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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

RCS Quotidiani S.p.A v. Mr. Gerard E. Praplan

Case No. D2006-0541

 

1. The Parties

The Complainant is RCS Quotidiani S.p.A, Milan, Italy, represented by Studio Legale Jacobacci e Associati, Italy.

The Respondent is Mr. Gerard E. Praplan, Geneva, Switzerland.

 

2. The Domain Name and Registrar

The disputed domain name <corriere.info> is registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2006. On April 28, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On May 1, 2006, eNom 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 16, 2006. The Center verified that the Complaint and the Amendment thereto 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 May 17, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 6, 2006. The Response was filed with the Center on June 2, 2006.

The Center appointed James A. Barker as the sole panelist in this matter on June 20, 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 the publishing company, in Italy and abroad, of newspapers and journals of the RCS Media Group, a company listed on the Italian Stock exchange. The Complainant also has an established presence in Spain, controlling Gruppo Unedisa, editor of “El Mundo”, in France, the publishing house Flammarion, and in Great Britain, GE Fabbri.

The Complainant is also the publisher of the Italian daily newspaper “Corriere della Sera”, first published in Milan, Italy in the year 1876. The newspaper is published daily from Monday to Sunday and is distributed in Italy as well as in Europe, America and Asia. “Corriere della Sera” has an average print run, as of January 2005 to December 2005, of 677,988 copies, with a number of subscriptions as of April 3, 2006, equal to 52,601.

In 1995, the Complainant launched its daily newspaper “Corriere della Sera” on the web and, in the year 1996, registered the domain name <corriere.it> as evidenced by the whois abstract enclosed hereto as Annex 4. In the month of March 2006, that website registered 5,747,000 hits and 227,703,000 visits to pages of the website.

The Complainant has registered CORRIERE DELLA SERA as a trademark since 1973 and owns national, international and EC trademarks that cover most publishing and editorial services. (The Complaint attached evidence of that marks registration in Italy, the EC, Canada, Brazil and Venezuela.)

 

5. Parties’ Contentions

A. Complainant

The following is summarised from the Complaint:

(i) Identical or confusingly similar

The Complainant’s domain name <corriere.it> was chosen as a natural consequence of the fact that the word “corriere” is the widely known and diffused short name of the newspaper “Corriere della Sera”. Corriere della Sera has, in fact, also been and is still today commonly known as “Corriere”, so that both in Italy and abroad its readers usually refer to the daily as “Corriere” and that term is synonymous with “Corriere della Sera”.

The disputed domain name <corriere.info> is confusingly similar to the trademark CORRIERE DELLA SERA owned by the Complainant and identical to the widely known and used short name of such daily newspaper “Corriere”. In addition, the disputed domain name is virtually identical to the domain name <corriere.it> registered by the Complainant on January 29, 1996, seven years before the registration of the disputed domain name.

(ii) Rights or Legitimate Interests

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the domain name. There is no evidence that would satisfy any of matters listed in paragraph 4(c) of the Policy, which sets out circumstances that may demonstrate a respondent’s legitimate interest. The Respondent has no registered trademark identical or similar to the disputed domain name, which the Complainant claims is evidence of the fact that the Respondent has no real business interest in the disputed domain name.

(iii) Registered and Used in Bad Faith

The Complainant claims that the disputed domain name was registered and is being used in bad faith.

The Respondent’s website demonstrates no relevant interest, other than to sell the domain name. The Respondent’s website does not offer any goods or services but only re-directs users to links of third party websites. The website of the Respondent is indeed nothing more than a container of links to other websites.

The Respondent’s website is in the Italian language - confirmation of the fact that the Respondent is using the domain name, identical to the one of the Complainant, in order to disrupt the competitor’s business and confuse the Italian web users, who are fully aware of the famous trademark CORRIERE DELLA SERA and its corresponding daily known as “Corriere” as well as its website developed under the domain name <corriere.it>.

The Complainant contends that the Respondent takes advantage of the notoriety of the Complainant’s trademark CORRIERE DELLA SERA and of its daily newspaper also known as “Corriere” and on line on the website “www.corriere.it” to attract, for commercial gain, Internet users to its website which enable the Respondent to sell advertising space and links to third party websites on his site at the disputed domain name.

B. Respondent

(i) Identical or confusingly similar

The Respondent claims that the domain name <corriere.info> is a generic name and cannot be confused with a trademark with the name being part of this trademark. In Italy alone, there are some 285 trademarks which have the name corriere in their denomination and “corriere della sera” is only one of them.

(ii) Rights or legitimate interests

The Respondent contends that it has legitimate interest in respect of the domain name for the following reasons:

The name “corriere” is a generic word as it is the Italian translation of the word “mail” and is used in the daily conversation and written expression of millions of people in Italy and worldwide. The Respondent has registered the domain name with the intention to use it in the future and to offer Internet users a free email service under the name <CORRIERE.INFO>, for example “you@corriere.info”. The word corriere is appropriate for an email provider. The Respondent points out that he launched such a service under the name “<heidimail.com>” which has been active since 2000. Therefore, it is obvious that the Respondent has a legitimate interest in the disputed domain name as he has the intention to use it in Italy and worldwide. The fact that the Complainant has registered the domain name <corriere.it> back in 1996 does not give it any right to the .info extension.

(iii) Bad faith

The Respondent submits that the disputed domain name has been registered in good faith. The Complainant had the possibility to register the disputed domain name during the Sunrise period and well after that, but renounced to do it, showing that it had no interest in the said domain name.

The domain name is not used in bad faith. In fact, the domain name has been registered with eNom under an account called “name only” in which the registrant does not have the possibility to change the name servers. Apparently, the domain is redirected on pages used by eNom to display ads. The Respondent has never used this domain name nor has he earned any money from the ownership of it. Therefore, the Complainant cannot claim a use in bad faith as the domain has never been used by the Respondent.

The Complainant and the Respondent are not competitors and the domain name was not registered by the Respondent primarily to disrupt the Complainant’s business.

 

6. Discussion and Findings

For the Complaint to succeed, the Complainant must prove that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i)); and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)); and

(iii) the domain name was registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).

Paragraph 4(a) of the Policy provides that the Complainant must prove all of these three elements, which are discussed respectively below.

A. Identical or Confusingly Similar

There is no dispute that the Complainant has rights in the trademark CORRIERE DELLA SERA, in Italy and other jurisdictions. The disputed domain name is self-evidently not identical to that mark.

The question then is whether the disputed domain name is confusingly similar to the Complainant’s registered mark CORRIERE DELLA SERA.

Confusing similarity will naturally be more difficult for a complainant to establish where its mark contains generic/descriptive terms, unless a complainant can demonstrate that the mark is sufficiently distinctive. The more distinctive the mark, the more likely it is that an Internet user would associate it with a domain name that incorporates the mark.

However, in this case, the Complainant’s mark contains highly generic terms. Generic terms are not, on their own, distinctive. Such terms have one or more meanings - beyond their meaning in the context of a particular mark.

The Panel understands that the term “corriere” can be translated in English as “courier”, and the terms “corriere della sera” could together be translated as “evening courier” in English. The Panel proceeds on this understanding, although there were no statements in the Complaint as to the meaning of these terms. On the other hand, the Respondent stated that the term “corriere” is the Italian translation of the word “mail”, which appears to this Panel to be incorrect. But even if it were correct, the word “mail” does not appear to be any less generic than the term “courier”. Accordingly, the Panel accepts that the term is a generic one. The Complainant has provided no evidence to the contrary.

Complainants have succeeded under this element of the Policy in such cases where a domain name incorporated a mark entirely. (See e.g. Sand Cph A/S v. Poddar, Sandeep, WIPO Case No. D2004-0927, involving the trademark SAND). Complainants have also succeeded where the complainant has demonstrated rights in a sufficiently distinctive combination of generic terms, where the combination itself does not appear generic. (See e.g. RuggedCom, Inc. v. LANstore, Inc, WIPO Case No. D2005-0760, involving the terms “rugged” and “com” - the latter as an abbreviation of the word “computer”). However, there have also been cases where such combinations have been found to be too descriptive to create confusing similarity. (See e.g. Hotels Unis de France v. Christopher Dent / Exclusivehotel.com, WIPO Case No. D2005-1194, involving a trademark including the words EXCLUSIVE HOTELS.)

In this case, the Complainant’s mark is not wholly incorporated in the disputed domain name. Neither is the Complainant’s mark incorporated in the domain name as a distinctive combination. The disputed domain name includes a single generic term, which is not identical to the Complainant’s registered mark.

The Complainant argues that the term “Corriere” has acquired a distinctive meaning associated with the Complainant’s mark CORRIERE DELLA SERA. The Complainant asserts this on the basis that its mark CORRIERE DELLA SERA is commonly known as “Corriere”. In support of this, the Complainant attaches copies from publications that refer to the newspaper “Corriere della Sera”. It is implicit in this contention that, if the term “Corriere” is distinctively associated with the Complainant’s mark, that its use in the disputed domain name is confusingly similar to that mark.

However, the Complainant’s evidence does not clearly establish that contention. In most of the copies of publications attached to the Complaint, the first relevant reference is to “Corriere della Sera”, and then only subsequently to “Corriere”. This suggests that the term “Corriere” is used in those articles more for subsequent brevity than because “Corriere” is a commonly known term for or distinctive identifier of “Corriere della Sera”. Similarly, the term “Corriere” appears in the headings to articles, where it would naturally be expected that an editor would merely abbreviate, rather than use the term because it is commonly synonymous with “Corriere della Sera”.

For all these reasons, the Panel finds that the disputed domain name is not confusingly similar to the Complainant’s mark. This finding also appears generally consistent with previous panel decisions, involving similar circumstances to this case (in addition to the cases cited above, see also High-Class Distributions S.r.l. v. Onpne Entertainment Services, WIPO Case No. D2000-0100; Capt’n Snooze Management Pty Limited v. Domains 4 Sale, WIPO Case No. D2000-0488; Dial-A-Mattress Operating Corp. v. Ultimate Search, WIPO Case No. D2001-0764).

B. Rights or Legitimate Interests, Registered and Used in Bad Faith

For the reasons set out above, it is not necessary for the Panel to make findings in relation to these elements of the Policy.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.

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James A. Barker
Sole Panelist

Dated: July 7, 2006