WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Perfetti Van Melle S.p.A. v. Pi-Effe S.a.s.
Case No. D2003-0067
1. The Parties
Complainant is Perfetti Van Melle S.p.A, having registered offices in Via XXV Aprile, 7, Lainate (MI), Italy. The Complainantís authorized representative in this administrative proceeding is Mr. Alessandro Biraghi.
Respondent is Pi-Effe S.a.s., Via dei Monti Parioli 25, Roma, Italy. The Respondentís authorized representative in this administrative proceeding is Mr. Gianluca Pellegrini of Tuonome.it srl, Italy.
2. The Domain Name and Registrar
The domain name at issue is <perfetti.net>, hereinafter referred to also as the "Domain Name". The registrar is CORE Internet Council of Registrars.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received a complaint (hereinafter the Complaint) by email on January 30, 2003, and in hardcopy and exhibits on January 31, 2003. On January 30, 2003, the Center transmitted via email to CORE Internet Council of Registrars, a request for Registrar Verification in connection with this case. On February 12, 2003, CORE Internet Council of Registrars transmitted via email Verification Response to the Center, confirming that the registrant is Pi-Effe S.a.s. and that the Domain Name registration is in "active" status.
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), as confirmed by the Centerís Formal Requirements Compliance Checklist completed on February 13, 2003.
The Center transmitted on February 13, 2003, to Pi-Effe S.a.s. the Notification of Complaint and Commencement of the Administrative Proceeding by post (with attachment), and by fax and email without enclosures.
On March 4, 2003, the Center received the Online Response from the Respondent and acknowledged receipt on March 7, 2003.
On March 14, 2003, in view of the Complainantís designation of a single member panel, the Center invited Mr. Luca Barbero to serve as a panelist and transmitted to him the Request for Declaration of Impartiality and Independence and a Statement of Acceptance.
Having received Mr. Luca Barbero's Statement of Acceptance and Declaration of Impartiality and Independence on March 17, 2003, the Center transmitted on March 18, 2003, to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Luca Barbero was formally appointed as the Sole Panelist.
The Sole Panelist finds that the Administrative Panel (hereinafter referred to also as the Panel) was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
4. Factual Background
The Complaint is based on the trademark registration n. 330 212 of April 5, 1979, in Italy; a number of other registration for PERFETTI have been enclosed to the Complaint.
The Respondent registered the domain name <perfetti.net> on May 6, 2002.
5. Partiesí Contentions
The Complainant is the owner of many trademark registrations for PERFETTI, covering products of different international classes but mainly of the class 30, used in particular for confectionery products. The first Italian trademark PERFETTI was filed in 1979 and registered in 1982. Copies of the Italian, International and Community registration certificates are provided as Annexes to the present Complaint. It is noted that said registration certificates are in the name of PERFETTI S.p.A., the Complainantís former company name and it is acknowledged the copy of the certificate of the Chamber of Commerce of Milan attesting to the change of the company name is provided.
The Complainantís trademark PERFETTI has been used on the confectionery products produced by the Complainant, which is a global company successfully selling its products all around the world. The Complainant is the worldís sixth and Europeís second largest confectionery group, and the market leader in Italy, where it enjoys high reputation and goodwill.
The Complainant is also the registrant of the domain name <perfetti.com>; the relating website contains information on the Complainantís products and business.
The Complainant indicates that the Respondent has no rights or legitimate interests in respect of the domain name that is the subject of the Complaint because it has not been commonly known by the domain name nor it has acquired commercial gain and/or notoriety among the public following the use of the domain name. The word PERFETTI, in fact, is not part of or comprehended in any way in the Respondentís company name (Pi-Effe S.a.s.), the name under which it normally operates and is known to the public.
Moreover, the Respondent has never had any connection or affiliation with the Complainant who has never consented to the Respondentís use of the domain name that is the subject of the Complaint and the Complainant has never received any information about the existence of the Respondent, neither has the former ever had any commercial or other kind of relationship with the latter. The Respondent has never approached the Complainant to inform it of the intention to register the challenged domain name nor to ask for its consent to the registration.
The Complainant states that the only interest of the Respondent in the Domain Name is to attempt to exploit the fame, especially in Italy, of the Complainantís trade name and trademark PERFETTI and convey Internet usersí attention and Internet contacts to its website, without any need to bear advertising or promotional costs. According to the Complainant, this interest is all but legitimate, having the Complainant invested high sums of money in its business and reputation for quality products.
The Complainant informs the Panel that on the website corresponding to the disputed domain name there is no reference to the person that seems to be behind the Respondent, its administrative contact Mr. Fabrizio Perfetti. Any Internet user opening this website gets no information about the fact that this is a personal website speaking only and particularly of this person, his origin and family.
On the website, on which it appears the word PERFETTI in big characters, there is a general claim of origin of the PERFETTI family name from an Italian region called Marche, from where the Internet users are informed that all the people named PERFETTI originate. This affirmation in general terms is not true and not legitimate. The Complainant and the family that owns the Perfetti Van Melle Group originate, in fact, from another Italian region called Lombardia and have never had any kind of relation, family, commercial or of any other kind with the Respondent, its administrative contact Mr. Perfetti or any other people related to him.
Moreover, the Complainant notes that except for the initial page that is displayed when the website is opened, hardly any other section of it is active. The Respondent is not using, and there is no apparent preparation to use, the domain name in connection with a bona fide offering of goods or services, nor is it making a fair use of it. In the end, the website displayed under the domain name subject of the Complaint consists of only one page and contains only general fake information, which does not correspond to any legitimate interest. If the Respondent or its administrative contact wished to have a website dedicated to them, their family and history, they should have registered at least the domain name <fabrizioperfetti.it> or should have given in the website corresponding to the disputed domain name some exact information for Internet users to understand who and what the website is about.
A copy of the printout of the website page displayed under the domain name subject of the Complaint was provided to the Panel.
With reference to the bad faith registration and use, the Complainant states that since Respondent is located in Italy it would be strange if only the Respondent remained unaware of the existence of the trade name/mark PERFETTI in light of the fact that the Complainant is the market leader for confectionery products in this country and its products are very famous in Italy and have been widely advertised on the whole Italian territory.
Moreover, the Complainant points out that it should have been the responsibility of the Respondent to make searches, at least among the Italian trademark registrations, to be sure that its chosen domain name did not infringe someone elseís rights. The search would have revealed the existence of the Complainantís registrations for the trademark PERFETTI and even if the Respondent hadnít performed a trademark search, a simpler and easier search with a search engine would have shown to the Respondent the existence of the Complainantís Company and its trade name PERFETTI.
The Panel was provided with copy of the printouts of the search results from some of the most common search engines, Google, Virgilio and Yahoo. The Complainant commented that the Respondent proved to be familiar with the use of Internet since it has registered a domain name, and therefore a search in the above mentioned search engines or any other similar search engine would have been absolutely in the Respondentís power.
Furthermore, by registering the domain name subject of this Complaint, the Respondent makes the Complainant unable to use its trademark and business name as a ".net" domain name.
The Complainant, as an additional circumstance evidencing bad faith, asserts that the Respondentís domain name can mislead the consumers attracting them while they are searching the web for news and information on the Complainantís Company and products. Consumers may think there is a link between the Complainant and the Respondent especially because in the Respondentís website there is nothing about the Respondent itself or its administrative contact or his family. There is simply the false affirmation that the PERFETTI people originate from Marche and that only these are "the original PERFETTI". Moreover, considering that after more than seven months only the initial page containing this false information is active, there is no real and effective use of the website and no guarantee that the corresponding domain name wonít be sold to any third party (also competing with the Complainant) in the future.
The Respondent is an Italian limited partnership, incorporated and regularly registered at the Chamber of Commerce in Rome, Italy by the name "Pi-Effe S.a.s. di Perfetti Fabrizio & C." abbreviated as Pi-Effe S.a.s.
The Respondent indicates that it is operational in the dental sector which is a completely different sector than the sector in which the Complainant states to do business. Since the Respondent and the Complainant do business in two completely different sectors of the consumer market, the Respondent is convinced that no confusion can be created through the use of the domain name <perfetti.net> by the Respondent.
The Respondent has been doing business as a limited partnership Pi-Effe S.a.s. since February 26, 2002, and is considered by its patients/customers as a trustworthy partner in the dental sector. The respondent asserts that the domain name <perfetti.net> was not registered by Respondent in an intentional attempt to attract for commercial gain, Internet users to the Respondentís website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís website or location or of a product or service on the Respondentís website or location.
The Respondent informs the Panel that it is currently doing business as Pi-Effe S.a.s. di Perfetti Fabrizio & C. also abbreviated as Pi-Effe S.a.s. and both the full name of the company and the abbreviation are being mentioned on the copy of the Registration at the Chamber of Commerce. The general partner of the limited partnership Pi-Effe S.a.s. is Mr. Fabrizio Perfetti. The textual element "perfetti" is part of the name under which the Respondent operates, under which the Respondent does professional activities, and is known to the public.
The Respondent indicates that has acquired commercial gain and notoriety among the public through Pi-Effe S.a.s. di Perfetti Fabrizio & C., abbreviated as Pi-Effe S.a.s., and the use of the domain name <perfetti.net>. The Respondent as an Italian limited partnership is commonly known by the domain name in issue, even if Respondent has acquired no trademark or service mark rights. The Respondent is as a consequence convinced that it has legitimate rights to the domain name <perfetti.net>, the domain name that is the subject of the Complaint.
The Respondent furthermore notes that some e-mail addresses were activated for the domain name<perfetti.net>and these e-mail addresses are known and regularly used by the Respondent and its customers/patients. As the "www" part is concerned, the Respondent has activated a file-sharing mechanism through which its patients, among others, can consult, after authentication by means of username and password, certain dossiers of the Respondentís patients, dental radiography-files, diagnostic files, pathologic information and treatments, etc. The website linked to the domain name <perfetti.net> is being used for professional reasons and not for private or personal reasons.
Even though the Respondent is not in the possession of a trademark registration or application containing "perfetti", Mr. Fabrizio Perfetti as the representative of Pi-Effe S.a.s. indicates to the Panel that the use of his surname as a domain name (i.e. <perfetti.net>) is not intended for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant, for valuable consideration in excess of Respondentís out-of-pocket costs directly related to the domain name. On the contrary, Mr. Perfetti has registered the domain name <perfetti.net> for the professional reasons described above.
Furthermore, the Respondent underlines that he is not a competitor and the domain name was not registered primarily to disrupt the Complainantís business. The Complainant does business in the sector of confectionery products, whereas the Respondentís business activities are in the dental sector. Therefore, any likelihood of confusion can be excluded, even though both the Complainant and the Respondent are located in Italy. The domain name was not registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name and, in connection therewith, the Respondent has not engaged in a pattern of such conduct. The Respondent furthermore indicates that the Complainant even states that he already is in the possession of the ".com" equivalent of <perfetti.net> and therefore has already had the possibility to reflect its mark in a corresponding domain name.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and,
(iii) that the Domain Name has been registered and is being used in bad faith.
6.1. Domain name identical or confusingly similar
The Complainant has provided ample and detailed evidence of ownership of a number of trademark registration for trademark consisting in and comprising of the sign "PERFETTI" in Italy and in many other countries including the Italian registration n. 330 212 filed on April 5, 1979, and duly renewed thereafter.
In view of the above, the Panel finds that the Complainant has proved that the Domain Name is identical, obviously but for the suffix ".net" which is instrumental for the use in Internet, to the trademark of the Complainant according to paragraph 4(a)(i) of the ICANN Policy.
6.2. Rights and legitimate interest
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the dispute domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
As indicated above, the Complainant in order to show that the Respondent has no rights or legitimate interests in respect of the domain name asserts that the Respondent has not been commonly known by the domain name and claims that the word PERFETTI is not part of or comprehended in any way in the Respondentís company name.
Conversely, the Respondent has submitted to the Panel documents attesting the ownership of an Italian limited partnership, duly incorporated since February 26, 2002, and regularly registered at the Chamber of Commerce in Rome, by the company full name "Pi-Effe S.a.s. di PERFETTI Fabrizio & C." and in the abbreviated form "Pi-Effe S.a.s." (as indicated in page 1 of the Statute and in page 1of the Chamber of Commerce Certificate in Italian enclosed to the Response).
One of the two partners of the limited partnership Pi-Effe S.a.s. is Mr. Fabrizio Perfetti who is the owner, according to the documents enclosed, of 80% of the company. According to Article 2314 of the Italian Civil Code, the company name of this kind of limited partnership should include the name of at least one of the partners. The Respondent informed the Panel that it has been using both the full name of the company and the abbreviated version since February 26, 2002, and is considered by its patients/customers as a trustworthy partner in the dental sector.
It is also asserted by the Respondent that some e-mail addresses were activated with the domain name <perfetti.net> and, on a website linked to the Domain Name, a file-sharing mechanism was activated through which patients can consult, after authentication by means of username and password, certain dossiers of the Respondentís patients, dental radiography-files, diagnostic files, pathologic information and treatments, etc.. It is noted though, that no evidence of the use of the company name was enclosed to the Response (but a copy of a fax cover addressed to the legal representative of the Respondent where the full name of the company is shown) nor a clearer indication of the time when such an use on Internet via a linked website took place.
Conversely, the printout of the web page published on the domain name until January 22, 2003, annexed to the Complaint, showed a web page indicating at the top "If you are a ĎPerfettií welcome in your website". The page showed also two pictures of a little village, Serravalle di Carda, respectively taken in 1960 and at the present time. Between the pictures a wording reciting "Perfetti (which in Italian also means Ďperfectí) Ö challenging, we know, but this is it and therefore we should hold on to this name in the best possible way. The pictures herein are of one little village, ĎSerravalle di Cardaí positioned in the Marche in the Province of Pesaro. Here are our roots subsequently spread around the entire world". Beneath the pictures and the quoted wording it was displayed a disclaimer reciting "The purpose of the present web page is to gather together all of us, the progress has torn us apart, and we should let to it now the task to get us together again". And further below, four buttons apparently to enroll in the website, enjoy the services to the users, have access to a chat line and to get to know the "Story".
No additional printout was provided by the Complainant but the indication that, except for the initial page, hardly any other section of it was active.
The Complainant further comments that the affirmation of the origin of the name are "in general terms is not true and not legitimate", but the Panel notes that reference was made to the family that owns the Perfetti Van Melle Group and possibly not considering that in the Marche the name Perfetti is also rather common.
On the basis of this interpretation and the absence of any prior relations with Mr. Fabrizio Perfetti or other people related to him, the Complainant concludes that "the website displayed under the domain name subject of the Complaint consists of only one page and contains only general fake information, which does not correspond to any legitimate interest. If the Respondent or its administrative contact wished to have a website dedicated to them, their family and history, they should have registered at least the domain name <fabrizioperfetti.it> or should have given in the website corresponding to the disputed domain name some exact information for Internet users to understand who and what the website is about".
The panel does not concur with the interpretation and the reasoning about the not legitimate use of the Domain Name based on the above arguments nor with the hypothetical obligations of the Respondent as to the registration of a national domain name identical to the full name and surname to provide information related to a given surname.
The name PERFETTI is part of the registered name of the Respondent, is identical to the surname of the majority owner of Pi-Effe S.a.s., is the surname of the Administrative Contact of the Domain Name and the Respondent is commonly known by this name pursuant to paragraph 4(c)(ii) of the Policy. Therefore, the Panel finds that the Respondent should be entitled to register and use the domain name <perfetti.net> (see also GA Modafine S.A. v. Mani.Com, WIPO Case No. D2001-0388 finding that "the Respondentís surname is Mani and he is commonly known as such. He is entitled to use it on the Internet").
As rightly held in prior decisions, the use of one's own surname in a domain name corresponds to a legitimate customary practice and is, as a rule, sufficient evidence of a legitimate right or interest in the domain name.
The Panel notes that it has to be taken in due consideration that the scope of the Uniform Domain Name Dispute Resolution Policy is limited to cases of abusive registration of a domain name. As it was held i.a. in G.A. Modefine S.A. v. A. R. Mani, WIPO Case No. D2001-0537, trademark owners shall not be allowed to use the Policy to dispossess summarily a third party of a domain name reflecting his or her surname.
Furthermore, from the examination of the content of the web page published until January 22, 2003, and the "work in progress" web page published on February 13, 2003, (provided in the documentation transmitted to the Panel by the Center), no indication whatsoever can be inferred that "the only interest of the Respondent in the domain name is to attempt to exploit the fame, especially in Italy, of the Complainantís trade name and trademark PERFETTI and convey Internet usersí attention and Internet contacts to its website", as declared by the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Panel finds that the Complainant has therefore not met the required burden of proof in respect of paragraph 4(a)(ii) and the Respondent has succeeded in proving that he has legitimate rights and interests in the domain name.
6.3. Registration and Use in Bad Faith
Given that the Complainant has failed to succeed in its burden of proof in respect of paragraph 4(a)(ii), it is not required for the Panel to consider whether or not the Respondent has registered or is using the domain name in bad faith.
However, the Panel observes that none of the circumstances evidencing bad faith listed in the Policy apply to the instant case, nor has the Complainant indicated the existence of other convincing evidence of bad faith.
The Respondent did not offer to sell the domain name to the Complainant for valuable consideration in excess of the holderís documented out-of-pocket costs directly related to the domain name. The Respondent has not engaged in a pattern of registering domain names "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name". It should also be noted that the Complainant has successfully registered i.a. <perfetti.com>.
No evidence was provided that the Respondent has used the domain name for commercial gain by attempting to create a likelihood of confusion with Complainantís trademark.
Accordingly, this Panel finds that Respondent has not registered the Domain Name in bad faith.
In light of the foregoing, the Panel decides that the domain name <perfetti.net> registered by the Respondent is identical to the trademark "PERFETTI" owned by the Complainant. However, the Panel finds that the Complainant has failed to show that the Respondent has no rights or legitimate interests in the disputed domain name <perfetti.net>, as per section 4(a)(ii) of the Policy. Furthermore, the Panel finds that the domain name has not been registered in bad faith.
Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel denies that the domain name <perfetti.net> be transferred from the Respondent to the Complainant.
Dated: April 1, 2003