On 21 January, 2004 the CRDD received via e-mail a complaint submitted by dr. Modiano & Associati S.p.A., in the person of the legal representative Dr. Guido Modiano, with registered office in Milano, Via Meravigli 16, and Geoffrey, Inc. with registered office in New Jersey (USA), in the person of the legal representative Mr. Michael L. Tumolo for the reassignment of the domain toysrus.it, presently assigned to Luca Casadei Management S.r.l.

The Secretariat of the CRDD verified the information communicated by the complainants. In particular it verified the whois of the Registration Authority, from which it appeared that the domain toysrus.it was registered on 4 February, 2003 by Luca Casadei Management S.r.l. and that as of 20 October, 2003 the RegistrationAuthority had affixed the wording “validity contested”.

On receipt of the documentation by mail, the Secretariat of the CRDD sent by registered mail with advise of receipt to Luca Casadei Management S.r.l. a copy both of the complaint and documentation, informing the company of its right to reply to the statements contained in the complaint by forwarding its replies within 25 days from receipt of the set of papers.
The latter, together with the documentation, was received by the respondent on 30 January, 2004.

After the term fixed by the Naming Rules for the replies of the respondent had elapsed, the CRDD on 27 February 2004 appointed the undersigned panelist prof. Avv. Alfredo Antonini who accepted the appointment on 1 March, 2004.

The complainants maintain: a) that Geoffrey is the owner world-wide of numerous marks among which: TOYSRUS.COM, TOYS “R” US, BABIES “R” US, “R” US and others; b) that the domain toysrus.it is identical to the mark TOYS “R” US registered by Geoffrey both in Italy and abroad; c) that Luca Casadei Management s.r.l., present assignee, has not made use of the domain name nor has “objectively prepared to make use” of the aforementioned domain; d) that the primary purpose for which Luca Casadei Management s.r.l. registered the domain is “to sell, assign in use or otherwise transfer the domain name to the complainant in exchange for a consideration, monetary o otherwise, higher than the reasonable costs sustained by the respondent for the registration and the maintenance of the domain”.

In support of its application the complainants submitted voluminous documentation, among which the list of the marks registered by Geoffrey, print-outs relative to various periods of the home page of the disputed domain, letters sent by the respondent company to the complainants.

They, therefore, request the transfer of the domain toysrus.it from Luca Casadei Management s.r.l. to dr. Modiano & Associati S.p,.A., authorized by Geoffrey Inc., owner of the mark Toysrus and voluntary intervening party, to register the domain under dispute in its own name.

Luca Casadei Management S.r.l. received the set of papers sent to it by the Secretariat of the CRDD, containing the complaint and all the documentation of 30 January, 2004, as shown by the date stamp of the post office on the advice of receipt.

Despite having been placed in a position to contradict the allegations of the complainants, the respondent forwarded nothing to the CRDD.

Article 16.6 of the Naming Rules requires, for the purposes of the transfer of the disputed domain name, verification of the existence of three circumstances: a) that the contested domain is identical or such as to lead to confusion compared with a mark on which he [“complainant” editor’s note] claims rights, or to his name or surname; b) that the present assignee (named “respondent”) has no right or title in relation to the disputed domain name; c) and lastly that the domain name was registered and is being used in bad faith.

a) identity and likely confusion of the name

From the allegations of the complainants it is possible to ascertain that Geoffrey, Inc. is owner of numerous marks, registered in practically all the world, among which TOYSRUS. The latter without doubt corresponding to the domain name toysus.it registered by the respondent. In accordance with the power of attorney conferred thereon, dr. Modiano & Associati S.p.A is authorized to use the aforementioned name for the registration of the identical domain name in dispute here.

The first requirement of Art. 16.6 of the Naming Rules is therefore demonstrated.

b) Non-existence of a right of the respondent on the disputed domain name.

Luca Casadei Management S.r.l. despite having being placed in a position to reply – as already verified by the Secretariat of the CRDD and by this panelist – did not forward any defense brief in support of their arguments.

Therefore the undersigned panelist must, ex officio and with the means available, and above all by means of the documentation enclosed by the complainants, verify the existence or otherwise of a right of Casadei on the disputed domain and, subsequently, its possible good faith in the registration of the domain name toysrus.it.

Against copious documentation submitted by Geoffrey to prove its ownership on the mark TOYSRUS, only the same documented right of the respondent on the same name could have demonstrated that the domain was legitimately registered by Luca Casadei Management S.r.l. Instead, the latter has inferred and documented nothing.

Nor can the panelist, from the company name of the respondent Luca Casadei Management S.r.l., find any right of the company itself on the name registered as domain, as it is completely different.

Nor is any element from which to deduce a valid title of the respondent apparent from the two letters sent by Luca Casadei Management S.r.l. to Modiano (and submitted by the latter), with which the first puts forward as a reason of legitimacy of the registration of the domain the fact that it, respondent, registered it first. But obviously, as already evidenced in previous decisions, the mere registration of the domain – that, if performed in violation of the rights of another, is per se an illegal act – cannot constitute an element constitutive of a right to the domain name itself.

Nor does it result that Luca Casadei Management S.r.l. is known by the disputed domain name. Using the Google search engine and going into the apposite area for the search of the word TOYSRUS, only a long list of sites registered by Geoffrey is obtained. The web pages corresponding to the addresses found with the search offer, in many languages, the goods and services offered by the company itself, identified by the marks registered by the same for the aforementioned commercial areas.

Vice versa, with regard to the domain toysrus.it., which is nothing other than the mark registered by Geoffrey plus the .it indicative of the cctld, there has been at least for 10 months the same page with the wording: “We have just registered our domain.  Come back and visit us soon.  We are waiting for you!”

In this regard the complainant has enclosed the print-out of the web page of the IP address that corresponds to the disputed domain on: 23 June, 2003, 6 August, 2003 and 24 November, 2003.  The undersigned panelist has verified that presently the web page is still the same.

From all this it must be deduced that Luca Casadei Management S.r.l. has no right on the name TOYSRUS and consequently on the domain toysrus.it.

Thus the existence of the second requirement of the Naming Rules is ascertained.

c) Bad faith of the respondent

The last circumstance to be verified  is that provided by the letter c) of Art. 16.6 of the Naming Rules, i.e. that the domain name was registered and is being used in bad faith.

In relation to this last point Art. 16.7 lists, not in an exhaustive but an illustrative manner, circumstances that, if demonstrated, are considered proof of the registration and the use of the domain in bad faith.  They are: a) circumstance that lead to the belief that the domain name was registered with the primary purpose of selling, assigning in use or otherwise transferring the domain name to the complainant (that is the owner of the rights on the mark or on his name) or to a competitor thereof, for a consideration, monetary or otherwise, that is higher than the reasonable costs sustained by the respondent for the registration and maintenance of the domain name; b) the circumstance that the domain was registered in order to prevent the owner of the identical mark from registering as his own such domain name, and it is used for activities in competition with that of the complainant; c) the circumstance that the domain name was registered by the respondent for the primary purpose of damaging the business of a competitor or usurping the name and surname of the complainant; d) the circumstance that, in the use of the domain name, it was intentionally used to attract, for the purpose of profiting therefrom, Internet users, by creating reasons of confusion with the mark of the complainant. 

Worthy of note, for the purpose of verifying or otherwise the existence of the bad faith of the respondent, are the letters sent by Casadei Management to Dott. Modiano Associati, agent of Geoffrey Inc., already taken into consideration in the previous motivation point.  The assignee of the domain name, after having asserted its rights on the disputed domain name declares therein willingness to assign the domain, for an amount that is quantified in Euro 4,500.00 plus VAT (cf. letter 1 December, 2003).

This request of Euro 4,500.00 plus VAT is considerably higher than the sum of a few tens of Euro necessary for the registration and maintenance of a domain that, it is recalled, has always been occupied solely by a “page in construction”.  Given that the domain name corresponds exactly to the Geoffrey mark, and this letter was sent in reply to that of the agent Dott. Modiano & Associati s.p.a.  that demanded the restitution, one of the circumstances must be considered as verified from which, according to the Naming Rules, bad faith can be deduced, i.e. that “the name was registered for the primary purpose of selling, assigning in use or otherwise transferring the domain name to the complainant (that is the owner of the rights on the mark or his name) or to a competitor thereof, for a consideration, monetary or otherwise, that is higher than the reasonable costs sustained by the respondent for the registration and maintenance of the domain name” (Art. 16.7).

Another element of bad faith can be found in the fact that the domain has never actually been used by the respondent, as proven by the fact that from the time of its registration up to the present date there has only been a “page in construction”.

This last circumstance amounts to the so-called “passive domain holding”, that constitutes per se autonomous element from which to deduce the bad faith in the registration and maintenance of the domain name (for guidelines now evident  both in national procedures – cf. decision 8.10.2001, panelist Fabrizio Bedarida, domain biotherm.it; decision 23.5.2003, panelist Raffaele Sperati, domain gofly.it – and international – cf. vetrotex.com, WIPO decision No. D2000-1396; telstra.org WIPO decision No. D2000-0003).

Therefore the third requirement of the Naming Rules is satisfied.

On the basis of what is set forth, inferred and proven in the procedure, and in view of the Naming Rules in force, the reassignment is ordered of the domain name toysrus.it to dr. Modiano & Associati S.p.A., in the person of the legal representative Dr. Guido Modiano, with registered office in Milano, Via Meravigli 16.

This decision shall be communicated to the Italian Registration Authority for the provisions the competence thereof.

Trieste, 15 March, 2004

Prof. Avv. Alfredo Antonini