WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Consorzio del Prosciutto di Parma v. Domain Name Clearing Company, LLC
Case No. D2000-0629
1. The Parties
Complainant is Consorzio del Prosciutto di Parma, Via Marco dellíArpa 8b, 43100 Parma, Italy.
Respondent is Domain Name Clearing Company, LLC, 4640 Jewell, Ste. 202A, San Diego, CA 92109, USA.
2. The Domain Name and Registrar
The Domain Name at issue is:
The Registrar of the Domain Name is Domain Discover, 3870 Murphy Canyon Rd. #330, San Diego, CA 92123, USA.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint in hard copy on June 19, 2000. On June 22, 2000, the Center acknowledged receipt of the Complaint and requested that Complainant submit an electronic version of the Complaint by e-mail. The Center received the Complaint by e-mail between June 22, 2000, and July 3, 2000.
On June 23, 2000, the Center sent to the Registrar a request for verification of registration data. On June 24, 2000, the Registrar confirmed, inter alia, that it is indeed the Registrar of the Domain Name, that the Domain Name is registered in the name of Respondent, and that the Uniform Domain Name Dispute Resolution Policy applies to the Domain Name.
On July 3, 2000, the Center verified that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panelist agrees with the Centerís assessment that the Complaint complies with the formal requirements.
Also on July 3, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to Respondent by e-mail. The same Notification was sent to Respondent by courier on July 4, 2000. Final delivery of the courier occurred on July 19, 2000. The Notification indicated that the Response was due on July 22, 2000.
On July 18, 2000, Respondentís representative informed the Center that he had not received all the attachments to the Complaint, only Annex C being included in the Centerís notification by e-mail. At Respondentís request, the Center faxed a whole copy of the Complaint to Respondent on July 21, 2000. By an e-mail of the same day, Respondent asked when the Response would be due. On July 24, 2000, the Center replied that a two-day extension would be granted and that the Response would be due on July 26, 2000. By a fax of July 25, 2000, received by the Center on July 26, 2000, Respondent represented that it would not be able to reply within the deadline set by the Center and requested a two-week extension. By a fax of July 26, 2000, Complainant informed the Center that it was opposed to such an extension. On July 28, 2000, the Center issued a Notification of Respondentís Default, which was communicated to the parties by e-mail.
On August 9, 2000, having received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Anne-Virginie Gaide (the "Panelist"), the Center notified the parties of the appointment of a single-member panel consisting of the Panelist. The Panelist is satisfied that the Administrative Panel was properly constituted. The language of the proceedings is English. The initial date scheduled for the issuance of the Panelistís decision was August 22, 2000.
On August 21, 2000, the Panelist had not received a complete copy of the file. The issuance date for the decision was therefore postponed until August 29, 2000.
Upon reviewing the complete file communicated by the Center, the Panelist reached the conclusion that Respondent had not had sufficient time to file a Response, and consequently issued on August 28, 2000, an Interim Order, the text of which is reproduced below :
After reviewing the documents pertaining to the communication of the Complaint to Respondent, the Panelist considers that Respondent has not had a sufficient opportunity to present its arguments, and shall therefore be granted a supplemental deadline to file a Response with the Center. The reasons for the present interim order are set out hereunder.
According to paragraph 2 of the Rules, the Provider discharges its responsibility to forward the Complaint to Respondent by either achieving actual notice or sending the Complaint to all postal, facsimile and e-mail addresses of Respondent, including " postmaster@the contested domain name".
According to paragraph 4(c) of the Rules, the date of commencement of the administrative proceeding shall be the date on which the Provider completes its responsibilities under paragraph 2(a) in connection with forwarding the Complaint to the Respondent. According to paragraph 5(a), the 20 days deadline to submit the Response starts from the date of commencement of the administrative proceeding, i.e. from the date on which the Provider has achieved actual notice or has employed the measures described in paragraph 2 (a).
It is the Panelistís opinion that the Providerís responsibilities are discharged only when the entire Complaint, attachments included, is forwarded to Respondent. Attachments such as the copy of the certificate(s) of registration for Complainantís trademark(s) are indeed necessary for an assessment of the merits of the Complaint and the preparation of a Response. Other attachments may also influence considerably the strength of the arguments developed in the Complaint.
In the present case, the Complaint was e-mailed to Respondent on July 3, 2000. The messages were sent to the address indicated in the Registrarís Whois database, firstname.lastname@example.org and to the address email@example.com. The first message was successfully delivered. However, the communication achieved by e-mail did not include all the attachments to the Complaint. Respondent indicated in its e-mail of July 18, 2000, to the Center that it had received only Annex C (consisting in a list of precedents). The Panelist considers this fact as true, since the copy of the Complaint that she received from the Center also contained only Annex C, and not the other Attachments to the Complaint, which presumably were not submitted to the Center in electronic form.
The Complaint was also sent by courier to Respondent on July 4, 2000. According to the "track and trace" sheet provided by the Center, the final delivery occurred on July 19, 2000.
After Respondent complained that it had not received a complete copy of the Complaint, the Center sent a complete copy by facsimile on July 21, 2000. It appears that the Complaint had not been sent by facsimile to Respondent before that date, as no transmission receipt evidencing such earlier communication could be found. Thus, the measures that the Center must employ to forward the Complaint in accordance with the paragraph 2(a) of the Rules were completed only on July 21, 2000.
In view of the above, the Center completed its responsibilities under paragraph 2(a) of the Rules on July 19, 2000, the date on which Respondent received actual notice of the entire Complaint. The deadline to file a reply to the Complaint should therefore have been August 7, 2000. In such circumstances, the Panelist considers that the extension granted by the Center until July 26, 2000, was not sufficient for Respondent to prepare and file a reply, and that compared to Complainant, Respondent has not had an equal opportunity to present its arguments. Accordingly, Respondent must be granted a new deadline to file a Response.
A two-weeks deadline must be considered as sufficient for Respondent to prepare and file a Response. The Panelist notes in this respect that Respondent itself requested a two-weeks extension in its fax of July 25 2000 to the Center.
In view of the above, the Panelist grants to Respondent a deadline until September 11, 2000, to file a Response with the Center.
Moreover, the Panelist observed that Complainant submitted only an excerpt of the US Patent & Trademark Officeís electronic database as evidence of its trademark registration for "PARMAHAM". The Panelist hereby requests Complainant to forward the Center, by facsimile, a copy of the original certificate of registration for its trademark. The Center will then communicate this document to Respondent and to the Panelist. The deadline to transmit the requested document by facsimile is September 4, 2000.
The Panelist expects to issue her decision by September 18, 2000".
The Center notified this order to the parties by e-mail on August 29, 2000.
On September 11, 2000, Complainant informed the Center that it had not been able to read the Interim Order sent by e-mail. On the same day, Respondent sent the following e-mail to the Center:
"Dear Mr. Ali,
Having received the panelís interim order which would have granted us an extension, I am afraid that it will not be possible for us to submit a Response by September 11, 2000. Based on our current schedule, we would need an extension until at least October 2, 2000 in order to prepare and file a response. We therefore request a continuance of at least that date.
The Center sent a new e-mail enclosing the Interim Order in several formats to Complainant on September 13, 2000. By an e-mail of the same day, Complainant indicated that it was opposed to the extension requested by Respondent. In this message, Complainant also acknowledged receipt of the Interim Order. The requested copy of the certificate of registration for Complainantís trademark was faxed to the Center the same day.
On September 14, 2000, the Panelist denied Respondentís request, on the ground that Respondent had already been granted a two-week extension and had not alleged any exceptional circumstances which would justify a further extension.
On September 15, 2000, Respondent contended in an e-mail to the Center that the Panelist should not take the faxed copy of the certificate of registration for Complainantís trademark into account because it had been submitted after the deadline of September 4, 2000, set in the Interim Order. Complainant replied by an e-mail of the same day that it had received the Interim Order only on September 13, 2000. The Panelist considers that the reason alleged by Complainant is valid and will take the document at issue into account.
To this day, Respondent has not submitted a Response to the Complaint and is therefore in default.
4. Factual Background
Complainant is a consortium of certified manufacturers of Parma ham. It is the owner of the certification mark "PARMA HAM", registered in the USA on November 12, 1996 under no. 2'014'628 in relation to "ham products". The certificate of registration bears the following mention: "The certification mark is used by persons authorized by the certifier to certify the regional origin of the product to which the mark is applied".
Complainant explains that in order to be admitted into the consortium, or to sell a product under the name "Parma ham", a manufacturer must be certified as meeting certain geographical origin and quality requirements.
Complainant represents that the United States is its third largest export market (two million pounds of Parma ham being sold there annually) and that its certification mark enjoys a considerable goodwill in the food and gourmet industries in this country.
Respondent registered the Domain Name ę parmaham.com Ľ on April 26, 1997. On January 30, 1997, it had registered the domain names "prosciutto.com" and "parmaprosciutto.com", "Prosciutto" is the Italian word for ham.
Complainant represents that it tried to contact Respondent by phone on April 7 and April 14, 2000, and by e-mail on May 24, 2000. Respondent did not reply to Complainantís phone messages and e-mail in which Complainant explained its concerns that Respondentís registration was confusingly similar to the trademark "PARMA HAM".
5. Partiesí Contentions
Complainant contends that the Domain Name is identical or confusingly similar to a trademark in which it has rights, that Respondent has no rights or legitimate interests in respect of the Domain Name, and that Respondent registered and used the Domain Name in bad faith.
Consequently, Complainant requires the transfer of the Domain Name to Complainant.
Respondent has not submitted a Response to the Complaint.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:
i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
ii) the respondent has no rights or legitimate interests in respect of the domain name; and
iii) the domain name registered by the respondent has been registered and is being used in bad faith.
1. Identity or confusing similarity
Complainant demonstrated that it is the owner of a US registration for the certification word mark "PARMA HAM".
The Domain Name is identical to Complainantís trademark.
2. Rights or legitimate interests
According to Complainant, there is no relation between Respondent and Complainant, and Respondent is not a licensee of Complainant, nor has it otherwise obtained an authorization to use Complainantís mark.
Respondent has not submitted a Response to the Complaint, and has not otherwise alleged any rights or interests in the Domain Name. The Domain Name does not resolve to an active web site or page at the present time, nor is there any indication that it did in the past.
In view of the fact that the file contains no elements that would command to admit the existence of rights or legitimate interests of Respondent, and that Respondent did not assert such rights or interests, the Panelist infers from Respondentís default that such rights or legitimate interests in fact do not exist.
3. Registration and use in bad faith
According to paragraph 4(a) of the Policy, a complaint must meet a three-prong test in order to be successful. Each of the three elements - identity or confusing similarity, lack of rights or legitimate interests, registration and use in bad faith - must be satisfactorily demonstrated. In this respect, the requirement of the absence of rights or legitimate interests and the requirement of registration and use in bad faith are two separate conditions. Thus, the absence of rights or interests on the part of the respondent in a given case is not in itself sufficient evidence that the domain name at issue was registered and is being used in bad faith. In other words, it results from the text of paragraph 4(a) of the Policy that a domain name can be registered and used in good faith even when the registrant has no rights or legitimate interests to it.
Paragraph 4(b) of the Policy sets forth four particular circumstances which are evidence of bad faith. The list is not exhaustive, and in a given case, other circumstances may be evidence of bad faith. In any event, the burden of proof of the respondentís bad faith lies with the complainant. The sole fact that the respondent elected not to reply to the complaint is therefore not conclusive in this respect.
The circumstances expressly mentioned in paragraph 4(b) of the Policy are the following :
i) Registration for the purpose of selling or otherwise transferring the domain name to the owner of an identical or confusingly similar trademark or to a competitor of such owner for a price in excess of costs directly related to the domain name.
ii) Registration for the purpose of preventing the owner of an identical or confusingly similar trademark from reflecting the mark in a corresponding domain name, provided the respondent has engaged in a pattern of such conduct.
iii) Registration for the purpose of disrupting the business of a competitor.
iv) Use for the purpose of attracting Internet users to the respondentís web site by creating a likelihood of confusion with the complainantís mark.
As regards sub-paragraph 4(b)(i), the file does not contain any indication that Respondent at any time tried to sell the Domain Name to Complainant or a competitor, even though Complainant believes that the registration was effected for this purpose. As regards sub-paragraph 4(b)(iii), it is not alleged that Respondent and Complainant are competitors : the registration could therefore not have had the purpose of disrupting a competitorís business. As regards sub-paragraph 4(b)(iv), as Respondent did not use the Domain Name to designate a web site, it does not appear that it tried to attract consumers by causing a confusion with Complainantís company, services or products. Thus, the requirements of sub-paragraphs (i), (iii) and (iv) are not satisfied in the present case.
Complainant considers that sub-paragraph (ii) is applicable and that its conditions are met. In Complainantís view, the name "Domain Name Clearing Company" indicates indeed that Respondent "may in fact have a long record of purchasing domain names for the purpose of selling them". This affirmation is however not substantiated by evidence. Complainant declares in this respect: "Network Solutions would not allow the Complainant access to a list of all of Domain Name Clearing Companyís domain name registries, but an accurate determination of the extent of registrations purchased by the Respondent could be made by Network Solutions or some other body with access to their records [...]."
Although it might be possible to obtain a list of Respondentís registrations, it is not in the Panelistís attributions or competence to seek to obtain such a list. As mentioned above, the burden of proof of Respondentís bad faith lies with Complainant. The lack of evidence that Respondent engaged into a pattern of registering domain names identical or confusingly similar to trademarks must therefore be borne by Complainant. In this regard, the name of Respondent is not, as Complainant contends, necessarily a sign that Respondent registers domain names which are identical or similar to trademarks of third parties. Indeed, Respondent might very well have registered domain names corresponding to common words not registered as trademarks and not infringing upon the rights of anyone. The mere fact of selling domain names is not illegal.
Complainant moreover invokes the fact that Respondent registered the domain names "prosciutto.com" and "parmaprosciutto.com" to demonstrate that Respondent has engaged in a pattern of conduct within the meaning of sub-paragraph 4(b)(ii). Such registrations are however not of a nature to demonstrate such a pattern, since it is not alleged that "prosciutto" or "parmaprosciutto", which mean "ham" and "parmaham" in Italian, correspond to trademarks.
In view of the above, the Panelist considers that Complainant has not demonstrated that Respondent has engaged in a pattern of registering domain names in order to prevent the owner of trademarks to reflect them in corresponding domain names.
Consequently, none of the circumstances set forth in paragraph 4(b) of the Policy are given in the present case.
As mentioned above, paragraph 4(b) of the Policy is not exhaustive and other circumstances may constitute evidence that a domain name was registered or is being used in bad faith.
Complainant alleges that the terms "parma ham" have no meaning or significance other than as a mark identifying the products of the same name. It further contends that given the widespread use of the trademark "PARMA HAM", Respondent knew or should have known of Complainantís mark and services at the time it registered the Domain Name and therefore necessarily made this registration in bad faith. The Panelist cannot agree with Complainant. The terms "Parma ham" do have a meaning for consumers: they mean "ham made in the region of Parma". Consumers have no reason to know that "PARMA HAM" is a registered trademark, since it has a very understandable meaning ("ham from Parma"), and is used in the everyday language as a descriptive term. It should be noted in this respect that the expression "Parma ham" has been used since at least 1963 (according to Complainant itself), but was registered only in November 1996. It is therefore quite possible that Respondent did not know in 1997 that "PARMA HAM" had been registered in the name of Complainant. The Panelist considers as a consequence that Complainant has not satisfied its burden of proof as far as registration in bad faith is concerned.
It remains to see whether Respondent is using the Domain Name in bad faith. Respondent seems to hold the Domain Name without making any active use of it. According to Complainant, it is difficult to conceive a plausible circumstance in which Respondent could legitimately use the Domain Name. In this respect, Complainant contends that Respondent could not be distributing a product known as "Parma ham" without infringing on Complainantís certification mark. Consequently, Complainant considers that Respondent is using the Domain Name in bad faith. In support of this argument, Complainant cites the case Telstra Corporation Limited v. Nuclear Marshmallows, Case no. D2000-0003, in which the Panelist held that the passive holding of a domain name may amount to use in bad faith when, among other circumstances, it appears that any plausible active use of the domain name by the respondent would be illegitimate. The Panelist in Telstra considered that the following circumstances warranted a finding of bad faith on the part of the respondent :
1) Telstraís trademark "TELSTRA" had a strong reputation and was widely known in Australia.
2) Nuclear Marshmallows had provided no evidence of any actual or contemplated good faith use of the domain name "telstra.org".
3) Nuclear Marshmallows had taken active steps to conceal its true identity, by operating under a name that was not registered as a business name.
4) Nuclear Marshmallows had actively provided false contact details and failed to correct them.
5) It was not possible, in view of the above, to conceive of any plausible actual or contemplated active use of the domain name that would not be illegitimate, such as being a passing off, an infringement of consumer protection legislation or an infringement of Telstraís rights under trademark law.
The present case is distinguishable in several respects from the Telstra case.
First, even though the terms "Parma ham" are widely known and used, they are not widely recognized as a trademark because of their descriptive meaning. "TELSTRA", on the other hand, has no meaning and is obviously an invented word. Its registration as a domain name could therefore not be a coincidence, whereas such a coincidence is possible in the present case.
Second, Respondent did not take steps to conceal its identity or to make contact impossible. Although Respondent elected not to file a Response, it acknowledged receipt of the Centerís various communications.
Finally and more importantly, it is possible to conceive of a legitimate use of the terms "Parma ham" as a domain name. Indeed, it is the Panelistís understanding that a certification mark allows its holder to determine who may manufacture and put on the market for the first time products bearing the trademark. Once the products are on the market in a relevant territory, the exhaustion principle (applicable at least at the national level, if not at the international level) commands that any purchaser of the products is free to resell them. At the occasion of such second sale, the seller is entitled to use the trademark to describe the products that it offers. Thus, a retailer who would have bought 100 kilos of Parma ham would be entitled to sell those wares and to post in its shop window a sign saying "Parma ham". Logically, this retailer should also have the right to offer Parma ham through the channel of the Internet, and to use the terms "Parma ham" to designate the products offered on its web site. Such use of those terms would not infringe upon Complainantís trademark. No more infringing would be the use of those terms to designate a web site discussing the qualities of Parma ham. Should Respondent use the Domain Name itself in such manner, or transfer it to a third party for such purposes, it would make a legitimate use of the Domain Name.
In view of the above, the Panelist finds that in the present case, the passive holding of the Domain Name by Respondent does not amount to use in bad faith within the meaning of paragraph 4(b) of the Policy. Complainant has thus not demonstrated that the Domain Name has been registered and is being used in bad faith by Respondent, and has therefore failed to satisfy the third requirement of paragraph 4(a) of the Policy. Accordingly, the Complaint must be denied.
The Panelist wishes to stress here that a behavior amounting to an act of unfair competition according to the law of a given jurisdiction does not necessarily fall under the limited scope of the ICANN Policy, which was designed to decide clear cases of cybersquatting.
In light of the foregoing, the Administrative Panel decides that the Domain Name "parmaham.com" registered by Respondent is identical to a trademark in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the Domain Name, but that Complainant has failed to demonstrate that Respondent has registered and used the Domain Name in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Administrative Panel denies the request that the registration of the Domain Name "parmaham.com " be transferred to Complainant.
Dated: September 18, 2000