Versione in Inglese
C.r.d.d.
Domain Name Dispute Resolution Center
Original decision in Italian

Domain name re-assignment procedure
oroblu.it

Complainant: CPS Industria Calze s.p.a. (Dr. Guido Modiano)
Respondent: Executive of Bernabei Giancarlo
Panel (single-member): Prof. Alfredo Antonini

Course of the proceeding

With complaint sent to the CRDD by e-mail on 19 September 2002 CPS International Industria Calze s.p.a (henceforth CPS), with registered office in Via Piubega 5/c, 46040 Ceresara (Mantova) in the person of Mr. Enzo Bertoni, President of the Board of Directors, represented and defended by delegation at the foot of the complaint by Dr. Guido Modiano of Dr. Modiano & Associati S.p.A. of Milano, via Meravigli 16, brought a re-assignment procedure according to Art. 16 of the naming regulations in force to obtain compulsory transfer in its favour of the domain name OROBLU.IT, registered by Executive of Bernabei Giancarlo, currently in Piazza Cairoli 53, 00049 Velletri (RM)

The same day the secretary of the CRDD advised the Naming Authority and the Registration Authority by e-mail of the arrival of the complaint and checked the owner of the domain name on the data base whois of the Registration Authority, as well as the web page resulting at the www.oroblu.it address.

The  check permitted in particular to ascertain.

·    that the oroblu.it domain name was created on 11 April 2000 and assigned to Executive of Giancarlo Bernabei;

·    that the oroblu.it domain name had been subject to dispute, registered on the data base of the R.A. on 8 May, 2002;

·    that by entering the www.oroblu.it address no access was made to an active page, but to the index corresponding to the directory existing on the server.

On 19 September 2002 the original hardcopy of the complaint arrived with the relative documentation.  Once the regularity thereof had been checked, the next day the CRDD sent it by registered mail and e-mail to the respondent. The complaint was not sent by fax, as no number in the name of the respondent was on the database whois of the Registration Authority.  The advice of receipt of the registered mail indicated that the complaint was received by the respondent on 24 September 2002.

On 3 October 2002 the replies of Mr. Bernabei were sent by e-mail to the CRDD. On 8 October 2002 the documentation and hardcopy of the replies followed.  The reply of Mr. Bernabei was also sent by the same to the public list of the Naming Authority, with “invitation to express themselves during the course of the dispute” addressed to the subscribers to the list.

 Once the regularity of the replies had been checked, the CRDD forwarded them to the complainant. At the same time, the CRDD appointed the undersigned panelist, who, on 9 October 2002 accepted the commission.

On 11 October 2002, by e-mail sent to the CRDD and to the list of the NA, Mr. Bernabei made a “Petition to the Panelist, for a more complete evaluation of the situation, to take into consideration  what can be found already existing on the web which reiterates the equivalence, in the normal perception of the public, between WATER and its definition of OROBLU (small list on oroblu.it under the heading Links), moreover, as the decision on PRIMACASA.IT (http://www.infodomini. itdominiit58.htm) confirms the combination of two words of common use render the registration of the mark revisable  in terms of novelty, or at least as a weak mark; lastly various Firms use the word oroblu in their trade name”.

The same day the secretary of the CRDD invited the complainant to formalise, if considered appropriate, their petition, the regulations not providing the possibility of the filing of further defense documents subsequent to the replies and appointment of the panelist, if not with the specific authorisation of the panelist himself on petition of the interested party. Also in this case Mr. Bernabei made public the correspondence by sending it to the NA list.

In the meantime, from a further check it resulted that what was shown at the address www.oroblu.it had been changed, by means of the insertion of a web site in which there appeared to be ten pages accessible through the main frame. A more careful examination of the site showed that, of these pages, eight had simply the wording “in construction”, one was the home page and the tenth a collection of links to other sites containing the word oroblu.

The respondent having repeated the informal request of integration of the replies made thereby, the undersigned panelist, considering that this petition, though formulating elements that could be subject matter of ex officio acquisition by the panel, could be interpreted as an integration request of the replies already filed, provided with order of 14 October 2002, granting the period until 19 October 2002 to the respondent for the filing and communication to the complainant of what was requested.

The order specified that the integration had “to arrive by the above date by e-mail to the electronic postal address svp@crdd.it and contextually sent by the sender again by e-mail to the attention of the other party” and that the arrival date of the e-mail to the CRDD would serve as proof that the deadline had been respected.

Also this order and the relative correspondence was sent by Mr. Bernabei on the list of the NA, bringing about the reaction of the President, Claudio Allocchio, who with e-mail of 15 October 2002 requested the respondent to cease such conduct.

On 19 October 2002 the respondent sent the CRDD his integrations to the replies. Moreover the relative e-mail was not sent contextually to the complainant; which the respondent arranged to do only on 21 October 2002.

Allegations of the complainant

The complainant company declares and documents that it is the owner of the oroblù marks registered in Italy and in another 60 foreign countries for international classes 3, 18, 25 which the domain name oroblu.it is identical.

It infers therefore that the identity of the domain name with the registered mark of the complainant is an element of confusion and damage per se, and as such falls within the provisions of art. 16.6a of the naming regulations.

With regard to the element referred to in art. 16.6.b of the naming regulations, the complainant excludes that Mr. Bernabei can have a right or legitimate interest on the name oroblu, if for nothing other than because  the registration of the mark grants exclusive right to its user.

Lastly, in relation to bad faith, the complainant highlights the renown of the mark, distributed in Italy alone by more than 3,000 commercial enterprises, its origin (1987), the considerable costs (for several billion lire) faced during the latter years for television advertising of the goods distinguished with this mark; a fact that, in the complainant’s opinion, made it inconceivable that Mr. Bernabei was unaware of its existence.

The complainant then adds, again on the point of bad faith, that Mr. Bernabei has registered approximately 360 domain names, the majority of which clearly relative to name and marks on which he cannot claim any right; and that the domain name under dispute has been kept inactive for over two years.

Allegations of the respondent

On his part the respondent in his replies infers that the word oroblu is a common expression to identify water, especially in contexts dealing with the scarcity thereof.

With regard to the bad faith claimed by the complainant, he infers that he has “never frequented ladies’ underwear shops” and therefore to have been unaware, at the time of registration of the domain name of the “existence of a factory in the sector that had taken that name”.

Regarding the lack of use of the site stated by the adverse party, the respondent states that the site “last year was visible, only subsequently a re-styling still in progress was considered”, and that in any event the domain name will be used for electronic postal services.  The objective of the site is “that of the collection all the synergies, information on the use, search for water, co-ordination of the associations in order to be able to contribute towards providing third world countries instruments for the supply of oroblu”.

With the integrations to the replies the respondent put a series of considerations and elements to the panelist, moreover all inferable as a matter of course by the panel.

The respondent concludes for rejection of the complaint.

Reasons for the decision

Preliminarily, the “integrations to the reply” sent by the respondent must be declared inadmissible as they were late. These integrations, which according to the order had to be sent “via e-mail to the electronic postal address svp@crdd.it and contextually sent by the sender again by e-mail for attention of the other party” within the term of 19 October 2002, were in fact sent to the complainant only on 21 October 2002.

Given that according to art. 14, para. 1 of the re-assignment procedure, the dates established by the panel are final, the “integrations to the replies” of the respondent cannot be taken into consideration. Nor is there any exceptional case that could be invoked in order to overcome the provision of this rule.

This having been said, one can turn to examine whether the three points required  by the re-assignment proceeding exist to bring about the transfer of the disputed domain name.

a) Whether the disputed domain name is identical or such as to lead to confusion compared with a mark on which he claims rights, or to ones name and surname;

There is no doubt that the domain name oroblu.it is identical and in any event such as to lead to confusion compared with the oroblù mark registered by the complainant.  Moreover, such identity is not even disputed by the respondent.

The requirement referred to in art. 16.6 of the naming regulations is therefore considered fully satisfied.

b) Whether the present assignee has the right or title in relation to the disputed domain name;

The complainant having demonstrated its right on the disputed domain name, it is the responsibility of the  respondent to prove his competitive right on the same name, or the existence of one of the circumstances from which the naming regulations stems the presumption juris et de jure of the existence of a title to the domain name in favour of the respondent.    

Mr. Bernabei centres his defense on this point stating that the word oroblu is a common expression to identify water.  Even if we grant for the sake of argument that this is so (which is doubtful), and granting that this could have some influence on the right to the mark of the complainant (which is also doubtful), this would not imply however that Mr. Bernabei can in turn claim rights on the name oroblu.

It is true, within certain limits, that the law permits actions to certain parties in order to have nullity or lapsing of  the mark declared, and that the lack of distinctive capacity could in some cases lead to such a declaration of nullity; but where such an action has not been victoriously carried out by whosoever contests validity, the party who has registered a mark has the right to its exclusive use.

Verification of nullity or lapsing is the responsibility solely of the judicial authority; i.e. it lies outside the powers assigned to the panelist within the sphere of these procedures to declare the lapsing or nullity of the mark invoked by the complainant.

Once the complainant has documented the regular registration of the mark corresponding to the domain name, it is not up to the panelist to check the validity thereof, but from that registration the panelist can only infer the existence of an exclusive right on the mark in favour of its owner.

The reference of the respondent to the order of the Court of Bergamo of 5 May 2001 is therefore completely uncalled for relative to the domain name primacasa.it, well known to the undersigned panelist.  The examination on the merit performed by the magistrate of the court of Bergamo regarding the characteristic ineffectiveness of the “primacasa” mark is in fact precluded a priori in this venue.

To assert such an exception (always granted that it was based on the merit) Mr. Bernabei should have applied to the judicial authorities, thus making the present procedure lapse, under art. 16.3, last paragraph of the naming regulations.

Therefore, the statement of Mr. Bernabei that oroblu has become a word of common use, also if demonstrated, would not prove per se the existence of a right to the name oroblu by the respondent; existence that, it should be recalled, must exist before the registration of the domain name, and in any event can in no way stem from the registration itself (cf. domain decision “guidasposi.it”, http://www.crdd.it/decisioni/guidasposi.htm).

It being excluded therefore that Mr. Bernabei can claim a pre-existent right to the use of oroblu in competition with that of the complainant, it should be evaluated, on the basis of the results on the records and from what is inferable on internet, if one or more of the three circumstances can be considered demonstrated, should one of these result the respondent is considered as having title to the domain name, and therefore maintenance thereof.

With regard to the first (i.e. that the respondent, before having had notice of the dispute, in good faith used or was preparing objectively to use the domain name or a name corresponding thereto to offer goods and services to the public), this was not proven at all.

While the complainant has documented that in April and June 2002 there was nothing on the address http://www.oroblu.it, the respondent generically stated that “last year the site was visible, only subsequently for a change of server a re-styling still in progress was considered” without  moreover even indicating exactly the dates in which it was visible, and even less demonstrating what was on line on the site. Nor were “the goods or services” indicated for the offer of which to the public the site had been predisposed.

The same statement according to which subsequently nothing was visible on the site as a result of a re-styling still in progress is completely improbable.  A re-styling presumes the existence of a previous site on which to operate, of which moreover there is no trace either in the records or on internet. Univocal and concordant elements demonstrate instead that there never was such a site, but that the site presently positioned at the address http://www.oroblu.it was placed on line and constructed after the commencement of this procedure.  Evident proof thereof is the home page, of which the version existing at the beginning of October 2002 is enclosed by the respondent as doc. 5 of the replies has the same “frame” and the same images as those at present, but results still in construction.  If there had actually been a re-styling, the old version would have been left on line since the new one was not ready.

Moreover, that no site existed is shown precisely by the absolute inconsistency of what was put on line during this procedure. Apart from the 8 pages “in construction” (with no content), the other two are completely without novelty, on the contrary they are the result of the work of others. The home page is composed of photos and excerpts of articles copied from here and there. The main part is an article copied from the site of the Rai – Radio television italiana (http:/www.rai.it/RAInet/news/RNw/pub/articolo/raiRNewsArticolo/0,7605,10846^scienze^^,00.html, Site of RaiNews.net) without even quoting the source or the author. The page is so perfectly copied that even the colours, photos, its position and characters are the same. Then there is an excerpt of an article of Alessandro Cerroni (copied from the site of the Coordinamento di iniziative popolari di solidarietà internazionale – http:/www.cipsi.it/contrattoacqua/documenti/articolo1.htm). Copied from other sites are also the images (the wording “emergenza” and the first image with the wall and the wording “water is life” are copied from the site of AMREF Italia, http://www.amref.it/emergenza/acquaGM.htm; the image of a coloured boy with a bucket of water is taken from http://web.tiscal.it/lacimiceonline/anno1numero2maggiogiugno2000/Animali%20e%20ambiente%20articolo%207.htm). The same is true for the only other page not in construction, the page with the links. It is completely evident that it is merely the transposition of the results of an inquiry on a research survey carried out on the word “oroblu”.

The claim that a site of this kind can “collect all the synergies” and can be an instrument for “co-ordinating the associations to contribute to providing countries of the third world with instruments for the supply of “oro blu” (as claimed by Mr. Bernabei) appears radically without grounds and almost an offence for the people and the associations actually engaged in such noble aims.

With regard to the second point (i.e. that the respondent is known, personally, as an association or commercial body with the name corresponding to the registered domain name, also if he has not registered the relative mark), also is not at all the case.  The surname Bernabei and “Executive”, his firm, have nothing to do with oroblu.

With regard lastly to the third point (i.e. that the respondent is making a legitimate non commercial use of the domain name or a commercial use of the same without the intent of diverting the clientele of the complainant or violating the registered mark thereof), it has already been seen that the domain name has remained completely unused since the start of the procedure, and only after the beginning of this proceeding the respondent quickly placed on line a simulacrum of a site by copying the work of others from here and there. But this is completely useless, since the period to which reference is made to ascertain the legitimate use of the domain name is that prior to the start of the procedure. Otherwise in fact, the same procedures would have no reason to exist, as whosoever had a domain name disputed could avoid reassignment simply by reproducing a web page as soon as the complaint was received.

It is considered therefore that the absence of any right to the oroblu name or legitimate interest in maintaining the domain name oroblu.it by the respondent has been demonstrated.

c) Whether the domain name was registered and is being used in bad faith

The complainant has produced a report of the database whois of the Registration Authority, from which it results than in the single ccTLD.it the respondent has registered over 350 domain names. These domain names include among others a well-furnished series of names of cities in Lazio followed by “online” (albanonline.it, ciampino-online.it, anzio-online.it, grottaferrataonline.it, roccadipapaonline.it, roccaprioraonline.it, velletrionline.it, etc.) names of people (rosalba.it, katiuscia.it, tania.it, benito.it, filiberto.it, etc.) names connected with religious subjects (chiesavaldese.it, evangelici.it, testimonigeova.it, etc.). These domain names are associated by the fact that they were registered in the year 2000 and are today all inaccessible.

The number of domain names registered, the fact that they are held by Mr. Bernabei without any use being made of them (but on the contrary are inaccessible), that Mr. Bernabei for a large part of them does not appear to have any prior right to their use, that some of them correspond to registered names under other TLD by legitimate right holders (cf. chiesavaldese.net, Italian site of the Waldensian Church; evangelici.net, portal of the Italian Evangelists; cesaroni.net, site of Cesaroni Tecnology  Inc.) leads to the consideration that the registration of so many domain names was made for holding purposes, no indication having been furnished by the respondent regarding a possible plan, commercial or otherwise, for which so many domain names have been registered.

This is considered an indication of bad faith in the registration and maintaining of the domain name. As in fact it has recently been repeated “what results as an indication of bad faith is not the identity of the registered domain names with famous marks, but is the intent of holding that can be inferred from the large quantity of registered names, completely unrelated to the activity of the registrant, whether they correspond or are also only similar to famous marks, or famous names or also  to their mispronunciation” (decision astispumante.it, on http:/www.crdd.it/decisioni/astispumante.it).

What should be added to this, as seen, is that the domain has remained unused for more than two years, i.e. from the registration until the present procedure. Which takes the form of a case of passive holding, that art. 16.7.c of the naming regulations considers a fact supporting bad faith in the registration and maintaining in bad faith of the domain name.

In this regard, no importance can be placed, in order to exclude bad faith of the respondent, on the inference according to which the complainant had demonstrated  “poor sensibility towards the potentiality of internet” having thought only in 2002 to register the domain name oroblu.it.   

Actually, the fact that the complainant (who for some time has used oroblu.com and oroblu.net) took steps only in 2002 to contest the illegitimate registration of the disputed domain name does not imply that there has been any renunciation of the rights due thereto by virtue of almost twenty years registration of the mark, nor even less exclude the bad faith of whoever registered a domain name in violation of the patent rights, as he did not have right or title on the registered name, as in the case in question.

Lastly, in confirmation of the already demonstrated bad faith of the respondent,  the conduct of the respondent during the procedure can be cited.  Probably aware of the vacuity of his juridical arguments, the respondent has in fact transferred the present proceeding onto the list of the Naming Authority, explicitly asking advice and opinions, criticising the adverse party and putting on line correspondence relative to the procedure without the prior consent of the other interested parties; all in the probable attempt to arouse a movement of opinion favourable to him, with the probable aim of influencing the person who was entrusted with the task of the decision.

This conduct, among other things clearly contrary to the rules of etiquette (that even with the registration of domain names the respondent has undertaken to respect), does not appear correct.  He in fact has solicited  a kind of “popular” decision from members of the NA (to whose list he sent his messages), presenting the matter as a dispute between “social solidarity against pure capitalism”, without moreover permitting in that venue the adverse party a regular cross-debate. And frankly it is unfortunate that important arguments such as social solidarity have been exploited in such a way to hide, according to the law presently existing in our regulations, for that resulting in this procedure, what appears simply and banally an encroachment on the mark of another.

***

The complaint is therefore with grounds and as such is granted.

FOR THESE REASONS

Having regard to Arts. 4, 10 and 16 of the Italian naming regulations in force, the re-assignment is ordered of the domain name oroblu.it to CPS International Industria Calze s.p.a. with registered office in Via Piubega 5/c, 46040 Ceresara (Mantova).

This decision shall be communicated to the Italian Registration Authority for the obligations referred t in art. 14.5 letter a) of the naming regulations.

Trieste, 8 November 2002

Prof. Alfredo Antonini, Lawyer.

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