Fondazione Arena di Verona v. Rainer Klose; RCK Productions Medien GmbH

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Fondazione

Arena di Verona v. Rainer Klose (RCK Productions Medien GmbH)

Case No.

D2001-0566

1. The Parties

The Complainant is Fondazione

Arena di Verona, a private foundation having its registered seat at Piazza Brà

28, 37121 Verona, Italy.

The Respondent is Mr. Rainer

Klose, managing director of RCK Productions Medien GmbH, with its registered

address at Ismaninger Strasse 98, 81675 Munich, Germany.

2. The Domain Name and

Registrar

The domain name at issue

is <arena-verona.com> (the "domain name"). The Registrar is

Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170,

USA ("NSI").

3. Procedural History

The Complaint was filed

with the WIPO Arbitration and Mediation Center (the "Center") by

hardcopy on April 19, 2001. The Center acknowledged that it had received

the Complaint on April 23, 2001.

On April 23, 2001, the

Center sent to the Registrar a request for verification of registration data.

On April 24, 2001, the Registrar confirmed: 1) that <arena-verona.com>

was registered with the Registrar; 2) that the current registrant of <arena-verona.com>

is Mr. Rainer Klose, RCK Productions Medien GmbH, Ismaninger Strasse 98, 81675

Munich, Germany; 3) that the Administrative Contact is: Mr. Rainer Klose, Klose,

RCK Productions Medien GmbH; that the Technical Contact is: Xlink, Hostmaster;

and that the Billing Contact is: Strato InterNIC Billing, Strato Medien AG;

4) that the NSI Service Agreement Version 4.0 is in effect; and 5) that the

domain name is currently active.

On April 25, 2001, the

Center notified to the Complainant the following formal deficiencies with the

Complaint:

(i) The Complaint was

not submitted in electronic format as required by Paragraph 3(b) of the

Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules");

(ii) The Complaint did

not identify the registrar with which the domain name is registered at the time

the Complaint was filed, as required by Paragraph 3(b)(vii) of the Rules;

and

(iii) According to the

information the Center had received from NSI, the domain name holder did not

submit in its Registration Agreement to the jurisdiction of the courts at the

location of the principal office of the Registrar (NSI) for adjudication of

disputes concerning or arising from the use of the domain name. According to

Paragraphs 1 and 3(b)(xiii) of the Rules, the Complainant must submit, with

respect to any challenges, to a decision in the administrative proceeding canceling

or transferring the domain name, to the jurisdiction of the courts at the location

of the domain name holder’s address.

An amended Complaint was

filed with the Center by email on May 3, 2001, and by hardcopy on May

4, 2001. The Center acknowledged receipt of the amended Complaint on May 3,

2001. An electronic version of the original Complaint was filed on May 4, 2001.

The Center forwarded the

Complaint and the amended Complaint to the Respondent with copies to ICANN and

to the Registrar by email, by fax and by post/courier on May 9, 2001. The

Center formally notified the Respondent that the Complaint satisfied the formal

requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the

"Policy"), the Rules and the Supplemental Rules for Uniform Domain

Name Dispute Resolution Policy (the "Supplemental Rules"); that payment

of the required sum had been made by the Complainant; and that an administrative

proceeding had been commenced against the Respondent. A deadline of May 28,

2001, was fixed for the Response.

On May 23, 2001, the Complainant

informed the Center that the letter it had sent to the Respondent on February

22, 2001 (Complainant’s Exhibit 7) had been returned to the Complainant with

the wording: "nicht abgeholt/non réclamé".

On May 28, 2001, the Respondent

informed the Center by email [sic]:

"Our response

will be sent within today. It will be sent so lately because we tried to arrange

with our lawyer an appointment with the President of the Fonadazione Arena di

Verona, Dr. Michela Sironi Mariotti, she is the Mayor of Verona, to find an

amicable solution. Because if we respone to the complain of the Fonadzione it

will become a scandal due to the fact that the Fondazione acted with bad faith.

The "facts" of the complain are not true they are partly whacking

big lies. We got the evidences and will send you by fax. Therefore there is

no need for an administrative addional panel. It seems that the Fondazione tried

to take our successful domain with lies on an illegal way. In Germany we would

say it seems to be a criminal act. There is also no need to take a lawyer.

We did a lot to prevent

the scandal.

We ask you to refuse the

complaint.

Our lawyer in Verona will

bring the responsible persons aof the Fondazione to the court and will start

legal actions against them. We are in Central Europe and not in the Third World.

In the very next days we

will held a press conference about the complaint of the fondazione.

The respone will be written

by Mr. Klose."

The Center acknowledged

receipt of the Respondent’s email on May 28, 2001.

The Respondent filed his

Response by fax on May 28, 2001. On May 29, 2001, the Center acknowledged that

it had received the Response, and requested the Respondent to submit a hardcopy

and an electronic version. The Response was filed by email on May 29, 2001,

and in hardcopy on June 5, 2001.

On May 29, 2001, the Respondent

submitted an additional exhibit to the Response, namely a German and Italian

version of a letter to the Complainant of May 10, 2001.

By email of June 3, 2001,

the Respondent informed the Center that [sic]:

"in addition

to ou response dated May 28th [2001] we could like to inform you

that in the letter of the Fondazione dated October 20th 1998 Prof.

Ferraro requested to put a link from our website www.arena-verona.com to his

website www.arena.it. We did so but Prof. Ferrara didn’t as we requested in

our letter dated October 30th 1998. Please check the webste www.arena-verona.com."

On June 5, 2001, the Center

acknowledged receipt of the Respondent’s supplemental filing. The Center noted

that the Rules and the Policy only provide for the submission of one pleading

by the Complainant and one by the Respondent. The Center stated that although

it accepts supplemental filings before the appointment of the Panel, the Parties

should be advised that the Panel has the sole discretion as to whether such

information will be considered in arriving at a decision.

The Complainant acknowledged

receipt of the Respondent’s last "filing" by fax and by email on June

7, 2001. The Complainant submitted that this supplemental filing does not comply

with the Rules and should be ignored. In case the Panel considers the Respondent’s

supplemental filing relevant, the Complainant submitted a supplement to the

Complaint.

On June 7, 2001, the Center

acknowledged receipt of the Complainant’s supplemental filing, but noted that

it is at the Panel’s sole discretion as to whether such information will be

considered. The Center also reminded the Complainant that any communication

from Complainant to the Center should be copied to Respondent.

On June 11, 2001, the Respondent

sent another email to the Center, stating [sic]:

"You will find

an article about the verdict of the highest Court "Bundesgerichtshof"

in English written by our lawyer, Mr. Ulrich Baumann, Ismaninger Strasse 98,

81675 München. Please click http://www.lawzone.co.uk/cgi-bin/item.cgi?id=47724&d=101&h=1

75&f=173&dateformat=%o%20%B%20%y

We have to inform

that the complaint of the Fondazione Arena di Verona and the blocking of the

domain www.arena-verona.com causes a damage of at least 100.000 Euro. Our lawyers

in Münich will start legal actions against the Fondazione at the court

in Munich if they not cancel the complaint within June 15th."

On June 12, 2001, the Center

acknowledged receipt of the Respondent’s second supplemental filing.

On June 12, 2001, the Respondent

replied to the Center by email that it guessed that Complainant’s supplemental

filing was not accepted because it was too late and that it was probably against

the Rules and the Policy because it was not sent to the Respondent.

The Center replied to the

Respondent by email dated June 12, 2001, that the Panel has the discretion whether

or not to accept supplemental filings from for each party. The Center also forwarded

the Complainant’s supplemental filing to the Respondent.

On June 12, 2001, the Center

notified the Parties that an Administrative Panel composed of a single member,

Dr. Kamen Troller, had been appointed and that the Panelist had duly submitted

a Statement of Acceptance and Declaration of Impartiality and Independence to

the Center. Absent exceptional circumstances, the Panelist was required to forward

its decision to the Center in accordance with Paragraph 15 of the Rules by June

25, 2001.

The Panel examined all

notifications of the Center, and the amended Complaint, and finds that they

comply with the formal requirements of the Rules and Supplemental Rules, and

that the Administrative Panel was properly constituted.

The Panel examined the

Response and finds that it was not submitted to the Center in hardcopy and in

electronic form within twenty (20) days of the date of commencement of the administrative

proceeding, as required by Paragraph 5(a) juncto 5(b) of the Rules. The

Panel also examined the Parties’ additional communications and filings, and

finds that they do not comply with Paragraphs 3 and 5 of the Rules. These deficiencies

are discussed in Section 6.

4. Factual Background

A. The Complainant

The Complainant, the Fondazione

Arena di Verona, established on March 22, 1999, is a private foundation with

registered seat in Verona, Italy. Before that date, the Complainant was a public

body, known under the name "Ente Lirico Arena di Verona".

The Complainant is active

in the promotion and development of art and musical performances, musical education

and the professional training of art managers. The Complainant organizes, amongst

other things, art performances at the Arena di Verona (Complainant’s Exhibit

3, Certificate issued by the Chamber of Commerce of Verona, Articles 1 and 3.1).

One of the main events at the Arena di Verona is the yearly Opera Festival (see

Complainant’s website at <arena.it>).

The Arena di Verona (the

"Arena") is a Roman amphitheater, and one of the greatest and most

prestigious archeological monuments in Europe. Today, the Arena di Verona is

used as a performance venue for theaters, ballets, concerts and operas.

The Complainant did not

submit evidence of any trademark registration containing the name "Arena

di Verona" or any similar name.

The Panel has searched

on the Internet and found that the Complainant operates websites at <arenadiverona.com>,

<arenadiverona.org>, <arenadiverona.net>, <arenadiverona.it>,

<arena-verona.org>, <arena-verona.net>, <arena-verona.it>

and <arena.it>, where it provides information regarding the history of

the foundation, ticket information, reservation modalities, instructions for

the public, the program, press release, links to tourist websites, etc. The

websites also allow online ticket booking for performances in the Arena.

B. The Respondent

The Respondent registered

the domain name <arena-verona.com> on September 21, 1999. The

domain name resolves to a website that contains tourist information regarding

the Arena, such as a map of the amphitheater, directions to the Arena, the season

program, admission prices, advance sales information, hotel information, etc.

The website also contains a link entitled "Legitimation of the Fondazione

Arena di Verona", which shows a letter of Complainant to the Respondent

dated October 20, 1998, with the following text:

"nel ringraziarLa

per la gentile disponibilità alla pubblicazione sulla rete Internet di

programmi di attività della Fondazione Arena di Verona, desidero confermare,

ancora una volta, che tale pubblicazione dovrà necessariamente essere

effettuata a titolo completamente gratuito.

Se Lei lo desidera,

potrà effettuare un link con il sito officiale dell’Arena di Verona www.arena.it.

(…)

Grazie ancora per la collaborazione

(…)."

Free translation:

"thanking you for

your kind disposability for the advertisement on the Internet of the program

of activities of the Foundation of Arena of Verona, I wish to confirm, once

again, that such advertisement needs to be totally free of charge.

If you wish so, you

can put a link with the official website of the Arena of Verona www.arena.it.

(…)

Thanks again for your collaboration

(…)."

The Respondent also operates

websites at <arena-verona.ch>, <arena-verona.de> and <arena-verona.at>.

5. Parties’ Contentions

A. The Complainant

The Complainant contends

that each of the three elements specified in Paragraph 4(a) of the Policy are

applicable to the disputed domain name. More precisely, the Complainant submits

that:

(1) The domain name

<arena-verona.com> is confusingly similar to the names "Fondazione

Arena di Verona" and "Arena di Verona", in which the Complainant

has prior rights and which are exclusively owned by the Complainant.

The Complainant refers

to Article 15.2 of Italian Law Decree No. 367 of June 29, 1996, that

states that "a private right foundation operating in the field of music

has the exclusive right to use its own name, the name and device of the theater

entrusted to the foundation, and the names of the theater performances; the

foundation can consent to the use of the above only with regard to activities

which comply with the purposes of the foundation" (free translation). The

Complainant alleges that the Law Decree No. 367 thus attests the existence of

prior and exclusive rights of the Complainant on the name "Arena di Verona",

anyhow combined.

Moreover, the Complainant

states that it (and, before 1999, the "Ente Lirico Arena di Verona")

has been using its name with regard to musical performances organized in the

theater since immemorial time. As evidence thereof, the Complainant submits

a serie of advertisements for the Summer Opera Seasons of the Arena, dating

from 1938 until 2000 (Complainant’s Exhibit 6).

The Complainant alleges

that the name "Arena di Verona" is well known, famous and notorious,

at least in Europe and in the USA, and is associated with the full range of

activities which take place in the Arena. The Complainant alleges that, according

to the general rules concerning well-known trade marks, the products or services

in connection with which the mark is used are not important, and that, as a

matter of fact, every product or service marked "Arena di Verona"

is considered to be linked to the Arena. Furthermore, the Complainant states

that Respondent’s website deals with tourism, art and leisure, i.e. the typical

fields of activity of the Complainant.

The Complainant also states

that the "Fondazione Arena di Verona" was established on March 22,

1999, i.e. before the registration of the disputed domain name.

As to confusing similarity

between the domain name and the Complainant’s rights, the Complainant states

that the similarity between the term "arena-verona" and the terms

"Fondazione Arena di Verona" and "Arena di Verona", which

are exclusively owned by the Complainant, is self-evident and cannot be argued.

(2) The Respondent has

no rights or legitimate interests in the domain name, because the term "arena-verona"

has nothing to do with (i) the intellectual property rights of the Respondent;

(ii) the registered seat of the Respondent; and (iii) any fair of authorized

use of the term by Respondent.

With respect to (i) above,

the Complainant alleges that it is not aware of any intellectual property rights

(trademarks, trade names, etc.) owned by the Respondent relative to the words

"Arena" and "Verona". With respect to (ii) above, the

Complainant states that the Respondent’s registered seat is in Munich, Germany,

and that the Respondent does not have any branch in Verona. With respect to

(iii) above, the Complainant submits that it has never authorized anyone to

use its name as a domain name, nor to sell tickets or reservations on

the Internet, and that the Respondent makes no non-commercial, fair, or authorized

use of the contested term.

(3) The Complainant

contends that the domain name was registered and is being used in bad faith,

because:

- "The disputed

domain name were registered for the purpose of interfering with the business

of the Complainant;

- The disputed domain

name were 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 trade mark and trade name as to the source;

- The Complainant tried

to get in touch with the Respondent in order to solve the matter amicably. The

Respondent declared, informally, to be prepared to assign his domain name registrations

to the Foundation. Unfortunately, such promises were not followed by concrete

steps, and the Complainant was consequently forced to send a warning letter

to the Respondent. A warning letter dated February 22, 2001 (Annex 7) was not

accepted by the Respondent […];

- The website appears

to be an institutional site of the theatre, and no mention is made of the fact

that the site has nothing to do with the Foundation and with the official web

site of the Arena (arena.it). Moreover, "arenaverona.com" provides

links to other web sites (i.e. arenaverona.at/.ch/.de) which are specifically

directed to Austria, Switzerland and Germany: thus, not only the contents of

the disputed web site have to be considered, but also the important function

of "forwarding" made by the disputed web site. The Complainant stresses

that a relevant part of the audience of the yearly Summer Opera Season comes

from those three countries, and that the unlawful activity of the Respondent

is causing serious damages to Fondazione Arena."

The Complainant requests

the Administrative Panel to issue a decision that the domain name be transferred

to the Complainant.

B. The Respondent

The Respondent denies that

each of the three elements of Paragraph 4(a) of the Policy are fulfilled:

(1) With respect to

element (i) of Paragraph 4(a) of the Policy, the Respondent submits that the

Internet domain name system and domain name registrations operate fundamentally

on a first-come, first-served system of registration, and that once a registrant

has obtained a domain name, no other person may register or claim the name.

The Respondent also states

that the Complainant has agreed to co-operate with the Respondent and confirmed

knowledge of all the domains under "arena-verona". To support this

statement, Respondent submits two (2) documents. Respondent’s Exhibit 1 contains

a letter of the Complainant of October 20, 1998 (see also the link on the Respondent

website). Respondent’s Exhibit 2 contains Respondent’s October 30, 1998, reply

to the Complainant, in which it confirms that his websites <arena-verona.de>,

<arena-verona.at>, <arena-verona.ch> and <arena-verona.com>

will not cause any costs for the Complainant; that he finances the websites

either through the sale of tickets by third parties or directly; and that he

is willing to put links on his websites, if the Complainant puts at least a

link on its website <arena.it> to the Respondent’s website <arena-verona.de>.

The Respondent also alleges

that he has never used the trademark "Fondazione Arena di Verona",

but only "arena verona", and that the latter is not a trademark.

(2) With respect to

the second element of Paragraph 4(a) of the Policy, the Respondent submits that

with its letter of October 20, 1998, the Complainant has confirmed that the

Respondent could use the domain name, and that this has been confirmed by Respondent’s

letter of October 30, 1998 (Respondent’s Exhibits 1 and 2).

The Respondent also contends

that "Arena Verona" is not a trademark. The Respondent states that

according to a decision of the German Supreme Court of May 17, 1998, "everybody

can use general names". Therefore, the Respondent claims to be allowed

to use the name "Arena Verona".

(3) With respect to

the last element of Paragraph 4(a) of the Policy, the Respondent denies the

Complainant’s contentions about bad faith. In order to demonstrate good faith,

the Respondent argues that the Complainant requested the Respondent to put a

link from his website to the Complainant’s website (see supplemental Response

filed on June 3, 2001); that the Complainant offered closer Internet co-operation

on January 12, 2001; and that it sent contracts to the Respondent for the sale

of tickets.

The Respondent contends

that since 1998, it sold about 40,000 tickets on the Internet for the Opera

Festival from its domains <arena-verona.com>, .de, .at, and .ch, and that

the Complainant made a large profit. The Respondent alleges that in the very

last years, he spent about DEM 100,000 for the marketing of these domain names.

6. Discussion and Findings

A. Procedural matters

(a) The Response

According to Paragraph

5(a) juncto 5(b) of the Rules, the Respondent shall submit a response

to the Provider in hardcopy and in electronic form within twenty (20) days of

the date of commencement of the proceeding. Paragraph 5(d) of the Rules states,

however, that the Provider may, in exceptional cases and at the request of the

Respondent, extend the period of time for the filing of the response.

In the case at hand, the

Respondent informed the Center on May 28, 2001, that the Response would be sent

late because the Parties tried to find an amicable solution. The Response was

only filed in due time by fax. It was submitted by email one day after the expiration

of the twenty-day period, and in hardcopy seven days after the expiration of

said period. The Center accepted the submission of the Response by fax. Taken

into account these circumstances, the Panel accepts the Response and considers

that it complies with the formal requirements of the Rules.

(b) The Parties’ communications

and additional filings

The Panel finds that the

Respondent’s communications to the Center of May 28, 2001, and June 12, 2001,

and the Complainant’s communication of June 7, 2001, were not in compliance

with the formal requirements of Paragraph 2(h) of the Rules and Paragraph 3

of the Supplemental Rules, because they were not copied to the other Party.

The Panel also notes that

the Rules and the Policy provide for the submission of only one pleading by

the Complainant and one by the Respondent.

However, the Rules give

the Panel considerable discretion. The Panel notes that it has an obligation

to ensure that each Party is given a fair opportunity to present its case (Rule

10(b)), and that it has the discretion to determine the admissibility of the

evidence (Rule 10(c)).

Therefore, the Panel has

decided to accept all additional submissions of both parties.

(c) The language of

the documents

The Respondent’s Exhibits

1-5 and 7-9 are in German and Italian, without English translations. The Complainant

submitted that "such enclosures should not be considered, being clear that

the language of the proceedings is English" (Supplement to the Complaint,

p.1).

The Complainant’s Exhibits

3-6 are written in Italian and are not accompanied by an English translation.

There is no rule that obliges

the Parties to submit their documents in the language of the administrative

proceeding (i.e., the language of the Registration Agreement – see Paragraph

11(a) of the Rules). According to Paragraph 11(b) of the Rules, the Panel may

order that any documents submitted in languages other than the language of the

administrative proceeding be accompanied by a translation in whole or in part

into the language of the administrative proceeding. In the case at hand, the

Parties corresponded with each other in Italian and German before beginning

this proceeding. Taken into account that the Parties seem to be able to understand

the documents submitted in Italian and German, and that the Panel is itself

fluent in both languages, the Panel finds it unnecessary to order a translation.

B. Substantive matters

Pursuant to Paragraph 4(a)

of the Policy, the Complainant must prove that each of the following

three elements are present:

(i) the Respondent’s

domain name is identical or confusingly similar to a trademark or service mark

in which the Complainant has rights; and

(ii) the Respondent

has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name

has been registered and is being used in bad faith.

(a) Identical or confusingly

similar to a trademark

The Complainant has no

registered trademark in the name "Arena di Verona". The Complainant,

however, argues that it has exclusive rights in the name "Fondazione Arena

di Verona" and "Arena di Verona" under Italian Law Decree No.

367 of June 29, 1996, which grants to private foundations operating

in the field of music the exclusive rights to use their own name, the name of

the theater entrusted to the foundation, and the names of the theater performances

(Complainant’s Exhibit 4, Articles 1, 2 and 15.2). The Complainant also relies

on its rights in the name "Arena di Verona", because the name is well-known

in Europe and in the USA and is associated with the full range of activities

which take place in the Arena, and because the Complainant has used that name

since 1938 for musical performances organized in the Arena.

The Panel is mindful that

Italian law confers special rights to the use of a place name to foundations

operating in the music field. The Panel is also aware that the Complainant has

used the name "Arena di Verona" ("Arena of Verona") since

1938. A lawyer operating in a common law jurisdiction might find these factors

sufficient to award the Complainant certain trademark rights. The Panel need

not, however, take a position on this issue in light of its decisions in sections

(b) and (c) below.

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.

With respect to the allegation

of confusing similarity, the only differences between the name "Arena di

Verona" and the Respondent’s domain name are: (i) the domain name does

not contain the word "di" and has instead a hyphen between the two

terms, and (ii) the domain name has the designation ".com" at the end.

Such differences are minor and do nothing to distinguish the name from the domain

name. (Footnote 1)

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.

(b) Rights or legitimate

interests

Paragraph 4(c) of the Policy

defines the circumstances required for the Respondent to demonstrate "rights

to and a legitimate interest in the domain name". The Respondent is only

required to demonstrate any one of the following circumstances (in particular

and without limitation) to prove its rights to or legitimate interest in the

domain name:

(i) before any notice

to you of the dispute, your use of, or demonstrable preparations to use, the

domain name or a name corresponding to the domain name in connection with a

bona fide offering of goods or services; or

(ii) you (as an individual,

business, or other organization) have been commonly known by the domain name,

even if you have acquired no trademark or service mark rights; or

(iii) you are making

a legitimate non-commercial or fair use of the domain name, without intent for

commercial gain to misleadingly divert consumers or to tarnish the trademark

or service mark at issue.

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.

(c) Bad faith

Paragraph 4(a)(iii) of

the Policy requires the Complainant to prove use in bad faith as well as registration

in bad faith.

Paragraph 4(b) of the Policy

sets forth a non-exclusive list of circumstances which shall be evidence that

the registration and use made by Respondent of a domain name is in bad faith:

(i) circumstances

indicating that you have registered or you have acquired the domain name primarily

for the purpose of selling, renting, or otherwise transferring the domain

name registration to the complainant who is the owner of the trademark or

service mark or to a competitor of that complainant, for valuable consideration

in excess of your documented out-of-pocket costs directly related to the domain

name; or

(ii) you have registered

the domain name in order to prevent the owner of the trademark or service

mark from reflecting the mark in a corresponding domain name, provided that

you have engaged in a pattern of such conduct; or

(iii) you

have registered the domain name primarily for the purpose of disrupting the

business of a competitor; or

(iv) by using the domain

name, you have intentionally attempted to attract, for commercial gain, Internet

users to your website or other on-line location, by creating a likelihood of

confusion with the complainant’s mark as to the source, sponsorship, affiliation,

or endorsement of your website or location or of a product or service on your

website or location.

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 <arena-verona.com>,

.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 <arena-verona.com>

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 <arena-verona.com> 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 <arenadiverona.com>, <arenadiverona.org>,

<arenadiverona.net>, <arenadiverona.it>, <arena-verona.org>,

<arena-verona.net>, <arena-verona.it> and <arena.it>. Taken

into account that the Complainant owns at least eight (8) domain names incorporating

its name, Respondent’s registration of <arena-verona.com> 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.

7. Decision

The Panel decides that:

1) the disputed domain

name is confusingly similar to the name "Arena di Verona", but that

the Panel do not need to determine whether the Complainant has established rights

in a trademark or service mark;

2) the Respondent has

some legitimate interest in respect of the domain name; and

3) the domain name has

not been registered and is not being used in bad faith by the Respondent.

Pursuant to Paragraphs

4(i) of the Policy and 15 of the Rules, the Panel orders that the registration

of the domain name be left as it stands.

Kamen Troller

Sole Panelist

Dated: June

25, 2001

Footnotes:

1. See: Gateway,

Inc. v. James Cadieux (WIPO Case No. D2000-0198);

The Journal Newspapers, Inc. v. DomainForSale 980dollars (FA95395) and Konkinklijke

Philips Electronics NV v. Ramazan Goktas (WIPO

Case No. D2000-1638). (back to text)

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• FONDAZIONE ARENA DI VERONA v. RCK Productions Medien GmbH, — D2009-1421 · arena-verona.com · Complaint denied · 31 May 2010
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Other cases for this domain

• FONDAZIONE ARENA DI VERONA v. RCK Productions Medien GmbH, — D2009-1421 · arena-verona.com · Complaint denied · 31 May 2010