WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comitato per l'Organizzazione dei XX Giochi Olimpici Invernali -Torino 2006 v. gate24
Case No. D2003-0411
1. The Parties
The Complainant is Comitato per l'Organizzazione dei XX Giochi Olimpici Invernali - Torino 2006, Torino, Italy, represented by Buzzi, Notaro & Antonielli d'Oulx of Italy.
The Respondent is gate24, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name is registered with Tucows, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 28, 2003. On May 28, 2003, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On May 28, 2003, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 5, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 25, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on June 30, 2003.
The Center appointed Madeleine De Cock Buning as the sole panelist in this matter on July 7, 2003. 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 following information is derived from the Complaint and supporting evidence submitted by the Complainant.
In June, 1999, the IOC entrusted the organization of the XXth Winter Olympic Games to the City of Torino and the Comitato Olimpico Nazionale Italiano (CONI). The City of Torino and CONI created an organizing committee for the Games, TOROC (stated in clause No I,6 of the Host City Contract, Annex 1 to Complaint)
Complainant bases its Complaint on the following trade and service marks:
h Italian Trademark Application No. TO2000C2397 "TORINO 2006"
h Italian Trademark Application No. TO2001C3637 "TORINO 2006 and device"
h Italian Trademark Application No. TO2001C3638 "TORINO 2006 and device"
h International Trademark Registration No. 736269A "TORINO 2006 and device", date of application May 5, 2000.
h International Trademark Registration No. 701296A "TURIN 2006" date of application September 2, 1998.
Respondent registered the domain name on August 1, 2002.
The domain name transfers to Respondents web page at /domain.htm, that inter alia states:
"�However, if this domain name has not been reserved for a future project yet, there is a great chance that it might be available for purchasing or leasing on a monthly basis from us (...) If you make an offer, please make an offer in US dollars. Serious offers only please (minimum $1000,- US dollars)".
As a reaction to being approached by the Complainants� counsel on March 3, 2003, the Respondent replied the same day via email stating that the disputed domain name was registered in the name of Mr. Sinho Kim while refusing the request of assigning the domain name to the Complainant. Mr. Sinho Kim is registered as both administrative and technical contact in the Registrar's and NIC.com databases.
The Respondent offered to settle the matter monetarily, stating that this was the wish of Mr. Sinho Kim. The Respondent suggested the amount of $ 3,660 US (or Euro).
5. Parties� Contentions
A. Complainant
1. The disputed domain name is identical and confusingly similar to Complainant�s trade and service marks: concerning the mark TURIN2006. "TURIN" is the English, French, German and Spanish translation of "TORINO"
2. The Respondent has no rights or legitimate interest in the domain name
a) The Complainant contends that there is no evidence to support a finding of a legitimate right or interest in the domain name on behalf of the Respondent. The Respondent does not appear to have established a website connected to the domain name nor to have made demonstrable preparation to use the website, nor to be making a bona fide offering of goods and services or a legitimate non-commercial use of the website.
b) Complainant did not license or otherwise permit the Respondent to use the Trademarks or to use any domain name incorporating its marks;
c) As far as the Complainant is aware of, gate24 is not commonly known by the name "torino2006", nor is residing in Italy and does not appear to have any connection with the town of Torino and/or its surroundings;
3. The domain name was registered and is being used in bad faith, because:
a) The Respondent had provided false address information for the purposes of its domain name registration, in breach of its warranty under paragraph 2(a) of the Policy;
b) The Respondent stated that the disputed domain name was registered in the name of Mr. Sinho Kim, while there is no evidence that Mr. Sinho Kim is the Registrant of the disputed domain name;
c) The Respondent offered to settle the matter monetarily, stating that this was the willing of Mr. Sinho Kim. The Respondent suggested the amount of US$ 3,660. Also the web page connected to the disputed domain name, suggests a domain name which might be rent or sold.
B. Respondent
The Respondent did not reply to the Complainant�s contentions.
6. Discussion and Findings
The Respondent was given notice of this proceeding in accordance with the Rules. The Center discharged its responsibility under Rules paragraph 2(a) to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint.
However, as previously indicated, the Respondent failed to file any reply to the Complaint and has not sought to answer the Complainant�s assertions, evidence or contentions in any other manner. The Panel finds that the Respondent has been given a fair opportunity to present its case, and the Panel will proceed to a decision on the Complaint.
The Respondent�s default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove the elements required by Policy paragraph 4(a). In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.A);
2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.B); and
3. The domain name has been registered and is being used in bad faith (see below, section 6.C).
Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate from the Respondent�s failure to reply to the Complainant�s assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel�s decision is based upon the Complainant�s assertions and evidence and inferences drawn from the Respondent�s failure to reply.
A. Identical or Confusingly Similar
The Complainant is the owner of the TORINO 2006 and TURIN 2006 trademarks, registered both nationally and in the international trademark Register. Respondent has not filed any reply to the Complaint or contested the Complainant�s assertions. In the circumstances, the Panel finds that the Complainant has rights in the TORINO 2006 and TURIN 2006 trademarks.
The Policy requires that the disputed domain name be "identical or confusingly similar" to the Complainant�s TORINO 2006 and TURIN 2006 trademarks.
The Panel finds that the disputed domain name is confusingly similar to both Complainant�s trademark TURIN 2006 ("TURIN" is the English, French, German and Spanish translation of the Italian word "TORINO") and to Complainant�s trademark with device TURINO 2006 when comparing its overall impression, bearing in mind its distinctive and dominant components.
B. Rights or Legitimate Interests
Even though the Respondent has not filed any reply to the Complaint and has not contested the Complainant�s assertions, it is upon the Panel to consider whether the Respondent�s use of the disputed domain name demonstrates rights or legitimate interests in the domain name. According to Policy paragraph 4(c), the following circumstances, if proved, demonstrate a registrant�s rights or legitimate interests in a domain name:
(i) the registrant used or demonstrably prepared to use the domain name or a corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute;
(ii) the registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or
(iii) the registrant is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant�s mark.
To satisfy the requirements of Policy paragraph 4(c)(i), the Respondent�s use of the disputed domain name must be in connection with a "bona fide" offering of goods or services. In the circumstances of this case the Respondent�s use of the disputed domain name is not "bona fide" within the meaning of Policy paragraph 4(c)(i) because there is no apparent justification for the Respondent�s registration and use of the disputed domain name that is confusingly similar to the Complainant�s trademark other than the offering for sale of the domain name through its website. This is not to be considered a legitimate justification for the registration and use of the disputed domain name.
In addition, the Panel draws an adverse inference from the Respondent�s failure to provide any explanation or rationale for its use of the disputed domain name.
Policy paragraph 4(c)(ii) is not applicable. The Respondent does not contend, and there is no evidence that, the Respondent has been commonly known by the disputed domain name or that the disputed domain name is derived from one of Respondent�s trademarks or trade names.
Policy paragraph 4(c)(iii) is not applicable. The Respondent offers the domain name for sale.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Policy paragraph 4(a)(iii) requires the Complainant to prove that the Respondent registered and has used the disputed domain name in bad faith. The language of Policy paragraph 4(a)(iii) requires that both bad faith registration and bad faith use be proved.
Policy paragraph 4(b) provides that the following circumstances are deemed to be evidence that a registrant has registered and used a domain name in bad faith:
(i) circumstances indicating that the registrant 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant 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 registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to its Website or other on-line location, by creating a likelihood of confusion with the complainant�s mark as to the source, sponsorship, affiliation or endorsement of its Website or location or of a product or service on its Website or location.
The Complainant does not rely on Policy paragraphs 4(b)(i), 4(b)(ii) or 4(b)(iii) but relies upon Policy paragraph 4(b)(i), which requires the Complainant to establish that the Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name.
The panel does not interpret the Policy to mean that the mere offer for sale of a domain name for a substantial sum of money has to be considered an act of bad faith. Selling of domain names is prohibited by the Policy if the other elements of Paragraph 4(a) of the Policy are also violated.
The disputed domain name is directed to Respondents webpage at /domain.htm, on which the general statement appears that several registered domain names are offered for purchasing or leasing. The disputed domain name was actually offered for sale by the Respondent for the amount of US$ 3,660. This clearly exceeds the out-of-pocket costs directly related to the domain name reasonably borne by the Respondent for registration of the disputed domain name.
In the absence of contrary evidence the Panel finds that Respondent knew or should have known the Complaint's trademark at the time it registered the domain name , given the worldwide reputation of the Torino 2006 Winter Olympic Games, the more since on June 19, 1999, in Seoul, Korea the country where the Respondent in this Complaint is located, the city of Torino was entrusted with the organization of the XX Olympic Winter Games to be held in 2006. The fact that Respondent chose the domain name notwithstanding this, suggests that his primary purpose in registering the domain name in the first instance was to sell it to Complainant. In addition, the Panel draws an adverse inference from the Respondent�s failure to provide any explanation or rationale for its use of the disputed domain name, nor that it used the domain name to launch a website that Respondent's purpose in registering the domain name was primary to offer it for sale.
Accordingly, the Panel finds that the Complainant has established that the Respondent registered and is using the disputed domain name in bad faith pursuant to Policy paragraph 4 (b)(i).
The Complainant also relies upon other grounds, not specifically enumerated in Policy section 4(b), for contending that the Respondent has registered and is using the disputed domain name in bad faith. Given the Panel�s determination based upon one of the grounds enumerated in Policy paragraph 4(b), it is not necessary for the Panel to determine whether these additional grounds are a basis for a finding of bad faith domain name registration and use.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
Madeleine De Cock Buning
Sole Panelist
Date: July 16, 2003
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