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Domain Name Dispute
Resolution Center
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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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