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WIPO Arbitration and Mediation Center

Complainant is RUSCONI EDITORE S.p.A., having its registered offices in Viale Sarca 235, 20126 Milano, Italy. The Complainant’s authorized representative is Avvocato Mariacristina Rapisardi, Studio Legale Rapisardi, Via Serbelloni 12, 20122 Milano, Italy.

Respondent is Studioimmagine di Ingegnieri Giuseppe, Via G. Rizzo 123, Milazzo (ME), Italy. The Respondent has not authorized a representative in this administrative proceeding.

The domain name at issue is <autoefuoristrada.com>; hereinafter referred to also as the "Domain Name". The registrar is Network Solutions, Inc.

The WIPO Arbitration and Mediation Center (the Center) received a Complaint (hereinafter the Complaint) by email on June 7, 2001, and in hardcopy and exhibits on June 11, 2001. On June 8, 2001, the Center acknowledged receipt. On June 13, 2001, the Center transmitted via email to Network Solutions, Inc., a request for registrar verification in connection with this case. On June 14, 2001, Network Solutions, Inc. transmitted via email to the Center, its Verification Response, confirming that the registrant is Studioimmagine di Ingegnieri Giuseppe and that the Domain Name registration is in "active" status.

The Center transmitted on June 18, 2001, to Studioimmagine di Ingegnieri Giuseppe the Notification of Complaint and Commencement of the Administrative Proceeding by post (with attachment), and by fax and email without enclosures.

On July 6, 2001, the Center received the Response from the Respondent and on July 9, 2001, acknowledged receipt.

On July 11, 2001, in view of the Complainant’s designation of a single member panel the Center invited Mr. Luca Barbero to serve as a Panelist and transmitted to him the Request for Declaration of Impartiality and Independence and a Statement of Acceptance.

Having received Mr. Luca Barbero's Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted on July 13, 2001, to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Luca Barbero was formally appointed as the Sole Panelist. The Sole Panelist finds that the Administrative Panel (hereinafter referred to also as the Panel) was properly constituted and appointed in accordance with the Rules and Supplemental Rules.

The Complaint is based on:

- Italian Trademark no. 578993 filed on July 28, 1992, granted on October 29, 1992, formed by the wordings "AUTO & FUORISTRADA" for the goods and services belonging to classes 16, 38 and 41;

- International trademark no 592967 granted on October 29, 1992, formed by the wordings " AUTO & FUORISTRADA" for the goods and services belonging to classes 16, 38, 41 and extended to Federal Republic of Germany, Austria, Benelux, Spain, France, Portugal e Switzerland;

- Italian Trademark no. 406269 filed on May 10, 1982, granted on February 24, 1986, formed by the wordings "AUTO IN FUORISTRADA" for the goods services belonging to classes 16, 38 and 41;

- International trademark no R522947 granted on May 30, 1998, (renewal of the international trademark no. 522947 granted on May 30, 1988), formed by the wordings " AUTO IN FUORISTRADA" for the goods and services belonging to classes 16, 38, 41 and extended to Federal Republic of Germany, Austria, Benelux, Spain, France, Portugal, Switzerland;

(copy of the registrations is enclosed to the Complaint).

The respondent registered the domain name <autoefuoristrada.com> on November 3, 1999.

The Complainant is a famous publishing firm owner of magazines distributed in Italy, Europe and the rest of the World.

Among the most important magazines published by the Complainant, is "Auto & Fuoristrada" advertised for the first time in June 1982, with the name ‘Auto in Fuoristrada’ changed into the present one in September 1992. The magazine deals with cars, in particular with off-road vehicles including news concerning the main novelties of the field as well as the price list regarding both second-hand and new cars. Thanks to its articles, edited by skilled journalists able both to provide the readers with detailed information (of a technical and functional nature) about the products described therein and to point out the most interesting novelties available on the market, from the beginning, the magazine has achieved a great success among the public. The Panel was provided with a comparative study on the sales of three Italian magazines of the segment according to which the Complainant’s publication ranks first.

The Complainant states that from the circumstances described in the Complaint and from the number of registered trademarks in Italy and abroad, "it can for sure be stated that the trademark ‘Auto & Fuoristrada’ is provided with the requirement of notoriety, at least in Italy and the absolute identity between the name of the domain object of the present complaint and the registered trademarks of which the Complainant is owner does not need any further illustration".

With reference to the absence of rights and legitimate interests of the Respondent with respect to the instant domain name the Complainant notes that:

• At the beginning of the dispute on November 23, 2000, the site corresponding to the domain in re, registered in November 1999, resulted under construction.

• the Registrant appears to be a not better precise ‘entity’ named Studioimmagine di Ingegnieri Giuseppe which does not appear to be owner of trademarks formed by the word ‘autoefuoristrada’;

• the registrant is not known personally, as an association or commercial company with the name corresponding to the registered domain. In fact, as already said, the registrant of the domain is ‘Studioimmagine di Ingegnieri Giuseppe’; the administrative contact was Mr. Ingegnieri Giuseppe.

It is also highlighted to the Panel that in the web site corresponding to the domain name <autoefuoristrada.com> the services of a firm called ‘Moto Giovane’ whose business consists of converting and customising motorbikes of the ‘Moto Guzzi’ brand are offered. The Complainant concludes that the domain name in dispute "does not identify the individual who registered the domain name, nor the firm being advertised by means of the corresponding site – nor does it correlate with either of these in any way."

Addressing the issue of bad faith the Complainant to the Panel that "the domain name in dispute does not correspond at all with the content of the site which has the name: that site is in fact advertising a business which converts and customises Guzzi motorbikes".

The Complainant concludes that also in light of the "proven public awareness of the periodical published by Rusconi", it is "clear that the person who registered the domain name <autoefuoristrada.com> did so with the aim of attracting Internet users to the site of the company ‘Moto Giovane’ which might then benefit from a degree of ‘popularity’ which it could never otherwise expect: it should be borne in mind that this firm, ‘Moto Giovane’ is located in a tiny village in the province of Messina."

With reference to the Trademark right, the Respondent highlights the graphic representation of one of the trademarks of the Complainant and the fact that the trademark is composed by two Italian generic words "auto" and "fuoristrada", which are linked by the conjunction "e" (and). The term "auto" is an abbreviation for car and the term "fuoristrada" means off-road vehicles , i.e. vehicles used for sports competitions on difficult routes, including motorbikes, according to extract of the "Vocabolario della Lingua Italiana" Treccani, Vol. 2, pag. 553.

The Respondent provides the Panel with the outcome of searchers conducted into major search engines for the term "auto e fuoristrada", quoting and annexing the result; for instance, on Excite Italia 378 pages, on Virgilio 180 pages, on Lycos 130 pages, on Google 117 pages, on Altavista 92 pages, etc. The search produced a variety of sites related to car and off-road vehicles, referring to manufacturing companies, retailers, motor-races, motor-shows, sporting clubs, travel reports, sale offers, car and motorbikes concessionary agents, spare parts retailers, services for sports motoring, etc. Moreover, if a search is made regarding sites containing the two words "auto" and "fuoristrada" used together, thousands of results can be found as pet the example of Google which produced 15,200 pages and Excite Italia which produced 9,898 pages.

It is also submitted to the Panel that a search for the term "auto e fuoristrada" in the site of the Commerce Chamber of Italy, disclosed five Italian enterprises registered under this name, as per list annexed to the Response.

Accordingly, the Respondent believes that there is a substantial difference between the Complainant’s trademark and the term "autoefuoristrada", which: a) comprises two generic and highly descriptive words, b) does not refer only to the Complainant’s services (the magazine), c) is commonly used in Italy without implying or recalling any connection with the magazine, as demonstrated by the results from the search engines therefore the trademark has not acquired a secondary meaning.

The Respondent quotes a number of WIPO and other Dispute resolution Provider decisions supporting the above thesis.

With reference to the issue of rights or legitimate interests and in response to the Complainant’s allegations, the Respondent highlights the following.

StudioImmagine (Translation: Studioimage) di Giuseppe Ingegnieri is a Italian firm based in Milazzo (Messina), established in 1991, and regularly registered under Italian relevant legislation. Among its activities, the firm offers support to local, national and international companies in promoting and developing their image, in particular through multi-media technologies and the Internet. The clients of Giuseppe Ingegnieri, owner of StudioImmagine, according to the information provided to the Panel, are also major companies active in different fields including automotive, food distribution and media.

In November 1999, aware of the fact that Internet represents the future for the promotion of companies’ image - the principal interest of StudioImmagine – and with the aim of getting more and more specialized in Internet service providing, the Respondent registered with Network Solutions six domains referring to general and sectorial market categories, i.e.: <autoefuoristrada> (translation: cars and off-road vehicles) <aziendeitaliane.com> (translation: Italian firms) <fotocamere.com> (translation: cameras) <imbarcazioni.com> (translation: boats), <ittiturismo.com> (translation: sea tourism) <vivaistica.com> (translation: plant nursery).

The Respondent explains that the comprehensive business plan – which has been already partly implemented - was to offer portals (including website development and management) and related services to Italian firms in general (mainly in <aziendeitaliane.com>) and specifically to those belonging to the five respective above-mentioned market sectors (i.e., cars and off-road vehicles, cameras, boats, sea tourism and plant nursery).

The Respondent provided to the Panel a printed small leaflet on the portal <aziendeitaliane.com>, a print out of the web page with the list of clients and host firms and a review of the portal appeared on a Italian Internet magazine, "PC PRATICO". The respondent informs the Panel that the current focus is on the development of the general portal, but there are plans for the five portals, such as <autoefuoristrada.com> which currently hosts the website of one firm ("Moto Giovane") dealing with motorbikes.

The Respondent believes that this information proves clearly that the registration of the domain name <autoefuoristrada.com> is part of a coherent business plan, and that the Respondent has all the rights and legitimate interests with respect to the domain name.

As to registration and use in bad faith, in response to the Complainant statement that the domain name has no correspondence with the content of the site which is hosted there, i.e. <motogiovane.it>, which is the site of an Italian firm called "Moto Giovane", which converts and customizes Guzzi motorbikes. In this regard, the Respondent pointed out that the Italian word "fuoristrada" means any off-road vehicles including motorbikes, as stated in the extract from a well-known and respected Italian dictionary enclosed to the Complaint.

According to the Complainant, the Respondent registered this site under the domain name <autoefuoristrada.com> in order to attract Internet users to the site of the company "Moto Giovane", profiting of the alleged "popularity" of the Complainant’s magazine. In this regard, the Respondent has attached to the Response the statistics of the monthly visits to this site from July 2000, to June 2001: such visits have varied from a total of a minimum of 12 visits during the whole month of July 2000, up to a maximum of 46 visits during the whole month of January 2001. According to the Respondent this clearly shows the "non-existent" popularity that the site has acquired in relation with the Complainant’s magazine. In addition, the Respondent believes that the Complainant’s comments with regard to the firm "Moto Giovane" are "out of place and derogatory, being this firm duly established and functioning".

Respondent notes that the domain name was not registered or acquired for the purpose of selling, renting, or otherwise transferring the domain name registration(s) to Complainant and the Respondent has limited domain names registration to the five market sectors indicated in the business plan. It is also clear that, had the Respondent been acting in bad faith, it would have registered, instead of the five domains mentioned above, other domains, such as those relevant to the issues covered by the Complainant’s magazines, or covered by other magazines.

The domain name was not registered in order to prevent Complainant from reflecting the mark in a corresponding domain name. The Respondent provided information of a search it conducted on the Internet and found that the Complainant already owns the sites <autoefuoristrada.it>, <autoefuoristrada.net>, <autofuoristrada.it> <autofuoristrada.net> which to date are not active.

The Complainant and Respondent are not competitors and the domain name was not registered by the Respondent primarily to disrupt Complainant’s business. The Complainant and the Respondent work in two different lines of business, being the Complainant a publishing house and the Respondent a developer of firms’ image. There has never been in the past any whatsoever relationship, contact or common interest between the Complainant and the Respondent.

The domain name was not registered by Respondent in an intentional attempt to attract for commercial gain Internet users to the Respondent’s web site 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 the Respondent’s web site, product or service.

Furthermore, well before receiving notice of the dispute – that is, when the 6 domain names were registered, in November 1999, – the Respondent had a clear business plan for use of the domain name in connection with a bona fide offering of goods or services, which is being implemented.

According to paragraph 15(a) of the Rules: "A Panel shall 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." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and,

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and,

(iii) that the Domain Name has been registered and is being used in bad faith.

The Complainant has provided evidence of ownership of Italian trademark no. 578993 filed on July 28, 1992, granted on October 29, 1992, consisting of the wordings "AUTO & FUORISTRADA" for the goods and services belonging to classes 16, 38 and 41; international trademark no. 592967 granted on October 29, 1992, consisting of the wordings " AUTO & FUORISTRADA" for the goods and services belonging to classes 16, 38, 41 and extended to Federal Republic of Germany, Austria, Benelux, Spain, France, Portugal e Switzerland; Italian trademark no. 406269 filed on May 10, 1982, granted on February 24, 1986, consisting of the wordings "AUTO IN FUORISTRADA" for the goods services belonging to classes 16, 38 and 41; international trademark no R522947 granted on May 30, 1998, (renewal of the International trademark no. 522947 granted on May 30, 1988), consisting of the wordings " AUTO IN FUORISTRADA" for the goods and services belonging to classes 16, 38, 41 and extended to Federal Republic of Germany, Austria, Benelux, Spain, France, Portugal e Switzerland.

In view of the above, the Panel finds that the Complainant have proved that the Domain Name is identical (obviously but for the suffix .com), to the trademark of the Complainant according to paragraph 4(a)(i) of the ICANN Policy.

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the dispute domain name. The Respondent does not assume the burden of proof, but does assume the burden of production and may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:

(a) He has made 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 prior to the dispute;

(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or

(c) He intends to make 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.

In light of the Response provided to the Panel and of the descriptive nature of the Complainants’ trademark, it is a borderline question as to whether a legitimate interest of the Respondent in using the domain name <autoefuoristrada.com> can be denied. Under the Policy, the Respondent must demonstrate a legitimate interest in the domain name. It is then up to the Complainant to rebut the Respondent's assertions. It must be recognized that for the Complainant such negative proof is often difficult and, therefore, the requirements of proof cannot be too strict. Nevertheless, the panel finds that a decision in favor or against the Respondent need not be taken on the question of legitimate or fair use, since the Panel arrives at a clear conclusion on the question of bad faith, see Deutsche Telekom AG v callisto germany.net WIPO Case No. D2000-0951.

For the purpose of Paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:

(i) circumstances indicating that the holder has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’ s website or other online 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 the holder’s website or location.

Respondent did not offer to sell the domain name to Complainant for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name. Respondent is not engaged in a pattern of registering domain names in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name as it has only registered, as gTLDs, the six domain names quoted in the Response (plus, prima facie, a seventh one <vetrina.org> meaning "window" again of descriptive nature) and the Complainant has successfully managed to register i.e. <autoefuoristrada.it> <autofuoristrada.net> and <autofuoristrada.it> and <autofuoristrada.com> (none of which currently is pointed to an active web site).

The Respondent is not a competitor of the Complainant and, also in view of the generic terms at issue, there are no sufficient elements indicating that the use of the web site "autoefuoristrada" prima facie, will be likely to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website, aimed at generating commercial gain for the Respondent.

Furthermore, as stated in prior decisions, a Complainant must tolerate that other entities make use of a conjunction of two generic words and therefore it is not confusing for the relevant customers that the domain name and the trademark co-exist. See Welltech ApS v. Dave Gardner WIPO Case No. D2000-1145. The name in question is an obvious conjunction of two common words, "auto" meaning the same in Italian and "fuoristrada" meaning off-road vehicles. Common words and descriptive terms are legitimately subject to registration as domain names on a "first-come, first-served" basis. See Zero International Holding GmbH & Kommanditgesellschaft v. Beyonet Services and Stephen Urich, WIPO Case No. D2000-0161; EAuto, L.L.C. v. E Auto Parts, WIPO Case No. D2000-0096; Asphalt Research Technology, Inc. v. National Press & Publishing, Inc. WIPO Case No. D2000-1005.

Therefore, the panel finds that the Complainant has failed to prove that the Respondent has registered and is using the domain name in bad faith.

In light of the foregoing, the Panel decides that the Domain Name registered by the Respondent is confusingly similar to the Complainant’s trademarks, but the Complainant has not established that the domain name <autoefuoristrada> has been registered and is being used in bad faith.

Accordingly, the Panel concludes that the domain name <autoefuoristrada.com> should not be transferred to Complainant.

Luca Barbero
Sole Panelist

Dated: July 30, 2001