Arnoldo Mondadori Editore S.p.A. v. Grazia Solazzi

Claim Number: FA1005001323771



Complainant is Arnoldo Mondadori Editore S.p.A., represented by Alessio Canova, of Giambrocono & C. S.p.A. (“Complainant”), Italy.  Respondent is Grazia Solazzi, represented by Daniel Rockey, of Bullivant Houser Bailey PC, (“Respondent”), Oregon, USA.



The domain name at issue is <>, registered with



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


Daniel B. Banks, Jr., as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 10, 2010; the Forum received a hard copy of the Complaint on May 10, 2010.


On May 10, 2010, confirmed by e-mail to the Forum that the domain name <> is registered with and that the Respondent is the current registrant of the name. has verified that Respondent is bound by the registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).


On May 12, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 1, 2010 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).


A timely Response was received and determined to be complete on June 1, 2010.


On June 9, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Daniel B. Banks, Jr., as Panelist.



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



A. Complainant

Complainant is the owner of an Italian Trademark Registration, Community Trademark Registrations, International Trademark Registrations and U.S. Trademark Registrations for the mark GRAZIA.  Grazia is an Italian magazine for women founded in 1938 and published by the Complainant in Italy and in many other countries.  Grazia is a renowned trademark.


The disputed domain name, <>, is identical to the trademark "GRAZIA."


Respondent does not hold any trademark or other rights on the word GRAZIA as such.  The Complainant has neither licensed, nor otherwise authorized the Respondent to use the trademark in any manner.


Before being aware of the present dispute, the Respondent did not use, or make demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services.  The domain name has not been used other than in connection with a parking service which has been considered not to be a "bona fide offering of goods or services" in multiple WIPO and NAF decisions.


Respondent has not been commonly known by the domain name.  The mere fact that GRAZIA corresponds to her first name does not imply in any manner acquired or exclusive rights or legitimate interest in it. 


Respondent is not making a legitimate noncommercial or fair use of the domain name. Actually, Respondent is not making any use of the disputed domain name which is simply "parked".  Moreover, when registering the domain name, Respondent certainly was aware that this would have misled consumers looking for the official website of GRAZIA magazine. 


Respondent was probably born in Italy since, according to her profile, she attended the University of Parma.  Consequently, she was perfectly aware that GRAZIA was not only her first name but moreover a registered trademark and the name of one of the most famous magazines for women.  Nevertheless, she still registered <> and intentionally attempted to attract, for commercial gain, Internet users to Respondent'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 Respondent's website or location or of a product or service on Respondent's website or location.


In fact, the disputed domain name is used to display a number of advertising links generated by SEDO parking services.  Respondent is leveraging on the reputation of GRAZIA's trademark for gaining money as visitors click on the advertising displayed on the page associated with the disputed domain name.  Moreover, among those advertisements there are many links to competitors of GRAZIA magazine such as Vogue and Cosmopolitan.  Respondent may affirm her good faith because the parking services, such as SEDO's, generate automatically the advertising links and she has no control on the messages displayed.  However, this does not matter because she must have known that by using a parking service, some sponsored links would be generated.   Even though Respondent did not explicitly choose to park the disputed domain name, bad faith will not be excluded.   


B. Respondent

Respondent does not contest that the disputed domain name <> is essentially identical to the Complainant's U.S. registered marks.  Respondent registered the disputed domain name more than two years ago without any knowledge of a claim by the Complainant.  It was registered for a legitimate purpose and without any intent to divert customers away from the Complainant.  Respondent is an accomplished free lance journalist, food writer and cooking instructor who registered the disputed domain name as one of several possible sites for a website she is developing that will be devoted to food, cooking and related topics and will feature articles written by her. The domain name was chosen because it included her given name and because many of the most successful food authors, celebrity chefs and others in the food industry have achieved fame and become commonly known by their first names.  Also, her full name is relatively difficult to spell and remember for non-Italians.  Although the website has not been launched, Respondent has been working diligently toward that goal and expects to soon be using the domain name. 


Although the Complainant has registered trademarks that include the word "grazia," it does not have an exclusive right to the name "grazia."   Grazia translates as "grace" in English, is a highly generic term and a common name in Italy, the U.S. and elsewhere.  The word "grazia," and its foreign equivalents are currently used by many other companies and individuals throughout the world to identify their goods and services.  For example, Ludwig Schokolade GmbH Corp. owns a registered U.S. trademark for "GRAZIA" in connection with cocoa, chocolate bars and other bakery goods and pastries.  Grazia Equity GmbH L.L.C. owns a registered U.S. mark for "Grazia" in connection with business management and financial consultant services.  A US resident, Melissa Scott Ulmer, recently filed an application for a U.S. trademark for "Grazia" in connection with wine.  And, there are numerous other registered U.S. marks which prominently incorporate the word "Grazia" within the mark.   In fact, in the Complainant's home country of Italy, it does not use the equivalent domain name: i.e., <>.  Instead the Complainant uses <>.


Equally important is the fact that Complainant, an Italian publishing company, headquartered in Segrate, Italy, does not publish an American version of Grazia magazine.  Yet, it seeks to force the transfer of a usTLD for which it could not even properly register in the first instance. 


            The domain name in dispute here is a usTLD.  Under the rules promulgated by Neustar, Inc., the designated registrar for usTLDs, and approved by ICANN, registrants for usTLDs must have a substantial nexus with the United States.  The usTLD Nexus Requirements provide that “registrants in the usTLD must be either:


1.      A natural person (i) who is a United States citizen, (ii) who is a permanent resident of the United States of America or any of its possessions or territories, or (iii) whose primary place of domicile is in the United States of America or any of its possessions [Nexus Category 1],


2.      A United States entity or organization that is (i) incorporated within one of the fifty (50) U.S. states, the District of Columbia, or any of the United States possessions or territories, or (ii) organized or otherwise constituted under the laws of a state of the United States of America, the District of Columbia or any of its possessions or territories (including a federal, state, or local government of the United States or a political subdivision thereof, and non-commercial organizations based in the United States) [Nexus Category 2], or


3.      A foreign entity or organization that has a bona fide presence in the United States of America or any of its possessions or territories [Nexus Category 3].”


Furthermore, a registrant for a usTLD must “certify” that they have a “bona fide presence in the United States” on the basis of “real and substantial lawful connections with, or lawful activities in, the United States of America.”  Id.  This Nexus Requirement “is intended to ensure that only those individuals or organizations that have a substantive lawful connection to the United States are permitted to register for usTLD domain          names.” 


Complainant is neither a U.S. citizen, nor a resident or domicile of the U.S.  It is not a U.S. entity or organization and has no "bona fide" presence in the U.S.  Thus, any attempt by Complainant to register a usTLD would be deceptive to consumers. Complainant seeks to achieve through this proceeding what it could not legitimately achieve through the registration process.  That is improper and illegitimate.


Respondent moved to the U.S. in 2001 and currently resides in Portland, Oregon as a legal resident.  While living in the U.S., Respondent has been working as a free lance journalist writing food-related articles, focusing primarily on Italian food and cooking. 


With regard to bad faith, the only claim by Complainant is the fact that the domain is currently "parked," and therefore generates advertisements, some of which are apparently for Complainant's customers.  The website is parked because it is still in development and Respondent's registrar, MyDomain, includes as a standard term in their agreement the right to park domain names until the registrant takes affirmative action to modify the name server configuration.  Respondent had nothing to do with the domain name being parked and has realized no compensation or benefit of any kind from it being parked. 


Respondent seeks a finding of reverse domain name hijacking against Complainant. 



1 - The disputed domain name is identical to the Complainant's registered trademarks.


2 - The Respondent has rights and legitimate interests in respect of the domain name.


3 - The domain name was not registered and is not being used in bad faith.



Paragraph 15(a) of 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 or is being used in bad faith.


Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.


Identical and/or Confusingly Similar


Respondent does not contest that the domain name is identical to Complainant's US registered trademarks.


Rights or Legitimate Interests


Respondent claims that she selected the <> domain name because “Grazia” is her first name, and she has used this name in connection with her journalistic writings of Italian cuisine since 1994.  Respondent alleges that she selected the disputed domain name, not because of Complainant’s mark, but because many famous cooks and Italians use only their first names, and because her full name is difficult to spell and remember for non-Italians.  The Panel finds that through Respondent’s use of her name in reference to her journalistic activities and projects that Respondent has become commonly known by the disputed domain name under Policy ¶ 4(c)(iii).  See Avnet, Inc. v. Aviation Network, Inc., D2000-0046 (WIPO Mar. 24, 2000) (finding that the respondent was commonly known by the <> domain name because the respondent submitted “evidence that it was known by the name AVNET for at least ten years prior to its domain name registration”); see also Penguin Books Ltd. v. Katz, D2000-0204 (WIPO May 20, 2000) (“It is reasonable for someone to register a domain name based on a nickname such as ‘Penguin,’ and it follows that the Respondent had legitimate interests in that name. It is not for this Administrative Panel to decide on whether such use would in any way infringe any intellectual property rights of the Complainant and this must be left to other fora.”).


Respondent further claims that although she has not used the disputed domain name in connection with her own website, she has made demonstrable steps to use the disputed domain name as an Italian food writing blog and recipe center.  Respondent submits evidence to show that shortly after registering the disputed domain name, Respondent enrolled in a food writing course that was taught by a Portland, Oregon area food writer and website operator.  Respondent further submits evidence to show that she has joined and reached out to various organizations and individuals for advice and guidance on how to implement her business plan.  The Panel finds that Respondent has made demonstrable preparations to use the disputed domain name that were prior to receiving notice of this             dispute, and that such preparations are to use the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ (c)(ii).  See SFX Entm’t, Inc. v. Cushway, D2000-0356 (WIPO July 10, 2000) (finding that the respondent had rights and legitimate interests in the domain name where he began demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services); see also David J. Joseph Co. v. Barry, D2000-1418 (WIPO Jan. 2, 2001) (finding the respondent provided substantial evidence of his demonstrable preparations to use the domain name with a business involving the sale of scrap materials prior to receiving notice of the present dispute).   


Respondent also argues that the term of the <> domain name is common and generic, and therefore, Complainant does not have an exclusive monopoly on the term on the Internet.  Respondent alleges that the term “grazia” is Italian meaning “grace” in English, and that Complainant cannot own the term exclusively on the Internet.  The Panel agrees with Respondent, and finds that Respondent can establish       rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).


Registration and Use in Bad Faith


The Panel concludes that Respondent has rights or legitimate interests in the <> domain name pursuant to Policy ¶ 4(a)(ii), and the Respondent did not register or use the disputed domain name in bad faith.  Lockheed Martin Corp. v. The Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registrations is not in bad faith.”).


            Reverse Domain Name Hijacking


The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i), and that Complainant has not engaged in reverse domain name hijacking.  See World Wrestling Fed’n Entm’t, Inc.        v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).



Having NOT established all three elements required under the usTLD Policy, the Panel concludes that relief shall be DENIED.



Daniel B. Banks, Jr., Panelist
Dated: June 23, 2010



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