{
    "case_number": "CAC-UDRP-104163",
    "time_of_filling": "2021-11-16 16:57:37",
    "domain_names": [
        "GRAZIA.NET"
    ],
    "case_administrator": "  Iveta Špiclová   (Czech Arbitration Court) (Case admin)",
    "complainant": [
        "Mondadori Media S.p.a."
    ],
    "complainant_representative": "Dragotti & Associati S.r.l.",
    "respondent": [
        "Grazia Visconti"
    ],
    "respondent_representative": null,
    "factual_background": "The Complainant is a well-known Italian company leader in the field of publishing, books, magazines, media production and distribution.\r\n\r\nThe disputed domain name was registered on 27 August 1998 by an Italian individual identified by the Registrar as Grazia Visconti. As confirmed by the Respondent itself, Grazia Visconti is a pen-name used by Graziella Solaroli. \r\n\r\nIn 2010 the Complainant initiated legal proceedings against the Respondent concerning the disputed domain name, prevailing in all court instances available. Notwithstanding the court order to transfer the disputed domain name to the Complainant, which became final and enforceable in 2020, and the warning letter sent by this latter in 2021, requiring the so-called Auth Code necessary to obtain the transfer of the disputed domain name at the Registrar, the Respondent has not transferred the domain name in question to the Complainant.\r\n\r\nThe disputed domain name does not resolve to any active website.",
    "other_legal_proceedings": "The Complainant has made contentions and provided documentary evidence concerning legal proceedings which had been decided by Italian courts and which relate to the disputed domain name, namely:\r\n- proceeding no. 30264\/2010 before the Court of Milan decided with judgement no. 8953\/2012 (11107\/2012) issued on 31 May 2012 and published on 18 June 2012;\r\n- proceeding before the Court of Appeal of Milan decided with judgement no. 4725\/2015 published on 10 December 2015; and\r\n- proceeding no. 15245\/2016 before the Italian Court of Cassation decided with judgement no. 4721\/2020 issued on 25 November 2019 and published on 21 February 2020.\r\n\r\nBy virtue of the judgement of the Court of Cassation, the judgements rendered in first and second instances are final.\r\n\r\nThese judgements and their ruling are particularly relevant in the present administrative proceeding and will be analysed in the reasoning below.\r\n\r\nThe Panel is aware of the above-mentioned legal proceedings which are decided and which relate to the disputed domain name.",
    "no_response_filed": "PARTIES’ CONTENTIONS:\r\n\r\nCOMPLAINANT:\r\n\r\nThe Complainant contends that the disputed domain name is identical or at least confusingly similar to the GRAZIA Trademark in which it has rights, because the disputed domain name contains in its entirety such mark.\r\n\r\nThe Complainant also contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Contrary to the ruling of the judgements rendered by the Italian courts and the warning letter sent by the Complainant, the Respondent has not transferred the disputed domain name to the Complainant. Moreover, the Complainant contends that the disputed domain name is currently inactive.\r\n\r\nThe Complainant finally contends that, as confirmed by the judgements, its GRAZIA Trademark is well-known and the disputed domain name has been registered and is being used in bad faith by the Respondent.\r\n\r\nRESPONDENT:\r\n\r\nThe Respondent contends that the present administrative proceeding has been brought by the Complainant to obtain the \"forced transfer\" of the disputed domain name based on the final judgement which ended the legal proceedings brought before the Italian courts of first and second instances and the Court of Cassation. \r\n\r\nThe Respondent claims that one out of three judgements (the one issued by the Court of Appeal of Milan) has not been submitted by the Complainant. According to the Respondent such judgement is essential for the complete review of the present case and, therefore, should be \"acquired\".\r\n\r\nThe Respondent also claims that the Complainant has submitted the Complaint and the documents in Italian with a \"raw\" and unreliable translation in English which should be replaced by an accurate and certified translation.\r\n\r\nTherefore, the Respondent requests that, as a preliminary step, a sworn translation of all the documents be ordered, without which \"the application appears to be clearly inadmissible\", reserving the right to submit any further documents and pleadings that might be useful for dealing with the case at hand.",
    "rights": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).",
    "no_rights_or_legitimate_interests": "The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).",
    "bad_faith": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).",
    "procedural_factors": "Before the reviewing the case on the merits, the Panel addresses the procedural objections raised by the Respondent concerning:\r\n1. the necessity to \"acquire\" the judgement issued by the Court of Appeal of Milan, because it is essential for the complete review of the case;\r\n2. the necessity to provide a certified and sworn translation of the Complaint and the documents annexed thereto.\r\n\r\nWith reference to such objections, the Panel notes as follows: \r\n\r\n1. The UDRP Rules in principle provide only for a single round of pleadings, and do not contemplate discovery as such. Accordingly, the Panel’s assessment will normally be made on the basis of the evidence presented in the Complaint and any filed Response. Paragraph 12 of the UDRP Rules makes clear that it is for the Panel to request, in its sole discretion, any further statements or documents from the parties that it deems necessary. Paragraph 10 of the UDRP Rules similarly vests the Panel with the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition. While relatively infrequent, where the Panel believes it would benefit from additional information or arguments from the parties concerning contentions made in the pleadings or otherwise, it may issue a procedural order to the parties requesting such information or arguments. \r\n\r\nIn the present case the Complainant relies on three judgements rendered by Italian courts. By virtue of the judgement of the Court of Cassation, which dismissed the Respondent's appeal in cassation, the judgments of the Court of Appeal of Milan (second instance) and the Court of Milan (first instance) became final (res iudicata) starting from the date of publication (21 February 2020). The fact that the judgements are final has also been confirmed by the Respondent in its Response (\"These proceedings were commenced [...] on the basis of a final judgment that had ended legal proceedings brought before courts of first and second instance and before the Supreme Court of Cassation\").\r\n\r\nWhile the judgements of the Court of Milan and the Court of Cassation have been submitted by the Complainant, the judgement of the Court of Appeal of Milan has not been annexed to the Complaint. However, the Court of Cassation's judgement has sufficiently described Court of Appeal's reasoning and ruling. Whilst the Respondent considers the appeal judgement \"essential\" for the complete review of this case, and had been party (appellant) in the legal proceeding before the Court of Appeal of Milan, and, thus, had such judgement in its hands or, however, easy access to it, it has not submitted the judgement in question with its Response. Under paragraph 5, letter c, of the UDRP Rules the Response should respond specifically to the statements and allegations contained in the Complaint, include any and all bases for the Respondent to retain registration and use of the disputed domain name, and annex any documentary or other evidence upon which the Respondent relies, together with a schedule indexing such documents. Although the Respondent has had the possibility to do so, has neither replied to the statements and allegations of the Complainant, nor included any bases to retain the registration and use of the disputed domain name, nor annexed any documentary evidence it considers \"essential\" to decide the present dispute. Under paragraph 14 of the UDRP Rules, if a Party, in the absence of exceptional circumstances, does not comply with any provision of the UDRP Rules, the Panel shall draw such inferences therefrom as it considers appropriate. \r\n\r\nAccording to this Panel, the Complaint and its documents and the Response are sufficient to decide this dispute.\r\n\r\n2. Paragraph 11 of the UDRP Rules provides that the language of the administrative proceeding shall be the language of the registration agreement of the disputed domain name (in the present case English), subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding (e.g., nationality of the parties). The Panel may order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation in whole or in part into the language of the administrative proceeding. However, neither the UDRP Rules, nor the Supplemental Rules of the CAC require the parties to meet certain formalities, such as providing certified or sworn translation of the documents.\r\n\r\nThe Complaint was submitted in English and two out of six annexes of the Complaint are in English. The remaining four annexes (the extract of the database of the Italian Trademark Office, the judgement of the Italian Court of Cassation, the warning letter sent to the Respondent, and the judgement of the Court of Milan) are in Italian accompanied by English translation, defined by the Complainant as raw translations. \r\n\r\nThis Panel is composed of a Panelist who is also an Italian qualified lawyer and, therefore, well understands the Italian language, including legal terminology used by the above-mentioned judgements and the original warning letter. \r\n\r\nMoreover, the Panel finds that the English translation of the Italian documents provided by the Complainant are sufficiently reliable.\r\n\r\nTherefore, the Respondent's right to defend itself in this proceeding and the ability of the Panel to review this case have not been compromised or affected.\r\n\r\nThe procedural objections raised by the Respondent are to be considered manifestly ill-founded and a delaying tactic.\r\n\r\nThe Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.",
    "decision": "Accepted",
    "panelists": [
        "Avv. Ivett Paulovics"
    ],
    "date_of_panel_decision": "2021-12-27 00:00:00",
    "informal_english_translation": "The Complainant is owner of the following registered trademarks:\r\n- Italian trademark registration GRAZIA (word) no. 0001540355 filed on 27 June 1963 and registered since 21 October 1963 in class 16; and\r\n- international trademark GRAZIA (word) no. 276829 registered since 28 November 1963 in class 16.\r\n\r\nThe trademarks mentioned above are hereinafter referred to as GRAZIA Trademark.\r\n",
    "decision_domains": {
        "GRAZIA.NET": "TRANSFERRED"
    },
    "panelist": null,
    "panellists_text": null
}