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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Giampaolo Matteucci v. Webmaster, AWG
Case No. D2001-1135
1. The Parties
A. The Complainants are Gianpaolo Matteucci, Via S. Godenzo, 129, Roma, Italy, and Giancarlo Fisichella, at the same address.
B. The Respondent is Web master (username: AWG), 5 Tpagrichnery st. #33, Yerevan, Armenia.
2. The Domain Name and Registrar
The domain name in issue is: <giancarlofisichella.com>
The Registrar is Computer Data Networks dba and shop4domain.com and netonedomains.com (Kuwait).
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complaint on September 17 and 19, 2001 (e-mail and hard copy version respectively). The Center received the Registrar verification Response on September 23, 2001. Respondent’s default was notified on October 17, 2001. The panel was appointed on October 25, 2001.
4. Factual and Legal Background
A. The Name and Trademark
Fisichella is a famous Formula One driver, well-known all over the world. He has established his renown through a long motorsport’s career, competing in Kart, Formula Three and Grand Prix races before accessing the Formula One competitions.
Fisichella’s name is a registered trademark for various goods and services worldwide. The following European trademarks are related to Fisichella:
- Giancarlo Fisichella, n. 1051317, of January 22, 1999.
- Giancarlo Fisichella’s image, n. 887190 of October 27, 1999.
- Giancarlo Fisichella’s helmet, n. 887026 of October 27,1999.
Matteucci, second Complainant, is the current holder of those trademarks and is also Fisichella’s agent. He is involved in managing his business, including the commercial exploitation of his name, image and trademarks.
B. The Complaint
The grounds for the Complaint are:
- That the domain name registered by the Respondent is identical to Fisichella’s name and Matteucci’s trademarks.
- That the Respondent has no rights or legitimate interests in respect of the domain name as he does not have the consent or authorisation of the Complainants to use their name or trademarks (Giancarlo Fisichella) and as he uses the name of the famous Formula One driver to attract surfers to a sexually explicit site for personal commercial and publicity gain.
- That the Respondent has registered the domain name in bad faith as the web site contains an offer to the public concerning the sale of the domain name in question.
C. The Respondent
The Respondent has not submitted any Response.
5. Discussion and Findings
A. Identical or Confusingly Similar Domain Name
The domain name is identical to Complainant’s European trademark "Giancarlo Fisichella" and is confusingly similar to its "Giancarlo Fisichella’s image" trademark and to his "Giancarlo Fisichella’s helmet" trademark. Indeed, a domain name is identical or confusingly similar to a trademark when the domain name includes the trademark or a confusingly similar approximation, regardless of other terms in the domain name (Kidman v. Zuccarini, D2000-1415; Wal-Mart Stores, D2000-0662).
The domain name is also identical to Complainants’ common law trademark. There is little question that Fisichella has established common law trademark rights in his name. By virtue of his successful career in the high profile and popular sport of Formula One Racing, he has achieved renown all over the world. A registration of Fisichella’s name as a registered trademark or service mark is not necessary. The name "Giancarlo Fisichella" has sufficient secondary association with the Complainant for common law trademark rights, referring to US Trademarks rights based on its common Law (see Julia Fiona Roberts v. Russell Boyd, D2000-0210). Further, a decision citing English law found that common law trademark rights may exist in an author’s name; the Policy does not require that the Complainant should have rights in a registered trademark or service mark; it is sufficient that the Complainant should satisfy the Administrative Panel that he has rights in a common law trademark or sufficient rights to justify an action for passing off (see Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235, May 22, 2000). The same reasoning is applicable in the present case.
B. Rights or Legitimate Interests of Respondent
The Respondent has defaulted. Therefore, it is not possible to find which legitimate interests it may have to the domain name in issue. The Complainants did not grant permission to Respondent to register this domain name nor did they have any sort of pre-dispute relationship, commercially or otherwise. Further the web site at the domain name in question contains sexually explicit material and advertisement for other sexually explicit web sites. It seems clear that the Respondent is using the name of the famous Formula One driver to divert Internet users to his site for personal commercial and/or publicity gain or to tarnish the trademark in issue as the public will believe that the Respondent web site is somehow approved or connected to Complainant.
C. Domain Name Registered and Used in Bad Faith
The Respondent is actually trying to sell the domain name in question. A notice has been posted on the site putting the domain name in question up for sale, the starting bid being $ 550.00 USD (see annex 8). The Respondent also priced the domain name at $ 7500.00 USD in the event of a transfer of the domain name to the Complainants’ representative (see annex 9). The financial demands of the Respondent are prima facie evidence of bad faith. As noted above, it further appears that Respondent has intended to divert onto his own site with sexual contents the Internet traffic of persons looking for a site legitimately associated with Complainant and that he has done so to profit from fees paid by advertisers. This in and of itself shows bad faith in the present case. See Policy Sec. 4(b)(iv):
"It is evidence of bad faith that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his or her web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source of sponsorship, affiliation or endorsement of the Respondent’s web site or location of product or service on the Respondent’s web site or location".
In the light of the foregoing, the panel decides that the domain name registered by the Respondent is identical and/or confusingly similar to the corresponding trademarks and common law trademark of the Complainants, that the Respondent has no legitimate interests in respect of this domain name and that the domain name in issue has been registered and is being used in bad faith by the Respondent.
As the Complainants requested that the domain name be transferred either to Gianpaolo Matteucci or to Giancarlo Fisichella, the panel accordingly requires that the registration of the domain name <giancarlofisichella.com> be transferred to Giancarlo Fisichella.
Dated: December 7, 2001