WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mr. Gianluca Bagnara v. Francesco de Leo
Case No. D2008-0259
1. The Parties
The Complainant is Mr. Gianluca Bagnara, Via G. Romagnoli, Monte San Pietro, Italy, represented by Mr. Roberto Manno, Italy.
The Respondent is Francesco de Leo, Washington, DC United States of America, represented by Marco Q. Rossi & Associates, United States of America.
2. The Domain Name and Registrar
The disputed domain name <bagnara.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2008. On February 20, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On February 20, 2008, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 23, 2008. The Response was filed with the Center on March 19, 2008.
On March 27, 2008, the Complainant filed an unsolicited Supplemental Filing. On March 28, 2008, the Respondent filed an unsolicited Supplemental Filing.
The Center appointed Richard Hill as the sole panelist in this matter on March 31, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant operates in the fashion business and owns registered trademarks for B BAGNARA, a complex mark composed of a highly stylized letter B combined with the word BAGNARA.
Bagnara is the name of two cities in Italy, and also a last name used by many people.
5. Parties’ Contentions
The Complainant alleges that he has various trademarks for the string B BAGNARA and that the disputed domain name is identical with dominant verbal element of the Complainant’s registered trademarks BAGNARA, regularly used in commerce on a world-wide basis since 1985.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name because, as confirmed by searches conducted on the “www.webarchive.org” site relating to the years 2000 and 2002, and also from registrar’s WHOIS screenshots for the disputed domain name, that name was not used in connection with a bona fide offer of any goods and services. It was passively used to redirect the Internet traffic on the Respondent’s main website. It was only after the Complainant’s authorized representative’s letter of December 14, 2007 that the disputed domain name was activated with the intention to offer generic information about the Italian city of Bagnara Calabra.
Further, says the Complainant, with respect to the actual use of disputed domain name, it is important to note that i) such use was commenced after the Complainant’s request to obtain the disputed domain name on an amiable basis before any legal or administrative proceedings; ii) and therefore in the knowledge of the Complainant’s exclusive rights in the word “Bagnara”; iii) “www.webarchive.org” screenshots show evidence of extensive passive-holding of the disputed domain name; iv) such use is unfair. In fact, the Respondent pretends to give information about the Italian city of Bagnara Calabra, but there is more than one town, in Italy, using the verbal element of “Bagnara”. Therefore, if the Respondent’s main scope is to provide information about the city of “Bagnara Calabra”, he should be using the domain name <bagnaracalabra.com>, while actual use of the disputed domain name is to create confusion not only with the Complainant’s trademark, but also with respect to other Italian geographical identifiers.
The Complainant alleges that the disputed domain name was registered and used in bad faith because it was inactive from the date of registration until the Complainant’s formal request of November 2006. The archive site “www.webarchive.org” and Network Solutions’ WHOIS screenshots show that the Respondent was using the disputed domain name to redirect Internet traffic to other sites related with his professional activities, irrespective of any relation or link with a genuine use of “Bagnara” denomination.
Further, says the Complainant, the current use of the disputed domain name to display information about the city of Bagnara shows a very poor use of said domain name, even for informational purposes. And it directs users away from the official website of that city.
In its unsolicited Supplemental Filing, the Complainant notes that it is the Respondent’s submissions that the Complainant’s rights would be limited to the whole verbal elements of the registered national and international trademarks, i.e. B BAGNARA. Such arguments have to be dismissed. UDRP rules, as confirmed by a large number of UDRP decisions, clearly state that such disputes are applicable in cases where a disputed domain name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights.
According to the Complainant, the Respondent’s affirmation that “Bagnara” is a non-distinctive term is false and arbitrary: said term is the dominant and distinctive element of the Complainant’s complex trademark, where the stylized letter “B” is a fancy figurative element used in conjunction with the “bagnara” word. This is consistent with a long established praxis in the luxury and apparel market, where family names are used as trademarks (for example, Armani, Valentino, etc.).
The Complainant maintains that the information provided by the Wayback Machine web archive is accurate. [For the reasons given below, the Panel finds that this point is not relevant for the present dispute, thus it did not examine this part of the Supplemental Filing in any detail.]
According to the Complainant, the alleged event organized during the 2006 Italian parliamentary elections, where the Respondent participated as candidate in the North and Central America “district”, had nothing to do with “people from Bagnara”: it was just a “meeting with people from Calabria living in New York and New Jersey”, as from webpage’s title. This is symptomatic of the Respondent’s arbitrary use for personal purposes of a domain name in which he does not have any right or legitimate interest. This is far from a bona fide offering of goods and services, and is also a clear pattern of bad faith.
According to the Complainant, he has exclusive trademark rights to the word BAGNARA and he therefore also has exclusive rights to use the disputed domain name.
The Respondent alleges that the Complainant does not have a trademark for BAGNARA standing alone. The alleged registered trademark owned by the Complainant is B BAGNARA – a trademark that incorporates the non-distinctive term Bagnara. If the Complainant has rights to the disputed domain name, then it is conceivable that the owner of a similar trademark (e.g. “X BAGNARA”) could claim the same right one day. The trademark is not exclusive to any word contained within the trademarked phrase. As stated by the Complainant, Bagnara is the name of two towns in Italy. One is located in the Italian region of Romagna and the other in the region of Calabria. Bagnara Calabra is commonly referred to as Bagnara.
The Respondent states that the Complainant has been using the domain name <b-bagnara.it> since it was registered in March 2003. This domain name more accurately reflects the alleged trademark rights on B BAGNARA. If the Complainant had rights on the name BAGNARA alone, they could try to get <bagnara.it>, which today redirects to the website at “www.viagaribaldi12.com”. Since the Complainant suggested that the Respondent should purchase the <bagnaracalabra.com> domain name, and use that for promoting the city of Bagnara, the Respondent encourages the Complainant to purchase <bbagnara.com> and <b-bagnara.com>, which to date are available – and more closely correspond to the alleged trademark.
According to the Respondent, Bagnara is his city of origin in Calabria, Italy. As a tribute to his origins, he decided to develop a website to promote the beauties of the town. The domain name was purchased by the Respondent on November 20, 1999. Soon after, the Respondent established a website providing content on the subject of the city of Bagnara. The results from the Internet archive are not accurate. Over the years there have been behind the scenes website development efforts, temporary website redirections, and web server upgrades and configuration changes. In particular, during the 2006 Italian parliamentary elections, website traffic was redirected to the Respondent’s personal website to highlight an event organized by people from Bagnara living abroad; event which took place in Fort Lee, New Jersey where hundreds of people from Bagnara participated.
The Respondent states that he is a professional web application developer who maintains a large number of websites and domain names for present and future use by himself and his clients. In the year 2003, the Complainant contacted the Respondent inquiring about the possibility to purchase the domain name from the Respondent. Since the domain name provided informational content for the city of Bagnara and the Respondent had no interest in selling the domain name, the request was denied. But, as an act of courtesy and free of charge, the Respondent created a domain entry from <b.bagnara.com> to the Complainant’s website.
In his unsolicited Supplemental Filing, the Respondent provides information that, according to him, shows that the information contained in the Wayback Machine web archive may be inaccurate with respect to the disputed domain name. [For the reasons given below, the Panel finds that this point is not relevant for the present dispute, thus it did not examine this Supplemental Filing in any detail.]
6. Discussion and Findings
As a preliminary matter, the Panel decides to accept, in accordance with Rule 10, the unsolicited Additional Submissions by the parties. See Gallerina v. Mark Wilmhurst, WIPO Case No. D2000-0730 (August 16, 2000).
A. Identical or Confusingly Similar
The Complainant has submitted evidence to the effect that it owns the trademark B BAGNARA. It can be seen from the trademark certificates submitted by the Complainant that the letter B in front of BAGNARA is a significant component of the mark. Indeed, the trademark is for a highly stylized rendition of the letter B combined with the word BAGNARA.
As the Respondent correctly notes, Bagnara is the name of two cities in Italy. Thus, the string BAGNARA cannot, in and of itself, be considered to be distinctive.
It is well established under the Policy that confusing similarity arises when the distinctive portion of a trademark is combined with a common word. See Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja Kil, WIPO Case No. D2000-1409 (December 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word...nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Homer TLC v. Kevin Daste, NAF Case No. FA0604000675788 (May 24, 2006) (“the addition of a generic term to Complainant’s mark, especially one that bears an obvious relation to Complainant’s business, does not adequately distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i)”).
The present case does not fall into that category. In the present case, the non-distinctive portion of the trademark (the name of the city Bagnara) is being used in the disputed domain name. The Respondent has asserted that he has exclusive rights to the word “bagnara” and thus exclusive rights to domain names using that word. The Panel cannot accept this assertion. The word “bagnara” is the name of two cities in Italy and is also a last name used by many people. It does not inherently identify the Complainant.
The present case is similar in many respects to Packet Clearing House, Inc. v. Howard Lee, WIPO Case No. D2005-0828 (September 28, 2005). In that case, the question was whether the domain name <pch.org> was confusingly similar to the mark PCH PACKET CLEARING HOUSE. As the Panel stated in that case:
The threshold issue in this matter is the nature of the Complainant’s trademark.
At first glance, Complainant appears to be claiming rights in the letters PCH per se. If the Complainant were able to establish rights in the acronym itself, then the identity between the trademark and the Domain Name would naturally follow. However, an examination of the Complainant’s trademark leads to a different conclusion. The only evidence put forward by the Complainant is to the effect that it owns the trademark registered under No. 2686054 in the USPTO.
The registration, as Respondent compellingly points out, is a design mark, which comprises a graphically stylized version of the letters PCH along with the words PACKET CLEARING HOUSE:
In the panel’s view, the trademark needs to be viewed in its entirety, and must be understood as comprising a mark in which the elements PCH and PACKET CLEARING HOUSE are read together. The mark as a whole makes it clear that PCH serves as an acronym standing for “Packet Clearing House”. In a real sense, the words qualify the acronym, and serve as an important context in evaluating whether an impugned domain name can be viewed as identical or confusingly similar. Plainly put the Complainant’s registered mark is PCH PACKET CLEARING HOUSE not PCH.
As the Complainant has not offered any evidence of common law use of PCH alone, the Panel concludes that its trademark rights, for purposes of this decision, are restricted to the trademark as registered.
The Panel accepts the Respondent’s evidence that the use of PCH as a trademark or part of a trademark is relatively common, among a variety of third party users. No evidence has been put forward by Complainant to support a finding that the letters PCH are distinctive of its business.
In the absence of any persuasive evidence to the contrary, the Panel concludes that the trademark PCH PACKET CLEARING HOUSE is so different from the Respondent’s Domain Name that they cannot be regarded as being confusingly similar. Accordingly, the Panel finds that the Complainant has failed to discharge the burden of proof that the Domain Name <pch.org> is identical or confusingly similar to the trademark PCH PACKET CLEARING HOUSE.
The Panel disagrees with the Complainant’s assertion to the effect that the word “bagnara” is the dominant and distinctive element of the Complainant’s complex trademark.
And it cannot be said that the disputed domain name is identical or confusingly similar to the distinctive part of the Complainant’s mark, namely the highly stylized letter “B” that is combined with the word “bagnara”.
Accordingly, the Panel finds that the Complainant has failed to satisfy its burden of proving that the disputed domain name is identical or confusingly similar to its mark.
B. Rights or Legitimate Interests
For the reasons given above, it is not necessary for the Panel to address this element of the Policy.
C. Registered and Used in Bad Faith
For the reasons given above, it is not necessary for the Panel to address this element of the Policy.
That notwithstanding, the Panel notes that the Respondent has provided evidence showing actual use of the disputed domain name for various purposes, all unrelated to the Complainant’s business. The Respondent makes much of the relatively long period during which the disputed domain name was apparently not used. But mere non-use of a domain name can be considered evidence of bad faith use only under restrictive circumstances, which were well articulated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000). Those circumstances are not met here. In particular, the Complainant has not argued (much less provided evidence to prove) that it is widely known under the appellation BAGNARA, the Respondent has provided evidence of subsequent legitimate use, the Respondent has not taken any steps to conceal his identity, and the Respondent has not provided false contact information.
Thus it is unlikely that, if the Panel had needed to analyze this element of the Policy, it would have concluded that the Complainant had met its burden of proving bad faith registration and use.
For all the foregoing reasons, the Complaint is denied.
Dated: April 14, 2008