WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Edizioni Piemme S.p.A. v. Mr. Hugo Bazzo
Case No. D2003-0618
1. The Parties
The Complainant is Edizioni Piemme S.p.A., Italy, represented by Studio Legale Jacobacci e Associati, Italy.
The Respondent is Mr. Hugo Bazzo, Paratiba , of Chile.
2. The Domain Name and Registrar
The disputed domain name is registered with Key-Systems GmbH dba .
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 6, 2003. On August 6, 2003, the Center transmitted by email to Key-Systems GmbH dba a request for registrar verification in connection with the domain name at issue. On August 7, 2003, Key-Systems GmbH dba 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 August 8, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on September 1, 2003.
The Center appointed Zbyněk Loebl as the Sole Panelist in this matter on September 10, 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
Edizioni Piemme S.p.A. is a well-known Italian publishing house which has a particular specialization in religious and children�s books. Edizioni Piemme has been active with its corporate name since 1982. It is the owner of several trademark applications including the word PIEMME, inter alia:
- Italian application TO2000-C001799 for PIEMME; and
- Italian application TO2001-C003583 for PIEMME SCUOLA.
Complainant provided sufficient evidence of the recognition and use of the word Piemme and Edizioni Piemme regarding the Complainant and its publications in Italy such that the Complainant can be viewed as having legally protectable rights in the marks PIEMME and EDIZIONI PIEMME. Complainant also referred, although only in a general way, to Italian case law which recognizes rights to unregistered marks.
The Respondent redirects the disputed domain name to a pornographic Web siteWebsite . The Complainant provided evidence that the Respondent registered several other domain names identical to, or confusingly similar with, well-known Italian trademarks, all of them pointing to the same pornographic Web siteWebsite as the disputed domain name.
The Complainant submitted evidence that the Respondent�s address and telephone number were false. The Respondent has made no response to the Complainant�s allegations, despite being properly served with the Complaint.
5. Parties� Contentions
A. Complainant
Complainant contends that the disputed domain name is confusingly similar to its marks PIEMME and EDIZIONI PIEMME (where the Complainant�s whole mark is included in the disputed domain name), that the Respondent has no legal rights or legitimate interests in the disputed domain name, and that the Respondent registered and is using the disputed domain name in bad faith.
As evidence that the Respondent has no legal rights or legitimate interests in the disputed domain name, the Complainant draws the Panelist�s attention to the following: (i) lack of evidence of any bona fide offer of goods or services; the only thing the Respondent offers through its domain name is a link to a pornographic Web siteWebsite ; (ii) the Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name EDIZIONI PIEMME; and (iii) the Respondent links to the default page of a commercial pornographic Web siteWebsite , thus excluding any possibility of non-commercial fair use.
As evidence of bad faith, the Complainant draws the Panelist�s attention to the Respondent�s false address and telephone number and the fact that the disputed domain name is redirected to a pornographic Web siteWebsite . In addition, Complainant points out the Respondent�s pattern of behaviour with registering multiple well-known Italian marks as domain names and redirecting them to the same pornographic Web siteWebsite , as well as the association of the words EDIZIONI and PIEMME in the disputed domain name which suggests that the Respondent clearly referred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant�s contentions.
6. Discussion and Findings
Since the Respondent has not filed any response and consequently has not contested any of the Complainant�s contentions, this case shall be decided based on the allegations and documents submitted by the Complainant.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the allegations referenced in the headings of parargraphs A., B. and C. below.
A. Identical or Confusingly Similar
The Panelist considers that the disputed domain name is identical to the common law trademark EDIZIONI PIEMME of the Complainant and confusingly similar with the common law trademark PIEMME of the Complainant. This reasoning is consistent with many previous WIPO decisions in which it has been ruled that the ownership of identical or confusingly similar common law trademark(s) is sufficient to fulfill requirements of Par. 4.a(i) of the Policy (see, among others, The State of the Netherlands v. Goldnames Inc., WIPO Case No. D2001-0520; Rudolf A. Oetker v. Joe Rao, WIPO STOP-biz case No. DBIZ2001-0033; Sintef v. S, WIPO case No. D2001-0507; Roberts v. Boyd, WIPO case No. D2000-0210; CBS Broadcasting Inc. v. Netcetera CSG, WIPO case No. D2000-0798).
B. Rights or Legitimate Interests
The Panelist finds that the Complainant has presented evidence and argued convincingly that the Respondent has no rights or legitimate interest in the disputed domain name. By not submitting a response, the Respondent failed to demonstrate any rights or legitimate interests in the disputed domain name. Based on the arguments and evidence brought by the Complainant, the Panelist finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panelist finds that the disputed domain name was registered and is used in bad faith.
The Panelist considers that, based on the evidence presented by the Complainant, the Respondent registered the disputed domain name in bad faith. The Panelist considered as prevailing arguments for his findings primarily the connection of the word PIEMME and EDIZIONI in the disputed domain name together with a lack of evidence of any bona fide use of the domain name by the Respondent, indicating clearly that the Respondent was aware of the Complainant�s mark before he registered the disputed domain name (see The State of the Netherlands v. Goldnames Inc., WIPO Case No. D2001-0520) and also that the Respondent evidently submitted a false address and telephone number (see, among others, Oxygen Media, LLC v. Primary Source, WIPO case No. D2000-0362; Southern California Edison Company v. John Simms, WIPO case No. D2002-0369; or Wachovia Corporation v. Peter Carrington, WIPO case No. D2002-0775).
In addition, under all the circumstances of the case, there is sufficient evidence of bad faith use of the disputed domain name by the Respondent - the fact that the disputed domain name links to a commercial pornographic Web siteWebsite (see, among others, Motorola, Inc. v. NewGate Internet, Inc., WIPO case No. D2000-0079; Ty, Inc. v. O.Z. Names, WIPO case No. D2000-0370; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO case No. D2003-0022) and a pattern of behaviour of the Respondent regarding other well-known trademarks (see, among others, Daniel C. Marino, Jr. v. Video Images Productions, WIPO case No. D2000-0598), the Panelist confirms the conclusion of the Complainant that this case is a clear case of "pornosquatting" and that the bad faith criterion is satisfied.
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.
Zbyněk Loebl
Sole Panelist
Dated: September 23, 2003
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