WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rusconi Editore S.p.A. v. Commercializzazione Veicoli Nuovi e Usati
Case No. D2001-0758
1. The Parties
Complainant is RUSCONI EDITORE S.p.A., having its registered offices in Viale Sarca 235, 20126 Milano, Italy. The Complainant�s authorized representative is Avvocato Mariacristina Rapisardi, Studio Legale Rapisardi, Via Serbelloni 12, 20122 Milano, Italy.
Respondent is Commercializzazione veicoli nuovi e usati, Milizia Dionillo, Via Mendola 115/4, 39100 Bolzano, Italy.
2. The Domain Name and Registrar
The domain name at issue is ; hereinafter referred to also as the "Domain Name". The registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received a Complaint (hereinafter the Complaint) by email on June 7, 2001, and in hardcopy and exhibits on June 11, 2001. On June 8, 2001, the Center acknowledged receipt. On June 13, 2001, the Center transmitted via email to Network Solutions, Inc., a request for registrar verification in connection with this case. On June 14, 2001, Network Solutions, Inc. transmitted via email to the Center, its Verification Response, confirming that the registrant is Commercializzazione veicoli nuovi e usati and that the Domain Name registration is in "active" status.
The Center transmitted on June 15, 2001, to Commercializzazione veicoli nuovi e usati the Notification of Complaint and Commencement of the Administrative Proceeding by post (with attachment), and by fax and email without enclosures.
On July 9, 2001, having received no Response from the Respondent, the Center issued a Notification of Respondent Default. No reply by Respondent to the Notification of Respondent Default was received.
Therefore, the Panel shall issue its Decision on the basis of the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of any Response from Respondent.
On July 11, 2001, in view of the Complainant�s designation of a single member panel the Center invited Mr. Luca Barbero to serve as a panelist and transmitted to him the Request for Declaration of Impartiality and Independence and a Statement of Acceptance.
Having received Mr. Luca Barbero's Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted on July 16, 2001, to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Luca Barbero was formally appointed as the Sole Panelist. The Sole Panelist finds that the Administrative Panel (hereinafter referred to also as the Panel) was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
4. Factual Background
The Complaint is based on Italian trademark no. 578993 filed on July 28, 1992, granted on October 29, 1992, consisting of the wordings "AUTO & FUORISTRADA" for the goods and services belonging to classes 16, 38 and 41; international trademark no. 592967 granted on October 29, 1992, consisting of the wordings " AUTO & FUORISTRADA" for the goods and services belonging to classes 16, 38, 41 and extended to Federal Republic of Germany, Austria, Benelux, Spain, France, Portugal e Switzerland; Italian trademark no. 406269 filed on May 10, 1982, granted on February 24, 1986, consisting of the wordings "AUTO IN FUORISTRADA" for the goods services belonging to classes 16, 38 and 41; international trademark no R522947 granted on May 30, 1998, (renewal of the international trademark no. 522947 granted on May 30, 1988), consisting of the wordings "AUTO IN FUORISTRADA" for the goods and services belonging to classes 16, 38, 41 and extended to Federal Republic of Germany, Austria, Benelux, Spain, France, Portugal e Switzerland (copy of the registration was enclosed to the Complaint).
The Respondent registered the domain name on February 15, 2000.
5. Parties� Contentions
A. Complainant
The Complainant is a famous publisher owner of magazines distributed in Italy, Europe and in other countries. One of the most important magazines, published by the Complainant, is "Auto & Fuoristrada" advertised for the first time in June 1982, with the name "Auto in Fuoristrada" (such name was modified into the current one on September 1992). The magazine deals with cars, in particular with off-road vehicles and includes news concerning the main novelties of the field, the data of the driving reports carried out for a few models, the technical and functional characteristics of other models, the description of some accessories as well as the price list regarding both second-hand and new cars.
Thanks to its articles, edited by skilled journalists able both to provide the readers with detailed information (of a technical and functional nature) about the products described therein and the ability to point out the most interesting novelties available on the market, from the beginning, the magazine has achieved a great success among the public. The Panel was provided with a comparative study on the sales of three Italian magazines of the segment according to which the Complainant�s publication ranks first.
With reference to the absence of rights and legitimate interest, the Complainant states that, at the time of the dispute on November 23, 2000, the URL corresponding to the domain name in re, registered on February 15, (nine months earlier), was still under construction (a printed page was annexed to the Complaint). Thus, the Registrant did neither use nor was objectively going to use the domain name in re, before being aware of the above mentioned complaint.
The Complainant states that the Registrant "appears to be a not better specified �entity� named �Commercializzazione veicoli nuovi e usati" which does not appear to be owner of trademarks composed by the words "auto" and "fuoristrada" and is not personally known as an association or a commercial body with a name corresponding to the registered domain. According to the Complainant, the commercial use of the domain name by the Registrant interferes with the trademarks owned by the Complainant, thus causing the diversion of his customer base.
Addressing the issue of bad faith the Complainant states that the Respondent, an Italian resident, when registering the domain name in re, should have known the magazine �Auto & Fuoristrada� published by Complainant since 1981, and dealing with cars and in particular with off-road vehicles. Therefore, according to the Complainant, the Respondent has intentionally used the domain name to gain Internet users� attention in order to draw a profit, thus creating confusion with the trademark of the Complainant. Even if the products and services protected by the trademarks of the Complainant and offered by the latter are different from those offered in the site corresponding to the Respondent�s domain name, the Complainant highlights that there is affinity between them (i.e. through the magazine �Auto & Fuoristrada� the Complainant carries out inter alia the activity of advertising shops marketing cars and in particular off-road vehicles and accessories).
According to the Complainant, Internet users looking for the web page of "Auto & Fuoristrada", will obviously type the domain name �autofuoristrada� but they will find the Respondent�s web page. Moreover, due to the content of this web page, the same user will even deem that the web page is somehow connected or linked with the well known magazine, ensuing diversion of the customer base and with clear advantages of the Respondent.
The Complainant points out that the Respondent never replied to the injunction letter sent from the Complainant on November 23, 2000, nor contested, neither through his administrative contact nor through his lawyer, which could be considered a further element of bad faith, quoting the decision taken in the case Cigna Corporation vs. Jit Consulting, case No. AF-00174);
B. Respondent
Respondent has not contested the allegations of the Complainant and is in default.
Given Respondent�s failure to file a Response in this case, the Panel accepts as true all the allegations of the Complaint see Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009 (February 24, 2000), � d. Respondent�s default does not, however, translate into an automatic ruling for the Complainant. To the contrary, the Complainant still must establish a prima facie showing that, under the Uniform Domain Name Dispute Resolution Policy (the "Policy"), it is entitled to transfer of the domain name.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service 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 Domain Name has been registered and is being used in bad faith.
6.1. Domain name identical or confusingly similar
The Complainant has provided evidence of ownership of Italian trademark no. 578993 filed on July 28, 1992, granted on October 29, 1992, consisting of the wordings "AUTO & FUORISTRADA" for the goods and services belonging to classes 16, 38 and 41; international trademark no. 592967 granted on October 29, 1992, consisting of the wordings " AUTO & FUORISTRADA" for the goods and services belonging to classes 16, 38, 41 and extended to Federal Republic of Germany, Austria, Benelux, Spain, France, Portugal e Switzerland; Italian trademark no. 406269 filed on May 10, 1982, granted on February 24, 1986, consisting of the wordings "AUTO IN FUORISTRADA" for the goods services belonging to classes 16, 38 and 41; international trademark no R522947 granted on May 30, 1998, (renewal of the International trademark no. 522947 granted on May 30, 1988), consisting of the wordings " AUTO IN FUORISTRADA" for the goods and services belonging to classes 16, 38, 41 and extended to Federal Republic of Germany, Austria, Benelux, Spain, France, Portugal e Switzerland.
In view of the above, the Panel finds that the Complainant has proved that the domain name is confusingly similar to the trademark of the Complainant according to paragraph 4(a)(i) of the ICANN Policy.
6.2. Rights and legitimate interest
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made 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 prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
By not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.
Nevertheless, it should be noted that the name of the owner of the domain name is "Commercializzazione veicoli nuovi e usati" which means "sale of new and used vehicles". On the corresponding web site, the sale of used cars and off-road vehicles is currently advertised.
The Panel takes judicial notice of the Respondent's web-site, (See Chernow Communications, Inc. v. Kimball WIPO Decision D2000-0119) and is of the opinion that the content of the pages could meet the criteria laid out for legitimate interest.
Therefore, combined with the generic nature of the Complainant's trademark AUTO&FUORISTRADA, the Panel finds that Complainant has failed to establish the absence of a legitimate interest of the Respondent in the domain name .
6.3. Registration and Use in Bad Faith
For the purpose of Paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder�s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder� s website or other online location, by creating a likelihood of confusion with the Complainant�s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder�s website or location.
The Panel finds that none of the circumstances evidencing bad faith listed in the Policy apply to the instant case, nor the Complainant has indicated the existence of other evidence of bad faith.
According also to other Decisions, a Complainant must tolerate that other entities make use of a conjunction of two generic words and therefore it is not confusing for the relevant customers that the domain name and the trademark co-exist. See Welltech ApS v. Dave Gardner WIPO Case No. D2000-1145. The name in question is an obvious conjunction of two common words, "auto" meaning the same in Italian and "fuoristrada" meaning off-road vehicles. Common words and descriptive terms are legitimately subject to registration as domain names on a "first-come, first-served" basis. See Zero International Holding GmbH & Kommanditgesellschaft v. Beyonet Services and Stephen Urich, WIPO Case No. D2000-0161; EAuto, L.L.C. v. E Auto Parts, WIPO Case No. D2000-0096; Asphalt Research Technology, Inc. v. National Press & Publishing, Inc. WIPO Case No. D2000-1005.
Furthermore, in view of the generic terms at issue, there are no circumstances indicating that the use of the web site "autofuoristrada" prima facie, will be likely to create a likelihood of confusion with the Complainant�s mark as to the source, sponsorship, affiliation, or endorsement of a website or location or of a product or service on the holder�s website or location aimed at generating commercial gain.
Therefore the panel finds that the Complainant has failed to prove that the Respondent has registered and is using the domain name in bad faith.
7. Decision
In light of the foregoing, the Panel decides that the Domain Name registered by the Respondent is confusingly similar to the Complainant�s trademarks, but the Complainant has not established that the Respondent has no rights or legitimate interests in respect of the Domain Name nor that the domain name has been registered and is being used in bad faith.
Accordingly, the Panel decides that the domain name should not be transferred to Complainant.
Luca Barbero
Sole Panelist
Dated: July 30, 2001
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