News Trademarks, Domain Names, Copyright 2002

Domain names: Decisions (and indecisions).

1) WIPO Arbitration and Mediation Center decisions (DOMAIN.COM /.NET /.ORG).

2) Domain Dispute decisions for Italian domain names (DOMAIN.IT).

6.2.2002

The domain name BARBIE.IT is transferred to Mattel S.r.l. (see text of the decision) considering that the bad faith of the respondent is proved also because:

1) "it is difficult to believe that the respondent ignored the world wide reputation of the mark on which ictu oculi he could not claim any right or legitimate interest";

2) "the lack of use (passive holding) of the domain name is itself evidence of the respondent's bad faith (an offer for sale and/or a the intention to obstacle its legitimate use)."

22.11.2001

The panel transferred the domain name CORIAN.IT, CORIAN-SHOP.IT and COREAN.IT (see the decision) to DuPont, in particular:
- admitting as evidence of the Complainant's arguments an affidavit simply signed by the Complainant;
- admitting as further evidence the correspondence sent as "personal and reserved" by the Respondent;
- judging that the requested sums asked by the Respondent (75.000 Euro , 100.000.000 Lira and 10.000.000 Lira) and the lack of use of the domain names for over twenty months are evidence of bad faith on registration and maintenance;
- judging COREAN.IT similar to the mark CORIAN®.

26.3.2001

The Italian arbitration Panel has ordered the transfer of the domain name GIOCODELLOTTO.IT (see the decision) also finding that:
1) the printed pages of the Internet connection attempts to the contested domain name (html pages) are evidence of the lack of use before the filing of the Complaint;
2) the lack of an estimate of costs for the creation of a web-site, the simple registration of the domain name, and the documents filed by the Respondent (invoice) are not sufficient to proove a lawful preparation of use of the domain name for the offer of goods and services;
3) the respondent's request of 45.600.000 It. Lira for the transfer of the domain name exceeds the restoration of the reasonable costs and it is considered evidence of bad faith according to section 16.7.a.

7.12.2000

Under art. 16.6 lett. (b) "once the Complainant has proved his own right to the contested domain name and that the Respondent does not have any right to it, it is up to the respondent to prove his own right or entitlement to the said name".

"Although having had every opportunity to oppose these facts, the Respondent has not come forward in this procedure and has not opposed anything that has been stated and documented by the appellant. Nor has the Respondent even proved the existence of its own right or entitlement to the MASTERCARD.IT domain name or of a circumstance referred to in art. 16.6 for assuming the existence of a right to the contested domain name."

- "for these reasons, the court orders the cancellation of the domain name MASTERCARD.IT registered by Future Time di Marini Alessandro & C. s.a.s."

28.11.2000

The rejection of the appeal for the ASSCOND.IT domain filed by ASSOCOND (Italian Association of Joint-owners) against Asscond - confirms that the present procedure is not suitable in case of exclusive rights conflict - as already established by ICANN, with respect to the International domain names.

The decision states that: the existence of the ASSOCOND.IT domain does not prevent the Complainant being assigned a domain name perfectly matching its name 'ASSOCOND.IT'"; that an authorised, autonomous activity, totally different from the one of the Complainant, is carried out by the Respondent; that the Respondent has registered its trade name and the Complainant has already registered the ASSOCOND.IT. domain.

12.10.2000

In compliance with the new section 16 of the Italian naming rules, which came into force in August 2000, the owner of a right on a certain name can resort to arbitration in order to obtain transfer in his favour of the domain name registered by a third party.

In the first case handled, the Panel ordered the PERGAMAR.IT domain, already registered by Win Trade Srl, to be transferred in favour of Pergamar Spa, the Complainant.

It must be pointed out that the Panel, evaluated three basic conditions:

1) Win Trade's bad faith for failing to start the site seven months after the domain's registration and for already receiving by Pergamar evidence of the right to the identical name;

2) Pergamar's right for being the owner of TM registration of PERGAMAR as early as 1994, and for being the domain identical to the same company name, operating in the same region;

3) Win Trade's absence of the right, as Pergamar's evidenced right excludes per sé the Respondent's right unless otherwise demonstrated (not provided by Win Trade).

3) Italian Courts' decisions.

4) Work in progress.

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