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”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <grazia.us>, registered with NamesDirect.com.
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, NamesDirect.com confirmed by e-mail to the Forum that the domain name <grazia.us> is registered with NamesDirect.com and that the Respondent is the current registrant of the name. NamesDirect.com has verified that Respondent is bound by the NamesDirect.com 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.
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
The disputed domain name, <GRAZIA.us>, 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
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.
Respondent does not contest that the disputed domain name
<grazia.us> is essentially identical to the Complainant's
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
Equally important is the fact that Complainant, an Italian publishing company, headquartered in
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
A natural person (i) who is a
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
Complainant is neither a
Respondent moved to the
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
Rights or Legitimate Interests
Respondent claims that she selected the <grazia.us> 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 <avnet.net> 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.”).
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
Respondent also argues that the term of the <grazia.us> 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 <kaleidoscope.com> 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 <grazia.us> 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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