Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant is Banca Popolare Friuladria S.p.A., an Italian Corporation whose principal place of business is Piazza XX Settembre 2, 33170, Pordenone, Italy, represented by Mr. Paolo Perani and Mr. Paolo Pozzi;

The Respondent is Mr. Giovanni Zago, an Italian national whose address is Via Aprilis 41, San Quirino, Pordenone, 33080, Italy, represented by Mr. Giovanni Pellegrino and Mr. Gualtiero Dragotti.

The domain names at issue are "FRIULADRIA.COM" and "FRIULADRIA.NET" and the corresponding registrar with which the domain names are registered is Network Solutions, Inc. (hereinafter "Network Solutions"), 505 Huntmar Park Drive, Herndon, Virginia 20170-5139, United States of America.

The complaint was submitted electronically and in hardcopy to the World Intellectual Property Organization Arbitration and Mediation Center (hereinafter the "WIPO Center") on July 14, 2000/July 19, 2000. The WIPO Center sent an Acknowledgment of Receipt on July 18, 2000.

On July 18, 2000, pursuant to Paragraphs 2 (a) and 4 of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "Rules"), the WIPO Center requested the Registrar, Network Solutions (1) to confirm that a copy of the Complaint had been sent to Network Solutions by the Complainant; (2) to confirm that the domain names at issue were registered with Network Solutions; (3) to confirm that the person identified as the respondent is the current registrant of the domain name; (4) to provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es) available in the registrar’s Whois database for the registrant of the disputed domain names, the technical contact, the administrative contact and the billing contact); (5) to confirm that the Uniform Domain Name Dispute Resolution Policy (hereinafter the "Policy") applies to the domain name; and (6) to indicate the current status of the domain name. On July 21, 2000, Network Solutions replied that: (1) Network Solutions was in receipt of the Complaint sent to them by the Complainant; (2) Network Solutions was the Registrar of the domain name registrations; (3) Zago, Giovanni was the current registrant of the FRIULADRIA.COM and FRIULADRIA.NET domain name registrations; (4) Registrant: Zago Giovanni (FRIULADRIA2-DOM) Via Aprilis 41, San Quirino, Italy 33080; Administrative Contact, Billling Contact: Zago Giovanni; (5) Network Solutions’ 5.0. Service Agreement was in effect; (6) the domain name registrations FRIULADRIA.COM and FRIULADRIA.NET were in "Active" status.

The policy in effect provides that: "8. DOMAIN NAME DISPUTE POLICY. If you reserved or registered a domain name through us, you agree to be bound by our current domain name dispute policy that is incorporated herein and made a part of this Agreement by reference. The current version of the dispute policy may be found at our Web site: http://www.networksolutions.com/legal/dispute-policy.html. Please take the time to familiarize yourself with that policy."

In light of the above and according to the documents filed with the Panel, the Complaint appears to have been filed in accordance with the requirements of the Rules and of the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "Supplemental Rules"). The Panel finds that the payment was properly made and agrees with the WIPO Center’s assessment concerning the Complaint’s compliance with the formal requirements: in accordance with paragraph 2(a) of the Rules, the Complaint was properly notified to the Respondent, on July 25, 2000, and a Response was filed on August 7, 2000. On August 8, 2000, the WIPO Center sent an Acknowledgement of Receipt to the Respondent. Subsequent to the filing of the Complaint, on August 2, 2000, the Complainant submitted an additional Brief with enclosures. On August 21, 2000, the Parties were informed that in accordance with Paragraph 6(f) of the Policy an Administrative Panel consisting of a single Member had been appointed. The sole Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence and the date scheduled for the issuance of the Panel’s decision was set for September 3, 2000.

In light of the foregoing, the Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Policy, the Rules and the Supplemental Rules.

Finally, in accordance to Paragraph 11 of the Policy and the registration agreement that relates to the domain name in question, the language of the administrative proceeding will be the language of the relevant registration agreement, i.e. English.

The Complainant alleges to own Community Trademark Registration No. 558361 "BANCA POPOLARE FRIULADRIA" (Device), filed on June 17, 1997, granted on March 1, 1999 in connection with Credit services and insurance underwriting of international class 36; to have rights to use the company name "BANCA POPOLARE FRIULADRIA", as a trademark, in connection with financial affairs, monetary affairs, banking services since 1990; and to be the owner of the Internet Domain name "FRIULADRIA.IT", registered on December 12, 1997.

The Complainant’s allegations, supported by copies of the trademark registration and other documents, were verified by the Panel.

A. Complainant

The Complainant alleges that the domain names "Friuladria.com" and "Friuladria.net" are confusingly similar to Banca Popolare FriulAdria’s trademark. According to the Complainant, the distinctive part of the trademark is contained in the word "FRIULADRIA" which is a fancy word. The words "BANCA and "POPOLARE" which mean "bank" and "popular"in the English language," are very common in connection with banking activities. In light of the above, so as to assess the similarity between the domain names at stake and the trademark "BANCA POPOLARE FRIULADRIA", reference should be made to the distinctive portion of the last word, which is identical to the domain names.

The Complainant gives several reasons why Mr. Zago has no legitimate interests or rights to the expression "FRIULADRIA" and further contends that the domain names at issue were registered and are being used in bad faith.

First of all, the Complainant alleges that the domain names were registered for the purpose of selling them to the Complainant since, according to the Complainant, in February 2000, Mr. Zago, offered to sell the domain names at stake to Banca Popolare FriulAdria (enclosed to the Complaint as Annex 7, is a copy of a letter dated February 24, 2000 sent by Banca Popolare FriulAdria to Banca Intesa, referring to Mr. Zago’s monetary requests). In addition, the domain name "FRIULADRIA.COM" was offered at auction on the web site of Afternic at the price of 15.000 US$ (enclosed to the Complaint as Annex 8, is a printout of the Afternic webpage housing the auction dated June 8, 2000). The request of Mr. Zago is abundantly in excess of the domain name registrant’s out-of-pocket costs directly related to the domain names.

In addition, the Complainant alleges that the domain names "FRIULADRIA.COM" and "FRIULADRIA.NET" have been registered in order to prevent Banca Popolare FriulAdria from reflecting its trademark in the corresponding domain names -since "it was clear that Banca Popolare FriulAdria, after having registered the domain name "FRIULADRIA.IT", could be interested in registering the corresponding domain name as top level domains ".com" and ".net"." - and are used primarily for the purpose of disrupting the business of Banca Popolare FriulAdria. To demonstrate such latter circumstance the Complainant filed as Annex 10, copies of the web pages relating to the above internet domains where the top buttons show, among other things, the following tag: "Disservizi" (inefficiencies). By clicking on the button, the Internet users can access pages where it is possible to file complaints in connection with the banking activities. For the Complainant "it is clear that the consumers may be confused by the presence of a complaint section on a web site named "Friuladria". The Complainant does not aim at preventing neither Mr. Zago nor anybody else from offering to Internet users a web site to discuss bank activities or to post complaints of consumers who are not satisfied with the bank services, but he does not believe that freedom of speech on the Internet requires the use of Banca Popolare FriulAdria’s trademarks in the domain names.

The Complainant also alleges that Mr. Zagos’s home page refers to other links, some of which have sexual contents. For the Complainant, the presence of these links is a clear attempt to tarnish the good reputation of Banca Popolare FriulAdria, since the clients and the prospective clients of Banca Popolare FriulAdria may assume that this bank is associated with sexual or pornographic activities which are not usually the type of services offered by a bank.

In addition, it is the Complainant's belief that Mr. Zago, by using the domain names "Friuladria.com" and "Friuladria.net", is trying to attract, for financial gain, Internet users by creating a likelihood of confusion with the complainant’s mark in such a way as to indicate the sponsorship of a service on the registrant’s web site, since the home pages of the web sites at issue show advertisements and refer to other links.

Finally, the Complainant indicates and includes evidence that Mr. Zago has also registered the following domain names, corresponding to well known trademarks registered and/or used by other Italian Banks: ROLOBANCA.NET, CRUP.NET, MONTEPASCHI.NET, ANTONVENETA.NET, CARIGO.COM, CARIVE.NET, CRTRIESTE.NET, AMBROVENETO.COM, BANCHINTESA.COM, BANCANTONIANA.COM, ROLOBANCA1473.NET, ROLOBANCA.ORG. All the above domain names are related to web sites that have the same contents as FRIULADRIA.COM and FRIULADRIA.NET, including the links to the adult oriented web sites. This shows that the main reason of Mr. Zago’s conduct is an attempt to tarnish the goodwill of the Italian Banks so he is using the domain names in bad faith.

Therefore, in accordance with Paragraph 4(b)(i) of the Uniform Policy for Domain Name Dispute Resolution (hereinafter "the Policy"), the Complainant requests that the domain names FRIULADRIA.COM and FRIULADRIA.NET be transferred to the Complainant.

Subsequent to the filing of the Complaint, the Complainant filed a supplemental Brief to indicate certain modifications in the web sites FRIULADRIA.COM and FRIULADRIA.NET, which were allegedly made after the Respondent had received the Complaint. The Respondent denies the admissibility of such further filing. The Panel believes that it is not necessary at this moment to decide upon such issue since the matter may become moot after discussing the Complaint and the Response.

2. Respondent

The Respondent denies all of the Complainant's assertions.

According to the Respondent there is no confusing similarity between the domain names at issue and the Complainant’s registered trademark since the latter is a word and device trademark resulting from a combination of elements which are not at all present in the domain names at issue. Furthermore, the respondent contends that the term FRIULADRIA is not a fancy word but a geographical sign which as such should not be regarded as a valid trademark. According to the Respondent, in the bank industry, it is common practice to add geographical names in the mark, but such inclusion, does not confer exclusive rights on the geographical name itself. Finally, the Respondent points out that the Complainant has failed to show any use upon the company name save for "a printout of a web page presumably prepared by the Complainant itself. This "evidence" is not reliable and should be disregarded".

The Respondent claims to have "as well as any other person who is intentioned to carry out an activity placed in or directed to said geographical region" a legitimate interest to register and use a domain name consisting of or including the word "friuladria". Precisely this intention would have been the reason for the Respondent's registration of the domain names at issue: to create "a portal website aimed to the community of the friuladria region....(with listings of) movie theaters programs, miniguide to the restaurants, ...of the pharmacies with the opening hours" . In addition, the Respondent alleges that the portal offers "a forum service for discussing the quality of the bank services in the region". In this connection the Respondent claims to have developed a character, the bancosauro, i.e. a mixture of a bank clerk and a dinosaur, to symbolize the slow and bureaucratic pace of the bank industry, for which he has filed a trademark. This would indicate that merchandising activities are well under way.

The Respondent claims to have incurred in substantial expenses, both for hardware and software purchases and advertising of the above mentioned initiatives. The Respondent further claims to have started use of the disputed domain names in connection with a bona fide offering of services "well before" any notice of the controversy.

The Respondent further alleges that the Complaint failed to demonstrate the Respondent's own bad faith.

First, the Respondent points out not to have registered the gTLD domain names "bancapopolarefriuladria.xxx" which are probably still available to the Complainant.

Second, the domain names at issue do not refer directly to the activity of the Complainant but were chosen solely for their link with the geographical region. The presence of some sexual orientated links are not sufficient to qualify the web site as adult oriented.

Third, even if the Respondent may consider the use of the domain name for profit, "currently he does not receive any profit" and in any case "the Complainant's arguments on this issue are not supported by any evidence".

Fourth, the Respondent "firmly" contests the Complainant's allegation that the Respondent tried to sell the disputed domain names. The evidence submitted by the Complainant is "false and misleading" and the Respondent filed a criminal complaint for libel.

It is not contested that the domain name FRIULADRIA.COM was included in a domain name auction web site. However such listing cannot be construed in the meaning of Section 4.b(i): "...the domain name was registered primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant" (emphasis added in the Response). The listing was only aimed at assessing the value of the domain name and no negotiation or offer concerning the possible sale of the domain name took place between the Respondent and the Complainant.

Fifth, the Respondent does not contest that he is the owner of other domain names but such circumstance alone cannot be construed as bad faith since the choice to do so would be a legitimate one as such domain names always make reference to the portal structure devised by the respondent and the circumstance that all such banks operate in the province of Pordenone. In addition, none of the said banks filed complaints or started a procedure against the Respondent "thereby implicitly recognizing the legitimacy of the Respondent's conduct and the groundlessness of the present Complaint".

Finally, as other relevant circumstances, the Respondent points out to the Complainant's awareness of the weakness of his legal claims as shown in the same letter where the alleged attempt of sale was reported, and to the results of a search of the word "FRIULADRIA" carried out on an Italian search engine. The matches were the Complainant's website FRIULADRIA.IT and the Respondent's FRIULADRIA.COM with the following description: "….to collect the voices of Internet navigators in connection with their accidents with the banks. Furthermore you can find an index of the commercial activities of the Pordenone town".

In an administrative proceeding, according to Paragraph 4(a) of the Policy, the Complainant must prove that each of following three elements are present: (1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (2) the Respondent has no rights or legitimate interests wih respect to the domain name; and (3) the domain name was registered and is being used in bad faith.

1) With regard to the first element, the Panel finds that FRIULADRIA.COM and FRIULADRIA.NET are confusingly similar to the Complainant’s trademark "Banca Popolare Friuladria".

Although the trademark is not absolutely identical to the domain names at issue, nonetheless the entire domain name consists of the distinctive and identifying part FRIULADRIA –as can be seen in the Complainant's trademark below.

The Panel disagrees with the Respondent's argument that FRIULADRIA is not a fancy name but rather a geographical sign.

The Panel checked in both dictionaries (Vocabolario della Lingua Italiana, Istituto della Enciclopedia Italiana, 1987, and Addenda 1997) and encyclopedias (La Piccola Treccani, Istituto della Enciclopedia Italiana, 1995) as well as in the list of protected geographical indications but could not find any trace or reference to the term FRIULADRIA. Such term appears, therefore, to be an arbitrarily coined word, possibly allusive or evocative of a certain geographical location, but nonetheless not part of the common Italian language or geography and as such must be held to be distinctive and perfectly capable to serve as trademark. Such conclusion is entirely consistent with the Respondent's arguments that in the banking sector it is customary to adopt as trademark geographical names upon which nonetheless no exclusive rights may be claimed. The Respondent’s examples easily allow a distinction to be made in the present case, since, as already indicated, FRIULADRIA is an arbitrarily coined word, while MILANO (in Banca Popolare di Milano) and ROMA (as in Banca di Roma) are not. In this regard, the Panel also notes the Respondent’s use of the domain names in connection with the discussion of banking services, and further notes the Respondent’s registration of additional domain names corresponding to the names of other banks.

There is little doubt in the Panel's mind that the domain names at issue are therefore fully capable of raising a likelihood of confusion with the Complainant’s trademark, even if the addition of the generic top-level domain (gTLD) "COM" and "NET" are not to be held relevant, since the use of a gTLD is required, is necessary and is functional to indicate the use of a name on the Internet and for the average Internet user it would not confer any further distinctiveness to any name.

Thus, the Panel is satisfied that the first condition has been met.

2) The Panel finds that the Respondent does not have any rights or legitimate interests in the domain names at issue.

The Panel disagrees with Respondent’s contentions to be entitled to the domain names at issue.

Under Paragraph 4(c) of the Policy a Respondent can establish rights or legitimate interest if it can be proven that:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the Domain Names, even if you have acquired no trade mark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel finds that - analogous to the list under Paragraph 4(b) of the Policy- such list is non exhaustive and other circumstances may be alleged. Keeping this in mind, the Panel evaluated the arguments and examined the documents enclosed in the Respondent’s brief in comparison to the Complainant’s claims and finds that the Respondent did not sufficiently establish his right or legitimate interests in the Domain names at issue.

Respondent has not shown that he commenced use of the Domain Names in connection with a bona fide offering of goods or services before any notice was given. Even assuming that an offering of goods and services had indeed taken place before any notice was given, the Panel does not find that such offering was made in good faith, since the Respondent knew very well that the rights to the term FRIULADRIA belonged to the Complainant.

The Panel find confirmation of this awareness in the Respondent’s same words and line of reasoning. As indicated above, the term FRIULADRIA is a distinctive term, and therefore Respondent’s opinion that himself or "any other person who is intentioned to carry out an activity placed in or directed to said region" was perfectly legitimized to register and use a domain name consisting or including such word" shows unmistakably that Respondent knew Complainant’s rights upon FRIULADRIA but nonetheless in light of his opinion went on and registered the domain names without asking Complainant’s permission or consent.

Furthermore, Respondent’s awareness of Complainant’s rights is also clearly shown in the Response and reiterated in the Criminal Complaint where the Respondent writes " …the underwritten wanted and used the domain name FRIULADRIA.COM to open a web-site where Internet users could report their bank-related accidents …." (translated from Italian): given such underlying motive it appears without any remaining doubt that registering the domain names FRIULADRIA.COM and FRIULADRIA.NET were instrumental to the Respondent, altough he was aware and knew of the of the Complainant’s rights to FRIULADRIA, to establish a direct link between the banking activities of the Complainant and the domain names at issue.

There are no particular problems about (ii) and Respondent did not claim anything about it.

As for (iii) the Panel finds that Respondent did not satisfactorily reply to Complainant’s allegations: neither those concerning Respondent’s commercial and unfair use of the Domain Names, nor about Respondent’s intent for commercial gain or to divert consumers or to tarnish the Complainant’s trademark. On the contrary, the Respondent has admitted the commercial scope of his venture - the Respondent has registered as trademark BANCOSAURO and has admitted that "…is in an advanced phase in the merchandising thereof, both through the website (emphasis added) and other initiatives…"-, does not exclude future use for profit and has clearly stated several timed that his portal "offers a forum service for discussing the quality of the bank services", which is per se a commendable initiative but not when the domain name where the forum is hosted is precisely the trademark under which those services are offered to the public at large.

The Respondent did not submit any other arguments in support of his claims.

In light of the foregoing the Panel is satisfied that Respondent has not shown any rights or legitimate interest in the present Domain Names.

3) The Panel finds that the domain names at issue were registered and are being used in bad faith.

Paragraph 4(b) of the Policy sets out a non exhaustive list of four circumstances, any of which, if found, is deemed to provide evidence of relevant bad faith registration and use.

The circumstances specified in paragraph 4(b) are the following:

(i) circumstances indicating that you have registered or you have 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 trade mark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Name; or

(ii) you have registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding Domain Name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, you 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 or location.

The Panel is aware that in many cases domain names are registered primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration. The Panel is also aware that contrary to what the Respondent affirms, it is now recognized that it is not necessary that the domain name be solely offered to the Complainant, not only because Paragraph 4(b)(i) also provides as evidence of bad faith to offer the domain name registration also (emphasis added) to a competitor, but because and similarly to the list under Paragraph 4(c), the two lists are exemplary only and do not purport to rigidly frame the circumstances which are relevant for a fair and proper decision.

Complainant has indicated that Respondent tried to sell the domain names at issue but the circumstances are only supported by a document which was written by the Complainant itself and the Respondent has so vigorously denied any offering for sale, that he has filed a Criminal Complaint.

The Panel is aware that since the policy has come into effect it is going to be always more and more difficult for the Complainant to proffer concrete evidence of the circumstance indicated under Paragraph 4(b)(i). The Panel finds therefore that the above described situation may happen over and over again, escalating, as in the present controversy, to criminal actions. Yet, the Panel believes that the mere filing of a criminal action should not prevent the Panel’s adjudication of a dispute unless it is introduced along with other concurring and concordant circumstances.

However, the circumstances of the present case are such that even if the Panel elected to totally ignore the alleged offer for sale, nonetheless there would remain other facts which independently indicate that the domain names at stake were registered and are being used in bad faith.

First of all it is undisputed that the Respondent auctioned one of the domain names. The Respondent said it was to assess the value of it, but it is nonetheless odd that as at today’s date- September 3, 2000 - the domain name is still on auction and even more so, the description of the name FRIULADRIA is "bank name".

Already this attempt of selling the domain name might be construed to show the Respondent’s bad faith. Yet the Panel is not satisfied, since such an attempt does not, per se, indicate a bad faith at the date of registration, but only a present bad faith use with regard to one domain name only.

However, the Panel finds it credible that at the time of registration the Respondent was already fully aware of the Complainant’s right to FRIULADRIA, Respondent was also aware that by registering the domain names at issue he would prevent the Complainant from obtaining them.

Such conclusion is supported by the illuminating and admitted fact that the Respondent registered as domain names the names of several Italian Banks. The registration of the domain names at issue is therefore entirely consistent with Paragraph 4(b)(ii) showing a bad faith, i.e. the actual existence of a pattern of Respondent’s conduct aimed to unlawfully appropriate as domain names, names which certainly do not belong to the Respondent.

The Panel cannot find any justification for such conduct, and the Respondent’s attempts to find legitimacy of his actions in the actual lack of reaction from the other banks’ owners of the names registered as domain names from the Respondent is, by all means, self-serving but frankly unconvincing: since when does an unlawful action become lawful solely because the offended subject does not react at once? What if another subject had, unbeknownst to this Panel, commenced another proceeding against the Respondent? Would have this automatically implied that the Respondent had acted in bad faith?

Only one of the circumstances indicated in paragraph 4(b) needs to be found in order to establish the occurrence of the third element required by the Policy. Having found that one such circumstance is present, the Panel need not examine the others.

As a consequence of such findings, the Panel need not address the admissibility of the supplemental brief.

In light of the foregoing, the Panel having found that Respondent’s disputed domain names FRIULADRIA.COM and FRIULADRIA.NET are confusingly similar to Complainant’s trademark, that the Respondent has no legitimate rights or interests in the disputed domain names and that the domain names were registered and are being used in bad faith, pursuant to Paragraph 4(i) of the Policy, orders the domain names FRIULADRIA.COM and FRIULADRIA.NET to be transferred to the Complainant.

Fabio Angelini
Panelist

Dated: September 3, 2000

Footnotes:

1. Such an assumption seems highly debatable in light of the fact that: 1) the documents supplied by the Respondent himself do not show any offerings but simply the "hits"-i.e. the number of contacts that the web page received; 2) such data refer only to one of the two web sites, FRIULADRIA.COM; 3) the data itself show that the number of hits is negligible until March 2000, after which the Respondent was contacted by the Complainant and given notice – the Criminal Complaint does not deny that a contact took place and the Complainant gave him notice of rights, but during such occasion the Respondent "never manifested any intention of re-selling to the Bank Friuladria the domain names" (translated from Italian); 4) the few invoices which are time-wise relevant –since many of them are subsequent to the registration of the domain names at issue (June-July 2000)- simply show that the Respondent engaged in computer hardware acquisitions, but they fail to show any connection with the activity related to the domain names at issue. Furthermore, the Panel may not overlook that Respondent has admitted to have registered several other domain names (all of which were registered on the same date as the domain names at issue were) and the circumstance that "Respondent is currently using all the domain names he registered" which create the inference that at the time of registering the domain names at issue, Respondent may not prove that there were unequivocal preparations undertaken with regard to the two domain names at issue.