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Algiubagio di Antonello Giulio & C, S.N.C v. Domain Admins [2005] GENDND 1113 (7 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Algiubagio di Antonello Giulio & C, S.N.C v. Domain Admins

Case No. D2005-0183

1. The Parties

The Complainant is Algiubagio di Antonello Giulio & C, S.N.C, Venice, Italy, represented by Studio Legale Avvocato Alberto Scapaticci, Brescia, Italy.

The Respondent is Domain Admins, Warsaw, Poland.

2. The Domain Name and Registrar

The disputed domain name <algiubagio.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 February 16, 2005. On February 18, 2005, 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 February 21, 2005, 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 March 5, 2005. 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 March 10, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 11, 2005.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on May 2, 2005. 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

According to the Complainant’s declarations, “ALGIUBAGIO di Antonello Giulio & C, S.N.C.” is an Italian company founded in 1991, having its principal place of business in Venice, Italy.

The company is the owner of a bar in Venice, called “Algiubagio s.n.c.”

The Complainant owned the domain name <algiubagio.com>, but it did not renew it by the due date. The Complainant noticed that the domain name had been reserved on July 1, 2004, by the Respondent.

5. Parties’ contentions

A. Complainant

The Complainant contends that the domain name is identical to the service mark in which it has rights and which reproduces the name of its company.

It also states that it was the former owner of the domain name <algiubagio.com> which was not renewed by the due date.

The Respondent has no rights or legitimate interests in the disputed domain name. It is not the owner of any similar trademark or other rights nor is it commonly known under this name. Neither is it making a fair use of the domain name.

The Complainant contends that the Respondent intentionally attempted to attract for commercial gain Internet users to an explicit adult content website.

The Complainant requests the transfer of the disputed domain name <algiubagio.com>.

B. Respondent

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

6. Discussion and Findings

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(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; and

(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 used in bad faith.

A. Confusingly similar to a trademark or service mark in which the Complainant has rights

The threshold requirement in any dispute under the Policy is for the Complainant to show that it has rights in the trademark or service mark at issue.

The evidence submitted by the Complainant is a mere extract of the Italian trade register suggesting that the Complainant’s reputation in the trade name was limited to Venice area at the time the Respondent registered the domain name in dispute.

Complainant claims to use the name Algiubagio as its trade name. The Panel has no reason to doubt that this is the case, as the Complainant has provided a copy of the Italian Trade Register and some pictures of the business. The Complainant also states that it lost the registration of the disputed domain name because it forgot to renew the registration by the due date. However, the Panel finds that the mere registration of a domain name or an expired domain name registration, for that sake, does not eo ipso establish a common law trademark right. See Su Hardy v. Lou Crawford, WIPO Case D2002-1123, <mooncup.com> and <the mooncup.com>.

The Panel finds that the Complainant has not shown that it has registered or common law trademark rights.

Consequently, the Complainant does not meet the first requirement of the Policy.

The Panel notes with regard to the issue of bad faith that the Respondent is located in Poland. It is therefore not evident that the Respondent was aware of the Complainant’s activities in the Venice area. However, since the Complainant has not fulfilled the requirement of having rights to a “trademark or service mark”, in accordance with paragraph 4(a)(i) of the Policy, the Panel considers it unnecessary to make a finding on the other two elements of the Policy.

7. Decision

For all the foregoing reasons the Complaint is denied.

Nathalie Dreyfus
Sole Panelist

Dated: June 7, 2005