paragraph 6(f) of the Policy an Administrative Panel consisting of a single Member had been appointed. The sole Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence and the date scheduled for the issuance of the Panel�s decision was set for October 26, 2000.
Finally, in accordance with Paragraph 11 of the Policy, since the Parties to the present administrative proceeding have not agreed otherwise, and since the registration agreement that relates to the domain name in question does not specify otherwise, the language of the administrative proceeding will be the language of the relevant registration agreement, i.e. English.
4. Factual Background
The Complainant, also through his related and affiliate Companies, alleges to be the owner, since 1958, of several Italian trademarks registrations for MOLINARI and SAMBUCA MOLINARI. The Complainant is also the owner of the U.S. trademark registration for SAMBUCA MOLINARI. In addition, SAMBUCA MOLINARI is a registered trademark in many other Countries. All the supporting documents were enclosed and were not contested by the Respondent. The trademark SAMBUCA MOLINARI is used for alcoholic beverages and in particular for a liquor based on anise. The Complainant claims that SAMBUCA MOLINARI is a renown trademark in Italy and supports the allegation with data according to which in 1993-95, SAMBUCA MOLINARI was the first among the top five liquors sold in Italy, and in the period February 99- March 2000 SAMBUCA MOLINARI�s presence in the supermarkets ranges from 93 to 98% and sales from 98 to 100%; in other shops ranges from 86 to 97 % and sales from 91 to 100%; in bar and pubs ranges from 88 to 91 % and sales from 93 to 95%; in luxury bar and pubs ranges from 91 to 95 % and sales from 93 to 96%.
The Complainant also alleges that SAMBUCA MOLINARI acquired reputation in several other Countries, supporting such statement with a summary on 1999, world-wide sales. All data were not contested by the Respondent.
5. Parties� Contentions
A. Complainant
According to the Complainant both MOLINARI and SAMBUCAMOLINARI are arbitrary combination of words having their own degree of individuality and distinctiveness. The domain name l is identical to Complainant's trademark SAMBUCA MOLINARI, since in the Italian the word "la" means in English the article "the" and cannot be regarded as distinguishing the domain name from the registered trademarks. Therefore, the domain name at issue is likely to deceive and cause confusion in those consumers intending to establish a connection with the Complainant Molinari Int�l Spa for information on the "sambuca". Finally, in light of the data provided by the Complainant about market share held by SAMBUCA MOLINARY, it is highly improbable that the Respondent selected the name by mere chance without having notice of the reputation of Complainant�s trademark and his earlier trademark registrations.
The Complainant also alleges that Respondent has no rights or legitimate interests in respect of the domain name that is the subject of the Complaint because the Complainant is the sole and exclusive owner of the trademark LA SAMBUCA MOLINARI; the Respondent appears not to be an existing entity since searches on the records of the Register of Companies could not retrieve an entity or individual business with the Respondent�s name .
The actual non-existence of the Respondent is further proved since the postal address of the Respondent is a not existing one; the postal Administrative and Billing contact address given by the Respondent is merely foul and offensive language (the translation of the name of the street is the equivalent of saying "have a drink of this s..t"); the phone number given in the Administrative and Billing contact is not connected.
Finally, the Complainant holds that the domain name l appears to be registered and to have been used in bad faith.
First evidence would be that Respondent hid his real identification. The letter of cease and desist sent to the Respondent by postal and electronic mail at the contact details resulting from the Registrar was returned by the mail service with the specification "unknown recipient". The Respondent name and address are unknown and as there is no activity and no use of the domain name, the Respondent�s registration of the domain name, and thus l should be considered to have been registered in "bad-faith" as shown by the same fact that the Respondent never provided accurate contact information.
Furthermore, the domain name was firstly associated to a pornographic page, which was then replaced by a temporary page. Although at present there are no associated web pages, contents in the web could be changed at any time.
In the Complainant's opinion the Respondent�s registration as domain name of l amounts to an unlawful limitation of Complainant's registration and free use in Internet of its registered trademarks and constitutes a misappropriation and unlawful catch of the Complainant goodwill and reputation.
B. Respondent
The Respondent did not submit any response.
6. Discussion and Findings
According to Paragraph 4(a) of the Policy, in an administrative proceeding, the Complainant must prove that each of following three elements are present: (1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name was registered and is being used in bad faith.
1) The Panel finds that l is confusingly similar with the Complainant's trademarks MOLINARI and SAMBUCA MOLINARI.
Strictly speaking the domain name is not identical to Complainant's registered trademark. Even though the term LA is in Italian an article and therefore is scarcely capable of conferring distinctiveness, nonetheless identity is, as mathematics teaches, not subject to approximation. The concept is simple: either two terms are identical or they are not, and this fact may be particularly relevant on Internet. Indeed, due to the specific nature of Internet domain names whose input takes place by means of a keyboard, the mere addition of the two initial letters LA might in theory differentiate enough, and thus excluding an actual confusion, between the websites identified, respectively, for instance, by SAMBUCAMOLINARI.COM (in case the website ever existed - circumstance which is not, however, relevant for the present proceedings) and by l.
Yet, the Policy does not require identity, being sufficient that the domain name is confusingly similar with a trademark in which the Complainant may establish prior rights. The Panel finds that the visual, aural and conceptual aspects of the Complainant's trademark SAMBUCA MOLINARI compared with the domain name at issue show an undeniable likelihood of confusion which is the more so relevant in light of the reputation and renown enjoyed by the Complainant's trademark. The same conclusion can be reached in regard to the Complainant's MOLINARI registered trademark. Sambuca is, as indicated in the Complaint, and also described by encyclopedias (La Piccola Treccani, Istituto della Enciclopedia Italiana, 1995,) a particular kind of spirit made out of anise. The Complainant is a renowned manufacturer of spirits made of anise. Thus, a domain name like LASAMBUCAMOLINARI which is composed by the Complainant's name and registered trademark MOLINARI, preceded by actual the name of the same product for which the Complainant is renown, SAMBUCA, seems inherently capable of creating a strong inference that the domain belongs to the Complainant's itself.
Therefore, for the purpose of this procedure the domain name is confusingly similar to the Complainant's registered trademarks.
It also bears noting that the addition of the generic top-level domain (gTLD) ".com" after the domain name is not relevant, since use of a gTLD is required, necessary and functional to indicate use of a name in Internet and for the average Internet user it would not confer any further distinctiveness to any name.
Thus, the Panel is satisfied that the first condition has been met.
2) The Panel finds that the Respondent has neither rights nor legitimate interests in respect of the domain name.
The circumstances indicated by the Complainant, among which the total non-existence of any company or entity with Respondent's name, or at Respondent's address show that Respondent pretended to create the impression of an entitlement by making it coinciding the domain name with the Respondent's own name.
In addition, under these circumstances, the same Respondent's default is a further evidence of the Respondent's lack of any right or legitimate interest in the domain name.
Therefore, this Panel is satisfied that the second condition is met.
3) This Panel finds that the domain name was registered and is being used in bad faith.
In order to reach this conclusion the Panel examined separately two issues:
1) whether or not bad faith existed when the domain name was registered; and
2) whether or not the domain name was used in bad faith.
As already stated in previous cases (cf. case D2000-0493, Pomellato), the Panel believes that just as all three conditions stated in Paragraph 4(a) of the Policy must be proven by the Respondent, so the use of the conjunctive "and" rather than the disjunctive "or" in paragraph 4(a)(iii) clearly indicates that a similar burden of proof falls on the Complainant in regard to establishing bad faith both at registration date and thereafter.
As far as the first issue is concerned, the Panel finds that although Complainant has not addressed it specifically, the reference to the lack of truthful information about the Respondent's name and address is quite an important element in determining Respondent's bad faith at registration date. The Panel is aware that in certain circumstances anonymity may be necessary. However, the lack of truthful information must also be paired with Respondent's failure to put forward any exculpating or mitigating circumstance. As indicated above in Paragraph 6(2), the Respondent's failure can be used by the Panel to draw such inferences, as it considers appropriate based on the Complaint.
Paragraph 4(b) of the Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith. The list of circumstances does not exhaust the Panel's inquiry regarding the element of bad faith, since the Policy indicates that its listing of bad faith factors is without limitation. Thus, the Panel takes the view that, although the Policy does not specifically address such a circumstance, in a situation like this where an impropriety (i.e. the lack of truthful information) has been established, and where the Respondent has failed to prove arguments in his own favor, the Panel is entirely in its powers to establish that Respondent's choice to hide its identity is a prima facie case of bad faith, since the outset Respondent�s intention to avoid any direct exposure or liability from the likely outcome of the activity carried out in the website identified by the domain name l. The Panel's opinion is therefore that Respondent deliberately acted in bad faith when it registered the domain name l.
Having deemed satisfied the first condition, the Panel must now establish whether or not there has been use in bad faith. Once again there are two conditions to be met: actual use and bad faith in such actual use.
According to the Complainant the domain name was first used to host pornographic material but then only showed a temporary page with few words and "at present there are no associated web pages, however contents in the web could be changed at any time" . The Panel sought in Internet the domain name at issue, and indeed the search was fruitless: no web page currently shows up.
It is the Panel's steady opinion (cf. case D2000-497, Pomellato; see also Parfums Christian Dior v. 1 Netpower, Inc., Case No. D2000-0022) that even actual non-use of the domain name may nonetheless constitute use of the domain name. It is a well-established principle that an omission may cause the same damage, as does a direct action. Similarly, actual non-use of a domain name may represent nonetheless a form of use, insofar it is an obstacle for the lawful trademark owner to exploit the possibilities of Internet, as correctly indicated by the Complainant.
Furthermore, by registering the domain name l and supplying untruthful information about the Respondent's identity, the Respondent showed and shows its resolve to maintain the domain name and making it impossible for the Complainant to get the domain back. The Respondent therefore is still exercising ownership powers over the domain name and this, in the Panel's opinion, constitutes a prima facie evidence of use.
Therefore, the sole issue to be determined is not whether the Respondent is using the domain name, but rather whether or not his use is in bad faith.
The Panel thinks it so.
It is the Panel's view that the Respondent's overall conduct, from the false information about Respondent's identity, to the foul language used in the registration, shows a deliberate intent to use the domain name primarily for the purpose of disrupting the business of the Complainant. The Panel is aware that Paragraph 4(b)(iii) of the Policy restricts such possibility to "competitors". However, in light of the false information provided by the Respondent, and in view of Respondent's default, the Panel cannot exclude that Respondent may consider itself as a competitor of Complainant. Furthermore, in light of these afore mentioned circumstances and the renown of Complainant's trademark, the Panel believes it credible Complainant's claim that the Respondent intentionally attempted to attract for commercial gain, Internet users to its web site (where at first pornographic material was shown) by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or a product or service on its web site. Therefore this Panel is satisfied that also the third condition is met.
7. Decision
In light of the foregoing, the Panel finds that Respondent�s disputed domain name l is confusingly similar to Complainant�s trademarks, that Respondent has no legitimate rights or interests in the disputed domain name, and that Respondent has registered and made use of the domain name in bad faith, and accordingly, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name "l" be turned over to Complainant.
Fabio Angelini
Presiding Panelist
Dated: October 18, 2000
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