WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Elisabetta Dami , Edizioni Piemme S.p.A. v. Alexander Albert W. Gore
Case No. D2003-0433
1. The Parties
The complainants are Elisabetta Dami, Milan, Italy and the company Edizioni Piemme S.p.A., Alessandria, Italy, (herein after referred to as the "Complainants"). The Complainants are represented by Studio Legale Jacobacci e Associati, Torino, Italy.
The Respondent is Alexander Albert W. Gore, Lviv Rudno, Ukraine.
2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 5, 2003. On June 6, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On June 9, 2003, eNom 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 13, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 3, 2003. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent�s default on July 4, 2003.
The Center appointed Brigitte Joppich as the sole panelist in this matter on July 9, 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 Complainant Elisabetta Dami is an author who created the character "Geronimo Stilton", a mouse reporter in an internationally successful series of illustrated children books. The Complainant Edizioni Piemme is a publishing company that publishes the Italian editions of the Geronimo Stilton stories and sells them internationally. The Complainant Dami is one of the owners of this company.
The Geronimo Stilton books are immensely popular in Italy and have been sold over 3,8 million times domestically. The books are published under license in other countries worldwide, including Germany, Brazil, Belgium, France, Japan, Turkey and Spain.
The Complainant Dami has rights in two registered Italian trademarks GERONIMO STILTON (registration nos. 00828980 and 00829150) and a registered Community trademark (device only). In addition, a Community trademark application for GERONIMO STILTON is pending, but not yet registered.
The Complainant Edizioni Piemme is using the Domain Name for its online presence.
5. Parties� Contentions
A. Complainants
The Complainants contend that each of the three elements specified in the Policy, paragraph 4(a), are given in the present case, i.e.
(i) the Domain Name is confusingly similar to the trademarks in which the Complainants have rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name:
- the Respondent is not commonly known by the Domain Name or any trade name similar to Geronimo Stilton;
- the Respondent has no rights in a trademark or a trade name Geronimo Stilton;
- the Respondent neither offers goods and services in good faith through the Domain Name nor is he making a legitimate non-commercial or fair use of the Domain Name;
(iii) the Domain Name was registered and is being used by the Respondent in bad faith:
- the Respondent was aware of Complainants' trademark rights when he registered the Domain Name;
- the Respondent attempts to attract, for commercial gain, Internet users to Respondents website;
- the Domain Name is used in bad faith by linking to an adult-oriented website, namely to a website promoting an online casino and selling various services connected with gambling; such use of the Domain Name is evidence of bad faith because is creates customer confusion or dilution of the mark;
- the website under the Domain Name uses "mouse-trapping" techniques to prevent visitors from leaving.
B. Respondent
The Respondent did not reply to the Complainants' contentions.
6. Discussion and Findings
Under the Policy, paragraph 4(a) the Complainants must prove that each of the following three elements are present:
(i) the Domain Name is identical or confusingly similar to a trademark in which the Complainants have rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Domain Name is identical to the GERONIMO STILTON trademarks owned by the Complainant Dami as spaces cannot appear in domain names, dashes are not an instrument for differentiation and the global top level domain name identification ".info" has no distinctive function. The Complainant Dami has therefore satisfied the requirements of the Policy, paragraph 4(a)(i).
There are no contentions nor is there evidence of identical or confusingly similar trademark rights of the Complainant Edizioni Piemme.
B. Rights or Legitimate Interests
The Policy, paragraph 4(c) sets out three illustrative circumstances as examples, which, if proved by the Respondent, shall demonstrate his rights to or legitimate interests in the Domain Name for purposes under the Policy, paragraph 4(a)(ii), i.e.
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable 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; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the Domain Name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the service marks at issue.
To the Panel's knowledge, the Domain Name can neither be derived from the Respondent�s personal name nor the name or the nature of a business operated by him, nor is the Respondent commonly known by the Domain Name, which was not used in connection with a bona fide offering of goods and services nor in any legitimate non-commercial or fair content. The Panel therefore sees no rights of the Respondent to or legitimate interests in the Domain Name and finds that the Complainants have satisfied the requirements of the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b) sets out four illustrative circumstances, which for purposes of the Policy, paragraph 4(a)(iii) shall be evidence of the registration and use of the Domain Name in bad faith, including
(i) circumstances indicating that the Respondent has registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainants who are the owners of the trademark or service mark or to a competitor of the Complainants, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the Domain Name; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainants' mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location or of a product or service on its web site or location.
When the Respondent registered the Domain Name he must have been aware of the character "Geronimo Stilton" in Complainants' books because he registered its highly distinctive name in identical diction. Even if the trademarks are not well known in the Ukraine, the Panel finds that this is evidence of bad faith registration.
The Respondent is using the Domain Name for a website in Italian language, the language of the country where the Complainants' books are most popular, where the Complainant Dami lives and where the Complainant Edizioni Piemme has its principal seat. The Domain Name is also used to divert traffic intended for the Complainants' websites, using a domain name that is the same as the Trademarks and Domain Name of the Complainants to link to a casino-promoting website. Thereby the Respondent attempts to attract Internet users to his website by creating a likelihood of confusion with the Trademarks. Because some services under the Domain Name are offered against remuneration only, the Panel assumes that this attempt was made for commercial gain, as set out in the Policy, paragraph 4(b)(iv). Additionally, such use of the Domain Name associated with children's books tarnishes the distinctiveness and reputation of the Trademarks. These circumstances reveal the bad faith usage of the Domain Name by the Respondent. The Respondent is using "mouse-trapping" techniques to prevent customers from leaving the website under the Domain Name. In connection with pornographic content this has already been found to reinforce bad faith use in former decisions. Because the Domain Name is associated with children's books the Panel finds that the bad faith use is reinforced thereby as no difference should be made here between pornographic and gambling content, both being adult-related.
Therefore the Panel finds that the Complainants have satisfied the requirements of Policy, paragraph 4(a)(iii).
7. Decision
For all the foregoing reasons, in accordance with the Policy, paragraph 4(i) and the Rules, paragraph 15, as the three criteria discussed above (including in particular rights in identical trademarks) have been met, the Panel orders that the Domain Name be transferred to the Complainant Elisabetta Dami.
Brigitte Joppich
Sole Panelist
Dated: July 23, 2003
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