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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Robilant & Associati Srl v. POWERLAB snc (ROBILANT6-DOM)

Case No. D2006-0991

 

1. The Parties

The Complainant is Robilant & Associati Srl, of Milan, Italy, represented by Studio Legale Perani, Italy.

The Respondent is POWERLAB snc (ROBILANT6-DOM), of Milan, Italy.

 

2. The Domain Names and Registrar

The disputed domain names <robilant.com>, <robilant.net>, and <robilant.org> are registered with Network Solutions, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2006. On August 5, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain names at issue. On August 7, 2006, 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 August 8, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 12, 2006. The Response was filed with the Center on September 12, 2006.

The Center appointed Anthony R. Connerty as the sole panelist in this matter on September 21, 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 Complaint sets out the history of Robilant & Associati: it was founded in 1984 and is Italy’s leading company “in brand advisory and strategic design, as well as an important player at the international level, helping companies to valorise their brands, products and services.”

The Complainant has its headquarters in Milan and an office in Shanghai. Robilant & Associati has won several awards for the best packaging designs and is known worldwide “being the designer of logos and product packaging for clients of international reputation, such as Fiat, Martini, Barilla, Bacardi, Campari, Heineken, Ferrero and others.” Annex C to the Complaint lists the main clients and clients’ Corporate and Product Branding names: Alfa Romeo, Coca Cola Italia, Allied Domecq, Kraft, Lipton, Unilever, Walt Disney, and so on.

There are two factual matters that should be mentioned at this stage, which matters the Panel deals with in more detail later. First, the Complainant has not registered the name “Robilant” as a trademark. Second, the Complainant says that the disputed domain names, although registered by the Respondent, were registered by the Respondent at the request of – and at the expense of – the Complainant, with instructions that the registrations were to be in the name of the Complainant.

 

5. Parties’ Contentions

A. Complainant

The Complainant says that in the year 2000 it “charged the Respondent, the Italian company Powerlab snc, with the registration of the domain names <robilant.it>, <robilant.com>, <robilant.net> and <robilant.org>, as well as with the administration of the relative web sites and of the Complainant’s e-mail account.” Copies of the invoices covering the period 2000-2005 are attached to the Complaint at Annex D. The domain names were registered in April 2001 “as the Respondent proceeded with the registration, as well as with the annual renewals, just after the payment of the relative invoices.”

In November 2005, the Complainant decided to administer its web sites and e-mail itself, in order to cut unnecessary expenses: “ the costs charged every year by the Respondent, above all in relation to the domain name renewal, was really excessive. On such occasion, the Complainant discovered, with extreme surprise, that the domain names <robilant.it>, <robilant.com>, <robilant.net> and <robilant.org>, of which Robilant & Associati supposed to be the owner, were actually registered in the name of the Respondent.”

The Respondent refused to transfer the domain names to Robilant & Associati, and the Complainant says that “ Unfortunately, we have no written evidence of the Respondent’s offer to sell the domain names at stake. The Complainant was even willing to make an offer, solving the matter amicably, but the Respondent’s request was too high, if compared with the expenses related to the out-of-pocket costs directly related to the domain names. Luckily, the Complainant succeeded in obtaining the transfer, against the Respondent’s will, of the domain name <robilant.it>, but the Respondent is still the owner of the other three domain names, <robilant.com>, <robilant.net> and <robilant.org>.”

The domain names are now linked to the Complainant’s old web site, which is different from the new one on “www.robilant.it”: “As it can be noted from the printouts of the home pages of “www.robilant.com”, “.net” and “.org” (see Annex E), in these websites there is a message saying that the new site is under construction. The present situation is causing relevant damages to the Complainant, as all its foreign clients, which usually look for the websites .com, .net and .org, are not able to visit the new website. The old website has not an English version and contains wrong and not updated information. Moreover, it has to be noted that the Complainant is also a website designer: the circumstance that its own website has been appearing to be under construction since the end of 2005 (which means for nearly nine months) surely does not represent a good promotion for the name of Robilant & Associati.”

B. Respondent

In an e-mail to the Center dated September 12, 2006, quoting the case number in this matter, Juan Pisano made a number of points. The email is obviously intended to constitute the Response of the Respondent (the Center’s Request for Registrar Verification resulted in a reply from Network Solutions showing the Billing Contact as [e-mail address]@powerlab.it). The Center acknowledged receipt of the Response on September 13, 2006.

The points in the Response that seem to be relevant are:

1. It was intended to “rent the domain names for 5 years and sell them”;

2. The Respondent refuses to give the domain names to the Complainant “as I have a society in Spain that is offering to me 20,000 dollars for the 3 domains”;

3. If the Respondent sells “with 800 or 1200 % recharge means that I am very good seller”;

4. Robilant Associati is in debt to Powerlab in the sum of 2,300 euros.

 

6. Discussion and Findings

The Rules state that the Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate: paragraph 15 of the Rules.

Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements in order to be entitled to the relief sought:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name for the purposes of paragraph 4 (a)(ii) of the Policy. The list of circumstances is non-exhaustive.

For the purposes of paragraph 4(a)(iii), paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith.

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

A. Identical or Confusingly Similar

The Complainant deals first with the point mentioned earlier, namely, that the name “ROBILANT” has not been registered as a trademark.

The Complainant contends that several WIPO UDRP Decisions “have clarified that par. 4(a)(i) of the Policy does not require the existence of a registered trademark or service mark.” Reference is made to a number of WIPO cases, and particular reliance is placed on the decision in CavinKare Private Limited vs LaPorte Holdings, Inc. and Horoshiy, Inc., WIPO Case No. D2004-1072 (“It would be illogical to deny the protection offered by the Policy simply because a trademark, otherwise well-established, recognized and understood, had not yet been registered”).

Further, the Complainant contends that both Community and Italian trademark laws grant protection to unregistered trademarks, company names and business names. In particular, the Complainant argues that Italian law - the relevant law for both Complainant and Respondent - provides for the principle of “uniqueness of distinctive signs”. That rule “prohibits ((to adopt as business name, company name, insignia or domain name a sign identical or similar to an earlier trademark)), not requiring the existence of a registered one (see Art. 22 of d.lgs. 30/2005). Moreover, the Italian Civil Code specifically protects the business name as a distinctive sign, establishing that ((the entrepreneur has the exclusive right of using the business name adopted)) (see Art. 2563). Thus, according to Italian law, all the distinctive signs are equally protected, regardless of their registration.”

On the facts of this case, the Complainant contends that it has gained exclusive rights on theRobilant name “due to a prolonged and extended use since 1986, year of constitution of the company. ‘ROBILANT’, in fact, is the patronymic of the company founder and actual owner, Maurizio di Robilant. The Complainant, thus, is commonly known as “Robilant”, as “Associati”, which is the Italian for “Partners”, has no distinctive character.”

As evidence of the continuous and actual use of the business name “robilant ”, the Complainant exhibits at Annex F to the Complaint a title search taken from the Chamber of Commerce of Milan which shows that the company was constituted on November 13, 1986, and registered on February 3, 1987. Business activity started on January 20, 1987, and is still persisting. The Complainant has therefore “been using the name ‘ROBILANT’ for nearly 20 years. In 1999 the company was subject to a division, with the constitution of a new company, Madiro Srl. On 2001, Robilant & Associati’s employees were 20.”

In addition, the Complainant says that the term “ROBILANT” has been extensively used by the Complainant as an unregistered trademark prior to the date of registration of the disputed domain names in April 2001. The Complainant submits documents from third independent parties referring to the Complainant’s activities:

- Copies of the “Silver Plaque” for best packaging, award granted by the specialized journal “Advertiser” for the years 1996-2000 are exhibited at Annex H;

- 1998-2001 Press reviews, including the following journals: Advertiser, Food, GDO Week, Verpackungs, Tv Key, Il Sole 24 Ore, Imballaggio, Pubblicitа Italia, Pack and Shock, Civiltа del Bere, Mediastars are exhibited at Annex I. Products included in the reviews are Martini and Nescafe.

The Complainant makes the point that it had itself “chosen the domain names at stake for its web site. Anyway, it is clear that the domain names <robilant.com>, <robilant.net> and <robilant.org> exactly reproduce the name “ROBILANT”, which – as explained above – is the distinctive part of the Complainant’s denomination and the patronymic of its founder.”

The Panel is satisfied that the Complainant has proved unregistered trademark rights.

Lest there be any doubt on the point, the Panel notes that the incorporation of “.org”, “.com” and “.net” could not help the Respondent. It has long been held by WIPO UDRP panels that the addition of “.com” is non-distinctive because it is a gTLD required for registration of a domain name. See for example, Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127: “the addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants.”

The Respondent has not sought in its Response to challenge the Complainant’s submissions or evidence in relation to the requirements of paragraph 4(a)(i) of the Policy. The Panel is satisfied that the Complainant by its evidence and its submissions has proved the requirements of paragraph 4(a)(i) of the Policy.