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Ente Autonomo Fiera Internazionale di Milano v. b.o.n.d. srl [2005] GENDND 18 (28 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ente Autonomo Fiera Internazionale di Milano v. b.o.n.d. srl

Case No. D2004-0791

1. The Parties

The Complainant is Ente Autonomo Fiera Internazionale di Milano, Milano, Italy, represented by Kivial s.r.l, Italy.

The Respondent is b.o.n.d. srl, Milano, Italy.

2. The Domain Name and Registrar

The disputed domain name <fieradimilano.biz> is registered with PSI-USA, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2004. On October 1, 2004, the Center transmitted by email to PSI-USA, Inc. a request for registrar verification in connection with the domain name at issue. On October 4, 2004, PSI-USA, Inc. 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 October 14, 2004, via email and October 18, 2004, in hardcopy. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Supplemental Rules for Restrictions Dispute Resolution Policy for .BIZ (the “Supplemental RDRP Rules”), 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 October 19, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2004. The Response was filed with the Center on November 8, 2004.

On November 12, 2004, a Supplemental Filing of the Complainant was received by the Center via email and on November 16, 2004, in hardcopy. The Center acknowledged safe receipt. The Center appointed Mr. Luca Barbero as the sole panelist in this matter on November 29, 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.

On December 13, 2004, a first procedural order was issued by the Panel requesting a word version of the Complaint and the Supplemental filing.

On December 23, 2004, a second Procedural Order was issued pursuant to Paragraph 10(b) of the Rules according to which “The Respondent was granted an extension of 8 days to submit to the Panel, should the Respondent so wish, a response to the supplemental filing submitted by the Complainant on November 12, 2004; such supplemental response should therefore be received by the Center on or before December 31, 2004, and shall solely refer to the statements presented by the Complainant in the document of November 12, 2004, (any additional or new element will be disregarded by the Panel); should such possible supplemental Response not be received within the deadline, the Panel shall then proceed to issue the Decision in due time.” On January 19, 2005, the decision due date was extended due to unforeseen circumstances.

4. Factual Background

The Complainant is the owner of the trademark FIERA MILANO in Italy n° 728.747 of October 15, 1995, renewal of the registration n° 445659 applied for on November 11, 1985, and granted on September 15, 1986, classes 1 to 42 and also has registered a number of Community Trademarks.

The Respondent registered the domain name <fieradimilano.biz> on July 19, 2002.

5. Parties’ Contentions

A. Complainant

The Complainant informs the Panel that it manages the exhibition area of Milan (one of the largest in Italy), optimizing the use of the structures according to the requirements of the calendar of events, and supplying all those services for the organizers, exhibitors and visitors that are necessary to ensure maximum functionality and usability of the events. The Complainant has been active since 1920, and every year accommodates about 70 events with a total exhibition area of more than 1.6 million square meters net; in recent years there have been 30,320 exhibitors (20% of them foreign) a year, and the number of visitor is estimated, according to the declarations supplied by the Complainant, at over 4.5 million. The Panel was provided with documents supporting the information on the main activities of the Complainant.

The Complainant has protected its distinctive sign “FIERA MILANO” by registering trademarks both in Italy and in other countries as well as via the registration of domain names. The Complainant is the owner of the trademark “FIERA MILANO” in Italy n° 728.747 of 1995, renewal of the registration n° 445659 applied for on July 11, 1985, and granted on September 15, 1986, classes 1 to 42, in force until July 11, 2005). The Panel is also advised that such trademark is regularly used in the supply, promotion and management of services connected to the organization of fairs and services reserved for the organizers of fairs.

Numerous trademarks containing the words “FIERA MILANO” are currently being registered as Community trademarks such as: FONDAZIONE FIERA MILANO (figurative) application n° 3139995 dated February 14, 2003, classes 16, 35, 38, 41, 42; NUOVO POLO FIERA MILANO (figurative) application n° 3117645 dated April 2, 2003, classes 16, 35, 38, 41, 42; FIERA MILANO CONGRESSI application n° 3093465 dated March 12, 2003, classes 16, 35, 38, 41, 42; FIERA MILANO INTERNATIONAL application n° 30934567 dated March 12, 2003, classes 16, 35, 38, 41, 42; FIERA MILANO EXHIBITIONS application n° 3093382 dated March 12, 2003, classes 16, 35, 38, 41, 42; EDIZIONI FIERA MILANO application n° 3092772 dated March 12, 2003, classes 16, 35, 38, 41, 42.

The Complainat indicates that it is also the registrant of the following domain names: <fieramilano.it>, <fieramilano.com>, <fieramilano.net>, <fieramilano.org>, <fieramilano.biz>, <fieramilano.info>, <fiera-milano.it>, <fiera-milano.com>, <fiera-milano.net>, <fiera-milano.org>, <fiera-milano.biz>, <fiera-milano.info>, <fieradimilano.net>, <fieradimilano.org>, <fieradimilano.info>.

The Complainant indicates that the Respondent has entirely reproduced Complainant’s trademark, using the Italian preposition “di” (of) between the two words which make up the trademark. According to the Complainant “this variation cannot in any case be considered significant, since the value and meaning of the domain name are not altered by this modification, and since the preposition might not be understood as an essential part of the name such as would contribute to identify the domain name in a different way from that of Complainant”.

The Complainant underlines that the peculiarity of combining the word “FIERA” (fair) with the specific location “MILANO” (Milan), immediately leads the visitor to connect the domain to the specific events which take place in Milan in the areas managed by the Complainant, hence erroneously identifying the domain name with the activities organized by Complainant. The Respondent does not possess any title or license to exploit Complainant’s trademark, nor any authorization to register domain names on behalf of Complainant.

According to the Complainant, the Respondent’s bad faith is therefore clear and dictated by the desire to take advantage of Complainant’s position in the market, redirecting visitors to his website. Also the fact that the Respondent is situated “precisely in Milan makes Respondent’s bad faith in registering the domain name even more evident”.

With reference to the proof of bad faith in registering the domain name, the Complainant also highlights that the address given for the registrant and for the administrative contact (admin-c) the indication of the country of reference is wrong (Germany instead of Italy).

As to the bad faith use of the domain name, the Complainant underlines that the domain name is, at present, connected to a single web page which links to a web site managed by Respondent “www.milanoonline.biz” showing, in view of the Complainant, that the domain name in question is not used at present for any direct activity, but only to receive – in bad faith – the visits of users who key in the name <fieradimilano.biz> in search of information about fairs in Milan, re-directing these contacts to Respondent’s site.

The Complainant comments that the site on line at “www.milanoonline.biz” allows the user to undertake generic research – according to type of goods, key word or by means of a guided search – on a database of commercial activities situated in Milan. “www.milanoonline.biz” is proposed as an “index” of commercial activities, through the wide range of categories of goods proposed and the type of set-up, like a shop window. According to the Complainant, this site cannot therefore be considered as a “fair” as such, since it does not have the main characteristics which distinguish such an event, that is to say, its periodic nature and the specificity of the goods. These features are moreover present in the dictionary definition, which for the word “fair” says “large, national or international exhibition or market held periodically in a particular locality and which concerns all or only some fields of production”.

The Complainant concludes that the use of the domain name is therefore shown to be yet another proof of bad faith, as described in Paragraph 4(b)(iv) of the Uniform Domain Resolution Policy.

Addressing the issue of the RDRP Rules (Restrictions Dispute Resolution Policy), the Complainant states that the current use of the domain name, apart from being in bad faith according to the parameters set out by the UDRP, is an evident infringement of the limitations laid down by the .BIZ Registry since the web page corresponding to the domain name contains a simple web page with the words “Milano online is working for you”, and a re-direction to the site mentioned above. The Complainant concludes that this use does not conform to the use set out in the RDRP, since Respondent is not using the domain for any direct supply of goods or services or similar activities, nor is it legitimate to think that Respondent will use it in the future for such activities, considering that the domain has been registered in Respondent’s name since July 19, 2002.

In the Supplemental documents submitted to the Panel, the Complainant objects to the validity of some of the evidence produced by the Respondent, contests the interpretation of the domain name as a mere name of the city district indicating that such an area is known as “zona fiera” (“fair area”) and not “FIERA DI MILANO”, providing the Panel with additional evidence therewith.

The Complainant reiterates that there cannot be any sort of confusion between that wording and the more generic wording “zona fiera” to indicate the district where the fair centre referred to by Respondent is situated and therefore, the Internet user typing the domain <fieradimilano.biz> is certainly looking for information concerning the fairs and exhibitions organized by the Complainant and not for commercial activities or structures of the district.

The Complainant remarks that if the Respondent’s true aim is to make Milan’s districts immediately accessible on the web with a name which is easy to remember, Respondent should have therefore registered <zonafiera.biz> while pursuant to the Respondent’s reasoning in support of <fieradimilano.biz>, he should have registered also – for example – <piazzadelduomodimilano.biz> or <idroscalodimilano.biz>, instead of <piazzadelduomo.biz> and <idroscalo.biz> respectively, in order to achieve the same characterizing effect, considering that the expressions cited as examples (“piazza duomo”, “idroscalo”) are not only restricted to the city of Milan but can be found in several Italian municipalities as well.

B. Respondent

The Respondent states that at the time of registration of the domain name on July 19, 2002, it acted in good faith and sought prior legal advice in order to avoid infringing on “specific international laws provided for domain name registrations by registering unauthorized domains”.

The Respondent informs the Panel that the domain name <fieradimilano.biz> and not <fieramilano.biz> was registered according to legal advice “since the latter brand name had already been registered by Ente Autonomo Fiera”. According to the Respondent, the expression “fiera di milano” generally refers to “a large city district named after the activity, which it was designed for” and “since then, this geographical expression has been commonly used by Milan’s citizens, and not only”.

The Respondent also indicates that at the time of registration, some extensions, such as .info, .net and .org , were not registered by the Complainant and Respondent opted for the extension “.biz”, taking into account the company’s “mission”.

The Respondent underlines that, should it have acted in bad faith, in 2002 “it could have registered not only the domain names <fieradimilano.net>, <fieradimilano.org> and <fieradimilano.info> but also those domains identical to the trademark registered by Ente Autonomo Fiera <fieramilano.biz>, <fieramilano.org> and <fieramilano.info>, these having been registered only in July 2004.

The Respondent also informs the Panel that the domain names <fieradimilano.com> and <fieradimilano.it> were already registered in the name of third parties.

As to the use of the domain name, the Respondent states that the web site at “www.milanonline.biz” represents a test area “designed to create multilingual search engines for the main European cities (i.e. “www.madridonline.biz”; “www.veneziaonline.biz”; “www.wienonline.biz”; “www.pregueonline.biz”.... ) and information web sites about specific areas in those cities. The Respondent indicates that for example it has “a network of Web sites and domains about city districts, which are named after a road, an activity or an object in that area. In Milan, the large area of Piazza del Duomo is named after the Milan’s Duomo (“www.piazzadelduomo.biz”), or another district is named after an artificial lake, called “Idroscalo” (“www.idroscalo.biz”). Other areas are identified by a world famous small road (“www.spaziomontenapoleone.biz”) or a fair district (“www.fieradimilano.biz”)”.

The Respondent informs the Panel that today the technological platform system at “www.milanonline.biz” is not fully operational but until a few months ago it was possible to have direct access to the district web site (also to “www.fieradimilano.biz”) from the home page “www.milanonline.biz”, referring to an annex which was not provided to the Panel.

The Respondent further comments that the search by area on the home page “www.milanonline.biz” has been interrupted both for technical reasons and image problems as not all of the district web sites have been completed it was established to temporarily exclude this kind of search by area on the home page “www.milanonline.biz” in order not to provide an incomplete service, to incur image damages or have any problems in managing technology.

The Respondent also provides the Panel with additional information as to the characteristics of the service (making again reference though to some annexes which were not enclosed as also highlighted by the Complainant in the supplemental filing) and stating that the Complainant “has not fully understood the functioning of” the Respondent’s network stating that they “actually share a common objective, which is revaluating that district and the necessary urbanization works needed for creating infrastructures for the citizens in the Milan’s Fair district (“zona fiera di Milano”))”.

The Respondent also states that “in the past we thought of getting into contact with Ente Autonomo Fiera to create a special section in the district web site “www.fieradimilano.biz” only for exhibitions organized by Ente Autonomo Fiera, but …” the Respondent “abandoned the idea”.

In the closing statements the Respondent reiterates that it has always been acting in good faith and has never been willing to create a web site “www.fieradimilano.biz” which supplied information about fairs organized by Ente Autonomo Fiera or information conflicting with its interests, indicating that the transfer of the domain name would cause huge economic damages and be a big waste of the Respondent’s time.

The Respondent did not reply to the second Procedural Order addressing the issues raised by the Complainant and therefore did not provide the Panel with the missing annexes.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or a service 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 is being used in bad faith.

As this Complaint is brought both under the Policy and under the RDRP according to paragraph 4(a) of the RDRP, in addition to the grounds set out in Paragraph 4(a) of the UDRP, the Respondent shall also be required to submit to a mandatory administrative proceeding if a complainant asserts that a “.BIZ” domain name “is not being or will not be used primarily for a bona fide business or commercial purpose”.

6.1. Domain name identical or confusingly similar

The Complainant has provided evidence of ownership of a number of trademark registrations and applications including the trademark FIERA MILANO in Italy n° 728.747 of October 15, 1995, renewal of the registration n° 445659 applied for on November 11, 1985 and granted on September 15, 1986, classes 1 to 42.

The Panel finds that the use of the preposition “di” meaning “of” is not sufficient to exclude the confusingly similarity between the Complainant’s trademark and the domain name as decided i.a. in Sociedad Rectora de la Bolsa de Valores de Bilbao, S.A. v. Vicente Mota Jiménez, WIPO Case No. D2001-0096 (The Domain Name <bolsabilbao.org> is clearly confusingly similar to the Complainant’s trademarks “BOLSA DE BILBAO”. And the word “DE” makes no difference since it is only a Spanish preposition used as a link between two nouns and may not be understood as an essential part of the denomination that contributes it to be identified from another domain name.)

The suffix “biz” is to be considered immaterial since it is merely instrumental to the use in Internet.

In view of the above, the Panel finds that the Complainant has proved that the domain name is confusingly similar to the trademark of the Complainant according paragraph 4(a)(i) of the Policy.

6.2. Rights and legitimate interest

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy that:

(a) It has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute; or

(b) It is commonly known by the domain name, even if he has not acquired any trademark rights; or

(c) It intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Complainant established a prima facie lack of rights or legitimate interests while the Respondent did not provide the Panel with any convincing evidence establishing that any of the above is applicable to present procedure with reference to the domain name <fieradimilano.biz>. The Panel finds that the projects illustrated with reference to some areas of Milano and linked to the web site corresponding to the domain name <milanonline.biz>, are not sufficient to establish a right or a legitimate interest of the Respondent in a domain name which is confusingly similar to the registered trademark FIERA MILANO.

The Complainant has not granted the Respondent any license, permission or authorization by which Respondent could own or use domain name registrations incorporating the Complainant’s trademark.

The Respondent did not file a supplemental Response pursuant to the second Procedural Order in the additional time granted in the present procedure, and therefore failed to provide the Panel with any new persuasive elements.

In addition to the foregoing, Respondent has no rightful claim to the <fieradimilano.biz> domain name, given that “the .biz TLD imposes greater restrictions on the legitimate use of its domain names than does the .com TLD. See along these lines i.a. Nasdaq Stock Market, Inc. v. Jon Steinsson, WIPO Case No. D2002-0571 (finding no legitimate use of Respondent’s <nasdaqtrader.biz> domain name which incorporated Complainant’s NASDAQ mark). Registrants are explicitly advised of the additional restrictions on the use of .biz domain names in their registration agreements. Notwithstanding such heightened standard, as noted above, Respondent’s use of this Domain Name serves no purpose other than to redirect an Internet user to the “www.milanonline.biz” website.

The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the Domain Name, according to paragraph 4(a)(ii) of the Policy.

6.3. Registration and Use in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, 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 the domain name in bad faith:

(i) circumstances indicating that the holder has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder’s website or location.

As to the assessment of the prior knowledge of the existence of the Complainant trademark rights at the time of the registration of <fieradimilano.biz>, the Respondent himself stated in the Response that the domain name <fieradimilano.biz> and not <fieramilano.biz> was registered following the advice of an advisor “since the latter brand name had already been registered by Ente Autonomo Fiera”. In addition, the Respondent is based in Milano where the Complainant is based and has been operating since 1920.

The Panel, in line with a number of other UDRP decisions, finds that the actual prior knowledge of the Complainant’s rights on the trademarks is a circumstance supporting bad faith. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137, Infospace, Inc. v. Siavash Jimmy Behain, et al., WIPO Case No. D2000-1631 (One factor to support a finding of bad faith is Respondent’s knowledge of Complainant’s Trademarks). In this sense, see also Channel Tunnel Group Ltd. v. John Powell, WIPO Case No. D2000-0038 (awareness of Complainant’s mark at the time of registering confusingly similar domain name is evidence of bad faith).

The Panel finds paragraph 4(a)(iv) of the Policy applicable to the present procedure since, as indicated both by the Complainant and Respondent, the domain name was redirected to a page where a service of the Respondent was advertised. Therefore, the site may have attracted Internet users seeking information about the Complainant’s services and was likely to create confusion as to the source, sponsorship, affiliation or endorsement by the Complainant, especially in light of the alleged “common objective” referred to by the Respondent himself.

Furthermore, the Panel finds that it was not necessary for the Respondent to adopt for the project described in the Response the domain name <fieradimilano.biz> (as, for instance, <zonafiera.biz> would serve the same purpose), unless for the bad faith intention to profit from the fact that the corresponding trademark is certainly well known in Italy.

In view of the above, the Panel finds that the Respondent has registered and used the Domain Name in bad faith, according to paragraph 4(a)(iii) of the Policy.

6.4. Restriction Dispute Resolution Policy

Under paragraph 4(a) of the RDRP, a respondent is required to submit to an administrative proceeding if a complainant asserts that a “.BIZ” domain name “is not being or will not be used primarily for a bona fide business or commercial purpose”. The RDRP then (in paragraph 4(b)) goes on to define what is meant by bona fide business or commercial use”.

Pursuant to paragraph 4(c), registering a domain name solely for the purposes identified below shall not constitute a bona fide business or commercial use” of that domain name:

(i) selling, trading or leasing the domain name for compensation, or

(ii) the unsolicited offering to sell, trade or lease the domain name for compensation.

(iii) For illustration purposes, the following shall not constitute a “bona fide business or commercial use” of a domain name:

a) using or intending to use the domain name exclusively for personal, noncommercial purposes; or

b) using or intending to use the domain name exclusively for the expression of noncommercial ideas (e.g., registering exclusively to criticize or otherwise express an opinion on the products or services of ABC company, with no other intended business or commercial purpose).

The Panel finds that the domain name was used for a simple web page with the words “Milano online is working for you” with a mere re-direction to the site of “www.milanonline.biz”. Thus, there was not a bona fide use to exchange goods, services, or property of any kind or in the ordinary course of trade or business or to facilitate the exchange of goods, services, information, or property of any kind or the ordinary course of trade or business, pursuant to paragraph 4(b) of the RDRP.

Furthermore, in light of the fact that the domain name is confusingly similar to a well known registered trademark, the Panel notes that the Respondent will anyway not be in a position to use <fieradimilano.biz> for a bona fide business or commercial purpose.

7. Decision

In light of the foregoing and in accordance with Paragraphs 4(i) of the RDRP, 4(i) of the UDRP and 15 of the UDRP Rules the Panelist concludes that:

- the domain name <fieradimilano.biz> is confusingly similar to the trademark FIERA MILANO of the Complainant;

- the Respondent has no rights or legitimate interests in the domain name;

- the domain name has been registered and is being used in bad faith;

Furthermore, the Panelist concludes that the Complainant has established that the domain name <fieradimilano.biz> is not being and will not be used for a bona fide business or commercial purpose, and that therefore the Complainant has made out its case under the RDRP.

Accordingly, the Panel requires that the registration of the Domain Name <fieradimilano.biz> be transferred to the Complainant.

Luca Barbero
Sole Panelist

Dated: January 28, 2005