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CC Computer Consultants GmbH and WAFA Kunststofftechnik GmbH v. APG Solutions & Technologies [2005] GENDND 665 (1 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

 BolognaFiere S.p.A. v. Currentbank/Alex Bars aka Currentbank-Promotools

  Case No. D2005-0308

1. The Parties

The Complainant is BolognaFiere S.p.A., Bologna, Italy, represented by Dr. Modiano & Associati S.p.A., Milan, Italy.

The Respondent is Currentbank/Alex Bars aka Currentbank-Promotools, Doral, Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name <cosmoprof.org> is registered with eNom.

3. Procedural History 

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2005. On March 24, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On April 30, 2004, eNom transmitted by email to the Center a partial verification response confirming that the language of the proceedings is English and that the domain name would remain under Registrar Lock throughout the proceeding. In addition to eNom’s partial response, the Center made a WHOIS printout, which showed that the disputed Domain Name was registered with eNom, and that Respondent, Currentbank/Alex Bars, was the current registrant of the disputed Domain Name. The Center verified that 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 8, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 28, 2005. The Response was filed with the Center on April 28, 2005. 

The Center appointed Luis de Larramendi as the sole panelist in this matter on May 24, 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 

4.1 The Complainant is the official entity which promotes the holding of trade fairs in Bologna, as well as in other Italian cities and in other countries.  Among other marks, it uses COSMOPROF in organizing fairs related to perfumery and cosmetics.  The domain name <cosmoprof.org> and the COSMOPROF trademarks are identical. 

4.2 BolognaFiere, S.p.A. is the owner of Italian, Community and International registrations for the word COSMOPROF, registrations which stand protected and in force. 

4.3 The <cosmoprof.org> domain name was registered on October 11, 2004, and the registrant shown is Currentbank/Alex Bars. 

4.4 The Complainant BolognaFiere, S.p.A. and the Respondent Currentbank-Promotools/Alex Bars were parties to another administrative proceeding before WIPO in relation to the <cosmoprof.biz> domain name which resulted in a decision dated December 2, 2004, transferring the <cosmoprof.biz> domain name to BolognaFiere S.p.A. 

4.5 The Complainant is the owner of the <cosmoprof.biz>, <cosmoprof.com> and <cosmoprofcosmetica.com> domain names.

5. Parties’ Contentions 

A. Complainant

- The Respondent has no rights or legitimate interests in the <cosmoprof.org> domain name.

- The Respondent registered the <cosmoprof.org> domain name on October 11, 2004, the same day Currentbank-Promotools/Isidro Sentís were notified of the complaint concerning the <cosmoprof.biz> domain name and the same day that the domain name was transferred to Currentbank-Promotools/Alex Bars before the registrar blocked it. 

- There is a confusion of personal and corporate identities (which cannot benefit the person who creates it) among Currentbank, Currentbank-Promotools, Alex Bars and Isidro Sentís who appear jointly or separately as owners of domain name registrations which, prima facie, constitute an infringement of third-party rights. 

- No use is made of the <cosmoprof.org> domain name and it may therefore be considered to be passively held in bad faith.

 - The overwhelming lists of domain names owned by Currentbank-Promotools, Alex Bars and Isidro Sentís along with their characteristics, is more than sufficient indication to demonstrate that the Respondent’s intention in registering domain names is to subsequently sell them, something which constitutes reproachable conduct.

 Considering Isidro Sentís’ professional activity organizing fairs, exhibitions and congresses, the confusion among Currentbank-Promotools/Alex Bars/Isidro Sentís allows citing the doctrine in the BolognaFiere S.p.A. v. Bonopera Daniele decision, (WIPO Case No. D2003-0295) as regards presumable knowledge of the existence of a trademark and/or domain name by he who has objective reasons for such knowledge.

 B. Respondent

 - Claiming that he is Latin American and a resident of Florida where, he says, Spanish is the official language, and despite the fact that the registration agreement with the Registrar eNom is in English and the Complainant’s official language is not Spanish, the Respondent Alex Bars replied in Spanish and in English.  This Panel, a Spanish-speaker whose mother tongue is Spanish, considers the Spanish reply to be difficult to interpret, as is the English version, but the following statements concerning the substance of the matter could be extracted:

 - The Respondent acknowledges that the <cosmoprof.org> domain name belongs to the Complainant, BolognaFiere S.p.A.

 - The Respondent maintains that, hurt by the statements contained in the Complaint filed by BolognaFiere S.p.A. in the <cosmoprof.biz> case, he applied for the registration to verify whether the lawyers who had prepared that complaint were acting in good faith or not.  In this respect, he claims that:

 - before registering the <cosmoprof.org> domain name, he notified the lawyers acting for BolognaFiere S.p.A. of his intention to do so, giving them a time limit of several days to register the domain name on behalf of the Complainant; and 

 - since they did not proceed, he registered it in his name.

 - Isidro Sentís has no relation to the <cosmoprof.org> domain name.  The fact that one or the other indistinctly stood as owners of several domain names was for tax reasons, reasons which caused a temporary transfer.

 - BolognaFiere S.p.A. has shown bad faith in citing Isidro Sentís’ name when, as a person related to the field of trade fairs and congresses, he may be damaged by his name being involved in a dispute with an entity organizing this type of events.

6. Discussion and Findings

Preliminary consideration 

It is a legal aphorism that “a party’s confession excuses proof”. Therefore, since the Respondent acknowledges that the <cosmoprof.org> domain name belongs to the Complainant BolognaFiere S.p.A, if not BolognaFiere S.p.A.’s claim that ownership of the domain name be transferred to it, it is compulsory to fully accept the petition, it being possible to consider the situation tantamount to “acquiescence” to the Complainant’s claims.

Nonetheless, succinct arguments are set out below as to the suitability of transferring the domain name in accordance with the requirements of the Policy.

A. Identical or Confusingly Similar

Extensive use of COSMOPROF in relation to the organizing of trade fairs and congresses is considered to have been proven, as has its existence as a registered trademark since documentation was submitted evidencing its registration in numerous jurisdictions, including (given that they affect the places of residence of the parties in conflict) Italy ( No. 00735 dating from October 24, 1985), the European Union (No. 001050483 dating from January 22, 2001), and the United States of America (No. 1988179 dating from March 6, 1995. This documentation was not rebutted by the Respondent. 

The domain name in conflict, <cosmoprof.org>, is identical to the trademark COSMOPROF, the element indicating the top level domain where the name was registered being excluded from the comparison, in accordance with the consistent doctrine of decisions issued in similar cases.

The Panel holds that the Complainant has proven the existence of this requirement under paragraphs 4(a)(i) of the Policy. 

B. Rights or Legitimate Interests

The Respondent simply acknowledges that the <cosmogrof.org> domain name belongs to the Complainant.

No additional proof is necessary for this to be evidenced.

The requirements of paragraphs 4(c)(i) to (iii) of the Policy are also considered to have been fulfilled.

Therefore, the requirement set out under paragraph 4(a)(ii) of the Policy is considered to have been fulfilled.

C. Registered and Used in Bad Faith

According to a general principle coming from Roman law, “nemo tenetur uti privilegium” (no one may be obliged to make use of a privilege).

To register or not register a domain name constitutes a privilege, a prerogative, a right, but never an obligation.

The Respondent’s claim that he warned the Complainant’s lawyers to register the domain name or he would do so himself constitutes an attempt to oblige an entity, BolognaFierre S.p.A., to carry out an act which is not compulsory under law with a warning of the possible adverse consequences which that action might cause.

Furthermore, the Respondent claims, without proof, that he warned the BolognaFierre S.p.A. lawyers that if they did not register the name within five days, he would do so himself.  And he says that he did so because he was hurt by the statements in bad faith made in the complaint filed by Bologna Fierre S.p.A. in the <cosmoprof.biz> case.

However, what is proven by the decision in the <cosmoprof.biz> case dated December 2, 2004, and equally evidenced by the documentation submitted in this case is that:

- On October 11, 2004, the Center informed Currentbank-Promotools/Isidro Sentís of a complaint lodged against them by BolognaFierre S.p.A.

- On that very day, October 11, 2004, the Respondent transferred the domain name to Currentbank-Promotools/Alex Bars before the Registrar blocked any change in the ownership of <cosmoprof.biz>.

- On that very day, October 11, 2004, Currentbank-Promotools/Alex Bars registered the <cosmoprof.org> domain name. 

In any event, the fact that the Respondent acknowledges that the <cosmoprof.org> domain name belongs to the Complainant implies that his conduct must be understood to be in violation of paragraphs 4(b)(i) and (ii).

 The proven non-use of the <cosmoprof.org> domain name, established by the previous facts which have been evidenced, also represents passive holding constituting use in bad faith, as interpreted by the UDRP panels since the time of the TELSTRA case, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, thus fulfilling the requirement of use in bad faith. 

Consequently, the requirement set out in paragraph 4(a)(iii) of the policy is considered to have been fulfilled.

7. Decision

 For all the foregoing reasons, the Panel holds that the Complainant has proven fulfillment of the three requirements established in paragraph 4(a) of the Policy and 15 of the Rules, and consequently, it orders the <cosmoprof.org> domain name to be transferred to the Complainant

Luis H. de Larramendi
Sole Panelist

Dated: June 7, 2005