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Ente David di Donatello v. Domain Leasing [2004] GENDND 713 (21 June 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ente David di Donatello v. Domain Leasing

Case No. D2004-0244

1. The Parties

The Complainant is Ente David di Donatello, Rome, Italy, represented by Gian Luigi Rondi, Italy.

The Respondent is Domain Leasing, Nassau, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <daviddidonatello.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2004. On April 1, 2004, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On April 2, 2004, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 22, 2004. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 26, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was May 16, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2004.

The Center appointed Anthony R. Connerty as the Sole Panelist in this matter on June 8, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Paragraph 7.

4. Factual Background

Ente David di Donatello (Accademia del Cinema Italiano), the Complainant, relies upon the following matters which are set out in the Complaint and which are supported by the documentation contained in the various Annexes. These matters have not been contested by the Respondent:

(1) Ente David di Donatello (Accademia del Cinema Italiano)

The Complainant is a private organisation (“the Organisation”) which was established in Rome, Italy, in 1955. The English translation of Annex 1 to the Complaint shows that the Organisation is a non-profit-making body whose objective is to support the Italian and foreign film industries. The Organisation is supported by Agis (the Italian General Show-Business Association) and Anica (the Italian National Cinema and Audiovisual Association). The Complainant Organisation makes awards for Italian and foreign films which have been shown in at least one provincial capital in Italy during the course of the season. The awards for the best Italian and foreign films follow the criteria used by the US Academy of Motion Picture Arts and Sciences for awarding the Oscars. The Italian cinema awards are given for, amongst other things, best film, best director, best screenplay, best leading actress, best actor, best director of photography, and so on. The European Cinema award was established in cooperation with the the European Union: the Visconti prize is named after the director, Luciano Visconti.

Selection for the Prizes is made by members of a jury approved by the Chairman of the Organisation on the recommendation of Agis and Anica.

The David di Donatello Prize consists of a reproduction of Donatello’s classic work, the bronze David.

The reproduction of the famous sculpture was manufactured by Bulgari.

The Presidency of the Italian Republic sponsors the Prize, and the Organisation is supported by the Italian Ministry of the Performing Arts and the Italian Ministry of Culture.

(2) The name “David di Donatello”

The name has been linked to the Prize for almost five decades of use, and has become a world famous mark, in the same way that the “Oscars” identify the Oscar awards in the United States of America.

Further, on May 7, 1999, the Complainant registered the domain name <daviddidonatello.it>. That domain name hosts the official website of the Complainant. In addition, on March 15, 2002, the Complainant filed an application with the Italian Patent and Trademark Office to register the mark PREMIO DAVID DI DONATELLO.

(3) The Respondent’s Activities

On April 9, 2002, the Respondent registered <daviddidonatello.com>. The Complainant says that any Internet user who enters that website is automatically drawn to a pornographic website “www.sessoebasta.com.”

The Complainant relies upon a previous WIPO Administrative Panel decision in WIPO Case number D2003-0706, a case in which the Complainant says the same Respondent had registered a domain name linked to a pornographic website. The Complainant in that case was the Academy of Motion Picture Arts and Sciences of Beverley Hills, California, United States of America.

5. Parties’ Contentions

A. Complainant

The Complainant, as stated above, says that the name DAVID DI DONATELLO has been linked for nearly 50 years to the Organisation’s David di Donatello Prize, which Prize is supported by a number of Italian State bodies.

The domain name registered by the Respondent was registered after the Complainant registered its domain name and trademark. Furthermore, the domain name registered by the Respondent is linked to a pornographic website.

The Complainant says:

(i) that the Respondent’s domain name is identical or confusingly similar to the Complainant’s trademark; and

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

(iii) that the disputed domain name was registered and is being used in bad faith by the Respondent.

The Complainant seeks the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following elements:

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

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

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

A. Identical or Confusingly Similar

The Respondent’s domain name <daviddidonatello.com> includes in its entirety the Complainant’s domain name <daviddidonatello.it> and incorporates substantially the primary elements of the Complainant’s Italian trademark PREMIO DAVID DI DONATELLO.

As far as the domain name is concerned, the suffix “.com” has no relevant distinguishing feature.

In the absence of any response from the Respondent, the Panel notes the Complainant’s contentions and finds that the Complainant has satisfied the requirements of Paragraph 4(a)(i) of the Policy.

B. Rights or legitimate interests

As set out above, the Complaint and the supporting documents in the various Annexes contain significant evidence showing the Complainant’s use of the DAVID DI DONATELLO name over a period of nearly 50 years in connection with the Italian and foreign film industries.

Paragraph 4(c) of the Policy lists various circumstances which, if proved, can demonstrate a Respondent’s rights or the legitimate interest in a disputed domain name.

The Respondent has not taken the opportunity given by the Rules to submit a Response. In the circumstances, the Panel is satisfied that the Complainant has met with the requirements of Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists circumstances which, if proved, show evidence of registration and use of a domain name in bad faith.

One of the circumstances is set out in Paragraph 4(b)(iv): the use of a domain name by a Respondent who has intentionally attempted to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with a Complainant’s mark.

The Complainant submits that it appears unlikely that the Respondent has any proper reason to use the disputed domain name other than to misleadingly attract potential customers who - while searching for information on the Prize - are automatically drawn to a pornographic website.

As mentioned earlier, in relation to the unlawful use of the DAVID DI DONATELLO name, the Complainant has referred to the similar facts in the decision in WIPO Case No. D2003-0706. In that case, the Academy of Motion Picture Arts and Sciences of the United States brought a complaint against “domain leasing” of Nassau, Bahamas. The Complainant says that: “the same Respondent to this proceeding, Domain Leasing, had registered the domain name <oscartv.com> on April 24, 2002. Such domain name was linked to a web page offering the possibility of downloading a programme. The users were then automatically drawn to a pornographic website, which did not contain any reference to “Oscar” or “Oscartv.”

The Decision in that case was dated November 6, 2003. The Sole Panelist recorded that the disputed domain name <oscartv.com> was registered with OnlineNic, Inc, d/b/a China - Channel.com (as is the case here).

The Decision states that: “the domain name <oscartv.com> was registered on April 24, 2002, by domain leasing and linked to a web page offering the possibility to download a programme. The users were then automatically drawn - either by clicking “Yes,” “No” or by trying to close the window - to pornographic websites which did not contain any reference to the name is “oscar” or “oscartv.”

The Decision continued: “the Panel considers that the trademark OSCAR of the Complainant is known worldwide in relation to the entertainment industry as it is used by the Academy for the famous “OSCARS ceremony” which is internationally broadcast on television. Due to the use of the term “tv” in the domain name at issue, the Internet user may think that the <oscartv.com> is linked to a website affiliated with the Complainant and the Internet user may thus visit the website for this reason.” The Sole Panelist also stated that the bad faith of the Respondent in that case, domain leasing, was also illustrated by the fact that it had added the name “Oscar Tv Erotic Center” in the contact details for the domain name, after having received cease and desist letters from the Complainant. The contact details for the Respondent in this case were Domain Leasing, Erotic Center, Nassau, Bahamas.

Again, on the basis of the matters set out in the Complaint and in the supporting documents, and in the absence of any response or explanation from the Respondent, the Panel finds that the Complainant has satisfied the requirements of Paragraph 4(a)(iii) of the Policy, and finds that the bad faith registration and use has been established.

7. Decision

For all the foregoing reasons, and in accordance with Paragraph 4(a) of the Policy, the Panel orders that the disputed domain name <daviddidonatello.com> be transferred to the Complainant.

Anthony R. Connerty
Sole panellist

Dated: June 21, 2004