The news of the failure of Mediaset’s appeal against the American citizen who came into possession of the domain “mediaset.com” has been widely reported in the Italian media.
The matter began a year ago, when possibly due to oversight or misunderstanding the Milan based company failed to renew its domain “mediaset.com” which was subsequently bought at an online auction by Didier Mediba, a sales agent from Fenicius Llc, a Delaware company.
In November 2011, Mediaset appealed to the Arbitration and Mediation Centre of the WIPO, the World Intellectual Property Organization in order to obtain the reassignment of the domain .
The reasoning put forward by the Italian company founded by Silvio Berlusconi related to the apparent similarity of the domain “Mediaset.com” with the other domains of which it owns the rights and the lack of any real interest on the part of Mr. Madiba in purchasing the domain.
The Fenicius LLC legal team replied to the allegations by claiming that the word “Mediaset” is formed from two words very common in English, “media” and “set”, to which the Italian company had no trademark rights. In addition to this, the lawyers maintained that it was Mr. Madiba’s intention to set up in business precisely in the field of media storage devices.
WIPO’s arbitration surprisingly upheld the reasons put forward by the defence. While recognizing the resemblance between the domain in question and the trademarks owned by Mediaset Spa, WIPO considered the allegations of bad faith on the part of the Fenicius Llc sales agent made by Mediaset Spa to be too generalized and insufficient.
Therefore, the domain “Mediaset.com” remains in the hands of Mr. Madiba, at least until the two sides reach a commercial agreement for its transfer.
To date, the web address corresponds to a site that sells equipment for media storage.
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