WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano
Case No. D2003-0661
1. The Parties
The Complainant is Consorzio del Formaggio Parmigiano Reggiano, Reggio Emilia, of Italy, represented by Società Italiana Brevetti, Italy.
The Respondent is La casa del Latte di Bibulic Adriano, Trieste of Italy, represented by Studio Legale Scarpa, Italy.
2. The Domain Name and Registrar
The disputed domain name <parmigiano.org> is registered with Network Solutions, Inc. Registrar.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 22, 2003. On August 22, 2003, the Center transmitted by email to Network Solutions, Inc. Registrar a request for registrar verification in connection with the domain name at issue. On August 26, 2003, Network Solutions, Inc. Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 26, 2003. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 27, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2003. The Response was filed with the Center on September 16, 2003.
The Center appointed Luca Barbero as the sole panelist in this matter on September 23, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Panel 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 several PARMIGIANO REGGIANO and PARMESAN registered collective trademarks having effects in Italy such as:
- PARMIGIANO REGGIANO, Community registration No. 1126481, filed on April 2, 1999, and granted on December 21, 2000, covering PARMIGIANO-REGGIANO® cheese;
- PARMIGIANO REGGIANO, Italian registration No. 650231, filed on November 4, 1994 and granted on May 10, 1995, covering PARMIGIANO-REGGIANO® cheese in class 29;
- PARMIGIANO REGGIANO EXTRA oval device, Italian registration No. 885187, filed on April 1, 1998, and granted on March 24, 2003, covering PARMIGIANO-REGGIANO® cheese in class 29;
- PARMIGIANO REGGIANO EXPORT oval device, Italian registration No. 711169, filed on December 20, 1994, and granted on June 6, 1997, renewal of prior registrations dating back to 1955, covering PARMIGIANO-REGGIANO® cheese in class 29;
- PARMIGIANO REGGIANO CONSORZIO ORIGINE label, Italian registration No. 814867, filed on July 15, 1997, and granted on May 29, 2000, which is the renewal of prior registrations dating back to 1957, covering PARMIGIANO-REGGIANO® cheese in class 29;
- PARMIGIANO-REGGIANO CONSORZIO ORIGINE and band, Italian registration No. 800717, filed on May 28, 1997, and granted on January 24, 2000, which is the renewal of a prior registration dating back to 1987, covering PARMIGIANO-REGGIANO® cheese in class 29;
- PARMIGIANO REGGIANO C.G.T. oval label, Italian registration No. 711168, filed on December 20, 1994, and granted on June 6, 1997, which is the renewal of a prior registration dating back to 1955, covering cheese in class 29;
- PARMIGIANO REGGIANO and device, renewal of Italian application No. RM2003C000592, filed on February 5, 2003, which is the renewal of a prior registration dating back to 1983, covering PARMIGIANO-REGGIANO® cheese in pieces in class 29;
- PARMIGIANO REGGIANO CONSORZIO TUTELA and oval device, Italian registration No. 800656, filed on March 20, 1997, and granted on January 24, 2000, which is the renewal of a prior registration dating back to 1987, covering PARMIGIANO-REGGIANO® cheese in class 29;
- PARMIGIANO-REGGIANO CONSORZIO and device, Italian registration No. 752575, filed on October 18, 1995, and granted on June 2, 1998, renewal of a prior registration dating back to 1985, covering cheese in class 29;
- PARMIGIANO-REGGIANO CONSORZIO TUTELA and device, Italian registration No. 883393, filed on June 2, 1998, and granted on February 24, 2003, covering PARMIGIANO-REGGIANO® cheese in class 29;
- MITO PARMIGIANO-REGGIANO color label, Italian registration No. 800599, filed on January 29, 1997, and granted on January 24, 2000, covering PARMIGIANO-REGGIANO® cheese in class 29;
- MITO PARMIGIANO-REGGIANO and device, Italian registration No. 800600, filed on January 29, 1997, and granted on January 24, 2000, covering PARMIGIANO-REGGIANO® cheese in class 29;
- PARMESAN, Italian registration No. 752458 filed on April 26, 1995, and granted on June 2, 1998, renewal of prior registrations dating back to 1965, covering PARMIGIANO-REGGIANO® cheese in class 29];
- PARMESAN, Italian registration No. 852933 filed on July 15, 1998, and granted on October 24, 2001, renewal of a prior registration dating back to 1988, covering PARMIGIANO-REGGIANO® cheese in class 29.
Copies of the registration certificates quoted above were enclosed to the Complaint.
The Respondent registered the domain name <parmigiano.org> on October 29, 1999.
5. Partiesí Contentions
The Complainant is the Consorzio del Formaggio "Parmigiano Reggiano", an Italian nonprofit organization established in 1934, and operating in the fields of the protection of the PARMIGIANO-REGGIANO cheese including its designation and relevant translations, in the supervision of the production and marketing of the PARMIGIANO-REGGIANO cheese and its enhancement of the production of the PARMIGIANO-REGGIANO cheese, the promotion of the geographical indication and of the Consortiumís trademarks, the promotion of the consumption of the PARMIGIANO-REGGIANO in Italy and abroad, as well as the development and support of any initiative, also of a commercial nature, aimed at enhancing the PARMIGIANO-REGGIANO cheese and increasing its image and reputation.
The Complainant indicates that the trademarks PARMIGIANO REGGIANO and PARMESAN are renown throughout world since the cheese bearing these trademarks is one of the most appreciated and consumed cheeses for its particular taste. For this reason the use of the PARMIGIANO REGGIANO and PARMESAN trademarks may only be granted to carefully selected entities, who respect the specific standards and requirements set forth in the Regulation governing the use of the collective marks, annexed to the Complaint.
In essence, the Regulation establishes all the requirements that the dairies producing Parmigiano-Reggiano cheese must fulfill in order to be authorized to stamp the Consorzio del Formaggio "Parmigiano-Reggiano"ís trademarks on the Parmigiano-Reggiano cheese wheels they produce.
The Complainant also informs that Panel that, in order to protect the renown of its trademarks and of the Parmigiano-Reggiano cheese as well as the rights of all the people entitled to use the Complainantís collective trademarks, the Complainant has the duty to supervise the legitimate use of these trademarks and must exercise any action before any competent body and/or court, at the national and international levels, for the protection and safeguard of these marks.
The Complainant is also the owner of a number of domain names, listed in the Complaint, including <parmigiano.biz> registered on November 19, 2001; <parmigiano.info> registered on September 12, 2001; <parmesan.biz> registered on November 19, 2001; <parmesan.info> registered on September 13, 2001.
The Complainant reports to the Panel that in the course of a survey on the use of its trademarks as domain names, the Complainant discovered that the following domain names: <parmigiano.org>, <buyparmesan.com>, <buyparmigiano.com>, <parmigianocommerce.com> and <parmesancommerce.com> were registered by two entities which were not authorized to use the Complainantís trademarks as domain names directly or otherwise from the Complainant and who seemed connected to one another since both entities were linked to Mr. Bibulic.
The domain name <parmigiano.org> in the name of the individual company La Casa del Latte di Bibulic Adriano, had been registered on October 29, 1999, while <buyparmesan.com>, <buyparmigiano.com>, <parmigianocommerce.com> and <parmesancommerce.com> had been subsequently registered on May 2000.
The Complainant indicates that the domain name <parmigiano.org> is pointing to a web page containing a photograph of several types of cheeses, some easily identifiable with their own names, such as ASIAGO, FONTAL, MONTASIO, PECORINO, but not PARMIGIANO. Furthermore, on the top of this page after the script "parmigiano.org web site coming soon" appears "Buy Italian cheese on-line!" Although among the cheeses on display are clearly noticeable non Italian-cheeses such as the Swiss EMMENTHAL or the red waxed spherical form of the Dutch GOUDA. Aside from this front page, the Complainant notes that there is not any active web site and this page has remained unchanged since December 28, 2001, when the first searches on the Internet to trace PARMIGIANO and PARMESAN abusive registrations as domain names were made. The other four domain names were at that time and are up to date of filing of the Complaint still inactive.
The Complainant informed the Panel domain name and to act for the recovery of the ownership of the domain nameon January 30, 2002, after having concluded the necessary searches, the Complainantís representative sent a letter to the Respondent, requesting the immediate transfer of the five domain names. On April 3, 2002, tThe Respondent failed to reply and the Complainantís representatives received a letter from the Respondentís lawyer, "in which the latter denied, on behalf of his client, any infringement to the Complainantís rights for having the registrant registered the contested domain names without any authorization".
The Respondentís lawyer indicated that "The domain names held by my client do not infringe the prior rights of the Consortium that you represent, since these domain names were applied for by Mr. Bibulic with priority and are exclusively formed or composed of a name, parmigiano, which is universally known to identify a dairy product and certainly not a production mark. Mr. Bibulic was surprised of your requests since he registered the domain names only to render visible its trading activity that is dedicated to the parmigiano and similar products, and certainly not to create the alleged confusion with the producer, which has no reason to exist. It is therefore clear that Mr. Bibulic does not wish to transfer upon your unilateral request the domain names to the Consortium, unless the latter is interested to purchase them following a normal negotiation. I look forward to your reply on the above. Very truly yours".
On May 21, 2003, since the Respondent did not reconsider its position, the web site corresponding to <parmigiano.org> has remained unaltered and the other four domain names were still inactive, the Complainantís representatives sent a further letter to the Respondent in which, beside reiterating the request that the domain names be transferred without delay, the Complainantís representatives asked Respondent to quantify the amount of the compensation required for the transfer of the domain name, clarifying that in case of failure to reply or if the required amount was considered too high, the Complainant would take all legal steps to recover the ownership of the domain names.
On May 30, 2003, Mr. Bibulicís representative replied to the Complainantís representatives as follows: "Mr. Bibulic, after deep thought and considering the costs already incurred, would be ready to amicably close this matter, without any recognition of the Consortiumís rights, for the amount of Ä60.000,00".
The Complainant therefore decided to initiate the present procedure to reclaim only the domain name <parmigiano.org> since the domain names <buyparmesan.com>, <buyparmigiano.com>, <parmigianocommerce.com> and <parmesancommerce.com> were registered directly in the name of Mr. Bibulic Adriano.
The Complainant, in light of the above, contends that the disputed domain names are perfectly identical to the trademarks and the addition of the TLD (.org) does not prevent the finding of the identity as held by uniform precedents. The Complainant also remarks that the addition of the TLD .org increases rather than diminish the confusion as it is common knowledge that the .org TLD is generally perceived by Internet users as the reference TLD of noncommercial organizations on the Internet.
In view of the Complainant, the Respondent lacks any right or legitimate interest in the domain name at issue. In particular, the Respondent is not known by the name "Confcommercio",PARMIGIANO nor owns any trademark registration. Moreover, the Complainant never authorized the Respondent to use the term PARMIGIANO.
According to the Complainant the Respondentís actual and past use in Internet of the domain name <parmigiano.org> cannot be interpreted as demonstrating a legitimate interest in this domain name, and a database maintained on the Internet consulted by the Complainant, showed that, between the registration of the domain name in October 1999 and March 2001 the domain name had not been used.
Since March 2001, this domain name has only been pointing to the current web page described above, where it can only be read: "parmigiano.org web site coming soon" and, according to the Complainant, the Respondent therefore cannot be deemed to make a use of this domain name that demonstrates the Respondentís legitimate interest. On the contrary, the announcement of a coming-up web site, whereas no change has occurred for more than two years, appears deceptive and misleading.
According to the Complainant, it is hardly possible to consider that under these circumstances any use of, or demonstrable 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 was ever undertaken by Respondent which only conceals its lack of a bona fide interest in this domain name by merely announcing a future web site. Furthermore, the current webpage is highly compromising of the interests protected by the Complainant, where Internet users may be led into believing that Complainant whose no-profit character and objectives are well known in Italy and abroad, endorses or guarantees cheeses not only other than Parmigiano but also other than Italian ones, such as Swiss or Dutch ones.
The Complainant underlines that the Respondent is clearly involved in a scheme of appropriation aimed to exploit the renown of the PARMIGIANO REGGIANO as shown by the registrations of <buyparmesan.com>, <buyparmigiano.com>, <parmigianocommerce.com> and <parmesancommerce.com>, none of which has ever been used.
With reference to the Bad Faith, the Complainant indicates that the circumstances described above show that domain name was primarily registered for the purpose of selling them to the Complainant for valuable consideration in excess of the Respondentís out-of-pocket costs directly related to the domain name. The sum of Ä 60.000,00 that was requested for the transfer of the contested domain names is in excess of such costs.
The Complainant asserts that the Respondent registered and used the domain names to prevent the Complainant from reflecting its trademarks in domain names corresponding or referring to them.
The Complainant indicates that, because of the renown of the trademark PARMIGIANO REGGIANO and PARMESAN in Italy and the rest of the world and because the Respondent (whose commercial name translated into English is "The House of Cheese") clearly manifests a more than ordinary knowledge of the cheese sector, it is without doubt that the Respondent would be aware of the importance that the Complainant would give to the registration of domain names that correspond or clearly refer to its trademarks. By registering and holding on to <parmigiano.org> without any legitimate purpose, Respondent thus intentionally engaged, according to the Complainant, in an abusive occupation whose only purpose was to wear out the Complainant in order to achieve a greater economical benefit.
Furthermore, the Complainant underlines that the Respondent has intentionally attempted to attract for commercial gain, Internet users to a future on-line location and web site corresponding to the disputed domain names, by creating a likelihood of confusion with the Complainantís trademarks with respect to the source, sponsorship, affiliation, or endorsement of the Respondentís location and web site.
As a final remark, the Complainant draws the Panelís attention on the scheme of "pervasive occupation of PARMIGIANO/PARMESAN domain names perpetrated by Respondent. Although the domain names <buyparmesan.com>, <buyparmigiano.com>, <parmigianocommerce.com> and <parmesancommerce.com> were registered by Mr. Bibulic and do not lead to an active website, the Respondent, in addition to <parmigiano.org> controls other 4 (four) domain names characterized by Complainantís trademarks and accompanied by generic, evocative terms such as BUY and COMMERCE."
According to the Complainant the registration of these additional domain names is a further indication of Registrantís intent to confuse and misled consumers i.e. a bad faith attitude and the circumstance that, differently from <parmigiano.org>, these four domain names are still unused is no defense: mere passive holding of a domain name - when accompanied by other circumstances proving the Respondentís lack of rights or legitimate interests in the domain name and the bad faith registration of the same domain names Ė is to be considered use of the domain names in bad faith in accordance with the Policy, paras. 4(a)(iii), 4(b), and the Rules, para. 3(b)(ix).
The Respondent is "La casa del Latte di Adriano Bibulic" owned by the Respondent as proved in the ample documentation submitted to the Panel. The Panel was also provided of the Respondentís tax returns for the period 1995 Ė 2000, which shows a steady growth in the business activity of the Respondent.
The Respondent informs the Panel that at the time of registration in October 1999, the disputed domain name was registered by the Respondent with the aim to promote the sale of dairy products and enlarging the Respondentís customer base through the online trade. Furthermore, the Respondent indicates that there was also an "ambitious project - alternative to the objective illustrated above Ė to use the disputed DN to host a site acting as a Ďshowcaseí for a comprehensive range of Italian and foreign dairy products though which Internet users could reach, through suitable links contained there, the sites of the authorised retailers for those dairy products advertised on the site <parmigiano.org>."
As an evidence of the above statements and of the legitimate interests, the Respondent attaches the statement signed by Mr. Gabriele Polidori Ė owner of Web Attac S.n.c., an Internet service provider and web agency through which the Respondent registered the Domain Name and provided the panel with an invoice for the registration and activation of the domain and an additional invoice for the renewal of Internet domains. According to the Respondent "these papers clearly show that Mr. Bibulic had entrusted the above-mentioned company with the implementation of the aforesaid project for a showcase as early as in 1999, and that, given the complexity of its design, the project is to date still unfinished".
The Respondent indicates that with the same objective of carrying out this ambitious plan, shortly after registering the disputed Domain Name (DN), Mr. Bibulic checked the actual prospects for implementing his idea explaining that "since such negotiations were still pending and the concrete and final type of use for the disputed DN was still at the drafting stage, Mr. Bibulic was unable to, and in fact he did not, use the DN, not even to promote his own business activity and this with the clear aim of not undermining the success of the pending negotiations with the parties interested in buying some room within the on-line Ďshowcaseí".
The Respondent also declares that a number of domain names were transferred from "the company ĎLa Casa del Latteí including the disputed DN to Maxilat s.r.l." as "Mr. Bibulic is partner and director of the latter company, which also deals with the retail and wholesale trade of foodstuffs and dairy products Ö whose core business is in fact the retail and wholesale of cheese" providing the panel with a number of invoices for the purchase of a wide range of different kinds of cheese.
The representative of the Respondent, informs the Panel that it should not "be said or assumed that Mr. Bibulic is a mere Ďdreamerí in nurturing a marketing project of dairy products going well beyond his entrepreneurial skills. The Respondent is, on the contrary, an upright and worthy entrepreneur who in these years has proved to have conducted and enlarged his business, first as an individual, then by managing and controlling Maxilat s.r.l. Ö".
The Respondent states that with reference to the sale negotiations referred to by the Complainant, the Panel should note that "Mr. Bibulic has never contacted the Complainant to propose the sale of the disputed DN, since Mr. Bibulic had quite different plans: those illustrated above" and should be pointed out that it was the Complainant who took the initiative of contacting Mr. Bibulic in the first place".
Also the Respondent makes reference that the cease and desist letter of the Complainant dated January 30, 2002, stating that "it was only at this stage that Mr. Bibulic, seeing that, on the one hand, his ambitious project struggled to take off and that, on the other hand, the Complainant dogged him with a groundless claim, started to consider the possibility of avoiding all obstacles by transferring the DN to the Complainant which had an interest in it".
The Respondent draws the Panelís attention to the fact that it was only after more than one year that the Complainant contacted again the Respondent "asking him to set a price for the purchase of the DN" making reference to the letter from the Complainant of May 21, 2003, concluding that it should "also be noted that Mr. Bibulic set a price for the sale only at the Complainantís request and included all 5 DNs".
The Respondent contends that none of the Complainantís trademarks is formed by the sole word "parmigiano" indicating that the word "parmigiano" is a common Italian word indicating a kind of mature hard granular cheese suitable for grating, annexing to the Response extract of two dictionaries and explaining to the Panel that the word "parmigiano" alone can not be the object of a defendable trademark.
According to the Respondent, <parmigiano.org> is thus not the transposition into a domain name of one of the Complainantís trademarks and "no misuse on Mr. Bibulicís part can be identified in the registration and holding of that DN, since he conducts his business in the dairy sector itself and more specifically in the cheese trade".
The Respondent draws the Panelís attention to the fact that the web site currently published on the web site corresponding to the domain name "contains no reference whatsoever to the Consorzio del Parmigiano Reggiano and, whatís more, as underlined by the Complainant itself, the site already advertises cheeses other than the parmigiano and other renowned non-Italian cheeses".
The Respondent emphasises that all the preparations made in order "to exploit the potential of the disputed DN were unfortunately interrupted abruptedly and persistingly after receiving the Complainantís above-mentioned letter in January 30, 2002, whereby the Consorzio began questioning the legitimate holding of the DN by Mr. Bibulic, demanding the immediate transfer of the disputed DN and threatening lawsuits in case of non-compliance". The Respondent informs the panel that "for information and precontractual fairnessí sake, Mr. Bibulic had to inform the parties interested in buying some room within the on-line "showcase" of the content of the menacing letter received from the Consorzio, and, although absolutely convinced of the groundlessness of the Complainantís claims, had to agree to stop any negotiations until the dispute pending with the Complainant is fully settled". Therefore "Mr. Bibulic suffered a remarkable damage deriving from his inability, for a long time and to date, to exploit the potential of the disputed DN by setting up the showcase site, damage for which Mr. Bibulic intends to seek redress in the competent courts".
With reference to the Bad Faith according to the Respondent the Complainant did not provide any solid evidence and bases its arguments on mere inferences. The Panels is invited to consider that the Respondent, "(now Maxilat s.r.l.) carries out a commercial activity consisting in the sale of dairy products, in particular the retail and the wholesale of cheese" and should not be considered suspicious that, in order to foster his business activity, the Respondent promoted the registration of a domain name to be able to access and to take advantage of the new on-line marketing channel, mentioning again the alternative project of the on-line "showcase".
As an additional proof of the good faith in the registration of the domain name, the Respondent reiterates that the Complainant was never directly contacted and was only after the letter of January 30, 2002, that the Respondent had never even thought of transferring the DN, but instead was taking steps, as was proved, to exploit the registration of the same in a completely different manner, start to consider the idea of transferring the DN to the Complainant.
According the Respondent "even the requested sum of Euro 60,000.00 in fact confirms Mr. Bibulicís scarce desire to sell his website and his absolute good faith in registering a DN with the different and much more significant aim of realizing plans which can be defined as ambitious, but totally diverged from the aim of the sale of the disputed DN" since "the only reason why Mr. Bibulic may have demanded such a sum is his irritation at the Complainantís intrusion in his lawful plans and in the Respondentís poor knowledge of DN marketing, since he does not market these goods, but sells cheeses instead".
The Respondent furthermore informs the Panel that "the admittedly non-profit activity carried out by the Complainant for the safeguard and promotion of a specific product, the Parmigiano Reggiano, has nothing to do with the, admittedly commercial, Respondentís business of selling Italian and foreign cheeses. These are not goods/services which may be compared to each other as they are completely different, with different objectives: the Complainantís is aimed at promoting the Parmigiano Reggiano; Mr. Bibulicís is aimed at selling all sorts of cheese, Italian and foreign", concluding that there "is no kind of competition between these two activities, nor can they be confused in any way".
Therefore, according to the Respondent, the Complainantís allegations that the domain name was registered in order to exploit the possible confusion of Internet users and to draw an illicit economic return, is not credible. The Respondent explains to the Panel that no part of the site refers in any way to the Consorzio del Parmigiano Reggiano and that the site also advertises cheeses which are not Italian.
With reference to the other domain names quoted by the Complainant, the Respondent informs the Panel that since, "as the Complainant itself admits, the subjects on behalf of whom the disputed DN and the other DNs are registered do not coincide Ö the other DNs are not and cannot be the object of this claim" and that the Respondent, "given that the other quoted DNs include the word Ďparmigianoí which Ö is a common word only indicating a sort of cheese, Ö was and is set on developing a new promotional channel for the cheese Ė the channel known as e-commerce".
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 evidence of ownership of a number of trademark registrations for trademark "PARMIGIANO REGGIANO" and "PARMESAN" having effect into Italy such as PARMIGIANO REGGIANO, Italian registration No. 650231, filed on November 4, 1994, and granted on May 10, 1995, in class 29 and PARMESAN, Italian registration No. 752458 filed on April 26, 1995, and granted on June 2, 1998, renewal of prior registrations dating back to 1965, in class 29].
The Complainant is the Consorzio del Formaggio "Parmigiano Reggiano", the nonprofit organization established i.a. for the protection of the collective trademark PARMIGIANO-REGGIANO including its designation and relevant translations, and therefore is entitled to be assigned the domain name <parmigiano.org> on behalf of the members of the consortium.
In view of the above, the Panel finds that the Complainant has proved that the Domain Name is confusingly similar to the trademark of the Complainant according to paragraph 4(a)(i) of the Policy.
6.2. Rights and legitimate interest
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) It 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; or
(b) It is commonly known by the domain name, even if it has not acquired any trademark rights; or
(c) It 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.
The Respondent has declared in the Response that the domain name <parmigiano.org> was registered with the aim to promote the sale of dairy products of the Respondent and/or to realize an ambitious project consisting in hosting a web site acting as a "showcase" for a comprehensive range of Italian and foreign dairy products. The Respondent asserted that, as early as in 1999, negotiations were conducted with a number of contacts aimed at checking the actual prospects for implementing this idea. Furthermore, in light of the cease and desist letter received in 2002, the Respondent declared that he had to inform the parties interested in acquiring a space in such a "showcase" about the new outcome and had to agree to stop any negotiations until the dispute pending with the Complainant.
The panel notes that the Respondent enclosed to the Response over 100 pages of various tax declarations of the Respondent, several invoices for the purchase of a large variety of diary products (in May and June 2003) including PARMIGIANO REGGIANO and GRANA PADANO by the company which has succeeded to the Respondent (Maxilat Srl) and is owned by the same proprietor (Mr. Adriano Bibulic), statement of assignment, deed of incorporation and bylaws of such a company together with the latest balance sheet.
However, the Panel was not provided with any of the communications that were allegedly exchanged with reference to the original plan or referring to the changes that the Respondent had to propose after the communications of the Complainant. The only pieces of evidence submitted to the Panel of the statements above and, consequently, of the activities performed as of 1999 to date by the Respondent - aimed at demonstrating the Respondentís preparations to use of the domain name in connection with a bona fide offering of goods or services prior to the dispute - were a single letter of a company apparently called Web Attack snc - and not Web Attac snc as stated twice in the Response - dated September 8, 2003, and two invoices, issued by the same company, but on a different letterhead, respectively on December 20, 1999 and December 21, 2002.
The mentioned letter was drafted and signed by Mr. Gabriele Polidori who is, according to the declaration of Respondent, the owner of Web Attack S.n.c. the Internet service provider and web agency through which the Respondent registered the domain name. Mr. Polidori indicated that Web Attack is working for the Respondent in a project aimed at creating a web site for the e commerce in the field of sale on line of dairy products, replicating, in the electronic arena, the activities owned by Mr. Bibulic. Therefore, it was decided to use <parmigiano.org> as main domain name.
Mr. Polidori further declares that due to the complexity of the structure of the project, it is still being developed and it would have been achieved via a business cooperation between himself and the Respondent or creating amongst them a dedicated new company.
The Panel notes that the letterhead of the mentioned letter was substantially different from the letterhead of the invoice 26 of December 20, 1999, attesting the purchase and activation of <parmigiano.org> by Mr. Bibulic back in 1999, and the purchase of an Internet Access Contract for one year.
The Panel was also provided with an additional invoice (No. 17 dated November 21, 2002) issued by Web Attack to Maxilat Srl the company which, as declared by the Respondent, has succeeded to La casa del Latte herein also in the ownership of the domain name <parmigiano.org>.
From an accurate examination of the mentioned invoice No. 17, document submitted by the Respondent to the Panel, it could be ascertained that such an invoice amounting to a total of 4.875 EURO was actually raised from Web Attack to Maxilat Srl for the renewal of 125 Domain Names.
Therefore, in light of this astonishing piece of evidence contained in the documents submitted by the Respondent, in view of the two different names used by the same Respondent to define the web agency that is supposed to attest the legitimate interest, and the dissimilar letter headed paper used for the declaration as opposed to the invoices, the Panel in order to clarify the issues proceeded with a simple visit to the home page of Web Attack at the web site "http://www.webattack.net" indicated in the invoices annexed.
Somewhat to the Panelís surprise, the URL indicated on the invoices is not pointing to any web site of the web agency indicated by the Respondent as developing the projects referred to above, but to a page where the domain name, which Ė it should be noted- is corresponding to the trade name of the company of Mr. Polidori, is advertised on sale via a Company called "Buy.Domains.com".
Furthermore, again from a simple verification on the Internet based on the documents submitted with the Response - attesting the ownership by the Respondent of 125 domain names - it was possible to ascertain that most of the Respondentís domain names verified were pointing to a web page showing the offer to sell. The Panel notes that the company Web Attack, via a web page which was visible until few days ago at the web site "www.onenet .it/TS/Domain", was advertising in Italian and English "Domains for Sale or Rent " indicating that "on behalf of our clients we sell or rent the following domain Ö". The Panel notes that most of the domains listed for sale, which included <maxisexyshop.net>, <compravenditaimmobiliare.it>, <intermediazioniimmobiliari.it>, and <softwarebest price.com>, were in the name of the Respondent.
Besides, Mr. Polidori has declared in the same letter of September 8, 2003, that he is/was envisaging a cooperation with the Respondent in the alleged projects of exploitation of the domain name <parmigiano.org>. The Panel also notes that the only hyperlink reference presently available on the web site corresponding to the domain name <parmigiano.org> is currently pointing to the web page where the domain name <webattack.net>, owned by the company of Mr. Polidori, is offered for sale.
Therefore, in light of the several concurring interests between the Respondent and Mr. Polidori emerged from the examination of the documents submitted to the Panel, the Panel finds that the mere three paragraph declaration not supported by any documentary evidence of the alleged bona fide activities pursued by the Respondent as of 1999, with reference to the domain name <parmigiano.org> cannot be considered as a convincing evidence of the preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute.
In addition, the Respondent is not commonly known by the domain name, has not acquired a trademark registration and has not submitted convincing evidence of the Respondentís intentions 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.
Under these circumstances, the Panel finds that the Respondent failed to establish that it has any rights or legitimate interests in the Domain Name.
6.3. Registration and Use in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holderís documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holderís web site or other online location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holderís website or location.
As to the first requirement, the Respondent was certainly aware, also in light of its profession, of the existence of the Complainantís trademark at the time of registration of the Domain Name.
As to the use in bad faith, the Panel finds paragraph 4(a)(i) of the Policy applicable in the instant case. In the reply already to the first cease and desist letters sent by the Complainant on January 30, 2002, the Respondent refused to transfer the domain names pursuant to the mere request "unless the Complainant would have been interested in acquiring the domain names (referring to the five domain names) as a result of an ordinary commercial transaction". The amount of Euro 60.000,00 requested in the following communication, though for the transfer of all the five domain names, is an amount which is clearly in excess, even if divided by five, of the Respondentís documented out-of-pocket costs directly related to the domain name, also in light of the invoices submitted to the Panel.
As an additional circumstance evidencing bad faith, the Panel notes that the Respondent has declared, while explaining the substantial consideration requested, that "the only reason why Mr. Bibulic may have demanded such a sum is his irritation at the Complainantís intrusion in his lawful plans and in the Respondentís poor knowledge of DN marketing, since he does not market these goods, but sells cheeses instead".
The Panel remarks that this declaration proved to be untrue since from the very document submitted by the Respondent it was possible to ascertain that the Respondent was the owner of over 120 domain names and that besides <parmigiano.org> and the other four being considered for transfer, at least other 12 domain names were actively offered for sale on the Internet. Therefore, the Panel finds that a false or incomplete declaration in the Response should be considered as an additional circumstance evidencing bad faith.
In view of the above, the Panel finds that the Respondent has registered and used the Domain Name in bad faith, according to paragraph 4(a)(iii) of the Policy.
The Panel finds that the Domain Name registered by the Respondent is confusingly similar to the trademarks in which the Complainant has rights; and the Respondent has no rights or legitimate interests in respect of the Domain Name; and the Domain Name has been registered and is being used by the Respondent in bad faith.
Accordingly, the Panel decides that the domain name <parmigiano.org> be transferred to the Complainant.
Dated: October 21, 2003