Milia S.r.l. v. Renzo Bertolini

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Milia S.r.l. v. Renzo Bertolini

Case No. D2001-0452

1. The Parties

The Complainant is MILIA S.r.l. a company incorporated under

the laws of Italy, with principal place of business in C.so Italia 8 - 20122

Milan, Italy.

The Respondent is Renzo Bertolini, 335 Ocean Drive, Miami Beach, FL 33139-000,

U.S.A. The administrative contact for the Respondent is Riccardo Baggio, Via

D. L. Solda', 8, Bassano del Grappa, Italy (hereinafter the "Administrative

Contact").

2. The Domain Name and the Registrar

The domain name at issue is <settimanaenigmistica.com> (hereinafter the

"Domain Name"). The registrar is Network Solutions, Inc.(NSI)/VeriSign.

3. Procedural History

On March 28, 2001 the Complainant filed by e-mail a complaint (hereinafter

the "Complaint") with the WIPO Arbitration and Mediation Center (hereinafter

the "Center"). The Center received a hard copy of the Complaint on March 30,

2001.

On April 3, 2001, the Center requested Network Solutions to verify the Domain

Name in dispute. Network Solutions stated on April 4, 2001, that NSI/VeriSign

is the registrar (hereinafter the "Registrar") of the Domain Name, that the

current registrant is Renzo Bertolini, 335 Ocean Drive Miami Beach, FL, U.S.A.,

that the administrative contact is Riccardo Baggio, that the VeriSign's Version

4 Service Agreement is in effect and that the Domain Name registration is in

"active" status.

On April 6, 2001, the Center requested the Complainant to amend the Complaint

with regard to the mutual jurisdiction requirement. The Complainant filed the

amendment on April 10, 2001.

The Center proceeded to verify whether the Complaint satisfied the formal requirements

of the Uniform Domain Name Dispute Resolution Policy (hereinafter the "Policy"),

the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the

"ICANN Rules") and the World Intellectual Property Organization Supplemental

Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "WIPO

Rules"), including the payment of the requisite fees. The Center concluded that

the Complaint satisfies all of these formal requirements.

On April 10, 2001, the Center sent a copy of the Complaint to the Respondent

and to its Administrative Contact. The Center indicated this date as the formal

date for the commencement of the administrative proceeding and April 29, 2001

as the last day for Respondent to file a Response.

On April 30, 2001, the Center notified the Respondent and its Administrative

Contact that Respondent failed to meet that deadline and was, therefore, in

default.

On 11 May, 2001, the Center informed the Parties that an administrative panel

(the "Panel") has been appointed and transferred the file to the Panel.

The Panel finds it was properly constituted in compliance with the ICANN Rules

and the WIPO Rules and the panelist issued a Statement of Acceptance and Declaration

of Impartiality and Independence.

Having reviewed the communication records in the case file, the Panel finds

that the Center has discharged its responsibility under para (2) of the Rules

"to employ reasonably available means calculated to achieve actual notice to

Respondents". Therefore, the Panel shall issue its Decision without the benefit

of any Response from the Respondent.

4. Factual Background

The Complainant, MILIA S.r.l. is the owner of "La settimana enigmistica", a

well-known and widespread crosswords magazine in Italy. Its trademark LA SETTIMANA

ENIGMISTICA is protected in block letters and as a logo by two Italian registrations

covering numerous goods and services, including magazines and journalistic services.

Copies of the corresponding registration certificates are attached to the Complaint

(Annex C).

The Respondent registered the Domain Name on May 13, 1999. Because of Respondent's

default, nothing is known about Respondent besides the fact that he apparently

lives in Desenzano del Garda, Italy.

The Domain Name does not resolve to an active website.

5. Parties' Contentions

Complainant contends:

- that the Domain Name <settimanaenigmistica.com> is identical to the

Complainant's well known trademark "LA SETTIMANA ENIGMISTICA";

- that the Complainant's trademark is well known in Italy (Annex H) as the

title of the magazine "La Settimana Enigmistica" which has been first published

in 1932 (Annex D) and after 7 decades is now the second most spread magazine

in Italy (Annex E);

- that its trademark is so well established in Italy that the Domain Name could

be solely associated with Complainant's magazine, and therefore the Domain Name

at issue is misleading for the public;

- that the Respondent has no right or legitimate interests to the Domain Name

at issue because he is neither personally known, nor owns a company, nor a trademark

corresponding the Domain Name;

- that the Respondent does not appear to be interested in the Domain Name because

he neither used it, nor is he preparing to use it in the future;

- that the Domain Name has been registered in bad faith because Respondent's

address traceable in the Whois' database, appears to be wrong. A letter sent

by the Complainant to Respondent's address in Miami Beach (Annex I) was allegedly

returned because the addressee was unknown. According to Claimant's inquiry,

the Respondent is actually living in Desenzano del Garda, Italy (Annex P).

- that the Complainant attempted several times to contact the Respondent (Annex

L, M, N, O) but Respondent never replied.

The Respondent did not file any Response to the Complaint.

6. Discussion and Findings

To have the disputed Domain Name transferred to it, Complainant must prove

each of the following (Policy, paragraph 4(a)):

(i) that the domain name is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of

the domain name; and

(iii) that the Respondent's domain name has been registered and is being used

in bad faith.

Identity or Confusing Similarity

Complainant has shown that it owns two Italian trademark registrations of the

mark "LA SETTIMANA ENIGMISTICA". The Panel therefore finds that the Domain Name

at issue is virtually identical to Claimant's trademark.

Legitimate Rights or Interests

The Respondent did not use the Domain Name in any way, nor does he appear that

he is commonly known by the Domain Name. The Respondent neither replied to Complainant's

letters (Annex I, N, O) nor did he file a Response. Therefore, the Panel finds

that the Respondent did not demonstrate legitimate rights or interest in the

disputed Domain Name.

Registration and Use in Bad Faith

It appears that the Respondent did not provide his true address or did not

update his change of address as the holder of the Domain Name. The use of false

contact information is a circumstance which may indicate that the Respondent

registered the Domain Name in bad faith (Home Director, Inc v. HomeDirector,

D2000-0111; Quixtar Investments, Inc.

V Smithberger, D2000-0138).

According to the Complainant's inquire, it appears that the Respondent lives

in Italy (Annex P).The cross words magazine "La Settimana Enigmistica" is unquestionably

very well-known in Italy. Since Respondent appears to live in Italy, he must

have been aware thereof. While the Respondent has not shown any legitimate interest

in the Domain Name, it is deliberately preventing the Complainant from reflecting

its well known trademark LA SETTIMANA ENIGMISTICA in a corresponding ".com"

domain name (FC Bayern München v. Miguel Garcia, D2000-1773).

The Panel, therefore, finds that Respondent registered the Domain Name in bad

faith.

Respondent warehoused the Domain Name reflecting a well-known mark for more

than two years without posting an actual web page thereunder. Panels have repeatedly

held that the passive holding of a domain name may constitute a "use" in the

sense of paragraph 4(a)(iii) of the Policy. The concept of a domain name being

used in bad faith is not limited to positive action; rather, inaction is within

the concept (Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003;

WWF Entertainment, Inc. v. Ringside Collectibles, D2000-1306).

The Domain Name clearly identifies the cross words magazine originating from

Complainant. This trademark is so obviously connected with Complainant that

by definition its registration was made in opportunistic bad faith and, although

no actual use has been made so far, any use by the Respondent of this Domain

Name would necessarily create a likelihood of confusion with the Complainant's

mark as to the source, sponsorship, affiliation, or endorsement of a Respondent's

web site in the sense of paragraph 4(b)(iv) of the Policy (Banca Sella S.p.A.

v. Mr. Paolo Parente, D2000-1157;

Veuve Cliquot Ponsardin v. The Polygenix Group Co., D2000-0163;

Ingersoll-Rand v. Frank Gully, D2000-0021).

The Panel, therefore, finds that Respondent registered and used the Domain

Name in bad faith.

7. Decision

For all of the foregoing reasons, this Panel decides that the Domain Name <settimanaenigmistica.com>

registered by Respondent is identical to the trademark "LA SETTIMANA ENIGMISTICA"

owned by the Complainant, that the Respondent has no rights or legitimate interests

in respect of this Domain Name, and that the Respondent registered and is being

used the Domain Name in bad faith. Accordingly, pursuant to paragraph 4 (i)

of the Policy, the Panel requires that the registration of the Domain Name <settimanaenigmistica.com>

be transferred to the Complainant.

Andrea Mondini

Sole Panelist

Dated: May 30, 2001