WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Fondazione Arena di Verona v. Rainer Klose (RCK Productions Medien GmbH) Case No. D2009-1421 1. The Parties
The Complainant is Fondazione Arena di Verona, Verona, Italy, represented by Europatent-Euromark S.r.l., Italy.
The Respondent is RCK Productions Medien GmbH, Munich, Germany, represented by Blume & Asam Rechtsanwälte, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2009. On October 22, 2009, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On October 26, 2009, 1&1 Internet AG transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and confirming that the language of the registration agreement was German. On October 28, 2009 the Center transmitted by e-mail to the parties the Language of the proceedings document to the parties. On October 28, 2009 and November 3, 2009, Complainant and Respondent respectively submitted their comments regarding the language of the proceedings. On November 10, 2009, the Center advised Complainant and Respondent in English and German that it had decided to accept the Complaint in English and commenced the proceeding, and would accept a response in either English or German. The Center further advised that it would attempt to appoint a panel familiar with both languages (if available), and allow the panel when appointed to determine the appropriate language of the proceeding.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 November 10, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was extended to December 31, 2009. A largely procedural Response was filed with the Center on December 28, 2010.
The administrative proceeding was suspended from February 5, 2010 until May 7, 2010.
The Center appointed Frederick M. Abbott, Fabio Angelini and Alexander Duisberg as panelists in this matter on May 17, 2010. The Panel finds that it was properly constituted. Each member of 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.
The Response filed by Respondent in German on December 28, 2010 objected to initiation of the administrative proceeding on grounds that the Complaint concerned subject matter already administratively determined by a panel between the same parties (i.e. Fondazione Arena di Verona v. Rainer Klose (RCK Productions Medien GmbH),WIPO Case No. D2001-0566), and on grounds that a decision by the Civil Tribunal of Verona, Civil Section IV (Fondazione Arena di Verona v. Rainer Klose, Decision N. 473/09, Gen. Reg. N. 1431/02, Chron N. 4100807, Rep. N. 1170, Feb. 28, 2009) (hereinafter the “Verona Tribunal Decision”) on which the Complaint relies, is the subject of a pending appeal by Respondent.
The Panel has reviewed the submissions of the parties regarding the language of the proceedings, and concurs in the approach taken by the Center. Each party was permitted to submit pleadings in the language of its preference, and the Center appointed a Panel whose members are able to work in English and German. One Panel member (Fabio Angelini) is able to work in Italian, and the Panel has relied on his language ability with regard to the text of the appeal filed by Respondent in the Court of Appeal of Venice regarding the Verona Tribunal Decision.1
Respondent filed in German a largely procedural Response to the Complaint, and Respondent's Response referred mainly to a prior panel determination under the Policy rendered in the English language, Fondazione Arena di Verona v. Rainer Klose (RCK Productions Medien GmbH), WIPO Case No. D2001-0566. The content of the website operated by Respondent that has been the subject of Complainant's objections is in the English language. The registration agreement in effect between Respondent and the Registrar is in the German language. The Panel considers that because the activities of Respondent taken in connection with the disputed domain name are in English, and the previous decision between these parties was rendered in English, it is reasonable to render this decision in English. 4. Factual Background
Complainant initiated a previous administrative proceeding against Respondent with respect to the disputed domain name on May 3, 2001 by filing of an amended Complaint with the Center (with panel determination in Fondazione Arena di Verona v. Rainer Klose (RCK Productions Medien GmbH),WIPO Case No. D2001-0566).
The panel (Kamen Troller, sole panelist) in that earlier proceeding indicated that Complainant had not submitted evidence of any trademark registration concerning the term in which it claimed trademark rights, ARENA DI VERONA. The panel assessed Complainant's claim of exclusive rights in the names “Fondazione Arena di Verona” and “Arena di Verona” based on Italian Law Decree No. 367 of June 29, 1996, and on the alleged well-known character of ARENA DI VERONA arising from activities (i.e., artistic performances) undertaken at the Arena since 1938. The panel stated:
“The Panel notes that the Policy is generally applied to conflicts between a trademark and a domain name. The Policy is not generally applied to conflicts between domain names and geographical indications, trade names or rights to the personal name that are not supported by rights in a trademark. The question whether, in the case at hand, the Complainant has exclusive rights in the name ‘Arena di Verona' which might be assimilated to unregistered trademark rights, and the question whether such unregistered rights can grant protection against registration of confusingly similar domain names, are better left in this case to a court of competent jurisdiction, which has authority to decide these questions.”
The prior panel determined the disputed domain name would be confusingly similar to ARENA DI VERONA if trademark rights in that term existed. He further stated:
“The Panel concludes, however, that even though the litigious designations are confusingly similar and that Complainant may have well established rights in the designation ‘Arena di Verona', it need not take a position, in light of the decision that follows, on whether the Complainant has established that it has rights in a trademark or service mark.”
Complainant in this proceeding has furnished an original (Italian) and translated (English and German) version of the Verona Tribunal Decision dated February 28, 2009. Respondent did not appear in that proceeding. In its decision, the civil court observed that:
“on February 2000 the plaintiff [i.e., Complainant] registered ‘Fondazione Arena di Verona' as a trademark. Even before that registration, however, since it was recognised as an opera company, Fondazione had used the name ‘Arena di Verona' with no other additions or specifications (see in this respect the statements rendered by the witness Corrado Ferraro, marketing director of Fondazione), and the plaintiff can therefore claim to be the owner of the trade mark ‘Arena di Verona', to be considered as a trade mark de facto, of widespread renown, before the year 2000, and then as a registered trade mark from the year 2000 on.”
The prior panel decided with respect to Respondent's rights or legitimate interests in the disputed domain name:
“The Respondent uses the domain name to provide a website where Internet users can find general information regarding the Arena of Verona and its programs, famous operas, the city of Verona, etc., and can order tickets online for performances at the Arena and book hotels. In the opinion of the Panel, this constitutes a ‘bona fide offering of goods or services' within the meaning of Paragraph 4(c)(i) of the Policy.
It also appears from the evidence submitted that, before the starting of this proceedings, the Complainant was aware that the Respondent owns websites with information about the Arena and offers an online reservation service. The Panel finds that the evidence suggests that the Complainant gave its consent to the Respondent to advertise the Complainant's activities on its websites, and to put a link to the Complainant's website (Respondent's Exhibits 1 and 2).
Therefore, the Panel does not accept the Complainant's contention that it ‘has never authorized anyone to use its name as a domain name', and ‘has never authorized anyone to sell tickets or for the Arena Summer Opera Season on the Internet'.
The Panel finds that the Respondent has established fair and prior use of the domain name and that Complainant has not satisfied the burden of proof with respect to Paragraph 4(a)(ii) of the Policy.”
With respect to the issue of bad faith registration and use, the prior panel in the previous case determined:
“Firstly, the Complainant seems to rely on the third element, asserting that the Respondent acted in bad faith, because ‘the domain name were registered for the purpose of interfering with the business of the Complainant'. In order to constitute evidence of bad faith, Paragraph 4(b)(iii) of the Policy requires registration for the purpose of ‘disrupting' the business of a competitor. The Panel finds that merely ‘interfering' with someone's business is not necessarily unfair or unauthorized and as such does not necessarily constitute bad faith registration or use within the meaning of Paragraph 4(b)(iii). The Panel finds that, even though Respondent obviously attempts to attract Internet users to his website for purposes of commercial gain, there is no evidence that the Respondent aimed at disrupting the Complainant's business when he registered the domain name. Moreover, the Complainant seems to have explicitly, or at least implicitly, provided some degree of consent to the Respondent's websites , .de, .ch and .at, as well as to the online ticket sale on these websites. The Panel therefore finds that the criteria of Paragraph 4(b)(iii) of the Policy for bad faith are not fulfilled.
Secondly, the Complainant seems to rely on the fourth element of Paragraph 4(b) of the Policy, alleging that the domain name was ‘primarily registered for the purpose of taking an unlawful advantage from the Complainant's great renown, by means of a likelihood of confusion with the Complainant's trademark and trade name as to the source'. The Panel does not agree with this contention. Except for the link to the Complainant's ‘legitimization letter' (Respondent's Exhibit 1), there are no elements on the Respondent's website that could lead Internet users to believe that there is a commercial relationship between the Complainant and the Respondent. Instead, it is clearly indicated on the Respondent's website at that the site is operated by the Respondent's tourist company, ‘ITALIA Teletourismus'. It is certain that Respondent profits from Complainant's reputation, but that is not contrary to the Policy per se.
The Panel also finds that the other elements of Paragraph 4(b) of the Policy are not fulfilled:
There is no indication that the Respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant or one of its competitors, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name.
Also, Respondent's use of has not prevented the Complainant from making its commercial presence known on the Internet. On the contrary, the Panel notes that the Complainant has registered , , , , , , and . Taken into account that the Complainant owns at least eight (8) domain names incorporating its name, Respondent's registration of cannot be considered as preventing the Complainant from reflecting its mark in a corresponding domain name. Therefore, the bad faith criterion of Paragraph 4(b)(ii) of the Policy is not fulfilled.
Based on the above, the Panel finds that the Complainant has not satisfied the burden of proof with respect to bad faith registration and use of the domain name.”
In describing Respondent's website identified by the disputed domain name, the Verona Tribunal Decision refers to “a link to the official web site of Fondazione Arena di Verona and another link to the ‘legitimization letter' issued by the same Fondazione Arena di Verona, which was presented to Internet surfers as proof of an effective connection with Fondazione and of being accredited by the same”. The Verona Tribunal Decision, in discussing the issue of confusing similarity, states that the websites managed by Respondent “falsely appear as being accredited by Fondazione Arena”, although not specifically referencing the so-called “legitimization letter”. Without distinguishing the rights of Complainant based on its trademark registered in 2000, or its de facto rights preceding that date, the Verona Tribunal Decision finds that Respondent infringed Complainant's trademark rights by illicitly and maliciously diverting Internet traffic to Respondent's website, and further found that Respondent engaged in unfair competition against Complainant within the meaning of the Italian Civil Code by deliberately generating Internet user confusion for commercial gain (by providing an attractive venue for third-party advertisers on its website and by linking Internet users to alternative vendors of tickets to events hosted at the Arena di Verona). The Verona Tribunal Decision, inter alia, awarded substantial monetary damages to Complainant, ordered that Respondent refrain from using several domain names, including the disputed domain name, and “order[ed] the providers of the involved Internet services to blackout the web sites owned by the defendant and connected with the domain names listed at point (1) of this provision, in case of a delay of more than 30 days in the execution of this decision, from the date of its publication”.
Respondent stated in its Response that it had filed an appeal of the Verona Tribunal Decision, and it provided a copy of its filing at the Court of Appeal of Venice, [dated November 17, 2009].
The Registration Agreement in effect between Respondent and 1&1 Internet AG subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)). 5. Parties' Contentions A. Complainant
Complainant refers the Panel to the Verona Tribunal Decision as holding that Complainant held trademark rights long before the disputed domain name was registered. Complainant notes that it did not “file any trademark before the contested domain name was registered”, but refers to the Tribunals determination that it's “trademark rights started well before September 1999 and that Fondazione Arena di Verona can claim a ‘widespread renown' on the mark”.
Complainant refers to the Verona Tribunal Decision as holding that the disputed domain name is confusingly similar to its trademark.
Complainant refers to the holding of the prior panel regarding Respondent's rights or legitimate interests, and indicates:
“The opinion of the Court of Verona in this respect (which we totally share and which derives from a deeper analysis of the case which was carried out by the Court) is totally different and takes into account the activities carried out by the Respondent through its web site, also clarifying the meaning of the so-called “legitimization letter” which is presented by the Respondent as evidence of an effective connection with the Complainant. Among other things, in our opinion there is no doubt that the Respondent's use of the domain name is neither ‘non-commercial' nor ‘fair', and there is at least an intent for commercial gain in the Respondent's activity.”
Regarding bad faith registration and use, Complainant states:
“As to this requirement, we deem it convenient to literally quote a paragraph of the enclosed judgment of the Court of Verona which exactly describes how the domain name in dispute was registered and is being used in bad faith. As a matter of fact, according to the Court ‘... In this case, the “initial confusion” effect exists, since the Internet surfer who enters the words “arena” and “Verona” in the main search engines (Yahoo, Google, AltaVista, Altaweb, etc.) immediately enters into contact also with the web sites managed by the defendant, which falsely appear as being accredited by Fondazione Arena and which are structured so as to offer services which are similar to the services offered by the official Fondazione web site, and there is also an unfair advantage in favour of the defendant, since the abusive use of domain names recalling Arena di Verona gives rise, through the above described interference, to an illicit diversion of customers from the holder of the registered trade mark (in this case, the plaintiff Fondazione) to the domain name holder (the defendant Rainer Klose), in many cases without the Internet user being aware that the web site he/she visited is not the official “Arena di Verona” web site.' The Court's reasoning, in other words, can be expressed in general terms as ‘...by using the domain name(s), the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent's web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation...' (Paragraph 4(b) (iv) of the Rules).”
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant. B. Respondent
Respondent argues that the subject matter of this dispute has already been decided in favor of Respondent by a prior decision under the Policy in 2001.
Respondent contends that there is no basis for an appeal against a prior administrative panel determination under the Policy based on changed circumstances, which is also prohibited by the German Code of Civil Procedure and the Italian Code of Civil Procedure.
Respondent indicates that, assuming for the sake of argument changed circumstances might result in a change to the decision of the prior panel, the Verona Tribunal Decision has been appealed, and is not final. Respondent argues that the Panel should suspend this proceeding pending resolution of the appeal.
Respondent requested as a precautionary measure access to the “files” of the prior administrative panel. 6. Discussion and Findings
This proceeding involves a refiling by Complainant against Respondent with respect to the domain name disputed in Fondazione Arena di Verona v. Rainer Klose (RCK Productions Medien GmbH),WIPO Case No. D2001-0566.
The subject of the refiling of complaints has been addressed by a number of dispute settlement panels under the Policy, and at this stage is fairly “well-worn” territory. For this reason, the Panel will not engage in an extended dialogue regarding the issues at stake in assessing whether such refilings should be allowed, and under what circumstances. The Panel refers to Lonely Planet Publications Pty Ltd v. Mike Tyler,WIPO Case No. D2006-0596, and decisions referenced therein, including especially Creo Products Inc. v. Website In Development,WIPO Case No. D2000-1490. In Lonely Planet, the panel stated:
“In light of the extensive consideration given by earlier panels to the circumstances in which it may (or may not) be appropriate to accept refiled complaints under the Policy, this Panel does not consider it necessary to revisit the legal backdrop against which the question here is to be considered. Suffice it for present purposes to say that in this case involving (1) the same complainant and (2) the same respondent (3) with respect to the identical domain name as to which a previous panel decision under the Policy has been rendered, in order for the cause of action to be considered, Complainant must be presenting facts (1) that raise the possibility of a serious defect with respect to the prior proceeding or (2) present some materially changed facts occurring subsequent to that proceeding which reasonably might alter the analysis of the Panel and thereby alter the outcome of the proceeding.”
In the instant proceeding, Complainant and Respondent are the same, and the refiling is directed toward the identical disputed domain name as considered by the panel in Fondazione Arena di Verona v. Rainer Klose (RCK Productions Medien GmbH),WIPO Case No. D2001-0566.
Complainant has not suggested that there was a serious defect in the prior proceeding, such as misconduct by the panelist.
Complainant is arguing that the Verona Tribunal Decision represents a materially changed fact which might reasonably alter the analysis of this Panel, as compared with the prior panel assessing the subject matter in 2001. This Panel does not find any such materially changed fact.
The prior panel avoided making a determination regarding whether Complainant had established rights in a trademark, and its decision did not rely upon rights in a trademark (or lack thereof). The prior panel had questioned whether the type of exclusive right available under Italian civil law for the name of an organization such as that operated by Complainant could be assimilated to a trademark within the meaning of the Policy. The Verona Tribunal Decision is not wholly instructive on that precise point because the source of Complainant's unregistered exclusive rights is not clearly specified. But regardless whether the Verona Tribunal Decision clarifies that Complainant held rights in a trademark within the meaning of the Policy prior to 2000, it remains that the rejection of the complaint by the prior panel in 2001 was not based on a determination regarding rights in a trademark (or lack thereof). In that regard, the Verona Tribunal Decision does not represent a changed fact that might affect the prior determination.
The prior panel determined that Respondent established rights or legitimate interests in the disputed domain name through a bona fide offering of services prior to notice of a dispute. Based on the facts presented, it determined that Complainant was aware of the activities undertaken by Respondent and that Complainant had consented to those activities, including by authorizing a link to Complainant's own website. The Verona Tribunal Decision does not present any new or different facts in this regard, except that Complainant states that the Verona Tribunal undertook a “deeper” analysis with which Complainant agrees. But Complainant does not point to any “fact” that has changed since evidence was presented to the prior panel.
It may be that the Verona Tribunal applied a different standard of legal analysis to the same facts and reached a different conclusion. The Policy in paragraph 4(c)(i) employs a legal standard (establishment of rights or legitimate interests based on a bona fide offering of goods or services prior to notice of a dispute) that may be quite different than the legal standard used by the Verona Tribunal to assess the facts. This Panel has not been presented with any legal basis for comparing the determinations by the Verona Tribunal and the prior panel.
The same line of reasoning applies with respect to the issue of bad faith registration and use. The prior panel applied standards established by paragraph 4(b) of the Policy to determine that Respondent had not registered or used the disputed domain name in bad faith. Complainant has not alleged any facts different than those before the prior panel other than a different legal conclusion by the Verona Tribunal Decision. This Panel has not been presented with any basis for comparing the legal standard employed by the Italian civil court and the legal standard established by paragraph 4(b) of the Policy.
The Verona Tribunal does not have some form of appellate jurisdiction regarding legal or factual determinations made by an administrative panel operating under the Policy. Likewise, an administrative panel operating under the Policy does not have authority to intervene in the processes or decisions of an Italian civil court.
This Panel finds that Complainant has not presented any materially changed fact postdating the decision by the prior panel in 2001 in Fondazione Arena di Verona v. Rainer Klose (RCK Productions Medien GmbH),WIPO Case No. D2001-0566, that might lead this Panel to reach a conclusion different from that reached by the prior panel. The Panel rejects the refiled Complaint. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Presiding Panelist
Fabio Angelini
Panelist
Alexander Duisberg
Panelist
Dated: May 31, 2010
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