Generic Top Level Domain Name (gTLD) Decisions

ADMINISTRATIVE PANEL DECISION

Under the ICANN Uniform Domain Name Dispute Resolution Policy

1. Parties and Contested Domain Name

The Complainant is Meetingvenice.it S.r.l., a company registered in Italy, and whose civic address is located in Venice, Italy. The Respondent is VENICEONE s.n.c., a company also registered in Italy and whose civic address is also located in Venice. The contested domain name is <meetingvenice.com>. The Registrar is Network Solutions Inc.

2. Procedural history

The electronic version of the Complaint form was filed on-line through eResolution’s Website on 26 April 2001. The hardcopy of the Complaint Form and annexes were received on 7 May 2001. Payment was received on 11 May 2001.

Upon receiving all the required information, eResolution’s clerk proceeded to:

• Confirm the identity of the Registrar for the contested Domain Name;

• Verify the Registrar’s Whois Database and confirm all the essential contact information for Respondent;

• Verify if the contested Domain Name resolved to an active Web page;

• Verify if the Complaint was administratively compliant.

This inquiry lead the Clerk of eResolution to the following conclusions: the Registrar is Network Solution Inc., the Whois database contains all the required contact information, the contested Domain Name resolves to an inactive Web page and the Complaint is administratively compliant.

An email was sent to the Registrar by eResolution Clerk’s Office to obtain confirmation and a copy of the Registration Agreement on 27 April 2001. The requested information was received 1 May 2001.

The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy. The Clerk’s Office fulfilled all its responsibilities under Paragraph2(a) in forwarding the Complaint to the Respondent, notifying theComplainant, the concerned Registrar and ICANN on 14 May 2001. This date is the official commencement date of the administrative proceeding.

Only the emails to the postmaster@meetingvenice.com were returned ‘undeliverable’. All the faxes were successful.

The complaint, official notification and all the annexes were sent via registered mail with proof of service, to the respondent. According to the Canada Post tracking system, all were delivered.

On 4 June 2001, the Respondent submitted, via eResolution Internet site, his response. The signed version of the response was received on 8 June 2001.

On 11 June 2001, the Clerk’s Office contacted me, David Lametti, and requested that I act as panelist in this case.

On 12 June 2001, I accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.

On 12 June 2001, the Clerk’s Office forwarded a user name and a password to me, allowing me to access the Complaint Form, the Response Form, and the evidence through eResolution’s Automated Docket Management System.

On 12 June 2001, the parties were notified that I, David Lametti, had been appointed and that a decision was to be, save exceptional circumstances, handed down on 26 June 2001.

3. Factual Backgrounds

The Complainant was incorporated in Venice on 19 February 1996 as Meetingvenice.it S.r.l. On 19 December 1996, the business name was embodies into an identical domain name <meetingvenice.it> by registering it registered [Annex 2: Nic.it Whois search]. The corresponding website is a portal for various business, social, cultural, tourist and other promotional activities and information linked to the world-famous city of Venice, Italy.

The Respondent VENICEONE s.n.c. is a company incorporated in Venice on 25 February 1999. It conducts at least some of its corporate activities on its website <govenice.com>; these activities and services are similar in large measure to those provided on the <meetingvenice.it> website. The Respondent maintains the website is not-for-profit.

On 9 March 2001, the Respondent registered <meetingvenice.com> with Network Solutions Inc. The site was active for a time, leading users to the <govenice.com> site, but has been rendered inactive for the time being.

The Complainant lodged this complaint on 26 April 2001.

4. Parties' Contentions

The Complainant alleges:

(1) That the domain name <meetingvenice.com> is identical to a service mark in which the Complainant has rights, as per Policy paragraph 4(a)(i).

The Complainant is incorporated as Meetingvenice.it, and this, it is argued, qualifies as a service mark. Alternatively, it is argued that the use of the business name as embodied in its website -- its principal mode of doing business -- qualifies as a common law trademark: the website is popular, well-known and highly-frequented, and in effect has enabled the business name to accumulate a great deal of goodwill.

The Complainant argues that <meetingvenice.com> is identical to Meetingvenice.it.

(2) That the Respondent has no rights or legitimate interests in the domain name, as per Policy paragraph 4(a)(ii).

The Complainant maintains that the Respondent has no historical connection or trademark entitlement to the contested domain name. Moreover, it asserts that the Respondent does not meet any of the categories of legitimate interest set out in Policy paragraph 4(c), and in particular that the use of a domain name to divert internet traffic to a site offering similar services is not a bona fide offering of goods or services, or a legitimate non-commercial or fair use.

(3) That the Respondent registered the name in bad faith, as per Policy paragraph 4(a)(iii).

The Complainant asserts that the Respondent has clearly registered the domain name in bad faith. The Complainant points out that the services offered by the Respondent are similar to its own, both on the websites managed by each company and in the descriptions found in their respective incorporating documents. It asserts the companies are competitors. It also points out that the Respondent registered its domain name much later and deliberately choose the term “meetingvenice” because it was the market leader.

The Complainant contends that the registration and use of the domain name by the Respondent falls into the examples set out in paragraph 4(c) of the Policy: use of the domain name to re-direct traffic to its competing website is an example of bad faith, as is registration to prevent the Complainant from reflecting its trademark or other rights in a domain name. It points out that increased traffic to the Respondent's website potentially allows it to obtain higher advertising revenues.

In reply, the Respondent asserts that the Complainant has failed to meet any of its burdens of proof under the Policy, and in general makes assertions without presenting evidence. Specifically, the Respondent argues the following:

(1) That the Complainant neither has any rights in the domain name <meetingvenice.com> by virtue of it being either a protected trademark, a service mark or a common law right, nor is the domain is identical to the Complainant's business name.

The Respondent argues that the Complainant has no protectable interest in the term "meetingvenice". Respondent points out that the Complainant has not registered the term as a trademark or service mark in any jurisdiction. Respondent also asserts that the term as a registered business name does not amount to a common law trademark; mere incorporation does not give rise to such rights, but rather the use of the name as a distinguishing term for products or services allows for the emergence of such a right. Moreover, it asserts that the term “meetingvenice” itself is generic, comprised of the name "Venice", a famous city to which no one has rights and a common word.

The Respondent also claims that <meetingvenice.com> is not identical to Meetingvenice.it since the terms "meetingvenice" in the former is only a literal element of the domain name. Nor is there is any confusion between the terms, since the user will immediately recognize that the sites are different.

(2) The Respondent claims to have a legitimate connection to the domain name under Policy paragraph 4(c).

The Respondent claims to have a legitimate connection to the domain name for what appear to be two distinct reasons. First it argues that using a domain name to attract internet traffic to a different site is legitimate in cases such as this one where the Respondent's own site is alleged to have a different vocation from the Complainant's. Here it is asserted that the Respondent's <govenice.com> website is a non-profit website aimed at promoting trade. Moreover, it is not misleading.

Second, the Respondent repeats that the Complainant can have no legitimate interest in what is asserted to be a generic name made of common words.

(3)The Respondent claims not to have registered or used the domain name in bad faith.

The Respondent asserts good faith by repeating that its website is a non-commercial venture and is thus distinct from the Complainant's enterprise. Moreover, the Respondent has never offered to sell, rent or otherwise transfer the domain name to the Complainant for valuable consideration. Nor has the Respondent prevented the Complainant from reflecting its business name in a <.com> domain name since the Complainant could have registered the name well before the Respondent in the period after the Complainant registered <meetingvenice.it> and the Respondent registered <meetingvenice.com>. The Respondent repeats that there is no confusion, since the sites are different.

The Complainant has asked to give additional evidence in response to the Respondent's claims. This request is brought under the discretion given to a Panelist under paragraphs 10 and 12 of the Rules. The Respondent opposes this request. I need not consider this request as there is ample evidence to fairly decide the matter, and there is no justifications given in the Complainant's reasons that state why any additional privilege to adduce evidence should be granted. Indeed, there is nothing in the Respondent's contentions that should not have been anticipated by the Complainant.

5. Discussions and Findings

I now proceed to an assessment of the merits of the various contentions of both parties.

Identical or Confusingly Similar

First, is the domain name <meetingvenice.com> identical or confusingly similar to the name Meetingvenice.it? In my view, there is no question that both the domain name and the company name are identical and, if not, then are at least confusingly similar. Numerous cases decided under the Policy have held that merely adding a gTLD or ccTLD to a word, term or phrase was not enough to dispel confusion or change identity as between a trademark and a domain name. Here the comparison is between a domain name and business name used as a domain name, and the same principal should apply. In each case, the compound word before the TLD is identical. Moreover, the crucial part of the company name -- meetingvenice -- is identical to the contested domain name.

However, it is a thornier issue to determine whether the business name Meetingvenice.it provides the basis for some right that is protected by the Policy. Paragraph 4 of the Policy applies explicitly to trademarks and service marks in which the Complainant has rights. There is no such registered trademark or service mark in this case. Rather, we have a corporate or business name used as a domain name. While it is possible to do so, this business name has not been registered as a trademark or service mark in any jurisdiction. And domain names, unless registered as trademarks or service marks or are tantamount to a common law trademark or registered, do not yet fall under the Policy as a protectable interest.

There I snow no question that despite being omitted explicitly from the text of the Policy, business can under certain circumstances attract the protection of the Policy. Previous decisions rendered under the Policy have allowed for names and business names to be the basis of protectable interests and rights. In the case of business names, the key point, as pointed out by the Respondent, is that the business name be established enough that it serves to distinguish the service or product offered by the company. Mere registration of a company name is insufficient: [Marine Export Inc. v. Major Cormier & Associés Inc.; AF-0538]. This acquired goodwill, or secondary meaning as it is called in some trademark jurisdictions, can be built up through advertising, or through robust business activity or may be present initially in the distinctiveness of the business name itself.

Moreover, the Policy itself refers to these very sorts of considerations -- conducting business using a certain name -- as proof for a Respondent of legitimate interest in a domain name in paragraph 4(c) of the Policy. Reading the Policy exegetically, it is also clear that a Complainant ought to be able to rely on similar considerations to claim that such an interest is protected at the outset under the Policy. It is also true that as natural names are analogous to common law rights and may be the subject of a proceeding -- consistent with both fundamental civil law notion of personhood and common law notions of personality rights --, so should corporate names, when such names are or have become distinctive of products or services.

I am aware that a common law right does not ordinarily apply in civil law jurisdictions. However, in the end, this matter is to be decided according to this Policy, as any person, natural or legal, from any legal system, binds himself contractually to the terms of the Policy when registering a <.com> domain name, wherever he may be in the world. While national or international laws may be used to assist my reasoning, I am bound only by the Policy, the Rules and the eResolution Supplemental Rules. This is the only way to ensure fairness across all jurisdictions for all Complainants and Respondents, and indeed all holders of domain names coming under the Policy. Since the scope of paragraph 4 has been extended to include common law rights in trademarks, business names and personal names, all contractual participants in the <.com> domain name system must be accorded the same rights and bound by the same obligations.

In this case, the uncontested evidence of the Complainant is that the website identical to the business name Meetingvenice.it is popular and profitable, and is robust enough to support on its own a number of employees. In its almost five years of operation as an internet portal, it has had many "hits" and has attracted a significant degree of advertising revenue. Both advertisers and the target audience of those likely to visit Venice know about the site and frequent it. This is enough, in my view, to have established the requisite degree of secondary meaning as distinctive of source for both <meetingvenice.it> and the identical company name Meetingvenice.it.

Moreover, this finding is enhanced by the inherent distinctiveness of the name "meetingvenice". The Complainant alleges that the name "meetingvenice" is unprotectable as it is generic. First of all, generic domain names have been both registerable and protected under the Policy, and therefore can be the subject-matter of a complaint. The issue is not genericity, but identity and confusion. Second, while the name "Venice" is in trademark terms unregisterable and the word "meeting" is quite ordinary in English, placed together and considered as one word it clearly does have a uniqueness which most jurisdictions would find to be a protectable interest in trademark. The compound word is neither ordinary nor descriptive in English, as one can only "meet" Venice in a figurative way. It is therefore a coined or fanciful word that effectively alludes to the Complainant's services without describing them explicitly. In this finding I respectfully disagree with the opinion expressed by Mr Gianluca Tessier, avvocato, who is also the Respondent's representative in this matter, that the name "meetingvenice" is generic and could not be the subject of any protectable right [Annex D005291]. The legal parameters upon which the opinion letter are founded are unclear -- "national and international norms" for registration are mentioned -- however, it is clear to me that under the Policy (and indeed under all trademark legislation and doctrine with which I am familiar), this compound word is indeed a protectable and registerable interest. As mentioned above, as composed in the English language, this compound word is unique and fanciful. When coupled with its acquired secondary meaning, it is clear that it may be the basis for a complaint under the Policy.

I therefore find that an interest protectable under paragraph 4 of the Policy exists in this case in the business name Meetingvenice.it. I have already found above that the domain name <meetingvenice.com> is identical or confusingly similar to this business name.

The Panel thus concludes that the Complainant has proven the requirements of Policy paragraph 4(a)(i).

Rights or Legitimate Interest

The criterion of illegitimacy – or framed in terms of the Respondent, of the determination of the Respondent’s legitimate right or interest – focuses in my view on the objective or relatively objective links that the Respondent has to the domain name in question. These connections might arise either at the outset through a natural or visible connection of the Respondent’s business name, trademark, bona fide offering of goods and services, or bona fide non-commercial use to the domain name. These connections might also develop over time through the nature of the Respondent’s bona fide activities as they relate to the domain name. These connections might be obvious given current uses or practices in the instances just mentioned, or they might be demonstrable, as in the case of planned connections to a domain name for these various bona fide activities in the future.

The question is whether the Respondent, on the evidence, can be shown to have no such connection to – and hence no such legitimate interest or right in – the domain name. Paragraph 4(c) of the Policy gives three examples of circumstances where the Respondent has a legitimate interest. In this case, the Complainant asserts that the Respondent does not fall into any of these three examples. The Complainant asserts that to the best of its knowledge, and the Respondent does not disagree, that the Respondent has no historical tie to the domain name. The Complainant also contends, and again the Respondent does not disagree, that the Respondent does not trade as "meetingvenice". Finally, the Complainant asserts, again without disagreement, that the Respondent uses the domain name to re-direct traffic -- a practice presently on hold pending these proceedings -- to its own website at <govenice.com>.

As set out above, the Complainant asserts that there is no protectable right in the term "meetingvenice", and that while it diverts traffic to its site, its site is not-for-profit. I have already rejected the Respondent's contention regarding genericity above. There is a protectable interest under the Policy for a business name that has acquired secondary meaning. The remaining question of whether diverting traffic to an allegedly non-profit site is a legitimate use by the Respondent such that it falls under the head of paragraph 4(c)(iii) or some analogous interest or right.

In my view, this practice of the Respondent does not fall under the wording of paragraph 4(c)(iii), which states:

Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

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

The Respondent relies heavily on the claim the site is non-profit, offering free space to advertisers and users, and adduces two advertisers as evidence [Annexes D005289 & D005290]. Having visited the site <govenice.com> and looked at the sample web page in the Respondent's appendices [Annex D005288], I have serious doubts that the whole website is not-for-profit. Nevertheless, assuming that it is completely free for all users and advertisers, it is still my view that the whole website still constitutes an illegitimate use of the domain name. Paragraph 4(c) of the policy, in the spirit of Policy, requires a legitimate or fair use, and while not operating for commercial gain may be a factor according to the text of paragraph 4(c)(iii), operating on a non-profit basis does not automatically mean that the use is legitimate. In this instance, the domain name is being used to divert internet traffic to a site which is similar to that of the Complainant, offering similar services and information. As the domain name has nothing to do on its face, or historically, with the Respondent, the only conclusion that can reasonably be drawn is that the Respondent is taking advantage of the goodwill built up by the Complainant over the years of successful trading on its website to draw internet traffic to the Respondent’s website. While such activity may be non-profit, it is neither legitimate nor fair in any sense of the terms and clearly tarnishes the protected interest by at the very least by lessening its commercial value. While some non-commercial uses might be fair and legitimate -- fan websites of entertainers are the prime example -- websites that are in direct competition cannot be so considered. It is not a bona fide use from the outset.

The Panel thus concludes that the Complainant has met the requirements of Policy paragraph 4(a)(ii).

Bad Faith

Unlike illegitimacy, the criterion of bad faith goes to the circumstances surrounding the registration or use of the domain name by the Respondent, and focuses on the Respondent’s intentions, either as they are stated explicitly or as can be inferred from the Respondent’s actions and the facts of the matter. A list of partial criteria is articulated at paragraph 4(b) of the Policy, and the burden of proving bad faith falls on the Complainant.

The Complainant’s allegation falls under the rubric of paragraph 4 (a)(iii), according to the various criteria articulated in paragraph 4(b): in particular the criterion of paragraph 4(b)(ii) (iii) and (iv), that that the registration was undertaken in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, was undertaken primarily for the purpose of disrupting the business of a competitor; or was undertaken intentionally attract, for commercial gain, Internet users to the Respondent’s web site.

The Respondent points out, and indeed the Complainant never alleged, that the Respondent has never offered to sell the domain name to the Complainant for a profit. Regarding preventing the Complainant from reflecting its interests in a domain name, the Respondent points out that the Complainant had a long time in which it could have done so, but chose not to. Regarding the other claims, the Respondent asserts that its activity is not for profit.

In my view, the Complainant has shown on balance that the Respondent's registration and use to date of the domain name has been undertaken in bad faith as understood under the Policy. It is absolutely clear that the Respondent's website is similar in function to the Complainant's. It can only be concluded that they are competing sites, offering similar service and information to a similar clientel. Any other conclusion offends common sense. Moreover the incorporating documents for each company reveal similar goals and services. Whether the activity of the Respondent is actually not-for-profit is irrelevant in my view: at the very least this behaviour admitted to by the Respondent has the effect of disrupting the Complainant's business, and certainly does mislead and misdirect internet traffic to a competing site, at the very least diminishes the Complainant's profitability. It is not a bona fide use, even if not for commercial gain.

Where it is the case that the domain names are identical or virtually identical to a trademark, service mark or other protectable right or interest, as they are in this case, it seems to me that the Complainant’s burden is somewhat easier to bear, given that it is easier to show that the Respondent must have had the Complainant’s business name and website in mind at the time of its registration of the offending domain name. Indeed <meetingvenice.it> is a popular site, and the Complainant must have had it in mind when it registered <meetingvenice.com> for the purpose of drawing traffic to a competing website. It knew or should have known that it at least might have been infringing on legitimate rights protected under this Policy. This is especially true given that the parties are competitors and are located in the same city. Under the Policy, such registration and use constitutes bad faith.

Finally, that the Complainant had already had the opportunity to register the <.com> domain name is irrelevant under these circumstances. By virtue of the Respondent's action, the Complainant has still lost the opportunity to reflect this right in the future.

The Panel thus concludes that the Complainant has met the criterion of at least Policy paragraphs 4(b)(ii) and (iii) (and in my view, (iv) as well) and thus the requirements of Policy paragraph 4(a)(iii). The Respondent's registration and use of <meetingvenice.com> was done in bad faith.

6. Conclusion

The panelist concludes:

1. That the domain name <meetingvenice.com> is identical to the business name of the Complainant, and in which the Complainant has rights protected by the Policy; & nbsp; 2. That the Respondent has no rights or legitimate interests in the domain name; and 3. That the Respondent has registered the domain name in bad faith.

Therefore, pursuant to paragraphs 4(i) of the Policy, the Panel orders that the domain name <meetingvenice.com> be transferred to the Complainant.

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