Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Complainant is Recordati Industria Chimica e Farmaceutica S.p.A., Via Civitali 1, Milan, Italy.

Respondent is Domain Name Clearing Company, LLC, 4640 Jewell, Ste. 202A, San Diego, CA 92109 U.S.

The domain name in issue is RECORDATI.COM; the Registrar is Network Solutions Inc.

The complaint was filed on March 22, 2000, by e-mail and on March 24, 2000, by mail. On March 27, 2000, the WIPO Arbitration and Mediation Center (the Center) acknowledged receipt of the electronic version of the domain name Complaint and assigned the Complaint case number D2000-0194.

On March 28, 2000, the solicitors for the Complainant e-mailed the Center a copy of an e-mail sent by the Respondent to the Complainant. On April 4, 2000, the Center forwarded a Formal Acknowledgement of Receipt of Complaint to the Complainant. On the same date of April 4 the Center forwarded a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent. The Center informed the Respondent that a Response to the Complaint was due within 20 calendar days, the last day for sending the Response to the Complainant being April 23, 2000. The Respondent was also informed that if the Response is not sent by April 23, 2000, the Respondent will be considered in default.

A Notification of Complaint and copy of the Complaint were also forwarded to the Registrar Network Solutions, Inc. on April 4, 2000. On April 7, 2000, Network Solutions, Inc. e-mailed a Verification Response to the Center. The information contained in the Verification Response shows that Domain Name Clearing Company, LLC at 4640 Jewell, Ste, 202A, San Diego, CA 92109, US, Tel. No. (619) 2340-8264 is the current registrant of the recordati.com domain name registration. The domain name recordati.com is on "Hold" status.

On April 25, 2000, the Center e-mailed the Respondent a Notification of Default for failure to meet the deadline of April 23 stated in the Notification of Complaint and Commencement of Administrative Proceeding. On the same date of April 25, 2000, a representative of the Respondent forwarded a Response to the Complaint by fax. On April 25 the representative for the Respondent e-mailed the Center advising that the Respondent had just received the Notification of Default and advised that there must be some error as the Respondent did file a Response. On April 28, 2000, the representative for the Respondent forwarded an e-mail to the Center requesting confirmation that WIPO had received the Response. On May 15, 2000, the Center sent an e-mail to the Respondent advising that the Response was not received by April 23, 2000, but was filed by fax on April 25, 2000, after the due date, and advised that the Panel would be nominated and it was up to the Panelist to accept a late submission of the Response. On May 15, 2000, the Center forwarded a Notification of Appointment of Administrative Panel to the Parties.

On May 28, 2000, the representative for the Respondent sent an e-mail to the Center advising that a family member was having serious surgery and the representative would have to leave the country, requesting that the panel delay releasing its decision until June 12, 2000. Also on May 28, 2000, the Center forwarded a copy of this e-mail to the Panelist and the Complainant. The Complainant responded by e-mail advising that they objected to the delay.

On May 29, 2000, the Panelist faxed a letter enclosing Administrative Panel Preliminary Rulings to the Center. The Preliminary Ruling established (1) that the non-compliance with filing the Response on April 25, 2000, shall not be considered a default; (2) that the Panel would extend the period of time in which to render a decision until June 12, 2000; (3) that the Panel requests that the Complainant file further documents supporting the statements made in the Complaint, any such documents to be filed by June 8, 2000.

On June 8, 2000, the Center e-mailed the Parties and the Panelist advising that since there was a delay in sending the Ruling to the Parties the Panelist may determine a new deadline for the Parties to present their documents. Also on June 8, 2000, the Center advised that Panelist that the Center had received an e-mail from the Complainant’s representative asking what kind of additional document they should provide the Panelist.

On June 9, 2000, the Panelist sent by e-mail and fax a letter to the Center advising that the time limits in the Preliminary Ruling are withdrawn and setting a new time limit of June 19, 2000, by which the Complainant may file evidence supporting the statements in the Complaint; advising that the Respondent shall have five days after transmittal of Complainant’s evidence to respond to any additional material; advising that the decision will be rendered 5 days after expiry of the extensions.

On June 12, 2000, the Complainant sent an e-mail to the Center advising that it was attaching the Complainant’s further deductions as requested by the panelist and also advising that a hard copy duly signed by Recordati S.p.A. with all the attachments will also be sent to the Center by fax and courier. On June 13, 2000, the Complainant sent a letter dated June 13, 2000, by courier to the Panelist and the Center enclosing the Recordati S.p.A. Annual Report 1999 and advising that the Complainant was forwarding the Respondent the Recordati S.p.A. Annual Report 1999, in addition to the evidence supporting Recordati’s statements. On June 16, 2000, the Center acknowledged receipt of the Complainant’s e-mail dated June 12, 2000, with attachments and advised that the Center was forwarding the same to the Panelist. As the Panelist did not receive any material apart from the Annual Report, the Panelist e-mailed the Center on June 22, 2000, advising that the Panelist had received the Recordati S.p.A. Annual Report from Recordati under cover of their letter dated June 13, 2000 and requested the Center to confirm that there was no additional material; the Panelist also requested that the Center provide the Panelist with the date on which the Respondent received any and all additional material submitted by the Complainant.

On June 28, 2000, the Center e-mailed the Panelist advising that the only attachment to the Complainant’s petition was the annual report. The Complainant had advised the Center that the petition and attachments would be forwarded to the Panelist. The Center attached to its e-mail a copy of the petition, and advised that that a copy of the report and petition were sent on June 28, 2000, to the Respondent. The petition referred to in the Center’s e-mail is entitled "Authorized Memory for the Complainant".

On July 4, 2000, the Panelist e-mailed the Center advising that as July 4 is a holiday in the USA, the Respondent’s office will likely be closed and Respondent will not receive his mail until July 7. The Panelist also advised that the Complainant must courier his annual report to the Respondent. Also on July 4 the Panelist e-mailed the Center advising that the Panelist had not received the copies of the press releases and article on the international press which the Complainant advised was attached to the hard copy of the Annual Report; advising that the Complainant must courier a copy of these documents to the Panelist and also to the Respondent by July 7. Respondent will have until July 14, 2000, to file evidence/submissions and a decision will be rendered by the Panelist by July 21, 2000.

On July 5 the Center faxed to the Panelist copies of the press releases and articles sent by the Complainant as attachments to its petition of June 16, 2000.

On July 13 the Center advised the Respondent that it had received an additional submission by the Respondent and that it would forward the submission on July 14, 2000, to the Complainant and the Panel by fax. The documents were received by the Panelist by fax on July 14.

The Complaint is based on the ownership of a United States Trademark for RECORDATI registered by the Complainant in the United States of America under Registration No. 695,541 on April 5, 1960, in class 18 for the goods pharmaceutical, veterinary, hygienical and medicated dietetical products for invalid’s use, medicated plaster. The trademark RECORDATI has been used by the Complainant as part of its corporate name and trademark in relation to pharmaceutical, veterinary, hygienical and medicated dietetical products for invalid’s use and medicated plaster since at least as early as 1960. The Complainant further submits that the word "recordati" has no meaning in the English language.

A. Complainant

(i) The Complainant submits that the domain name recordati.com is identical to the Complainant’s registered trademark RECORDATI.

(ii) The Complainant submits that the Respondent has no rights or legitimate interests in the domain name recordati.com.

(iii) The Complainant further submits that the domain name is registered and is being used in bad faith.

With respect to the first allegation (i) that the domain name recordati.com is identical to the Registrant’s registered trademark RECORDATI the Complainant attaches as Annex C copies of the Complainants registered United States Trademark RECORDATI and renewal certificates. The trademark was registered on April 15, 1960, under Registration No. 695,541 in relation to pharmaceutical, veterinary, hygienical and medicated dietetical products for invalid’s use, medicated plaster. The domain name recordati.com contains the whole of the Complainant’s registered trademark RECORDATI. The additional element .com is irrelevant in trademark terms, since it is wholly descriptive and non-distinctive, referring to a top level generic domain name.

With respect to the second element (ii) whether the Respondent has no rights or legitimate interest in respect of the disputed domain names, the Complainant’s submits that the Respondent is not making legitimate non-commercial or fair use of the domain name without intending to mislead and divert customers or to tarnish Complainant’s Trademark for commercial gain. The Respondent’s use of RECORDATI in the domain name recordati.com is not authorized by Complainant.

With respect to the third element (iii) that the Respondent has registered and is using the domain name recordati.com in bad faith, the Complainant submits that the Respondent was aware that RECORDATI is a registered trademark of the Complainant and that the RECORDATI brand name and trademark are well known in the pharmaceutical business, especially in Europe, but also in the United States. Complainant’s trademark has been used extensively throughout the world for at least 40 years. The Complainant registered the domain name recordati.it in 1996. The Complainant submits that when the Complainant started the registration process for recordati.com in 1997, it found that the Respondent had already registered the domain name recordati.com on March 20, 1997. The Complainant sent a cease and desist letter to the Respondent asking the Respondent to transfer the domain name to the Complainant and subsequently advised Network Solutions of this fact. Network Solutions put the domain name recordati.com on "hold" on December 10, 1998, pursuant to Section 9 of the dispute resolution policy applied by Network Solutions. The domain name recordati.com has never been used in association with a website. The Complainant submits that the Respondent does not intend to use the domain name but intends to profit from its sale to the legitimate owner of the identical trademark for a relevant amount of money.

Further submissions of the Complainant

The Complainant submitted the 1999 Annual Report of Recordati S.p.A. and several press releases as documentation to support its complaint. The Annual Report provided details of the substantial sales, growth and investments made by Recordati S.p.A. and gives evidence of the relevant presence of the Recordati group in many countries throughout the world. The international press releases refer to the purchase by the Recordati group of a large Italian pharmaceutical company and serve to establish the presence of the Recordati group in the various markets and the use of its tradename and trademark RECORDATI.

The Complainant submitted an additional submission by e-mail June 28, 2000.

In its additional submission the Complainant repeated its earlier submission that the domain name recordati.com which was registered by the Respondent in 1997 had never been used. No offering of goods or services has ever been undertaken by Domain Name Clearing Company, LLC using the domain name recordati.com in the United States or elsewhere by the Respondent prior to the filing of the Complaint. Complainant further submits that Respondent’s claim that the "recordati" is a voluntary misspelling of the Italian word "ricordati" is a "quite risible attempt" to justify its use of the word. Complainant submits that it is unlikely that the Respondent was unaware of the existence of the registered trademark when he registered the domain name. Complainant further submits that the domain name was put on hold only on December 10, 1998, but the Respondent has taken no action since that time, apart from renewing the registration, either to complain or react to the Complainant’s correspondence concerning its domain name. Complainant suggests that this is evidence that the registration was made in bad faith. Complainant submits that Respondent failed to provide any evidence of its good faith.

Complainant claims that under the heading First Element, it has established rights in its registered trademark RECORDATI by virtue of use and registration; has established that the distinctive element of the both Domain Name is identical to Complainant’s registered Trademark RECORDATI and that Complainant has satisfied its burden regarding Paragraph 4(a)(i) of the Policy.

Complainant claims that under the heading Second Element, it has established that Respondent is not using, has not used and does not intend to use the Domain Name with a bona fide offering of goods or service; Respondent is not and has not been commonly known by the Domain Name; is not making legitimate non-commercial or fair use of the Domain Name without intending to mislead and divert customers or to tarnish Complainant’s Trademark for commercial gain; and Respondent’s use of RECORDATI in the Domain Name is not authorized by Complainant; the Domain Name is not currently being used by Respondent or anyone else as uniform resource locators. The Complainant submits that it has satisfied its burden regarding Paragraph 4(a)(ii) of the Policy.

Complainant claims that under the heading Third Element, (bad faith) that Complainant has established that Complainant’s Trademark RECORDATI has been used extensively throughout the world for at least 40 years and that the Complainant’s Trademark is famous and valuable; Complainant has established that Respondent has previously registered recordati.it; Complainant submits that Respondent’s behaviour in this case is consistent with the profile of a professional cybersquatter; Complainant cannot imagine any good faith purpose for which Respondent might have registered a domain name in which the distinctive element of the domain name is identical to the trademark RECORDATI; Complainant claims that Respondent registered the domain name primarily for the purpose of selling, renting or otherwise transferring the Domain Name to the Complainant for profit and that the Respondent has registered and is using the domain name in bad faith.

Complainant claims that Respondent registered the Domain Name to prevent Complainant from registering the Domain Name which corresponds to its Trademark RECORDATI.

Complainant submits that it had conducted a search on the web and using the services of several public and private databases, including the one hosted on the San Diego Chamber of Commerce web site, and could not find any reference to the company Domain Name Clearing LLC. The only contact with the Respondent has been with the few e-mails sent to the attention of WIPO, and the late filed reply to its complaint.

Complainant submits that the only presence of the Respondent visible on the Web seems to be the web site "www.LexLaw.com" on which Mr. C. Truax maintains what seems to be a "virtual" international legal service. The physical address indicated on the LexLaw web site is 2630 First Avenue, Ste. 202, San Diego California 92103, which is the same address given by Domain Name Clearing Company with its domain name registration. Complainant submits that the two entities are in fact operating from the same offices, which can only be the offices of Mr. C. Truax, who signed the Respondent filing.

Complainant refutes Respondent’s assertion that RECORDATI is a common mis-spelling of the Italian word "ricordati". Complainant submits that Respondent’s assertion concerning the choice of word and the misspelling of ricordati is not credible and supports the claim that Respondent chose the word for the purpose of attempting to attract Internet users to Respondent’ website by creating a likelihood of confusion with Complainant’s Trademarks. Complainant submits that registering a domain name for the purpose of operating such a website is registration and use of the domain name in bad faith. Complainant submits that it has satisfied its burden regarding Paragraph 4(a)(iii) of the Policy.)

B. Respondent

In a letter dated April 21, 2000, the Respondent denied the allegations in the Complaint and advised that the Complainant did not state a single fact which suggests that Respondent had made any bad faith use of the domain name. Respondent submits that Domain Name Clearing Company, LLC has not used the domain name to injure complainant and has not tried to sell the domain name to complainant. Respondent submits that Respondent has not used the domain name to make people think there was a connection between Respondent and Complainant.

Respondent submits that the domain name has been on hold (and therefore unusable) since December of 1998.

Respondent submits that it had no knowledge of any trademark registration by complainant in the United States or anywhere else.

Respondent submits that "recordati" is an intentional misspelling of "ricordati".

Further submissions of Respondent

On July 14, 2000, Respondent filed a letter in response to the additional submissions of the Complainant.

Respondent objected to the submission that Respondent’s general pattern of conduct in relation to domain names that incorporate the trademark of others is consistent with the profile of a professional cybersquatter. In particular the Respondent stated that there was no evidence of any general pattern of conduct of the Respondent.

Respondent submits that Complainant has not alleged any facts and has not offered evidence demonstrating that Respondent is using the domain name in bad faith. The suggestion by Complainant that Respondent’s failure to make use of the domain name demonstrates that Respondent was using the domain name in bad faith is not logical, when the domain name is on "hold".

Respondent submits that with respect to bad-faith registration, Complainant has not offered any evidence that Respondent registered the name in bad faith or that Respondent was aware of the Complainant’s trademark.

Respondent has enclosed as Exhibit A an example of misspelling of an Italian restaurant’s name as support for the contention that misspelling non-English words is a common technique used in the United States to achieve proper pronunciation in the English language of foreign words.

(i) The Complainant submits that the domain name recordati.com is identical to the Complainant’s registered trademark RECORDATI.

(i) Complainant is the owner of United States Trademark Registration No. 695,541 for the trademark RECORDATI, registered April 5, 1960, on the Principal Register in association with pharmaceutical, veterinary, hygienical and medicated dietetical products for invalid’s use, medicated plaster. The Complainant has supplied the Panel with a copy of United States Registration No. 695,541 for RECORDATI. United States Registration No. 695,541 was renewed on April 5, 1980, for a further twenty years. A second application to renew Registration No. 695,541 was filed in the United States Patent and Trademarks Office on October 29, 1999. The word "recordati" has no meaning in the English language and is therefore an inherently distinctive word in English. The domain name in issue is recordati.com. The distinctive part of this domain name is recordati. The Panel finds that the domain name recordati.com is confusingly similar to the Complainant’s trademark registration for RECORDATI.

(ii) The Complainant submits that the Respondent has no rights or legitimate interests in the domain name recordati.com.

Finding:

(ii) The Complainant proved that Domain Name Clearing Company registered the domain name recordati.com on March 20, 1997. The domain name recordati.com was placed on "hold" status by Network Solutions Inc. on December 11, 1998. The Respondent made no use of the domain name recordati.com in association with a website between March 20, 1997, and December 11, 1998, when the domain name was placed on "hold". The Respondent did not respond specifically to the allegations in the Complaint that the Respondent had no legitimate interest in the domain name recordati.com.

Section 5(b)(i) of the Rules for Uniform Domain Name Dispute Resolution Policy requires the Respondent to respond specifically to the statements and allegations contained in the Complaint and include any and all bases for the Respondent Domain Name Holder to retain registration and use of the disputed name.

The Respondent or the Respondent’s representative did not disclose the existing or proposed business of Domain Name Clearing Company, LLC or the intentions of the Respondent company with respect to use of the domain name recordati.com other than to submit that a practice exists in the United States to use phonetic misspelling of words in languages other than English such that English speaking persons will enunciate the word phonetically in English to correspond with the proper enunciation of the word in the foreign language. The Respondent submitted that "recordati" is an intentional misspelling of "ricordati" which, roughly translated, means "remember" suggesting nostalgia.

Having regard to the fact that "recordati" has no meaning in the English language and non-use of the domain name by the Respondent for approximately 1½ years before the domain name was placed on hold, the Panel finds that the Complainant has established on a balance of probabilities that Domain Name Clearing Company, LLC has no legitimate interest in the domain name recordati.com.

(iii) Respondent’s Domain Name Has Been Registered And Is Being Used In Bad Faith.

The third element which the Complainant must prove is found in Paragraph 4.a.(iii) of the Uniform Domain Name Dispute Resolution Policy:

4.a.(iii) your domain name has been registered and is being used in bad faith.

Some circumstances which if found by the Panel to be present, shall be evidence of registration and use of the domain name in bad faith are set out in Paragraph 4.b. of the Uniform Domain Name Dispute Resolution Policy. Paragraph 4.b. provides:

4.b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4.a.(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(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 trademark 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 trademark 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.

Paragraph 4.b. is not limiting as to the circumstances which may constitute evidence of bad faith and circumstances other than those enumerated in subparagraphs (i) to (iv) of Paragraph 4.b. may constitute registration and use of a domain name in bad faith.

"Bad faith" is defined in Black’s Law Dictionary 7^th edition at page 134 as: "1. Dishonesty of belief or purpose..". In Halsey v Brotherhood (1881), 19 Ch. D. 386 Lord Coleridge L.C.J. in determining whether there was evidence of mala fides stated that the task of the Court was to consider "whether there is anything to show that what the defendant stated was stated without reasonable and probable cause".

Paragraph 4(b) of the Uniform Domain Name Dispute Resolution Policy includes examples of four circumstances which if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith.

The first three examples found in sections 4(b)(i), 4(b)(ii) and 4(b)(iii) of the Uniform Domain Name Dispute Resolution Policy refer exclusively to registration and not to commercial use of the domain name. The fourth example found in section 4(b)(iv) refers to commercial use of the registered domain name.

If section 4a(iii) is to be interpreted consistently with the examples in sections 4(b)(i), 4(b)(ii) and 4(b)(iii) the term "being used in bad faith" refers to "use" in the broad sense of dealing in the rights associated with the registered domain name in bad faith. The term "being used in bad faith" is not limited to commercial use" or operation of a web site in bad faith using the registered domain name.

There is no evidence that the Respondent has offered to sell the registered domain name to the Complainant, thus the circumstances of s. 4(b)(i) are not met. There is no evidence that the Respondent Domain Name Clearing Company, LLC has engaged in a pattern of conduct of registering domain names in order to prevent the owner of a trademark from reflecting the trademark in a corresponding domain name, thus the circumstances of s. 4(b)(ii) are not met. There is no evidence that the Respondent is a competitor of the Complainant, thus the circumstances of s. 4(b)(iii) are not met.

Subsections 4(b)(i), 4(b)(ii) and 4(b)(iii) are examples of circumstances which, if found by the panel, shall be evidence of the registration and use of a domain name in bad faith.

The Complainant has established that the Respondent registered the domain name "recordati.com" on March 20, 1997, and did not set up a web site utilizing the domain name prior to December 11, 1998, when the domain name was placed on "hold" at the request of the Complainant.

Has the Complainant established on a balance of probabilities that the Respondent has registered and is involved in dealing with the registered domain name "recordati.com" in bad faith? The Complainant stated that the word "recordati" is not a word known in the English language. The Respondent does not deny that "recordati" is not a word in the English language but states that "recordati" is an intentional misspelling of "ricordati" which roughly translated means "remember", suggesting "nostalgia". There is no statement by the Respondent of why Respondent registered recordati.com as the phonetic equivalent of the Italian word "ricordati".

The 1999 Annual Report filed by the Complainant discloses that Giovanni Recordati is the Chairman and Chief Executive Officer of the Complainant and members of the Board of Directors include Alberto Recordati and Andrea Recordati.

The Respondent did not commence commercial use of the domain name during the period between registration of the domain name on March 20, 1997, and the date on which the domain name was placed on "hold" on December 11, 1998. Since the registered domain name in dispute has been placed on hold the registered domain name has been renewed by the Respondent.

I find on a balance of probabilities that the Complainant has established the word "recordati" is not a word known in the English language and that the Respondent has not produced any creditable evidence as to why the Respondent registered the disputed domain name "recordati.com". One basis for determining whether there is evidence of bad faith is for the Panelist to consider whether there is anything to show that what the Respondent stated was stated without reasonable and probable cause. I find that the Respondent’s statement that "recordati" is the phonetic equivalent of the Italian word "recordati" without further supporting evidence as to why the Respondent selected "recordati.com" as the domain name in dispute as supporting on a balance of probabilities registration of the domain name in dispute is in bad faith.

As found above "use in bad faith" in subsection 4(a)(iii) does not refer to "use in commerce" in the trademark sense of use but refers in the broad sense to a pattern of conduct respecting the registered domain name in dispute. Other panelists have held that passive holding of the domain name, without use in commerce, may support a holding of use in bad faith. Telstra Corporation Limited v Nuclear Marshmallows, Case No. D2000-003.

On a balance of probabilities, I find that the domain name "recordati.com" was registered and is being used in bad faith.

In the Complaint, the Complainant requested that in accordance with Paragraph 4(c)(i) of the Uniform Domain Name Dispute Resolution Policy, the Administrative Panel issue a decision that the disputed domain name be cancelled or transferred to Complainant. The Complainant having proved each of the three elements set out in paragraph 4(a)(i)(ii) and (iii) of the Uniform Domain Name Dispute Resolution Policy is entitled to a decision in favour of the Complainant. The Panel requires that the domain name recordati.com be transferred to Recordati Industria Chimica e Farmaceutica S.p.A.

Ross Carson
Panelist

Dated: July 21, 2000