Valigeria Roncato S.p.A v. Roncato America

Claim Number: FA0112000102738



Complainant is Valigeria Roncato S.p.A., Campodarsego, Italy (“Complainant”) represented by Ricardo Roversi.  Respondent is Roncato America, Los Angeles, CA (“Respondent”).



The domain name at issue is <>, registered with Network Solutions.



The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.


Edward C. Chiasson, Q.C., Panelist.



Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on November 30, 2001; the Forum received a hard copy of the Complaint on November 30, 2001.


On December 10, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <> is registered with Network Solutions and that the Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).


On December 11, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 31, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to by e-mail.


A timely Response was received and determined to be complete on December 31, 2001.


On January 4, 2002 the Forum received from the Complainant Additional Written Statements to the Respondent’s Response. 


On January 23, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Edward C. Chiasson as Panelist.



Complainant requests that the domain name be transferred from Respondent to Complainant.



A. Complainant

The Complainant is a joint stock company incorporated under Italian law in the mid- 1950s.  Its activity consists of manufacturing and selling traveling bags, trunks of all materials, shapes and sizes, skins and hides, leather and imitations of  leather, attaché case and document cases marked with registered.


The Complainant is the owner of a number of trade marks as follows:


Certificate of U.S. trademark registration “RV Roncato”  n.2,005,859 registered on October 8th, 1996 and expiring on  October 8th, 2006 in Cls. 18 (U.S. Cls. 1, 2, 3, 22 and 41);

Certificate of Community trademark registration “Roncato” n. 000699751 registered on May 17th, 1999 and expiring on  December 9th, 2007 in Cl 18;

Certificate of U.K trademark registration “Roncato Sphera” + device n. 1508050 registered on July 29th, 1992 and renewed till July 29th, 2009;

Certificate of Hong Kong trademark registration “Roncato Sphera” + device n. 07159/94 registered on November 17th, 1994 and renewed till November 17th, 2013;

Certificate of New Zealand trademark registration “Roncato Sphera” + device n. 254196 registered on May 27th, 1997 and expiring on September 29th, 2002;

Certificate of Canadian trademark registration “Roncato Sphera” n. TMA464400 registered on October 18th, 1996 and expiring on October 18th, 2011;

Certificate of International trademark registration “Roncato” n. 629 681 registered on January 10th, 1995 and expiring on January 9th, 2005 in Cl 18 – Country: China;

Certificate of International trademark registration “ RV Roncato” n. 646 280 registered on November 14th, 1995 and expiring on November 13th, 2005 in Cl. 18 – Countries: Spain, the Russian Federation, Portugal;

Certificate of Australian trademark registration “RV Roncato” n. 649426 registered on December 23rd, 1994 in Cl. 18 and expiring on 23rd December,  2004;

Certificate of registration of trademark in Saudi Arabia “RV Roncato” n. 400/21 registered on April 9th, 1997 and expiring on October 16th, 2005 in Cl. 18;

Certificate of registration of trademark in Japan “RV Roncato” n. 3354758 registered on April 16th, 1997 and expiring on October 24th, 2002 in Cl. 18.


In 1995, the Complainant also was granted a patent in the United States for ornamental design of a suitcase


The Complainant currently sells its products in several countries such as Argentina, Australia, Benelux, Brazil, Finland, Hong Kong, Poland, Spain, Korea, Switzerland,  Morocco, United Kingdom and until 1997 the United States.


The Complainant’s trademarks have been used continuously and extensively in international commerce in connection with the advertising of its products and it has invested substantial sums of money in developing and marketing its products.


For the expansion of its commercial activity in the United  States, in 1994 the Complainant  established a distribution relationship with the Respondent and in particular with Mr. Pietro Manca.


In order to establish a strong presence in the United States and to demonstrate its serious intention of starting a business activity there, the Complainant authorized Mr. Pietro Manca to make use of its trade name, Roncato, for the sole purpose of informing customers that Mr. Manca was an authorized and exclusive distributor of the Complainant.


Initially, the parties had a good relationship and the Complainant’s products were well received by the general public and by the American consumers.


In view of the success in the United States, the Complainant filed an application for the registration of the trademark “RV Roncato” in the United States in 1995 and the for the abovementioned patent. The trademark was granted in October 8, 1996 in Class 18 for leather and imitations of leather, and goods made out of these materials and not included in other classes; animal skins, hides, trunks and travelling bags; umbrellas, parasols and walking sticks, whip harness and saddlery (U.S. CLS 1, 2, 3,22 and 41).


In 1997, the relationship between the parties deteriorated and the Complainant terminated the distribution relationship with Mr. Manca and the Respondent. The main cause for the termination was the Respondent’s failure to settle invoices of the Complainant for an amount of Lit. 289.792.636, approximately US $133,000  for the supply of traveling bags, suitcases etc.


Despite numerous reminders for payment, the Respondent did not settle the debt.


Following the termination of the distribution relationship with the Respondent, the Complainant decided to promote its products also through the Internet and submitted an application for the registration of the subject domain name.


The Complainant discovered that subject domain name had been registered by the Respondent on February 27,1997 without the Complainant’s knowledge or authorization, and that the Billing Contact is Mr. Manca and the Administrative Contact is Mr. Chen Robin whose address is at Vivid Internet Productions


No website has been activated in connection with subject domain name since its registration.


The Complainant contacted the Respondent asking whether the subject domain name was for sale. Respondent replied that it was for sale at the price of US $225,000. 


The Complainant is the owner of the domain names <> and has an active site under that domain name promoting its products


The Complainant says that the subject domain name is identical to the trademark RONCATO which is registered world wide and is confusingly similar to the United States trademark RV RONCATO.  Dropping part of a trademark, in this case the letters “RV”, does not prevent or even diminish confusion. Alternatively, the subject domain name can be viewed as consisting of the Complainant’s trademark.


In support of its contention that the Respondent has no rights or legitimate interest in the subject domain name the Complainant notes that its right in the trademark dates back to 1980.  The Respondent was authorized to use the trade name “Roncato” purely for the purpose of publicity because the Respondent was not in any way related to the Complainant and was an independent distributor.


In 1997, when the distributorship relation was about to be terminated, the Respondent registered the subject domain name.


After the termination of the agreement, whereby the Respondent no longer distributes the Complainant’s products, the rights to use the Complainant’s name to identify itself also ceased. As the Respondent is no longer a distributor, licensee or agent of the Complainant, it does not have any legitimate rights or interest identifying itself with the Complainant’s trademark and in the  subject domain name.


If the Respondent were to distribute traveling bags of other manufacturers, this would inevitably gives rise to confusion to the public as to the identity of the Respondent with the products. The public would be misled to believe that the other traveling bags distributed by the Respondent are in some way related to the Complainant or are a sub-brand of the Complainant’s.


In support of its allegation of bad faith, the Complainant relies on the offer of the Respondent to sell the subject domain name for US $225,000.


B. Respondent

The Respondent says that it has never been sued in the past and that the Complainant has been.


The Respondent asserts that the relationship with the Complainant began in 1992, not 1994 as contended by the Complainant.  It refers to a number of supply and quality problems that were encountered and states that although it obtained customers for the Complainant from many countries, the Complainant refused to pay a commission for them.


The Respondent had 12 agents covering all of the United States’ territory and about 400 customers.  It worked very hard to reach that point and invested a lot of capital, but lost almost everything.  Customers stopped ordering the products when they saw that new items which were promised did not arrive.  The Respondent’s good agents started leaving and going to work for other companies once they saw that things were not happening. 


The Respondent asserts that in obtaining the subject domain name, it did nothing irregular or illegal and did not act in bad faith. 

The name was available and the Respondent took it for the purpose of marketing products and to help the company succeed in the American Market. 

It also is normal for a United States’ company to have a .com name and for an Italian company to have an .it name.  As of the spring of 1997 the Complainant has had a website under the name <> (v stands for valigeria which is part of the company name, Valigeria Roncato). 

Although the relationship ended in 1997, the Respondent’s name was shown at the Complainant’s web site as its American distributor to the end of the year 2000 without the Respondent’s consent.

The Respondent does not manufacture luggage and does not intend to identify itself with the Complainant.

The Complainant was aware from the beginning that the Respondent had acquired the subject domain name and made no objection.  There are witnesses substantiating this fact, including people such as Mr. Nicola Paggin, who at the time worked for the Complainant.  The web site address to which the subject domain resolves was placed in the Respondent’s advertisements, on the back of its catalogs “Roncato Luggage 1997” that was planned in fall of 1996 and went to print in February of 1997.  The Complainant knew in advance what information was going to be placed there. 

The Respondent also mailed to the Complainant copies of the catalogs to distribute to any potential American customer prior to the MIPEL 1997 show in Milan and mailed more on several other occasions.  Mr. Enrico Roncato, who joined the Respondent in Las Vegas in March 1997 for the American Luggage show, was aware of this. 

The Respondent lists the following people as witnesses that were present there besides Mr. Enrico Roncato: Faye Escuadro, Paul Guerrero, Maurizio Falcone, Pietro Manca, Lynda Wyckoff, Jenny Sapiandante, Brian Escuadro, Matteo Von Wunster, Phil Kanter, Mike Puckett, Brett Corbett, Joseph Iannuzzi, Yuki and Don Krug, and Peter Di Pierro of Beverly Hills Luggage among many others.

The Complainant’s domain name, <>, was only activated in the past 6 months, after the Respondent was asked whether it would sell the subject domain.  The approach was by a third party who did not identify the Complainant as the potential buyer.  It took place in January 2001.

The Respondent had a web site running from the time it acquired the subject domain name through to June 98. 

C. Additional Submissions – Complainant’s Reply

The Complainant says that the Respondent registered the subject domain name in order to benefit in an illegitimate manner from the Complainant’s goodwill.


It asserts that if the Respondent were to not manufacture luggage it would be unclear why it would use the Complainant’s name in the subject domain name.


It states that the Respondent does not have a legitimate interest in the subject domain name because it does not have the right to use the Complainant’s marks.


The Complainant asserts that the information provided by the Respondent, if it were accepted, shows no activity associated with the subject domain name after June 1998.


The Respondent’s reference to contractual matters between the parties is not relevant to this proceeding.




The Complainant has rights to the word “roncato”.  The subject domain name differs on by the addition of .com.  In substance it is identical.  It is not necessary to consider whether the subject domain name is confusingly similar to the mark “RV Roncato”.


It is clear that for a time, the Respondent had a limited right to use the Complainant’s name, but that right was terminated. Insofar as the subject domain name is identical to the Complainant’s mark prima facie the Respondent does not have a right to the name

The Respondent provides no useful information to suggest that it continues to have a right to use the Complainant’s name. 


The Complainant’s case concerning the Respondent’s interest in the subject domain name, in part, does not address the issue.  The Complainant refers to the lack of continued authorization to use its name and to a risk of confusion.  These do not establish the absence of a legitimate interest.


The Complainant questions the Respondent’s reference to a lack of intention to manufacture luggage, but it is clear that it is in the luggage business.  Use of the Complainant’s name over its objection is not a legitimate use.


The Respondent provided information that the Complainant knew of the Respondent’s intention to register the subject domain name and made no objection to it.  Several specific individuals are identified to support the contention. The Complainant did not address this allegation.  It says that when it applied to register the subject domain name it discovered that it was registered to the Respondent.  The Complainant does not say when it did this and, although the Respondent asserted a delay, does not state why no contact was made concerning the subject domain name until January 2001.  That contact did not assert the Complainant’s alleged rights or demand that the Respondent cease and desist using the subject domain name.


The Complainant’s actions are not entirely consistent with its contentions in this case, but the Administrative Panel must consider all of the information made available to it.


The timing of the Respondent’s registration of the subject domain name is suspect.  Its explanation is that it wanted to take advantage of a growing use of the Internet, but it did little to do so. This latter fact always raises suspicion that the holder of a domain name does not have an interest in it.  When this fact is coupled with a willingness to sell the domain name the suspicion becomes an inference.


In some circumstances using the mark of another with qualifying words or letters can be legitimate.  An example is a site for criticism.  Using an owner’s mark, despite objection, with no distinguishing features is not a legitimate use.  In this case, the information concerning the Complainant’s objection is weak, apart from its initiation of this proceeding.  Offering to sell the site for a sum considerably in excess of the registrant’s legitimate cost of the domain name also supports a conclusion that the interest of a respondent in the domain name is not legitimate.


In this case, the information provided to the Administrative Panel shows that the Respondent does not have rights to or a legitimate interest in the subject domain name.


The absence of any real use of the subject domain name and the Respondent’s offer to sell it for US $225,000, a sum that prima facie is considerably in excess of the realistic out-of-pocket costs of the Respondent, is evidence from which the Administrative Panel is entitled to infer bad faith.  The Respondent has not addressed this issue directly.


The timing of the registration of the subject domain, the Respondent’s lack of a serious use of the subject domain name and its willingness to sell it, all support a conclusion that the subject domain name was registered in bad faith.



Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”


Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:


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

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

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


The Complainant refers to a number of domain name dispute decisions.  While these are neither controlling nor binding on this Administrative Panel consideration of them can be of assistance.


Identical and/or Confusingly Similar

The Administrative Panel finds that the Complainant has rights to the word and mark “roncato” and that the subject domain name is identical.


Rights or Legitimate Interests

The Administrative Panel finds that the Respondent does not have rights to or legitimate interests in respect of the subject domain name.


Registration and Use in Bad Faith

The Administrative Panel finds that the subject domain name was registered and is being used in bad faith,



The Complainant asked that the subject domain name be transferred to it.  The Administrative Panel so orders.



Edward C. Chiasson Q.C., Panelist


Dated:  January 28, 2002



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