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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fondazione Arena di Verona v. Rainer Klose (RCK Productions Medien GmbH)

Case No. D2001-0566

 

1. The Parties

The Complainant is Fondazione Arena di Verona, a private foundation having its registered seat at Piazza Brà 28, 37121 Verona, Italy.

The Respondent is Mr. Rainer Klose, managing director of RCK Productions Medien GmbH, with its registered address at Ismaninger Strasse 98, 81675 Munich, Germany.

 

2. The Domain Name and Registrar

The domain name at issue is <arena-verona.com> (the "domain name"). The Registrar is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, USA ("NSI").

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by hardcopy on April 19, 2001. The Center acknowledged that it had received the Complaint on April 23, 2001.

On April 23, 2001, the Center sent to the Registrar a request for verification of registration data. On April 24, 2001, the Registrar confirmed: 1) that <arena-verona.com> was registered with the Registrar; 2) that the current registrant of <arena-verona.com> is Mr. Rainer Klose, RCK Productions Medien GmbH, Ismaninger Strasse 98, 81675 Munich, Germany; 3) that the Administrative Contact is: Mr. Rainer Klose, Klose, RCK Productions Medien GmbH; that the Technical Contact is: Xlink, Hostmaster; and that the Billing Contact is: Strato InterNIC Billing, Strato Medien AG; 4) that the NSI Service Agreement Version 4.0 is in effect; and 5) that the domain name is currently active.

On April 25, 2001, the Center notified to the Complainant the following formal deficiencies with the Complaint:

(i) The Complaint was not submitted in electronic format as required by Paragraph 3(b) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules");

(ii) The Complaint did not identify the registrar with which the domain name is registered at the time the Complaint was filed, as required by Paragraph 3(b)(vii) of the Rules; and

(iii) According to the information the Center had received from NSI, the domain name holder did not submit in its Registration Agreement to the jurisdiction of the courts at the location of the principal office of the Registrar (NSI) for adjudication of disputes concerning or arising from the use of the domain name. According to Paragraphs 1 and 3(b)(xiii) of the Rules, the Complainant must 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 at the location of the domain name holder’s address.

An amended Complaint was filed with the Center by email on May 3, 2001, and by hardcopy on May 4, 2001. The Center acknowledged receipt of the amended Complaint on May 3, 2001. An electronic version of the original Complaint was filed on May 4, 2001.

The Center forwarded the Complaint and the amended Complaint to the Respondent with copies to ICANN and to the Registrar by email, by fax and by post/courier on May 9, 2001. The Center formally notified the Respondent that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"); that payment of the required sum had been made by the Complainant; and that an administrative proceeding had been commenced against the Respondent. A deadline of May 28, 2001, was fixed for the Response.

On May 23, 2001, the Complainant informed the Center that the letter it had sent to the Respondent on February 22, 2001 (Complainant’s Exhibit 7) had been returned to the Complainant with the wording: "nicht abgeholt/non réclamé".

On May 28, 2001, the Respondent informed the Center by email [sic]:

"Our response will be sent within today. It will be sent so lately because we tried to arrange with our lawyer an appointment with the President of the Fonadazione Arena di Verona, Dr. Michela Sironi Mariotti, she is the Mayor of Verona, to find an amicable solution. Because if we respone to the complain of the Fonadzione it will become a scandal due to the fact that the Fondazione acted with bad faith. The "facts" of the complain are not true they are partly whacking big lies. We got the evidences and will send you by fax. Therefore there is no need for an administrative addional panel. It seems that the Fondazione tried to take our successful domain with lies on an illegal way. In Germany we would say it seems to be a criminal act. There is also no need to take a lawyer.

We did a lot to prevent the scandal.

We ask you to refuse the complaint.

Our lawyer in Verona will bring the responsible persons aof the Fondazione to the court and will start legal actions against them. We are in Central Europe and not in the Third World.

In the very next days we will held a press conference about the complaint of the fondazione.

The respone will be written by Mr. Klose."

The Center acknowledged receipt of the Respondent’s email on May 28, 2001.

The Respondent filed his Response by fax on May 28, 2001. On May 29, 2001, the Center acknowledged that it had received the Response, and requested the Respondent to submit a hardcopy and an electronic version. The Response was filed by email on May 29, 2001, and in hardcopy on June 5, 2001.

On May 29, 2001, the Respondent submitted an additional exhibit to the Response, namely a German and Italian version of a letter to the Complainant of May 10, 2001.

By email of June 3, 2001, the Respondent informed the Center that [sic]:

"in addition to ou response dated May 28^th [2001] we could like to inform you that in the letter of the Fondazione dated October 20^th 1998 Prof. Ferraro requested to put a link from our website www.arena-verona.com to his website www.arena.it. We did so but Prof. Ferrara didn’t as we requested in our letter dated October 30^th 1998. Please check the webste www.arena-verona.com."

On June 5, 2001, the Center acknowledged receipt of the Respondent’s supplemental filing. The Center noted that the Rules and the Policy only provide for the submission of one pleading by the Complainant and one by the Respondent. The Center stated that although it accepts supplemental filings before the appointment of the Panel, the Parties should be advised that the Panel has the sole discretion as to whether such information will be considered in arriving at a decision.

The Complainant acknowledged receipt of the Respondent’s last "filing" by fax and by email on June 7, 2001. The Complainant submitted that this supplemental filing does not comply with the Rules and should be ignored. In case the Panel considers the Respondent’s supplemental filing relevant, the Complainant submitted a supplement to the Complaint.

On June 7, 2001, the Center acknowledged receipt of the Complainant’s supplemental filing, but noted that it is at the Panel’s sole discretion as to whether such information will be considered. The Center also reminded the Complainant that any communication from Complainant to the Center should be copied to Respondent.

On June 11, 2001, the Respondent sent another email to the Center, stating [sic]:

"You will find an article about the verdict of the highest Court "Bundesgerichtshof" in English written by our lawyer, Mr. Ulrich Baumann, Ismaninger Strasse 98, 81675 München. Please click http://www.lawzone.co.uk/cgi-bin/item.cgi?id=47724&d=101&h=1 75&f=173&dateformat=%o%20%B%20%y

We have to inform that the complaint of the Fondazione Arena di Verona and the blocking of the domain www.arena-verona.com causes a damage of at least 100.000 Euro. Our lawyers in Münich will start legal actions against the Fondazione at the court in Munich if they not cancel the complaint within June 15^th."

On June 12, 2001, the Center acknowledged receipt of the Respondent’s second supplemental filing.

On June 12, 2001, the Respondent replied to the Center by email that it guessed that Complainant’s supplemental filing was not accepted because it was too late and that it was probably against the Rules and the Policy because it was not sent to the Respondent.

The Center replied to the Respondent by email dated June 12, 2001, that the Panel has the discretion whether or not to accept supplemental filings from for each party. The Center also forwarded the Complainant’s supplemental filing to the Respondent.

On June 12, 2001, the Center notified the Parties that an Administrative Panel composed of a single member, Dr. Kamen Troller, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center. Absent exceptional circumstances, the Panelist was required to forward its decision to the Center in accordance with Paragraph 15 of the Rules by June 25, 2001.

The Panel examined all notifications of the Center, and the amended Complaint, and finds that they comply with the formal requirements of the Rules and Supplemental Rules, and that the Administrative Panel was properly constituted.

The Panel examined the Response and finds that it was not submitted to the Center in hardcopy and in electronic form within twenty (20) days of the date of commencement of the administrative proceeding, as required by Paragraph 5(a) juncto 5(b) of the Rules. The Panel also examined the Parties’ additional communications and filings, and finds that they do not comply with Paragraphs 3 and 5 of the Rules. These deficiencies are discussed in Section 6.

 

4. Factual Background

A. The Complainant

The Complainant, the Fondazione Arena di Verona, established on March 22, 1999, is a private foundation with registered seat in Verona, Italy. Before that date, the Complainant was a public body, known under the name "Ente Lirico Arena di Verona".

The Complainant is active in the promotion and development of art and musical performances, musical education and the professional training of art managers. The Complainant organizes, amongst other things, art performances at the Arena di Verona (Complainant’s Exhibit 3, Certificate issued by the Chamber of Commerce of Verona, Articles 1 and 3.1). One of the main events at the Arena di Verona is the yearly Opera Festival (see Complainant’s website at <arena.it>).

The Arena di Verona (the "Arena") is a Roman amphitheater, and one of the greatest and most prestigious archeological monuments in Europe. Today, the Arena di Verona is used as a performance venue for theaters, ballets, concerts and operas.

The Complainant did not submit evidence of any trademark registration containing the name "Arena di Verona" or any similar name.

The Panel has searched on the Internet and found that the Complainant operates websites at <arenadiverona.com>, <arenadiverona.org>, <arenadiverona.net>, <arenadiverona.it>, <arena-verona.org>, <arena-verona.net>, <arena-verona.it> and <arena.it>, where it provides information regarding the history of the foundation, ticket information, reservation modalities, instructions for the public, the program, press release, links to tourist websites, etc. The websites also allow online ticket booking for performances in the Arena.

B. The Respondent

The Respondent registered the domain name <arena-verona.com> on September 21, 1999. The domain name resolves to a website that contains tourist information regarding the Arena, such as a map of the amphitheater, directions to the Arena, the season program, admission prices, advance sales information, hotel information, etc. The website also contains a link entitled "Legitimation of the Fondazione Arena di Verona", which shows a letter of Complainant to the Respondent dated October 20, 1998, with the following text:

"nel ringraziarLa per la gentile disponibilità alla pubblicazione sulla rete Internet di programmi di attività della Fondazione Arena di Verona, desidero confermare, ancora una volta, che tale pubblicazione dovrà necessariamente essere effettuata a titolo completamente gratuito.

Se Lei lo desidera, potrà effettuare un link con il sito officiale dell’Arena di Verona www.arena.it. (…)

Grazie ancora per la collaborazione (…)."

Free translation:

"thanking you for your kind disposability for the advertisement on the Internet of the program of activities of the Foundation of Arena of Verona, I wish to confirm, once again, that such advertisement needs to be totally free of charge.

If you wish so, you can put a link with the official website of the Arena of Verona www.arena.it. (…)

Thanks again for your collaboration (…)."

The Respondent also operates websites at <arena-verona.ch>, <arena-verona.de> and <arena-verona.at>.

 

5. Parties’ Contentions

A. The Complainant

The Complainant contends that each of the three elements specified in Paragraph 4(a) of the Policy are applicable to the disputed domain name. More precisely, the Complainant submits that:

(1) The domain name <arena-verona.com> is confusingly similar to the names "Fondazione Arena di Verona" and "Arena di Verona", in which the Complainant has prior rights and which are exclusively owned by the Complainant.

The Complainant refers to Article 15.2 of Italian Law Decree No. 367 of June 29, 1996, that states that "a private right foundation operating in the field of music has the exclusive right to use its own name, the name and device of the theater entrusted to the foundation, and the names of the theater performances; the foundation can consent to the use of the above only with regard to activities which comply with the purposes of the foundation" (free translation). The Complainant alleges that the Law Decree No. 367 thus attests the existence of prior and exclusive rights of the Complainant on the name "Arena di Verona", anyhow combined.

Moreover, the Complainant states that it (and, before 1999, the "Ente Lirico Arena di Verona") has been using its name with regard to musical performances organized in the theater since immemorial time. As evidence thereof, the Complainant submits a serie of advertisements for the Summer Opera Seasons of the Arena, dating from 1938 until 2000 (Complainant’s Exhibit 6).

The Complainant alleges that the name "Arena di Verona" is well known, famous and notorious, at least in Europe and in the USA, and is associated with the full range of activities which take place in the Arena. The Complainant alleges that, according to the general rules concerning well-known trade marks, the products or services in connection with which the mark is used are not important, and that, as a matter of fact, every product or service marked "Arena di Verona" is considered to be linked to the Arena. Furthermore, the Complainant states that Respondent’s website deals with tourism, art and leisure, i.e. the typical fields of activity of the Complainant.

The Complainant also states that the "Fondazione Arena di Verona" was established on March 22, 1999, i.e. before the registration of the disputed domain name.

As to confusing similarity between the domain name and the Complainant’s rights, the Complainant states that the similarity between the term "arena-verona" and the terms "Fondazione Arena di Verona" and "Arena di Verona", which are exclusively owned by the Complainant, is self-evident and cannot be argued.

(2) The Respondent has no rights or legitimate interests in the domain name, because the term "arena-verona" has nothing to do with (i) the intellectual property rights of the Respondent; (ii) the registered seat of the Respondent; and (iii) any fair of authorized use of the term by Respondent.

With respect to (i) above, the Complainant alleges that it is not aware of any intellectual property rights (trademarks, trade names, etc.) owned by the Respondent relative to the words "Arena" and "Verona". With respect to (ii) above, the Complainant states that the Respondent’s registered seat is in Munich, Germany, and that the Respondent does not have any branch in Verona. With respect to (iii) above, the Complainant submits that it has never authorized anyone to use its name as a domain name, nor to sell tickets or reservations on the Internet, and that the Respondent makes no non-commercial, fair, or authorized use of the contested term.

(3) The Complainant contends that the domain name was registered and is being used in bad faith, because:

- "The disputed domain name were registered for the purpose of interfering with the business of the Complainant;

- The disputed domain name were primarily registered for the purpose of taking an unlawful advantage from the Complainant’s great renown, by means of a likelihood of confusion with the Complainant’s trade mark and trade name as to the source;

- The Complainant tried to get in touch with the Respondent in order to solve the matter amicably. The Respondent declared, informally, to be prepared to assign his domain name registrations to the Foundation. Unfortunately, such promises were not followed by concrete steps, and the Complainant was consequently forced to send a warning letter to the Respondent. A warning letter dated February 22, 2001 (Annex 7) was not accepted by the Respondent […];

- The website appears to be an institutional site of the theatre, and no mention is made of the fact that the site has nothing to do with the Foundation and with the official web site of the Arena (arena.it). Moreover, "arenaverona.com" provides links to other web sites (i.e. arenaverona.at/.ch/.de) which are specifically directed to Austria, Switzerland and Germany: thus, not only the contents of the disputed web site have to be considered, but also the important function of "forwarding" made by the disputed web site. The Complainant stresses that a relevant part of the audience of the yearly Summer Opera Season comes from those three countries, and that the unlawful activity of the Respondent is causing serious damages to Fondazione Arena."

The Complainant requests the Administrative Panel to issue a decision that the domain name be transferred to the Complainant.

B. The Respondent

The Respondent denies that each of the three elements of Paragraph 4(a) of the Policy are fulfilled:

(1) With respect to element (i) of Paragraph 4(a) of the Policy, the Respondent submits that the Internet domain name system and domain name registrations operate fundamentally on a first-come, first-served system of registration, and that once a registrant has obtained a domain name, no other person may register or claim the name.

The Respondent also states that the Complainant has agreed to co-operate with the Respondent and confirmed knowledge of all the domains under "arena-verona". To support this statement, Respondent submits two (2) documents. Respondent’s Exhibit 1 contains a letter of the Complainant of October 20, 1998 (see also the link on the Respondent website). Respondent’s Exhibit 2 contains Respondent’s October 30, 1998, reply to the Complainant, in which it confirms that his websites <arena-verona.de>, <arena-verona.at>, <arena-verona.ch> and <arena-verona.com> will not cause any costs for the Complainant; that he finances the websites either through the sale of tickets by third parties or directly; and that he is willing to put links on his websites, if the Complainant puts at least a link on its website <arena.it> to the Respondent’s website <arena-verona.de>.

The Respondent also alleges that he has never used the trademark "Fondazione Arena di Verona", but only "arena verona", and that the latter is not a trademark.

(2) With respect to the second element of Paragraph 4(a) of the Policy, the Respondent submits that with its letter of October 20, 1998, the Complainant has confirmed that the Respondent could use the domain name, and that this has been confirmed by Respondent’s letter of October 30, 1998 (Respondent’s Exhibits 1 and 2).

The Respondent also contends that "Arena Verona" is not a trademark. The Respondent states that according to a decision of the German Supreme Court of May 17, 1998, "everybody can use general names". Therefore, the Respondent claims to be allowed to use the name "Arena Verona".

(3) With respect to the last element of Paragraph 4(a) of the Policy, the Respondent denies the Complainant’s contentions about bad faith. In order to demonstrate good faith, the Respondent argues that the Complainant requested the Respondent to put a link from his website to the Complainant’s website (see supplemental Response filed on June 3, 2001); that the Complainant offered closer Internet co-operation on January 12, 2001; and that it sent contracts to the Respondent for the sale of tickets.

The Respondent contends that since 1998, it sold about 40,000 tickets on the Internet for the Opera Festival from its domains <arena-verona.com>, .de, .at, and .ch, and that the Complainant made a large profit. The Respondent alleges that in the very last years, he spent about DEM 100,000 for the marketing of these domain names.

 

6. Discussion and Findings

A. Procedural matters

(a) The Response

According to Paragraph 5(a) juncto 5(b) of the Rules, the Respondent shall submit a response to the Provider in hardcopy and in electronic form within twenty (20) days of the date of commencement of the proceeding. Paragraph 5(d) of the Rules states, however, that the Provider may, in exceptional cases and at the request of the Respondent, extend the period of time for the filing of the response.

In the case at hand, the Respondent informed the Center on May 28, 2001, that the Response would be sent late because the Parties tried to find an amicable solution. The Response was only filed in due time by fax. It was submitted by email one day after the expiration of the twenty-day period, and in hardcopy seven days after the expiration of said period. The Center accepted the submission of the Response by fax. Taken into account these circumstances, the Panel accepts the Response and considers that it complies with the formal requirements of the Rules.

(b) The Parties’ communications and additional filings

The Panel finds that the Respondent’s communications to the Center of May 28, 2001, and June 12, 2001, and the Complainant’s communication of June 7, 2001, were not in compliance with the formal requirements of Paragraph 2(h) of the Rules and Paragraph 3 of the Supplemental Rules, because they were not copied to the other Party.

The Panel also notes that the Rules and the Policy provide for the submission of only one pleading by the Complainant and one by the Respondent.

However, the Rules give the Panel considerable discretion. The Panel notes that it has an obligation to ensure that each Party is given a fair opportunity to present its case (Rule 10(b)), and that it has the discretion to determine the admissibility of the evidence (Rule 10(c)).

Therefore, the Panel has decided to accept all additional submissions of both parties.

(c) The language of the documents

The Respondent’s Exhibits 1-5 and 7-9 are in German and Italian, without English translations. The Complainant submitted that "such enclosures should not be considered, being clear that the language of the proceedings is English" (Supplement to the Complaint, p.1).

The Complainant’s Exhibits 3-6 are written in Italian and are not accompanied by an English translation.

There is no rule that obliges the Parties to submit their documents in the language of the administrative proceeding (i.e., the language of the Registration Agreement – see Paragraph 11(a) of the Rules). According to Paragraph 11(b) of the Rules, the Panel may order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation in whole or in part into the language of the administrative proceeding. In the case at hand, the Parties corresponded with each other in Italian and German before beginning this proceeding. Taken into account that the Parties seem to be able to understand the documents submitted in Italian and German, and that the Panel is itself fluent in both languages, the Panel finds it unnecessary to order a translation.

B. Substantive matters

Pursuant to Paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements are present:

(i) the Respondent’s 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 domain name has been registered and is being used in bad faith.

(a) Identical or confusingly similar to a trademark

The Complainant has no registered trademark in the name "Arena di Verona". The Complainant, however, argues that it has exclusive rights in the name "Fondazione Arena di Verona" and "Arena di Verona" under Italian Law Decree No. 367 of June 29, 1996, which grants to private foundations operating in the field of music the exclusive rights to use their own name, the name of the theater entrusted to the foundation, and the names of the theater performances (Complainant’s Exhibit 4, Articles 1, 2 and 15.2). The Complainant also relies on its rights in the name "Arena di Verona", because the name is well-known in Europe and in the USA and is associated with the full range of activities which take place in the Arena, and because the Complainant has used that name since 1938 for musical performances organized in the Arena.

The Panel is mindful that Italian law confers special rights to the use of a place name to foundations operating in the music field. The Panel is also aware that the Complainant has used the name "Arena di Verona" ("Arena of Verona") since 1938. A lawyer operating in a common law jurisdiction might find these factors sufficient to award the Complainant certain trademark rights. The Panel need not, however, take a position on this issue in light of its decisions in sections (b) and (c) below.

The Panel notes that the Policy is generally applied to conflicts between a trademark and a domain name. The Policy is not generally applied to conflicts between domain names and geographical indications, trade names or rights to the personal name that are not supported by rights in a trademark. The question whether, in the case at hand, the Complainant has exclusive rights in the name "Arena di Verona" which might be assimilated to unregistered trademark rights, and the question whether such unregistered rights can grant protection against registration of confusingly similar domain names, are better left in this case to a court of competent jurisdiction, which has authority to decide these questions.

With respect to the allegation of confusing similarity, the only differences between the name "Arena di Verona" and the Respondent’s domain name are: (i) the domain name does not contain the word "di" and has instead a hyphen between the two terms, and (ii) the domain name has the designation ".com" at the end. Such differences are minor and do nothing to distinguish the name from the domain name. (Footnote 1)

The Panel concludes, however, that even though the litigious designations are confusingly similar and that Complainant may have well established rights in the designation "Arena di Verona", it need not take a position, in light of the decision that follows, on whether the Complainant has established that it has rights in a trademark or service mark.

(b) Rights or legitimate interests

Paragraph 4(c) of the Policy defines the circumstances required for the Respondent to demonstrate "rights to and a legitimate interest in the domain name". The Respondent is only required to demonstrate any one of the following circumstances (in particular and without limitation) to prove its rights to or legitimate interest in the domain name:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent uses the domain name to provide a website where Internet users can find general information regarding the Arena of Verona and its programs, famous operas, the city of Verona, etc., and can order tickets online for performances at the Arena and book hotels. In the opinion of the Panel, this constitutes a "bona fide offering of goods or services" within the meaning of Paragraph 4(c)(i) of the Policy.

It also appears from the evidence submitted that, before the starting of this proceedings, the Complainant was aware that the Respondent owns websites with information about the Arena and offers an online reservation service. The Panel finds that the evidence suggests that the Complainant gave its consent to the Respondent to advertise the Complainant’s activities on its websites, and to put a link to the Complainant’s website (Respondent’s Exhibits 1 and 2).

Therefore, the Panel does not accept the Complainant’s contention that it "has never authorized anyone to use its name as a domain name", and "has never authorized anyone to sell tickets or for the Arena Summer Opera Season on the Internet".

The Panel finds that the Respondent has established fair and prior use of the domain name and that Complainant has not satisfied the burden of proof with respect to Paragraph 4(a)(ii) of the Policy.

(c) Bad faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove use in bad faith as well as registration in bad faith.

Paragraph 4(b) of the Policy sets forth a non-exclusive list of circumstances which shall be evidence that the registration and use made by Respondent of a domain name is in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

Firstly, the Complainant seems to rely on the third element, asserting that the Respondent acted in bad faith, because "the domain name were registered for the purpose of interfering with the business of the Complainant". In order to constitute evidence of bad faith, Paragraph 4(b)(iii) of the Policy requires registration for the purpose of "disrupting" the business of a competitor. The Panel finds that merely "interfering" with someone’s business is not necessarily unfair or unauthorized and as such does not necessarily constitute bad faith registration or use within the meaning of Paragraph 4(b)(iii). The Panel finds that, even though Respondent obviously attempts to attract Internet users to his website for purposes of commercial gain, there is no evidence that the Respondent aimed at disrupting the Complainant’s business when he registered the domain name. Moreover, the Complainant seems to have explicitly, or at least implicitly, provided some degree of consent to the Respondent’s websites <arena-verona.com>, .de, .ch and .at, as well as to the online ticket sale on these websites. The Panel therefore finds that the criteria of Paragraph 4(b)(iii) of the Policy for bad faith are not fulfilled.

Secondly, the Complainant seems to rely on the fourth element of Paragraph 4(b) of the Policy, alleging that the domain name was "primarily registered for the purpose of taking an unlawful advantage from the Complainant’s great renown, by means of a likelihood of confusion with the Complainant’s trademark and trade name as to the source". The Panel does not agree with this contention. Except for the link to the Complainant’s "legitimization letter" (Respondent’s Exhibit 1), there are no elements on the Respondent’s website that could lead Internet users to believe that there is a commercial relationship between the Complainant and the Respondent. Instead, it is clearly indicated on the Respondent’s website at <arena-verona.com> that the site is operated by the Respondent’s tourist company, "ITALIA Teletourismus". It is certain that Respondent profits from Complainant's reputation, but that is not contrary to the Policy per se.

The Panel also finds that the other elements of Paragraph 4(b) of the Policy are not fulfilled:

There is no indication that the Respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant or one of its competitors, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name.

Also, Respondent’s use of <arena-verona.com> has not prevented the Complainant from making its commercial presence known on the Internet. On the contrary, the Panel notes that the Complainant has registered <arenadiverona.com>, <arenadiverona.org>, <arenadiverona.net>, <arenadiverona.it>, <arena-verona.org>, <arena-verona.net>, <arena-verona.it> and <arena.it>. Taken into account that the Complainant owns at least eight (8) domain names incorporating its name, Respondent’s registration of <arena-verona.com> cannot be considered as preventing the Complainant from reflecting its mark in a corresponding domain name. Therefore, the bad faith criterion of Paragraph 4(b)(ii) of the Policy is not fulfilled.

Based on the above, the Panel finds that the Complainant has not satisfied the burden of proof with respect to bad faith registration and use of the domain name.

 

7. Decision

The Panel decides that:

1) the disputed domain name is confusingly similar to the name "Arena di Verona", but that the Panel do not need to determine whether the Complainant has established rights in a trademark or service mark;

2) the Respondent has some legitimate interest in respect of the domain name; and

3) the domain name has not been registered and is not being used in bad faith by the Respondent.

Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the registration of the domain name be left as it stands.

 

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Kamen Troller
Sole Panelist

Dated: June 25, 2001

 

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Footnotes:

1. See: Gateway, Inc. v. James Cadieux (WIPO Case No. D2000-0198); The Journal Newspapers, Inc. v. DomainForSale 980dollars (FA95395) and Konkinklijke Philips Electronics NV v. Ramazan Goktas (WIPO Case No. D2000-1638). (back to text)