National Arbitration Forum
DECISION
ALPITOUR S.p.A. v. balata
inc
Claim Number: FA0701000888649
PARTIES
Complainant is ALPITOUR S.p.A. (“Complainant”), represented by Chiara
Sartori, of TORTONESE-PENE VIDARI-BIAGI Studio Legale,
Piazza Solferino n. 10, Torino 10121
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <viaggidea.com>, registered with Enom, Inc.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
Honorable Richard B. Wickersham, Judge (Ret.), as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 16, 2007; the
National Arbitration Forum received a hard copy of the Complaint on January 17, 2007.
On January 16, 2007, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <viaggidea.com> domain name is
registered with Enom, Inc. and that the
Respondent is the current registrant of the name. Enom, Inc.
has verified that Respondent is bound by the Enom,
Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 19, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of February 8, 2007, by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts, and
to postmaster@viaggidea.com by e-mail.
A timely Response was received and determined to be complete on February 8, 2007.
On February 15, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National Arbitration
Forum appointed Richard B. Wickersham, Judge, (Ret.), as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The following domain name is the subject of this Complaint: ICANN Rule 3(b)(vi). <viaggidea.com
>
The trademarks are used by Complainant in connection with tour
operating and hotel services provided by Complainant. The element viaggidea is also included in the
domain name <viaggidea.it>, legitimately owned and used by Complainant to
promote and advertise its services to customers and travel agents.
Alpitour, grounded in
With a consolidated turnover on October 31, 2006 of more than Euro 1.1
billion and over 4,000 employees, the Alpitour Group is the first integrated
tourism group on the Italian market, and one of the biggest European tourism
groups.
This Complaint is based on the following factual and legal
grounds: ICANN Rule 3(b)(ix).
(a) The disputed domain name is identical to the registered marks in which Complainant has rights.
(b) Respondent was given no right or license by Complainant to use its marks in the disputed domain name or apply for or use any domain name incorporating Complainant’s marks.
(c) The website maintained by Respondent in association with the disputed domain name is, at the time of filing of the Complaint, configured merely as a collection of links directing Internet users to a multitude of sites not associated with Complainant. The site does not contain a disclaimer of affiliation with Complainant.
Respondent’s use of the disputed domain name is likely to cause confusion
in the minds of Internet users by misleading them into believing that
Respondent is affiliated with Complainant.
The website maintained by Respondent in association with the disputed
domain name, contains several different links to other websites offering
products and services in the tourism field, provided by Complainant’s
competitors.
We believe that Respondent’s use of the disputed domain name to host a
website displaying a series of links that direct Internet users to competitors
of Complainant does not qualify as a bona
fide offering of goods or services.
Respondent’s registration of the infringing domain name (i) is intended
to disrupt Complainant’s business and travel promotion as conducted on
<viaggidea.it>, a website legitimately owned and used by Complainant, and
on other websites owned and used by Complainant such as <alpitour.com>,
<alpitourworld.it> and <alpitourworld.com>, (ii) creates user
confusion and (iii) is attempting to capture a portion of Complainant’s market
share, in order to divert such portion to Complainant’s competitors, whose
websites are linked to the website maintained by Respondent in association with
the disputed domain name.
Furthermore, Respondent’s domain name resolves to a website that
features links to various competing commercial websites. Respondent presumably derives commercial
benefit by receiving click-through fees for redirecting Internet users to other
commercial websites: this behavior carried out through a likelihood of
confusion with Complainant’s trademarks is in our opinion evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii) and ¶ 4(b)(iv).
The use of the disputed domain name in association with a website
offering services and product in the tourism field shows that Respondent must
have been well aware of the reputation of Complainant and its products and
services in the tourism field both in
These facts and conducts give clear proof that Respondent’s behavior,
and therefore registration, are an evidence of lack of a bona fide registration.
Complainant requests that the Panel issue a decision that the domain
name registration be transferred from Respondent to Complainant. ICANN Rule 3(b)(x); ICANN Policy 4(1).
No other legal proceedings have been commenced or terminated in
connection with or relating to the domain name that is the subject of this
Complaint. ICANN Rule 3(b)(xi).
Complainant will submit, with respect to any challenges to a decision
in the administrative proceeding canceling or transferring the domain name, to
the jurisdiction of the courts in the location of the Registrar, i.e., King
County District Court, WA, USA, as Mutual Jurisdiction. ICANN Rule 3(b)(xiii).
Complainant agrees that its claims and remedies concerning the
registration of the domain name, the dispute, or the dispute’s resolution shall
be solely against the domain name holder
and waives all such claims and remedies against (a) National Arbitration Forum
and panelists, except in the case of deliberate wrongdoing; (b) the registrar;
(c) the registry administrator; and, (d) the Internet Corporation for Assigned
Names and Numbers, as well as their directors, officers, employees and agents.
Complainant certifies that the information contained in this Complaint
is to the best of Complainant’s knowledge complete and accurate, that this
Complaint is not being presented for any improper purpose, such as to harass,
and that the assertions in this Complaint are warranted under these Rules and
under applicable law, as it now exists or as it may be extended by a good faith
and reasonable argument.
B. Respondent
We bought this domain name in good faith for business use not having your client in mind (but the generic combination of viaggi & idea).
The redirection to the domain park is temporary until the web site we are working on will be ready (which includes inter alia other Travel information).
The domain <viaggidea.com> was bought on (sic) 2004 and there are many other domain names with similar names such as:
<viaggiidea.com>
<ideaviaggi.ch>
<idea-viaggi.it>
<idea-viaggi.com>
Also, Complainant does not have a trademark on "Viaggidea" but on "Escape Viaggidea."
Therefore, we don't see any reason not to use the domain for our business purposes.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is
being used in bad faith.
FINDINGS
The
Panel notes that although Respondent’s electronic submission of its Response
was received in a timely manner, Respondent’s hard copy of the Response was
not. Therefore, the Panel has sole
discretion as to the amount of weight to give the Response. See Telstra
Corp. v. Chu, D2000-0423 (WIPO June 21,
2000) (finding that any weight to be given to the lateness of the response is
solely in the discretion of the panelist).
The Panel has decided to accept the Response. See Bd. of Governors of the Univ. of Alberta v. Katz, D2000-0378 (WIPO
June 22, 2000) (finding that a panel may consider a response which was one day
late, and received before a panelist was appointed and any consideration made);
see also Gaiam, Inc. v. Nielsen, FA 112469 (Nat. Arb. Forum July 2,
2002) (“In the interest of having claims decided on the merits and not by
default and because Complainant has not been prejudiced in the presentation of
its case by the late submission, Respondent’s opposition documents are accepted
as timely.”). But see S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (without an
adequate timely filed response, all reasonable inferences of fact in the
allegations of the complaint will be taken as true); but see also Bank of
Am. Corp. v. NW Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30,
2003) (refusing to accept Respondent’s deficient Response that was only
submitted in electronic form because it would not have affected the outcome had
the Panel considered it).
Identical and/or Confusingly
Similar Policy
¶ 4(a)(i).
Complainant contends that it has established rights in the ESCAPE VIAGGIDEA mark through the registration of the mark with the Office for Harmonization in the Internal Market under European Community Law (Reg. No. 1,075,563 issued October 4, 2000). The Panel finds that Complainant’s registration of the ESCAPE VIAGGIDEA mark with an international trademark authority is sufficient to establish rights for purposes of Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant asserts
that Respondent’s <viaggidea.com>
domain name is confusingly similar to Complainant’s mark. Respondent’s disputed domain name contains a
portion of Complainant’s ESCAPE VIAGGIDEA mark but omits the term
“escape.” The Panel finds that Respondent’s domain name retains
the predominant portions of Complainant’s mark and that the omission of a term
to an otherwise unchanged mark is insufficient to properly distinguish
Respondent’s domain name from the mark for purposes of Policy ¶ 4(a)(i). See Asprey & Garrard Ltd v. Canlan
Computing, D2000-1262 (WIPO Nov.
14, 2000) (finding that the domain name <asprey.com> is confusingly
similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks); see
also WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr.
20, 2001) (finding that the <westjets.com> domain name is confusingly
similar to the complainant’s mark, where the complainant holds the
Rights or Legitimate Interests
Policy ¶4(a)(ii).
The Panel is aware that once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent is using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees. The Panel finds that such diversionary use for commercial gain is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
Furthermore, Complainant contends that Respondent is neither commonly known by the disputed domain name nor licensed to register a domain name featuring Complainant’s mark. The Panel finds that Respondent is not commonly known by the disputed domain name for purposes of Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Registration and Use in Bad Faith
Policy ¶ 4(a)(iii).
Complainant contends that Respondent is using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees. The Panel finds that Respondent’s use of the disputed domain name for commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Furthermore, the Panel finds that Internet users will likely be confused as to Complainant’s sponsorship of and affiliation with the resulting website. As a result, the Panel determines that such likelihood of confusion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <viaggidea.com> domain name be TRANSFERRED
from Respondent to Complainant.
___________________________________________________
Honorable Richard B. Wickersham, Judge,
Panelist
Dated: February 27, 2007
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