The Complainants are Mediaset S.p.A.(the “First Complainant”) and Piersilvio Berlusconi (the “Second Complainant”) of Milan, Italy, represented by Avvocato Carlo Sala, Italy.
The Respondent is New York Link, Inc. of New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Abacus America Inc. d/b/a Names4Ever (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2010. On December 14, 2010, the Center transmitted by email to Abacus America Inc. d/b/a Names4Ever a request for registrar verification in connection with the disputed domain name. On December 16, 2011, Abacus America Inc. d/b/a Names4Ever transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 on December 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2011.
The Center appointed Sir Ian Barker as the sole panelist in this matter on January 14, 2011. 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 First Complainant is an Italian television group, established in 1987, and is one of the largest private media companies in Italy. It controls inter alia, a television company called Reti Televisive Italiane S.p.A (“Reti”).
The Second Complainant is a director of the First Complainant and the Chairman of Reti. He is the son of Silvio Berlusconi, the founder of the First Complainant and currently Prime Minister of Italy.
The First Complainant is the holder of several Italian, international and European Community trademarks, including an Italian trademark for SILVIO BERLUSCONI COMMUNICATIONS. This trademark was applied for in 1990 and has been renewed twice. It is currently in force. This trademark was utilized in the credits of several international hit movies from the 1980s and 1990s which are still aired on television and in home videos.
The disputed domain name was registered on June 6, 1999. The person shown as the administrative and technical contact for the disputed domain name, T. Boemi, is now deceased. Mr Boemi was an Italian businessman who had had some relationship with the First Complainant in the past.
Written notice of the Complaint was sent by the Center to Mr Boemi at the address given by the Registrar as that of the registrant of the disputed domain name. Though properly sent by the Center to the available contact information, the written notice of the Complaint was apparently unable to be served at this address.
The Complaint was properly notified to the Respondent at the email addresses supplied. The identity of the true Respondent is unknown, although the Respondent has featured in several cases under the Policy between 2000 and 2002. In all of the five cases cited in the Complaint, the relevant complainant had succeeded against the Respondent who was found to have used and reflected the names of prominent persons or products in a domain name without any colour of right to use relevant trademarks. In none of these cases did the Respondent file a Response.
The Complainants gave the Respondent no right or licence to use the trademark in a domain name. 5. Parties’ Contentions A. Complainant
The Complainants have established rights in the trademark SILVIO BERLUSCONI COMMUNICATIONS. The name Berlusconi has acquired a secondary meaning associated with television. Any person using or imitating the Berlusconi name would be prima facie liable for trademark infringement or passing-off.
The Respondent has no connection or affiliation with the Complainants who have not given it any licence to use the trademark. It is not known by the disputed domain name.
The Respondent registered and is using the disputed domain name in bad faith, as can be shown by:
a) the concealment of the Respondent’s identity;
b) the lack of active use of the disputed domain name which redirects to a different website;
c) the knowledge of the Berlusconi name worldwide;
d) the Respondent’s history in domain name disputes;
e) the naming of a deceased person who once had a business relationship with the Complainants, as contact person;
f) the likelihood of confusion between the disputed domain name and the First Complainant’s trademark;
g) the lack of any plausible or legitimate actual or contemplated use of the disputed domain name by the Respondent. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, in order to prevail, a complainant must prove the following elements of a claim for transfer or cancellation of a respondent’s domain name:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the respondent’s domain name has been registered and is being used in bad faith.
Although there are two Complainants, the case for the First Complainant which owns the registered trademark is fairly clear. The Panel will proceed to consider the Complaint from the point of view of that Complainant.
The case for the Second Complainant could be more difficult to assess. He does not own a registered trademark. If he were the sole Complainant, the Panel would have to consider the line of decisions concerning allegedly unregistered trademarks of celebrities being reflected in domain names. The Panel would have to consider such cases as Israel Harold Asper v. Communication X Inc.,WIPO Case No. D2001-0540 and R.E. ‘Ted’ Turner and Ted Turner Film Properties, LLC v. Mazen Fahmi,WIPO Case No. D2002-0251 and other more recent cases in order to determine whether the Second Respondent’s celebrity situation was such as to allow him to succeed under the first limb of paragraph 4(a) of the Policy. The above decisions show that it is not enough under paragraph 4(a)(ii) to be a prominent business person. The Ted Turner case (in the majority decision) demonstrated one long-acknowledged limitation of the Policy in relation to famous names not shown to qualify as trademarks.
However, here the Panel is not required to indicate what the decision would be if the Second Complainant were the only Complainant as the information provided is enough to enable the Panel to decide in favour of the First Complainant regarding the threshold issue of standing and possessing of a relevant trademark. A. Identical or Confusingly Similar
In the Panel’s view, the disputed domain name is confusingly similar to the First Complainant’s registered trademark. The words “Silvio Berlusconi” are dominant in both. The attention of the viewer is drawn to those words in part because of the worldwide fame of Mr Silvio Berlusconi who is Prime Minister of Italy and whose public life has created interest well beyond Italy. One can only state that the name Silvio Berlusconi is known worldwide. The addition of the word “Pier...”, obviously an additional forename, does not detract from the SILVIO BERLUSCONI component of the First Complainant’s mark.
Accordingly, the Panel finds that the first limb of paragraph 4(a) of the Policy has been proved. B. Rights or Legitimate Interests
The Complainants gave the Respondent no rights to reflect the trademark in a domain name. In the absence of any Response, and in the circumstances of this case, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied. Had the Respondent so chosen, it could have set up one of the defences available under paragraph 4(c) of the Policy – for example, one of which refers to the right of a person to reflect his/her own name in a disputed domain name. However, the Respondent has chosen not to file a Response and nothing in the record indicates that the Respondent is in fact commonly known by the disputed domain name, or otherwise has rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panels finds no help from the meagre information supplied in the Complaint on one matter of concern. Namely, the requirement that a Complainant must prove that the disputed domain name was registered in bad faith.
In this Panel’s view – supported by a large number of other panels – bad faith registration has to be proved or inferred separately from bad faith use. The disputed domain name was registered some 11 years before the Complaint was filed. The Complainants offered no explanation for the very considerable delay in filing the Complaint. Indeed, the panel in Gianfranco Ferré v. New York Link Inc., WIPO Case No. D2001-1375 noted that this particular domain name had been registered by the present Respondent which was also the respondent in that case.
Although the equitable doctrine of laches has no part in the Policy, it can nevertheless be difficult in the Panel’s opinion to infer bad faith registration when that registration took place such a long time before the Complaint was filed. There have been cases decided under the Policy where a complainant has failed even where there is clear bad faith use, but where bad faith registration could not be inferred because of the lapse of time between domain name registration and the filing of the Complaint.
In this case, there is clearly bad faith use of the disputed domain name for all the reasons set out in the summary of the Complainants’ submissions above.
In the Panel’s view, this is also one of those cases in which bad faith registration can reasonably be inferred, even though the gap between domain registration and the filing of a complaint is inordinately long.
For a start, the Panel can draw negative inferences from the failure of the Respondent to respond although even in that situation the Complainants are still required affirmatively to prove all three elements under paragraph 4(a) of the Policy.
However, the fact that the contact person for the disputed domain name was a former business associate of both the Complainants, plus the long-standing worldwide fame of Mr Silvio Berlusconi makes the Panel able to infer bad faith registration in 1999 of the disputed domain name.
The Panel takes judicial notice of the fact that Mr Silvio Berlusconi had been Prime Minister of Italy for a period before the disputed domain name was registered. That fact is enough to establish fairly universal knowledge of him. Moreover, the First Complainant’s trademark was registered before 1999.
When one adds to the above considerations the following further indications – the Respondent’s track record in other domain name disputes, the fact that the disputed domain name redirects to another site, plus the obvious likelihood that Internet users will be confused into thinking that the disputed domain name has some association, connection or application to the Complainants – an inference of both bad faith registration and use becomes very probable.
In sum, the Panel finds there is just no plausible reason in evidence on the present record for finding that the disputed domain name had been registered by the Respondent in the above-described circumstances other than in bad faith.
Accordingly, despite the unexplained lengthy delay in bringing the Complaint, the First Complainant has succeeded in establishing the third limb of paragraph 4(a) of the Policy. 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 First Complainant.
Sir Ian Barker
Sole Panelist
Dated: January 26, 2011
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