BolognaFiere S.p.A. v. Bonopera Daniele

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BolognaFiere S.p.A. v. Bonopera Daniele

Case No. D2003-0295

1. The Parties

Complainant is BolognaFiere S.p.A., Bologna, Italy, represented by Dr. Modiano

& Associati S.p.A. of Italy.

Respondent is Daniele Bonopera, Riccione, Italy.

2. The Domain Name and Registrar

The disputed domain name is <bolognafiere.com> and is registered with

Network Solutions, Inc. (the Registrar).

3. Procedural History

A Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy

adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on

August 26, 1999 ("the Policy"), to the Rules for Uniform

Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999

("the Rules") and to the WIPO Supplemental Rules for Uniform Domain

Name Dispute Resolution Policy ("the Supplemental Rules") was submitted

electronically to the World Intellectual Property Organization Arbitration and

Mediation Center (the "Center") on April 16, 2003, and subsequently

in hard copy on April 17, 2003. On April 16, 2003, the Center

sent an Acknowledgment of Receipt of Complaint to Complainant.

On April 16, 2003, a request for Registrar Verification in connection with

this case was transmitted to Registrar. On the subsequent day Registrar replied

by e-mail confirming that Respondent is listed as the registrant and the language

of the Service Agreement is English and providing the contact details for the

administrative, billing and technical contact.

On April 22, 2003, the Center formally notified Respondent of the Complaint

and of the Commencement of Administrative Proceeding by the required means,

setting a deadline at May 12, 2003, by which Respondent could file

a Response to the Complaint.

Given that no Response was submitted within said deadline, the Center notified

Respondent’s default on May 14, 2003.

On May 20, 2003, the Center notified the parties that Ms. Anna Carabelli had

been appointed as the Panelist in this proceeding and the projected date for

decision was June 3, 2003, in the absence of any exceptional circumstances.

The Panelist has independently determined and agreed with the assessment of

the Center that the Complaint formally complies with the requirements of the

Policy, the Rules and the Supplemental Rules.

4. Factual Background

Complainant is a company based in Italy and having its main place of business

in Bologna. Complainant claims, and in the absence of any contradiction from

Respondent the Panelist accepts that Complainant is one of Europe’s leading

exhibition centres (hosting every year up to 30 specialist exhibitions and about

500 conferences over 23,000 exhibitors and 1,400,000 Italian and foreign visiting

professionals -see Annexes 3, 6 and 7) and that Complainant’s activity,

trade name and trademark are well known especially in Italy where they have

been extensively used by Complainant since 1985.

Complainant is the proprietor of various Italian, international and Community

trademark registrations for the name "BolognaFiere" (see Annexes

4 and 5.1, 5.2 and 5.3). The first filing of the Italian trademark dates back

to 1992 but, according to Complainant, its use goes back to 1985.

The above trademark registrations cover the following International classes:

class No. 35 including "organizations of exhibitions for commercial or

advertising purposes and fairs"; class No. 41 including "the organization

of ….. fairs for cultural, educational, sporting and entertainment purposes"

and class No. 42 covering "providing facilities for exhibitions, colloquiums

and fairs".

Complainant has also submitted a list of various domain names registered by

Complainant including the trademark "BolognaFiere"(see Annex

8), amongst which <bolognafiere.it> corresponds to Complainant’s official

website where it publishes information about its commercial activities.

From a Whois search carried out by Complainant (see Annex 13) the Domain

Name was registered by Respondent on December 23, 1999. The Complaint

was filed on April 14, 2003.

5. Parties’ Contentions

A. Complainant

Complainant contends that:

• the Domain Name is identical or confusingly similar to Complainant’s

trademarks "Bolognafiere";

• Respondent has no rights or legitimate interests in the Domain Name

since he has not been authorized or licensed by Complainant and he is not commonly

known by the Domain Name;

• Complainant’s trade name and trademarks are well known, especially in Italy;

• Respondent is resident in Riccione, which is close to Bologna where

Complainant is located, he is the director and legal representative of the company

Elettrica System S.N.C. dealing with "the design, the production and assembly

of stands, also for fairs and congress services of any kind and type" (see

Complaint, at 10) and this implies Respondent’s knowledge of the Italian fair

sector and especially of Bologna fairs;

• Respondent had therefore actual knowledge of Complainant’s trademark

when registering the Domain Name;

• Respondent has not used the Domain Name for a long time after registration,

until the end of March 2003. Since then a calendar of various exhibitions and

fairs has been appearing on the home page, and Internet users are redirected

to Respondent’s website <italiafiere.it> which displays information on

Italian fairs. Information given on Complainant’s exhibitions is not authorized,

nor correct or updated;

• Respondent’s use of the Domain Name misleads Internet users and creates

a likelihood of confusion with Complainant’s trademark and domain names;

• as soon as it became aware of the above, Complainant sent a cease and

desist letter which Respondent never replied to, and subsequent filed the Complaint.

Based on the above, Complainant requests the transfer of the Domain Name.

B. Respondent

Respondent has not submitted a Response.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panelist to decide the Complaint

on the basis of the statements and documents submitted 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:

(i) the domain name in issue is identical or confusingly similar to the complainant’s

trademark or service mark;

(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.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which

for the purposes of paragraph 4(a) (iii) shall be evidence of the registration

and use of a domain name in bad faith.

Paragraph 4(c) sets out in particular but without limitation three circumstances

which, if proved by the respondent, shall be evidence of the respondent’s rights

to or legitimate interests in the domain name for the purpose of Paragraph 4(a)(ii).

Where a respondent fails to respond, the Panelist is entitled to draw such

inferences as it considers appropriate (Rule 14(b)).

A. Identical or Confusingly Similar

The Domain Name is <bolognafiere.com>. As mentioned above, Complainant

is the owner of a number of trademark registrations for "BolognaFiere".

Apart from the generic ".com" domain suffix, the Domain Name exactly

corresponds to Complainant’s trademark. Therefore the Panelist finds that the

Domain Name is identical to Complainant’s trademarks pursuant to Paragraph 4(a)(i)

of the Policy.

B. Rights or Legitimate Interests

According to Paragraph 4(a)(ii) of the Policy, Complainant must prove that

Respondent has no rights or legitimate interests in the Domain Name.

In this regard, it has been consistently and repeatedly established by WIPO

panelists that "once a Complainant establishes a prima facie evidence showing

that none of the three circumstances establishing legitimate interests or rights

applies, the burden of production on this factor shifts to Respondent to rebut

the showing" (see among others, Ditting Maschinen AG v. I.C.T. Company,

WIPO Case No. D2003-0170 (April 30, 2003);

Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO

Case No. D2001-0784 (October 1, 2001)).

The Panelist finds that Complainant has made out a prima facie case under this

head. Respondent has not responded and failing any obvious reason for Respondent’s

having any rights or legitimate interest in the Domain Name, the Panelist finds

that Complainant has succeeded in establishing factor (ii) under Paragraph 4(a)of

the Policy.

C. Bad Faith

Under Paragraph 4(a)(iii) of the Policy, Complainant must prove that the Domain

Name was registered and is being used in bad faith by Respondent. The four criteria

set forth under Paragraph 4(b) are nonexclusive (see eBay Inc. v. Sunho Hong,

WIPO Case No. D2000-1633 (January 18, 2001);

The Channel Tunnel Group Ltd. v. John Powell, WIPO Case

No. D2000-0038 (March 17, 2000)); therefore, in addition to these

criteria, other factors alone or in combination can support a finding of bad

faith.

A well-established principle under WIPO case law (see for instance Six

Continents Hotels, Inc. v. Seweryn Nowak, WIPO

Case No. D2003-0022 (March 4, 2003); Nokia, Inc. v. B. B. de

Boer, WIPO Case No. D2000-1397 (December 21, 2000))

and under Sec. 2 of the ICANN Policy, is that when someone registers

a domain name, he represents and warrants to the registrar that, to his knowledge,

the registration of the domain name will not infringe the rights of any third

party. In the Panelist’s view it is highly probable that Respondent had Complainant’s

trademark in mind when registering the Domain Name. This is suggested by the

fact that Complainant’s trademark is well known, that Respondent resides in

Riccione, an Italian town very near to Bologna where the main place of business

of Complainant is located, and that Respondent is the director and legal representative

of a company dealing with the management and organization of fairs and exhibitions

(which is also Complainant’s core business see Complaint, page 10). Actual

knowledge of Complainant’s trademark is a factor supporting bad faith (see,

for instance, RRI Financial, Inc. v. Ray Chen, WIPO

Case No. D2001-1242 (December 11, 2001); Infospace, Inc. v.

Siavash Jimmy Behain, et al., WIPO Case

No. D2000-1631 (March 30, 2001); Expedia, Inc. v. European

Travel Network, WIPO Case No. D2000-0137

(April 18, 2000)).

According to Complainant the Domain Name has been kept inactive for a long

period of time (i.e. almost three years) and has not been used for Respondent’s

commercial activities. Since March 2003, the Domain Name is being used by Respondent

just to redirect Internet users to Respondent’s website <italiafiere.it>

whereby general information on Italian fairs and exhibitions are displayed (see

Annexes 11-14) .

In addition, the fact that Complainant’s entire trademark is used in the Domain

Name, makes it difficult to infer a legitimate use of the Domain Name by Respondent

(see eBay Inc. v. Sunho Hong, WIPO

Case No. D2000-1633 (January 18, 2001)). No plausible explanation

exists as to why Respondent selected the name "bolognafiere" as domain

name other than to mislead Internet users and create a likelihood of confusion

with Complainant and to prevent Complainant as holder of the trademark "BolognaFiere"

from reflecting the mark in a corresponding domain name.

Finally, as consistently established by WIPO case law, the circumstances that

Respondent’s registration is identical or confusingly similar to Complainant’s

trademarks, that Respondent failed to reply to Complainant’s cease and desist

letter and that Respondent failed to file a Response to the Complaint, can suggest

that the Domain Name was registered and is being used in bad faith (see

amongst othersDitting Maschinen AG v. I.C.T. Company, WIPO

Case No. D2003-0170 (April 30, 2003); Telstra Corporation Limited

v. Nuclear Marshmallows, WIPO Case No.

D2000-0003 (February 18, 2000)).

In the light of the above, and in the absence of any Response, the Panelist

finds that Complainant has shown sufficient facts in order to support a finding

that the Domain Name was registered and is being used in bad faith according

to the Policy, Paragraph 4(a)(iii).

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy

and 15 of the Rules, the Panelist orders that the domain name <bolognafiere.com>

be transferred to Complainant.

Anna Carabelli

Sole Panelist

June 3, 2003

More cases by this complainant

• BolognaFiere S.p.A. v. Contact Privacy Inc. / Tang Lang Viaggi di Smac Viaggi / Sabrina Rossi / tanglangviaggi snc Ditta Individuale — D2016-1563 · cosmoprof-bologna.com, motorshowbologna.com · Transfer · 04 Oct 2016
• BolognaFiere S.p.A. — D2009-0825 · Terminated
• BolognaFiere S.p.A. — D2007-0485 · Terminated
• BolognaFiere S.p.A. — D2006-0967 · Terminated
• BolognaFiere S.p.A. — D2006-0966 · Terminated
• BolognaFiere S.p.A. — D2006-0806 · Terminated