Rusconi Editore S.p.A. v. Bestinfo

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Rusconi

Editore S.P.A. v Bestinfo

Case No.

D 2001-0656

1. The Parties

The Complainant is Rusconi

Editore S.p.A., Viale Sarca 235, 20126 Milano, Italy.

The Respondent is Bestinfo.,

Att: David Webb, 2183 W. Buckingham Rd, #324, Richardson, Tx 75081, U.S.A.

2. The Domain Name and

Registrar

The Domain Name is <vitalityonline.com>.

The Registrar is Tucows.com,

Inc.

3. Procedural History

The Complaint was received

by WIPO by email on May 16, 2001 and in hard copy form on May 18, 2001. WIPO

has verified that the Complaint satisfies the formal requirements of the Policy,

the Rules and the Supplemental Rules and that payment was properly made. The

Administrative Panel ("the Panel") is satisfied that this is the case.

The Complaint was properly

notified in accordance with the Rules, paragraph 2(a). The Registrar has confirmed

that <vitalityonline.com> ("the Domain Name") was registered

through Tucows.com, Inc and that Bestinfo ("the Respondent") is the

current registrant. The Registrar has further confirmed that the Policy is applicable

to the Domain Name.

On May 23, 2001 WIPO notified

the Respondent of the Complaint in the usual manner and informed the Respondent

inter alia that the last day for sending its Response to the Complainant and

to WIPO was June 11, 2001. On June 11, 2001 a Response was received by WIPO

by email and on June 13, 2001 in hardcopy form.

The Panel was properly

constituted. The undersigned Panelist submitted a Statement of Acceptance and

Declaration of Impartiality and Independence.

No further submissions

were received by WIPO or the Panel, as a consequence of which the date scheduled

for the issuance of the Panel’s Decision is July 9, 2001.

4. Factual Background

The Complainant is an Italian-based

magazine publisher. One of its magazines is named "Vitality".

The Complainant is the

registered proprietor of four trade mark registrations for the word VITALITY,

all of which are over ten years old. Two are Italian registrations, one is an

international registration covering France, Germany, Austria and Switzerland

and the fourth is another international trade mark registration covering Germany,

Bosnia Herzegovina, Bulgaria, the Russian Federation, Hungary, Romania and Yugoslavia.

The Respondent is a trading

name of David Webb, a 57 year old retired mechanical engineer living in Texas.

He registered the Domain Name in May 2000. As at the date of the commencement

of this administrative procedure, the Domain Name was not connected to any online

facility.

On November 23, 2000 a

lawyer representing the Complainant wrote to the Respondent drawing the Respondent’s

attention to the Complainant’s trade marks, observing that the registration

and utilisation of the Domain Name could amount to infringement of the Complainant’s

Italian intellectual property rights and seeking a "friendly" resolution

of the matter. No response was received, so a chaser was sent on January 22,

2001. No response having been received, the Complainant commenced this Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant contends

that the Complaint should succeed on the following grounds:-

- The Domain Name is

identical to the Complainant’s registered trade mark VITALITY. The Complainant

points to the worldwide fame of the Complainant’s Vitality magazine.

- The Respondent has

no rights or legitimate interests in respect of the Domain Name. The Complainant

points out that the Respondent has not used the Domain Name for any offering

of goods or services; the Respondent is not known as "Vitality".

- The Domain Name has

been registered in bad faith and used in bad faith. The Complainant relies upon

the Respondent’s failure to reply to the Complainant’s correspondence. The Complainant

also points to a Whois search demonstrating that the Respondent possesses 17

domain name registrations. According to the Complainant some are not being utilised

at all, whilst others are under construction. The Complainant infers that the

Respondent registered these Domain Names primarily for the purpose of selling

them to the proprietors of corresponding trade marks. In addition, the Panel

assumes, although this is not expressly stated in the Complaint, that the Complainant

is for this purpose relying upon the fame of the Complainant’s Vitality magazine

having spread as far as the Respondent in Texas.

B. Respondent

The Respondent argues

that the Complaint should fail. It relies upon the following:-

- Vitality is a common

English word. None of the Respondent’s registrations cover English speaking

countries.

- In the United States

there are a large number of people who have rights one way or another in the

name Vitality.

- The Complainant has

no website or URL address.

- There are two other

websites,<vitality.com> and <vitalitymagazine.com>, about which

the Complainant appears to have done nothing.

- As

the Complainant must know, the Respondent is not causing any confusion to the

Complainant’s business.

- The

Complainant has not proven notoriety of the name VITALITY.

- The Complainant is

simply seeking a website on the internet and has taken a liking to the Domain

Name. The Complainant is seeking to relieve the Respondent of the Domain Name

by exaggerating its case.

- The Respondent had

never heard of Vitality magazine before the Complaint.

- The Respondent is

proposing to use the name <vitalityonline.com> as a website offering nutritional

products for sale, but solely within the continent of the United States.

- The Complainant does

not do business in English speaking countries, so there will be no overlap between

the respective businesses of the parties.

- The Respondent, seeking

to establish good faith, produces a copy of a letter from Card Service International

purporting to show that he is contracted to use their internet credit card processing

software and to lease the same for $67 per month on a 36 month lease.

- The Respondent did

not acquire the Domain Name in bad faith and is not using it in bad faith. The

name has never been offered for sale and is not for sale.

- The delays in developing

the website stem partly from the fact that the Respondent does not have sufficient

money available to engage independent designers, which has meant that the Respondent

has had to learn for himself the various operating systems, which has taken

time and partly because the Respondent’s mother was ill in hospital from December

2000 until March 2001, when she died. The Respondent was her legal guardian

and spent the time caring for his mother until her death.

- The failure of the

Respondent to answer the Complainant’s lawyers’ letters was simply that he had

his mind on other things. He was engaged full time in looking after his mother.

He says that if he had been sent emails he could have responded immediately.

The substantive

part of the Response concludes as follows:-

"The Respondent would

ask that the Panel review the facts in this matter and find that the Complainant

has no right to the name <vitalityonline.com>. Complainant has failed

to prove that the name is similar confusing especially since all it’s business

is done in non English speaking countries and it’s revenue is basically derived

from advertising as do most magazines. Complainant has proven by Annex "C"

that he has not trademarked the name "Vitality" in any English speaking

country. Complainant has not proven that Respondent acquired the name or is

using the name in bad faith or has tried to sell the name. Complainant has not

offered any viable reasons why Respondent does have the right to use the name.

The respondent business is solely to be directed to the United States market

via an English only website and certainly will not offer a foreign language

website version. Respondent would also ask the Panel find the Complainant guilty

of "Reverse Domain Hijacking" especially since the Complainant has

no website and has filed a complaint primarily using facts that are not logical.

Complainant having failed to bring any action against <vitality.com> or

<vitalitymagazine.com> further supports "Reverse Domain Hijacking"

as conclusion in this Complaint."

6. Discussion and Findings

According to paragraph

4(a) of the Policy, the Complainant must prove that

(i) The Domain Name

is identical or confusingly similar to a trade mark or service mark in which

the Complainant has rights; and

(ii) The Respondent

has no rights or legitimate interest in respect of the Domain Name; and

(iii) The Domain Name

has been registered and is being used in bad faith.

If the Complaint fails,

the Panel has to have regard to paragraph 15(e) of the Rules and in particular

the following sentence namely: -

"If after considering

the submissions the Panel finds that the Complaint was brought in bad faith,

for example in an attempt at reverse domain name hijacking or was brought primarily

to harass the domain name holder, the Panel shall declare in its Decision that

the Complaint was brought in bad faith and constitutes and abuse of the Administrative

Proceeding."

Reverse Domain Name Hijacking

is defined in paragraph 1 of the Rules as meaning "using the Policy in

bad faith to attempt to deprive a registered domain name holder of a domain

name."

Identical or confusing

similarity

The Complainant has satisfied

the Panel that it is the proprietor of trade mark registrations for the word

VITALITY. The Domain Name comprises (a) the Complainant’s registered trade mark,

which is also the name of the Complainant’s magazine, (b) the generic term "online"

and (c) the generic domain suffix. The Panel finds that the Domain Name is a

particularly apt name for an online version of the Complainant’s magazine and

the Panel readily accepts that if someone were seeking to access an online version

of the Complainant’s magazine, they might well search by reference to the Domain

Name.

On that basis, the Panel

finds that the Domain Name is confusingly similar to a trade mark in which the

Complainant has rights.

Rights or legitimate interest

of the Respondent

The Domain Name is not

a name by which the Respondent is known. Nor is it a name under or by reference

to which the Respondent has been offering goods or services. The Respondent

claims to have plans to offer goods online through a website connected to the

Domain Name, but has produced no demonstrable evidence of those plans beyond

a neutral letter from Card Service International, "neutral" in the

sense that it makes no reference to any name under which the Respondent proposes

to trade.

Paragraph 4(c) of the Policy

sets out a non-exhaustive list of circumstances which if found by the Panel

to have been proved, will demonstrate a Respondent’s rights or legitimate interests

in respect of the Domain Name. The Panel finds none of those circumstances to

have been proved and has nothing before it to show how else the Respondent might

be said to have rights or legitimate interests in respect of the Domain Name.

Accordingly, the Panel

finds that the Respondent has no rights or legitimate interests in respect of

the Domain Name.

Bad Faith

The Policy is directed

to dealing with cybersquatters. For an allegation of bad faith registration

and use of a domain name to succeed, the Complainant has to show at the very

least that when the Respondent registered the Domain Name, the Respondent was

(or was likely to have been) aware of the existence of the Complainant or, more

particularly, the Complainant’s rights in respect of the trade mark in question.

Paragraph 4(b) of the Policy

comprises a non-exhaustive list of circumstances, which shall demonstrate bad

faith registration and use of a domain name. One thing that all those circumstances

have in common is that the Respondent had the Complainant or its trade mark

in mind at the relevant time.

The Respondent denies that

he was aware of the existence of the Complainant or its magazine at the time

the Complaint was lodged. The Panel knows of no reason why he might have been.

As the Respondent points out, the Complainant’s trade mark registrations are

restricted to non-English speaking countries in Europe and while the Complainant

broadly asserts a worldwide notoriety for the trade mark, no evidence of world

wide notoriety is provided. Specifically, the Complainant has produced no evidence

that its Vitality magazine is distributed or known in the United States.

The Panel accepts the Respondent’s

evidence that he was not aware of the Complainant or Vitality magazine when

he registered the Domain Name and accordingly finds that the Complainant has

failed to prove that the Domain Name was registered in bad faith and is being

used in bad faith.

Since the Complainant has

mentioned other Domain Name registrations in the name of the Respondent, the

Panel should mention that only one was recognised by the Panel, a domain name,

which is the name of a sports team. Certainly there was nothing about the list

from which the Panel could conclude that registration of the Domain Name was

part and parcel of a cybersquatting exercise.

Reverse Domain Name Hijacking

The Panel has found that

the Complaint fails, but given the Complainant’s trade mark rights, the similarity

of the Domain Name to the Complainant’s trade mark and the failure (albeit for

good reason) of the Respondent to respond to the Complainant’s letters, the

Panel does not believe that this complaint constitutes an abuse of the Policy.

The Panel rejects the allegation

of reverse domain name hijacking.

7. Decision

The Complaint is dismissed.

Tony Willoughby

Sole Panelist

Dated: July

5, 2001

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