10th Oct 2001

WIPO

WIPO Arbitration and Mediation Center

 ADMINISTRATIVE PANEL DECISION

Rusconi Editore S.p.A. v. FreeView Publishing Inc.

Case No. D2001-0875

 

  1. The Parties

The Complainant is Rusconi Editore S.p.A. of Viale Sarca 235 – 20126 Milan, Italy, represented by Avvocato Mariacristina Rapisardi, Studio Legale Rapisardi of Milan.

The Respondent is FreeView Publishing Inc. of 885 Dunsmuir Street – Suite 800 – Vancouver, Canada, represented by Ari Goldberger Esq., <ESQwire.com> Law Firm, Cherry Hill, New Jersey, United States of America.

 

  1. The Domain Name and Registrar

This dispute concerns the domain name <donna.com>.

The Registrar is The Name It Corporation dba AITdomains.com.

 

  1. Procedural History

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy (“the Policy”) adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”) on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, (“the Rules”) and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“the Supplemental Rules”) of the WIPO Arbitration and Mediation Center (“the Center”).

The Complaint was received by the Center by email on July 11, 2001, and in hardcopy on July 13, 2001. The Complaint was acknowledged on July 12, 2001. On July 13, 2001, registration details were sought from the Registrar. On July 18, 2001, the Registrar confirmed that the disputed domain name is registered in the name of the Respondent and that the Policy applies to the disputed domain name.

On July 19, 2001, the Center satisfied itself that the Complainant had complied with all formal requirements (including payment of the prescribed fee) and on July 20, 2001, formally dispatched a copy of the Complaint to the Respondent by post/courier (with enclosures) and by facsimile and email (both without attachments) together with a letter to notify the Respondent of the commencement of this administrative proceeding. The Center sent copies to the Complainant, the Registrar and ICANN.

In conformity with Rule 5(a), the last day specified by the Center for a Response was August 9, 2001. That day a Response was received by email. Its receipt was acknowledged on August 13, 2001.

On September 25, 2001, the Center notified the parties of the appointment of the undersigned to serve as panelists, each of them having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On that day, the Center transmitted the case file to the Panel and notified the parties of the projected decision date of October 10, 2001.

The language of the proceeding is English.

The Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules: payment was properly made: the Panel agrees with the Center’s assessment concerning the Complaint’s compliance with the formal requirements: the Center discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint: a Response was filed within time and the three-member administrative panel was properly constituted.

 

  1. Factual Background (Uncontested Facts)

The Complainant, an Italian-based company, publishes magazines including, since 1980, an international fashion magazine called “Donna”, distributed in Italy, Europe and elsewhere in the world. ‘Donna’ magazine is dedicated to the female universe, covering events, customs, beauty and appearance, cinema, fashion and travel. It has been heavily publicised in Italy.

The Complaint is based on the following trademark registrations for the word DONNA:

Italian registration 325097 registered in 1980, and international trademark registration 461753 issued in 1981, both for goods and services in classes 16, 35 and 42: and

US registration 1,221,618 and Canadian registration 272,575, both issued in 1982, for goods in class 16.

The US Principal Register in relation to mark 1,221, 618 notes “The Italian word “Donna” is translated in English as “lady”, used as a title of honour”.

The Respondent is a web site designer and developer that has “incubated” several Internet web sites, including <MarketMap.com>, <WorldofSoccer.com> and <Mailbank.com> (now <Netidentity.com>). In December 2000, it became the registrant of the disputed domain name, having acquired it from the previous registrant, Mr. Marcel Stenzel of Santa Cruz, California, USA.

Mr. Stenzel had registered the disputed domain name (on May 4, 2000, it appears), believing the word DONNA (which he knew to mean “woman” in Italian) was the perfect name for a web site for and about women. He approached the Respondent in the (Northern) summer of 2000, for assistance in developing the <donna.com> web site and the negotiations led to the transfer of the disputed domain name to the Respondent, in exchange for a share of the income from the Respondent’s development and operation of the site.

The Complainant wrote to Mr. Stenzel on November 22, 2000, asserting its rights in the trademark DONNA: claiming the registration and use of the disputed domain name could contravene Italian industrial property laws and seeking a response by December 12, 2000, with a view to an amicable settlement. At that time the site corresponding to the disputed domain name was under construction.

The transfer of the disputed domain name to the Respondent took place on December 12, 2000, and next day Mr. Stenzel informed the Complainant that he was “no longer associated” with the disputed domain name.

Mr. Stenzel informed the President and CEO of the Respondent, Mr. Jerry Sumpton, some time in December 2000, of the Complainant’s letter of November 22, 2000.

The Respondent has not yet developed the web site as planned. Presently, there is a web mail interface at the site.

 

  1. Parties’ Contentions
  2. Complainant

Identical or Confusingly Similar Domain Name

The DONNA trademark has acquired renown and notoriety, both in Italy and abroad.

The disputed domain name is identical to the registered trademarks of the Complainant.

Legitimacy

The Respondent does not appear to be owner of trademarks formed by the word “donna”. It has not been commonly known by the disputed domain name.

The word ‘donna’, which in Italian indicates a female individual of the human race, has no meaning in English.

Even if the disputed domain name refers to the proper noun Donna (which does exist in English) it would not be possible to find any legally relevant link between the disputed domain name and the Respondent.

The Complainant challenged the disputed domain name in its letter of November 22, 2000, to the then registrant, Mr. Stenzel, the web site being then under construction. Mr. Stenzel replied on December 13, 2000, that he was no longer the owner. The change in ownership took place the previous day. Thus, the current owner acquired the disputed domain name from somebody who did not have the right or entitlement to transfer it validly.

Bad faith

From the popular nature of the magazine published and distributed by the Complainant it may be concluded that the Respondent, at the time of its registration, was aware of infringing the rights of the Complainant and of interfering with the trademarks DONNA.

This is also demonstrated by the lack of meaning of the word ‘donna’ in the Respondent’s language.

Moreover, since the Respondent acquired the domain name from a private individual and not from an accredited registrar it should have diligently ensured that the person who was offering it was entitled to transfer it legitimately: a circumstance that the Respondent did not ensure or decided to ignore.

The site corresponding to the disputed domain name is not really used. It apparently consists of a web mail server, or rather an address at which it is possible to obtain a personalised email address. In reality, leaving the home page of said site and in the absence of a previously registered and authorised email address and password (ignoring those who must have done so) it is impossible to carry out any operation.

One cannot but assume that the user, typing in the domain name <donna.com> looking for the site relative to the magazine published by the Complainant, confronted with the home page just described and without any other information, will be fooled into thinking that the site thus discovered is in some way linked to the well-known magazine: which clearly confuses some clients and illegitimately exploits the renown of somebody else’s trade mark.

Such a circumstance, together with the transfer of the domain name immediately after the challenge against the first registrant, can only be indications of bad faith on the part of the Respondent in the registration and the use of the disputed domain name.

The fact that the site corresponding to the disputed domain name is not currently used to offer goods or services to the public does not guarantee that this will not happen in the future, which would represent a worsening of the situation of interference with the Complainant’s trade marks, an interference consisting already in the mere registration of the disputed domain name.

  1. Respondent

There is absolutely no basis to entitle Complainant to the disputed domain name.

The Complainant has no enforceable rights under the UDRP to its trademark for DONNA because “donna” is a common, generic word meaning woman in Italian, and the Complainant uses its mark in a descriptive sense for its magazine dedicated to women.

The Respondent has rights and a legitimate interest to the disputed domain name because <donna.com> incorporates only the common generic word “donna,” which means woman in Italian, and this common word is not exclusively associated with the Complainant. Donna also happens to be very commonly used as a woman’s name. Moreover, prior to the initiation of this dispute, the Respondent has intended to develop the disputed domain name into a web site for and about women.

The Respondent did not register, and has not used, the disputed domain name in bad faith. To prove bad faith registration and use of a common word domain name, the Complainant must prove either that the disputed domain name was registered specifically to sell to the Complainant, or that its value derives exclusively from the fame of the Complainant’s mark. There is no evidence to support either basis for bad faith registration and use. The disputed domain name incorporates the extremely common word DONNA. Under the Policy, anyone is entitled to register a common word domain name. The Complainant does not have exclusive use or rights to this common word and name which is incorporated in over 100 active U.S. trademark registrations and applications: over 34 Canadian active trademark registrations and applications: over 100 business names in the United States alone: and appears in over 2.8 million third party Internet web pages which are not related to the Complainant.

The Complainant simply has not proffered a scintilla of evidence that the disputed domain name was acquired primarily for the purpose of selling, renting or transferring it to the Complainant: to prevent the Complainant from reflecting its trademark in a domain name, together with a pattern of such conduct: or to disrupt the Complainant’s business or attract customer’s seeking to purchase its products.

Under these circumstances, this Panel should follow the numerous ICANN decisions that have recognized the rights of registrants over those sought to be asserted by bullies who try to monopolize the use of a common word.

The Respondent intends to undertake full-scale development of the <donna.com> site, following a favorable resolution of this dispute.

Neither Mr. Stenzel nor the Respondent registered or acquired the disputed domain name with the intent to sell it to the Complainant, to disrupt its business, to prevent it from registering its trademark, or to confuse consumers. At the time he registered the disputed domain name, Mr. Stenzel was unaware of the Complainant or its magazine called DONNA. Until informed by Mr. Stenzel of the Complainant’s letter of November 22, 2000, the Respondent was unaware of the Complainant or its magazine called DONNA.

 

  1. Discussion and Findings

The Panel is required by Rule 15(a) to decide a 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.

To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights: and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Identity or Confusing Similarity

It has been decided in many cases under the Policy that “essential” or “virtual” identity is sufficient for the purposes of the Policy [1].

The disputed domain name is clearly virtually identical to the Complainant’s registered trademark DONNA.

The Complainant has established this element.

Illegitimacy

As the Complainant rightly concedes, “donna” is a common generic word, meaning woman in Italian. It is also commonly used as a woman’s name in English. Despite having registered trademarks for that word in particular classes, the Complainant does not have exclusive rights to this common word. Accordingly, it is irrelevant that the Complainant has not authorized the Respondent to use its trademark nor to register the disputed domain name and it is irrelevant that the name of the Respondent is not and does not include any part of the disputed domain name.

The Respondent has rights and a legitimate interest in the disputed domain name by virtue of:

∙ the commonly descriptive character of the word “donna”:

∙ the lack of any evidence that the Respondent was aware of the Complainant or its magazine prior to being informed by Mr. Stenzel in December 2000, of the Complainant’s letter of November 22, 2000, by which time the parties had been in negotiation for some months over the terms of their commercial arrangement;

∙ the lack of any evidence that Mr. Stenzel was aware of the Complainant or its magazine prior to his receipt of the Complainant’s letter of November 22, 2000; and

∙ Mr. Stenzel’s own entitlement to register “donna” as a domain name when he did because of the word’s commonly descriptive character [2].

“Where the domain name and trademark in question are generic—and in particular where they comprise no more than a single, short, common term—the rights/interests inquiry is more likely to favor the domain name owner.” [3]

The Complainant has not established that the Respondent has no right to or interest in the disputed domain name.

Bad Faith Registration and Use

There is no evidence that the Respondent registered the disputed domain name with intent to sell it to Complainant, to disrupt its business, to prevent it from registering its trademark or to confuse consumers. The Respondent, whose business includes the development of web sites, acquired a domain name comprising a common word that has a meaning appropriate for use as a site for and about women, as part of a commercial income-sharing arrangement, negotiated over a period beginning some months before the Complainant’s letter of November 22, 2000, to develop and operate such a site.

This had been the very reason for which the disputed domain name had been registered by Mr. Stenzel. Neither of them is shown to have been aware of the Complainant or its magazine prior to the letter of November 22, 2000. Even if the Respondent had been informed by Mr. Stenzel of that letter before the transfer to the Respondent of the disputed domain name, that transfer was made in furtherance of the commercial agreement and not out of any intent to infringe upon the Complainant’s rights.

Mr. Stenzel was entitled to transfer the disputed domain name to the Respondent at that time, since no formal proceeding under the Policy had commenced. There is no evidence of bad faith at all.

The Complainant has not established that the disputed domain name was registered and is being used in bad faith.

 

  1. Decision

Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Complaint is dismissed.

 

 

Alan L. Limbury
Presiding Panelist

Anna Carabelli 
Panelist

Milton Mueller 
Panelist

Dated: October 10, 2001

 

Footnotes:

  1. SeeThe Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co., Inc, (WIPO Case No. D2000-0113) and Nokia Corporation v. Nokiagirls.com(WIPO Case No. D2000-0102).
  2. Energy Source Inc. v. Your Energy Source, (NAF Case 96364):Ultrafem, Inc. v. Warren R. Royal, (NAF Case 97682).
  3. Shirmax Retail Ltd. v. CES Marketing, Inc., (eResolution Case AF-0104).