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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Rai Radio Televisione Italiana S.p.A v. Mr. Giovanni Carboni

Case No. DTV2005-0007

 

1. The Parties

The Complainant is Rai Radio Televisione Italiana S.p.A, Rome, Italy, represented by Barzanт & Zanardo, Rome, Italy.

The Respondent is Mr. Giovanni Carboni, Rome, Italy.

 

2. The Domain Name and Registrar

The disputed domain name <televideo.tv> is registered with Network Solutions, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2005. On the same day, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On December 29, 2005, 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 for the administrative, billing, and technical contact. 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 January 5, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2006. The Response was filed with the Center on January 20, 2006.

The Center appointed Fabrizio La Spada as the sole panelist in this matter on February 8, 2006. 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 is a public Italian radio and television broadcasting corporation, active in Italy, as well as on a European and worldwide basis.

The Complainant offers a “teletext” service. This service is provided under the name “televideo” through the Complainant’s broadcasting channels. The televideo service can also be accessed from the following website: “www.televideo.rai.it”.

The Complainant is the owner of several trademarks containing the word “televideo”. In particular, it has obtained registration of the following Italian trademarks:

- Italian trademark “rai televideo”, nr. 900299, filed on February 2, 1990, in classes 9, 16, 35, 38 and 41.

- Italian trademark “rai televideo”, nr. RM 2003 C/002613, filed on May 11, 1983, (registered in 1986) in classes 16, 28, 35, 38, 41 and 42.

- Italian trademark “turbotelevideo”, nr. 610343, filed on September 13, 1991, in classes 9 and 38.

- Italian trademark “televideo telesoftware”, nr. 900300, filed on February 2, 1990, in classes 9, 16, 35, 38 and 41.

- Italian trademark “ televideoregione”, nr. 852740, filed on July 29, 2001, in classes 16, 35, 38 and 41.

The Respondent is a professor of physics at the University of Rome “Tor Vergata”. He is involved in high energy physics research conducted at CERN, in Geneva.

The Respondent registered the domain name on August 29, 2001. Between the date of registration and the time the Complaint was filed, the domain name resorted to a generic “under construction” web page, featuring several links to Italian news media, as well as other links to web sites unrelated to television services.

After the Complaint was filed, the Respondent modified the web site. The domain name then resorted to a simple page containing the mention “this page is under construction and coming soon”, as well as the Respondent’s name. The web site was then modified again and at the time this decision is issued, the domain name redirects Internet users to a web site operated by the Respondent, hosted on his University’s web site.

 

5. Parties’ Contentions

A. Complainant

Concerning the first ground under the Policy, the Complainant submits that the domain name is confusingly similar to trademarks in which it has rights.

It submits that “televideo” is the name of the “teletext” service it implemented in 1984. Moreover, the Complainant points out that it owns several trademarks containing the word “televideo”, the first of which was filed in 1986. These trademarks include the following: “Rai Televideo”, “Turbo Televideo”, “Televideo Telesoftware”, and “Televideo Regione”. The Complainant submits that the “televideo” name and trademark, and related services, are well-known and recognized, at least in Italy. The Complainant further contends that the fact that its trademarks contain additional words, such as Rai, Turbo, Regione or Telesoftware, does not substantially vary the similarity between these trademarks and the domain name. Finally, the Complainant claims that the suffix “.tv” increases the risk of confusion, since it refers to television, which is the main business activity carried out by the Complainant.

It should be noted that, according to the Complainant, the sign “televideo” does not have any descriptive character, but only corresponds to the teletext service provided by the Complainant. Concerning the distinctive character of its trademarks, the Complainant submits that as long as it is enforcing a valid trademark registration, the Panel should refrain from questioning the validity of such trademark, including for lack of distinctive character.

Concerning the second ground under the Policy, the Complainant submits that the Respondent has no rights or legitimate interest in respect of the domain name.

The Complainant points out that the domain name links to a web page displaying the mention “this site is under construction and coming soon”, as well as a series of links to Italian web sites mainly aimed at providing news, as well as to Italian online newspapers. The web page corresponding to the domain name also contains advertising banners. In other words, according to the Claimant, the Respondent’s web site consists of a search engine portal redirecting Internet traffic to third parties’ web sites addressed to the Italian public.

In addition, the Complainant mentions that on March 2, 2005, its counsel sent a letter to the Respondent, which was not collected by the latter. The Complainant submits that, by not answering this letter, the Respondent failed to respond to the Complainant’s allegations and to provide evidence of his use of, or demonstrable preparations to use, the domain name in connection with a bona fide offer of goods or services.

The Complainant also alleges that the Respondent is not the owner of any “televideo” trademark, is not and has never been lawfully engaged in any business or commercial activity using the “televideo” trademark, is not commonly known by the “televideo” name and, finally, is not a licensee of the Complainant.

Finally, concerning the third ground under the Policy, the Complainant claims that the Respondent has registered and uses the domain name in bad faith.

In this respect, the Complainant points out that the Respondent has not carried out any serious purpose to undertake any bona fide activity under the domain name. According to the Complainant, because of the notoriety of the televideo trademark, the Respondent must have been aware of the registration and use of such mark by the Complainant. This is especially so because the Respondent is an Italian citizen and the domain name is destined to the Italian public. Therefore, the Complainant considers, it is evident that the use of the domain name constitutes an attempt to attract, for commercial gain, Internet users to the Respondent’s web site or other online location.

On this basis, the Complainant requests that the Panel order the transfer of the domain name.

B. Respondent

As background information related to his work and the context of registration of the domain name, the Respondent explains that he has been a full professor of physics at the University of Rome “Tor Vergata” since 1995, and is involved in high-energy physics research conducted at CERN. He states that he has used the Internet since its inception and that he has personally set up and currently manages an important web site at CERN.

The Respondent explains that in 2000, he conceived the idea of creating a web site where people could find up-to-date information on the health effects of electromagnetic waves irradiated by telecommunication devices. He did create such a web site, which is hosted on his University’s web servers. The Respondent argues that he intended to move his web site to a dedicated web server and that he acquired the domain name in 2001 for this purpose. However, he admits that the domain name remained “parked” by the registrar, while the Respondent continued to develop the web site on the University’s servers.

Concerning the first ground under the Policy, the Respondent does not specifically address the question whether the domain name is confusingly similar to the Complainant’s trademarks. However, he points out that a company Televideo Inc. was already doing business under the name “Televideo Inc.” in 1978, and registered the “Televideo” trademark in 1980, i.e. before the Complainant introduced its teletext service in Italy. According to the Respondent, “televideo” is a generic term used to refer to something connected with telecommunications, television, video terminals, etc. In this respect, the Respondent contends that the association of the “televideo” name with the Complainant’s service is non-existent in the minds of Internet users, “at least outside Italy”. The Respondent also points out that there exist several domain names including the word “televideo” which are not owned by the Complainant.

In connection with the generic character of the name “televideo”, the Respondent stresses that all the Complainant’s trademarks contain, in addition to the generic “televideo” term, another distinctive word, such as “Rai” or “Turbo”.

On this basis, the Respondent concludes that the Complainant has no rights at all on the plain “televideo” name and is attempting a Reverse Domain Name Hijacking.

Concerning the second ground under the Policy, the Respondent claims that he has legitimate interests in respect of the domain name.

He explains that he has developed a web site on the health effects of electromagnetic fields, which is currently hosted on one of the web servers of his University. Development of this web site commenced in 2000. The Respondent alleges that he registered the <televideo.tv> domain name in 2001, to move its web site to a dedicated web server, using a distinctive domain name. This was in particular due to the fact that the University’s server was unreliable and changed name several times over the years, forcing the Respondent to repair broken links.

According to the Respondent, the domain name was chosen for the following reasons:

- It had a broad relationship with the planned web site;

- The name was not too specific, thus leaving margin for future developments and spin-offs;

- The name “televideo” was a widely accepted generic term;

- The Complainant’s teletext service had a different name, namely “www.televideo.rai.it”;

- The <televideo.com> domain name was owned by Televideo Inc. and no conflict was expected;

- The suffix “.tv” corresponded to the initials of “Tor Vergata”, the Respondent’s University where the project was born.

The Respondent notes that he did not actually host his web site on the “televideo.tv” domain, due to lack of time caused by his other professional duties. In addition, he explained that transfer of the web site was delayed because the Respondent was seeking an “economically satisfactory solution to host the site”. Therefore the domain name remained “parked” by the registrar, which adopted the usual practice of linking it to a standard machine-generated “under construction” page. According to the Respondent, the presence of links addressed to the Italian public is based on a guess by the registrar, presumably based on the “Complainant’s [sic] family name” and was not a choice of the Respondent.

Finally, the Respondent mentions that he did not collect the letter that was sent to him on March 2, 2005, by the Complainant because he was absent from his Ferney Voltaire residence. However, he confirms that this address was and still is valid. Moreover, he points out that the Complainant did not attempt to contact him otherwise than by mail and, in particular, did not use e-mail or his Italian mobile phone number (which is mentioned as phone number in the domain name contact details).

On this basis, the Respondent concludes that he has planned a perfectly legitimate and fair use of the domain name for non-commercial, non-profit and educational purposes well before the dispute arose.

Concerning the third ground under the Policy, the Respondent submits that he has not registered and is not using the domain name in bad faith.

He states that the “televideo” word is not well known and is not associated with the Complainant’s services “outside Italy”. He also points out that the Complainant is confusing its trademarks (such as “rai televideo”) with the plain “televideo” trademark owned by a third party (Televideo Inc) and omits to mention the widespread use of the “televideo” name over the Internet.

The Respondent considers that his Italian nationality is irrelevant to the issue of bad faith.

The Respondent submits that the parking of the domain name on a “under construction” web page does not show bad faith. He explains that this corresponds to standard practice and that the contents of the web page were not his choice. In addition, the Respondent alleges that “no money went into [his] pockets”. The Respondent indicates that he has nevertheless modified his web page and now provides a neutral “under construction” page, which he set up “by purchasing the redirection of www.televideo.tv to another site”.

On this basis, the Respondent submits that the Complaint was brought in bad faith and asks the Panel to make a finding of Reverse Domain Name Hijacking.

 

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must prove that each of the three following elements are satisfied:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section A), and

2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section B), and

3. The domain name has been registered and is being used in bad faith (see below, section C).

Paragraph 4(a) in fine of the Policy states that the burden of proof with regard to these elements lies with the Complainant.

A. Identical or Confusingly Similar

This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.

As regards the first issue, the Complainant has provided satisfactory evidence, in the form of copies of excerpts of the Italian trademark registrar, that it is the owner of several trademarks containing the word “televideo”, registered in Italy. These registrations include the trademarks RAI TELEVIDEO, TURBOTELEVIDEO, TELEVIDEO SOFTWARE and TELEVIDEOREGIONE described above under paragraph 4.

Concerning the second issue, the Panel finds that the domain name is confusingly similar to trademarks owned by the Complainant, in particular to the RAI TELEVIDEO trademark. Indeed, it corresponds exactly to one (the longest) of the two words included in the Complainant’s trademark. The other word corresponds to part of the Complainant’s name (and to the acronym by which the Complainant is known).

In his Response, the Respondent submitted that the Complainant’s trademark is generic and, therefore, cannot be used to prevent registration of the domain name by the Respondent. The question whether a trademark is or has become generic, so that the Complainant should not be seen to have rights in respect of the trademark, has been presented to a number of panels (See, e.g., 402 Shoes, Inc. dba Trashy Lingerie v. Jack Weinstock and Whispers Lingerie, WIPO Case No. D2000-1223). While a descriptive term may limit considerably a mark owner’s ability to prevent others from comparable use of the term in a domain name, and the scope of its mark generally, it does not ipso facto render the mark unenforceable or unavailable for use under the Policy (see Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin, WIPO Case No. D2002-0635).

The Panel finds that the existence of a registered trademark is prima facie evidence of the validity of the mark. Registration creates a rebuttable presumption that the mark is distinctive. Respondent has the burden of refuting this presumption (See, e.g., Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047). In addition, even if the respondent does rebut this presumption, the complainant still has the possibility to show that the mark has acquired secondary meaning through use by the complainant (see Broadway Trading, LLC v. Gene Weissman, ICANN Case No. FA 94310).

In the present case, the Panel finds that the Respondent has not rebutted the presumption of validity. In particular, the Panel notes the following elements:

- The Complainant alleged that it has been using the name “televideo” for its teletext service since 1984 and that this name has become widely known and recognized, “at least in Italy”. The Respondent did not dispute this allegation concerning Italy. On the contrary, while it did argue in its Response that the name “televideo” was not associated with the Complainant’s services, it expressly made a reservation for Italy (“It is therefore rather clear that the claimed association of the “televideo” name with the Complainant’s service is non-existent in the minds of the Internet users at least outside Italy”; “[…] the claimed notoriousness and association do not exist outside Italy”). The Panel finds that the fame of the trademark within Italy is sufficient for the mark to have acquired secondary meaning, at least in connection with services provided by the Complainant in Italy. In this respect, the Panel stresses that all trademarks cited by the Complainant are Italian trademarks.

- The trademarks of the Complainant are also registered in certain classes and for certain products and services that have no relationship with television or video products or services. For example, the “rai televideo” trademark is also registered, e.g., for paper, printed matter, photographs, stationery, adhesives, artists’ materials, advertising and business, education and entertainment. The Panel finds that the name “televideo” is not descriptive or generic in relation to these products and services.

- The fact that third parties have also registered “televideo” trademarks and/or domain names containing the word “televideo” is not relevant, as long as the Complainant itself has rights in a trademark and the domain name is confusingly similar to this trademark.

Therefore, the Panel finds that the domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the domain name.

It is difficult for a complainant to prove such a negative fact. Therefore, panels have required complainants to establish at least a prima facie case under this heading. If that is made out, the evidential onus then shifts to the respondent to rebut the presumption of absence of rights or legitimate interests (See, e.g. Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070).

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] 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 fides offering of goods or services; or

(ii) you [Respondent] (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 [Respondent] are making a legitimate noncommercial 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.”

On the basis of the statements and documents submitted, the Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the disputed domain name, for the following reasons.

The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for any domain name incorporating any of those marks. In addition, there is no evidence that the Respondent was commonly known by the domain name and there is no relationship between the Respondent and the name “televideo”. There is not even evidence that the Respondent used the name “televideo” at all.

However, in his Response, the Respondent submitted that, before he had notice of the dispute, he was planning a legitimate and fair use of the domain name for non-commercial, non-profit and educational purposes. More specifically, he explained that he intended to use the domain name to host his web site on the health effects of electromagnetic fields. This web site has already been on the Internet, on another web site, since 2000.

According to Paragraph 4(c)(i) of the Policy, the Respondent may have legitimate interests in the domain name if he shows that, before any notice of the dispute, he made “demonstrable preparations” to use the domain name in connection with a bona fide offering of goods or services. However, based on a careful review of the parties’ written submissions and evidence produced, the Panel considers that the Respondent has not shown that he has made preparations to use the domain name in connection with a bona fide offering of goods or services. The Panel’s opinion is based on the following elements.

There is sufficient evidence showing that the Respondent did create a web site related to the health effects of electromagnetic fields before he had notice of the dispute. This web site has been hosted on his University’s web site since 2000.

The Respondent’s University web site is not specifically related to television or video. The excerpt produced by the Respondent does not mention television or video and does not make use of the “televideo” name or any similar name. On the contrary, the summary of the web site that appears on top of the site only refers to electrosmog, high-voltage lines and cellular phones.

The Respondent alleges that he registered the domain name in 2001, for the very purpose of transferring his web site (hosted on his University’s servers) under his new domain name. He also states that this move was rendered necessary by the fact that the University server was not reliable and that change of names had caused broken links, which in turn caused users to complain. However, in 2006, that is five years after registering the domain name, the Respondent had not migrated his web site. In addition, there is no evidence on the record that the Respondent has undertaken any steps toward migrating his web site on another server under the domain name.

The Respondent explained the delay by lack of time due to other professional duties, as well as by the need to “find an economically satisfactory solution to host the site”. The Panel finds this explanation to be unconvincing and unsupported by the evidence.

- First, the Respondent’s web site already existed when the domain name was registered. No particular development was needed to transfer this existing site to a new domain name. It would have been easy for the Respondent, who is very experienced in operating and managing web sites (in his Response, the Respondent mentioned in particular that he “has personally set up and manages the website of the Muon System of the LHCb experiment at CERN”), to do so (especially taking into account the fact that the Respondent was unsatisfied with his current hosting situation). In this respect, the Panel notes that in a matter of weeks after the dispute arose, the Respondent modified his web site (the site under the domain name) at least twice, one time to remove the link portal and the second time to implement an automatic forwarding to his University web site.

- Second, while the Panel understands that it may be necessary to find an “economically satisfactory solution” to host a web site, this does not explain, in the absence of any evidence supporting the allegation, a five-year delay for making use of the domain name. Again, the Panel notes that a few weeks only after the Complaint was filed, the Respondent had purchased a redirection service for his web site.

Therefore, the Panel finds that while the Respondent certainly is the operator of a professional web site hosted since 2000 on the web site of his University, he has not shown any “demonstrable preparations to use” the domain name to host this web site, which is unrelated to the “televideo” name.

In accordance with Paragraph 4(c)(iii) of the Policy, the Respondent may also have legitimate interests in the domain name if he shows that he is 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.

Between the date when the domain name was registered and the date the Respondent had notice of the dispute, the domain name resolved to a web page containing links to commercial sites unrelated to the Complainant or the Respondent, some of which being competitors of the Complainant. Such use does not constitute non-commercial or fair use of the domain name.

For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the domain name was registered and is being used in bad faith by the Respondent. Paragraph 4(b) of the Policy sets out four circumstances which shall be evidence of the registration and use of a domain name in bad faith. These four criteria are non-exclusive (BolognaFiere S.p.A. v. Bonopera Daniele, WIPO Case No. D2003-0295).

Paragraph 4(b)(iv) provides as an instance of registration and use in bad faith circumstances indicating that:

“(i) by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site location.”

In addition, a finding of bad faith may be made where the Respondent knew or should have known of the registration and use of the trade mark prior to registering the domain name (see Maori Television Service v. Damien Sampat, WIPO Case No. D2005-0524; Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537).

On the basis of the statements and documents submitted, the Panel is satisfied that the domain name was registered and used in bad faith, for the following reasons.

Before the Respondent had notice of the dispute, his web site displayed a number of links, pointing to some of the Complainant’s competitors. The Respondent claimed in the proceedings that this web page was a standard machine-generated “under construction” page set up by the registrar and that the links set out thereon were not his choice. However, there is no doubt that the Respondent had control over the contents of his website, as demonstrated by the fact that it promptly removed this links portal upon receiving notice of the dispute. In this respect, the Panel considers that the registrant of a domain name, with full control over the contents of the web page related to this domain name, is responsible for such contents. The Panel agrees with numerous prior panels that have held that using a domain name confusingly similar to a complainant’s mark to link to a website of the complainant’s competitor constitutes bad faith under the Policy (See, e.g., National City Corporation v. MH Networks LLC, WIPO Case No. D2004-0128; Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537). The Panel notes that the links and advertising banners appearing on the Respondent’s web site (in its version before the Complaint was filed) are clearly commercial in nature and are used for commercial gain.

In addition, the Panel finds that the Respondent must have been aware of the use of the name “televideo” by the Complainant and the fame of this name in relation to the Complainant’s services at the time he registered the domain name. The Respondent did not dispute, but admitted, that the Complainant’s trademark is known and associated with the Complainant’s services in Italy (“It is therefore rather clear that the claimed association of the “televideo” name with the Complainant’s service is non-existent in the minds of the Internet users at least outside Italy”; “[…] the claimed notoriousness and association do not exist outside Italy”). While the Panel agrees with the Respondent that his Italian citizenship is in itself irrelevant to the issue, it notes that there are several elements on record that establish that the Respondent should have been aware of the trademark, because of his links to Italy. In particular, the Respondent has been a professor at the University of Rome since 1995, and therefore likely spends a fair amount of time in Italy. This is confirmed by the fact that in the contact details provided by the Respondent when he registered the domain name, he mentioned as only phone number the number of his Italian cell phone.

Therefore, the Panel finds that the Respondent registered and used the domain name in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(I) of the Policy and 15 of the Rules, the Panel orders that the domain name, <televideo.tv>, be transferred to the Complainant.

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Fabrizio La Spada
Sole Panelist

Dated: March 26, 2006