Rusconi Editore S.p.A. v. The Gente Club

WIPO Arbitration and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Rusconi

Editore v. The Gente Club

Case

No. D2001-0451

1. The Parties

Complainant is Rusconi

Editore S.p.A, Milano a corporation organized and existing under the laws

of Italy, represented by Avvocato Mariachristina Rapisardi, Studio Legale

Rapisardi, Milano, Italy.

Respondent is The Gente

Club, Lugano, Switzerland.

2. The Domain Name

and Registrar

The domain name at

issue is <gente.com>. The registrar is Network Solutions, Inc. ("NSI"),

Herndon, Virginia, United States of America.

3. Procedural History

A Complaint was submitted

electronically to the World Intellectual Property Organization Arbitration and

Mediation Center (the "WIPO Center") on March

28, 2001, and the signed original together with four copies was received by

the WIPO Center on March 30, 2001. The WIPO Center sent an Acknowledgment of

Receipt to the Complainant on April 2, 2001.

On April 3, 2001, a

Request for Registrar Verification was transmitted to the Registrar, NSI.

On April 4 NSI/VeriSign confirmed by e-mail that they were in receipt of

the Complaint sent to them by the Complainant, that the domain name <gente.com>

was registered with them and that the Respondent was the current registrant

of the name. The Registrar also forwarded the requested WHOIS details, confirmed

that the Uniform Domain Name Dispute Resolution Policy was in effect and

stated that the domain name was on "Active" status.

The policy in effect

at the time of the original registration of the domain name at issue was

VeriSign´s Version 5.0 Service Agreement.

A Formal Requirements

Compliance Checklist was completed by the assigned WIPO Center Case Administrator.

The Panel has independently determined and agrees with the assessment of

the WIPO Center that the Complaint is in formal compliance with the requirements

of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy,

as approved by ICANN on October 24, 1999 (the "Uniform Rules"),

and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy,

in effect as of December 1, 1999 (the "WIPO Supplemental Rules").

The required fees for

a single-member Panel were paid on time and in the required amount by the

Complainant.

No formal deficiencies

having been recorded, on April 6, 2001, a Notification of Complaint and

Commencement of Administrative Proceeding (the "Commencement Notification")

was transmitted to the Respondent, setting a deadline of April 25, 2001,

by which the Respondent could file a Response to the Complaint. The Commencement

Notification was transmitted to the Respondent by e-mail to the e-mail address

indicated in the Complaint and specified in the Registrars WHOIS confirmation,

as well as to <postmaster@gente.com>. The latter was not received.

In addition, the Complaint was sent by courier to the indicated postal address,

but was returned.

On April 26, 2001,

having received no Response from the designated Respondent, the WIPO Center

transmitted to the parties a Notification of Respondent Default.

On May 1, 2001, in

view of the Complainant’s designation of a single panelist (but without

prejudice to any election to be made by the Respondent) the WIPO Center

invited Mr. Knud Wallberg to serve as a panelist in Case No. D2001-0451,

and transmitted to him a Statement of Acceptance and Request for Declaration

of Impartiality and Independence.

Having received on

May 2, 2001, Mr. Knud Wallberg’s Statement of Acceptance and Declaration

of Impartiality and Independence, on May 4, 2001, the WIPO Center transmitted

to the parties a Notification of Appointment of Administrative Panel and

Projected Decision Date, in which Mr. Knud Wallberg was formally appointed

as the Sole Panelist. The Projected Decision Date was May 17, 2001.

The Sole Panelist finds

that the Administrative Panel was properly constituted and appointed in

accordance with the Uniform Rules and WIPO Supplemental Rules.

The Administrative

Panel shall issue its Decision based on the Complaint, the Policy, the Uniform

Rules, the WIPO Supplemental Rules, but without the benefit of a response

from the Respondent.

4. Factual Background

1.

The Complainant is a

publishing firm and owner of a number of magazines distributed in Italy, Europe

and the rest of the World.

Among the magazines

published by Rusconi, and one which has a particular prominence is the magazine

"Gente". The first issue was published in September 1957 and it

has during the years gathered national and international renown proved by

the high edition and diffusion in Italy and abroad; as proof thereof, the

ADS (Accertamento Diffusione Stampa) declaration for the years 1995, 1996,

1997, 1998, 1999 was attached, as well as the data sheet for the sales abroad,

with details of the countries and number of copies for the years 1996, 1997,

1998, 1999, 2000. Also further proof of the prominence attached to the magazine

was attached to the Complaint.

Attached

to the Complaint was also several registration certificates of the mark

GENTE in different countries and for a broad list of goods and services.

On

this background the Complainant claims that:

- From the

circumstances described in the preceding paragraphs and from the number

of registered trademarks in Italy and abroad, it can for sure be stated

that the trademark "Gente" is provided with the requirement

of notoriety.

- The absolute

identity between the name of the domain object of the present complaint

and the registered trademarks of which the Complainant is owner does

not need any further illustration; as well as is proved the notorious

character of the trademarks themselves.

2.

As far as the absence

of rights and legitimate interests of the Respondent with respect to the

domain name under complaint is concerned, the Complainant notes that the

Registrant appears to be a not better precised "entity" named

The gente club of which not even an address but only a "poste

restante" reference exists. A company named "The gente club"

does not appear to exist neither it appears that the Registrant "The

gente club" be owner of trademarks formed by the word "gente".

Even if we suppose

that "The gente club" be corresponding to the denomination of

the company, same could at most claim rights or legitimate interests for

a domain name formed by the words "The gente club" but not for

the domain name herein under complaint, which is formed by the word "gente"

only. It shall be specified that at the moment of the issue of this complaint,

the domain name "genteclub.com" was available for registration.

The registrant, furthermore,

is not known through the web site corresponding to the domain name in question,

nor do they carry out any activity, which could be referred thereto. The

site corresponding to the domain name is not used.

3.

From the notorious

character of the magazine published and distributed by Rusconi it is the

view of the Complainant that the Respondent, at the time of the registration,

was aware of the rights of the Complainant and thus interfered with the

trademarks "gente" of which the same is owner. A more natural

step would have been to register the domain name as exactly corresponding

to their denomination that, as mentioned in the preceding paragraph, was

and is available.

The fact that the web

site corresponding to the domain name under complaint is not used although

the registration goes back to more than 4 years, beside revealing the absence

of a real interest of the Registrant regarding the same, demonstrates the

will of the Registrant themselves to prevent the Complainant from having

a web site identified with the name of its most important magazine; such

an impediment forms as such an interference with the rights that derive

to the Complainant from the trademarks of which same is owner.

B. Respondent

As mentioned above

under 3, the Respondent has not filed a response in accordance with the

Rules, Para. 5 and regrettably no other information on the Respondent has

been presented to the Panel.

6. Discussion and

Findings

According to Paragraph

15(a) of the Rules the Panel shall decide a complaint in accordance with

the Policy, the Rules and any rules and principles of law that it deems

applicable.

Paragraph 4(a) of the

Policy directs that the Complainant must prove each of the following:

1) that the

domain name registered by the Respondent is identical or confusingly

similar to a trademark or service mark in which the Complainant has

rights; and,

2) that the

Respondent has no legitimate interests in respects of the domain name;

and

3) the domain

name has been registered and used in bad faith.

1.

The domain name <gente.com>

is identical to the trademark GENTE except for the addition ".com".

2.

The Complainant has

not licensed or otherwise permitted Respondent to use its trademark or to

apply for any domain name incorporating the mark. Further, the Respondent

has not proven that he has any prior rights or legitimate interests in the

domain name. The mere indication in the Registrant details for the domain

name of a name of the holder - The Gente Club -, which contains the distinctive

part of the domain name, is not in itself evidence of such a nature as to

substantiate a legitimate interest in the domain name. This is especially

true since there is apparently no activities performed under the said name

from the said address.

The prerequisites in

the Policy, Paragraph 4 (a) (i) and (ii), cf. 4 (c) are therefore fulfilled.

3.

Paragraph 4 (a) (iii)

of the Policy further provides registration and use in bad faith.

Paragraph 4 (b) regulates,

by way of example, the kind of evidence that is required.

In the view of the

Panel the facts in the case shows:

- the prior

ownership by the Complainant of numerous identical trademark registrations

of the mark GENTE including registrations in the home country of the

Respondent, Switzerland,

- the identity

between this mark and the distinctive part of the domain name at issue,

- the fact

that the word GENTE has individuality and distinctiveness to serve

as a trademark for the goods for which it is registered and used,

- the wide

reputation in the mark GENTE also in Switzerland,

- the fact

that it is highly improbable that the Respondent has selected the

name without having knowledge of the Complainants trademark rights

in Switzerland and elsewhere, and

- the non-contested statement

in the Complaint and the contents of the Policy Paragraphs 4 (a)(i-iii) and

4(b)(iv), that the

domain name has been registered and is being used in bad faith. The Panel wishes

to express that it is within the scope of the rights conferred to a registered

trademark to regard

"passive use" as "use", cf. Telstra Corporation Limited

v. Nuclear Marshmallows,

Case No. D2000-0003, and several other subsequent decisions.

Consequently, all the

prerequisites for cancellation or transfer of the domain name according

to Paragraph 4(a) and (b) of the Rules are fulfilled.

The Complainant has

requested transfer of the domain name.

7. Decision

In view of the above

circumstances and facts the Panel decides, that the domain name registered

by Respondent is identical to the trademark in which the Complainant has

rights, and that the Respondent has not shown to have any rights or legitimate

interests in respect of the domain name, and that the Respondent’s domain

name has been registered and is being used in bad faith.

Accordingly, pursuant

to Paragraph 4(i) of the Policy, the Panel requires that the registration

of the domain name <gente.com> be transferred to the Complainant.

Knud Wallberg

Sole Panelist

Dated:

May 15, 2001

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