WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Lanificio F.lli Cerruti S.p.A. v. Mr. Stanley Filoramo

Case No. D2003-0740

 

1. The Parties

The Complainant is Lanificio F.lli Cerruti S.p.A., Milan, Italy, represented by Studio Legale Jacobacci e Associati, Italy.

The Respondent is Mr. Stanley Filoramo, Montréal, Québec, Canada.

 

2. The Domain Name and Registrar

The disputed domain name <lanificiofratellicerruti.com> (the "Domain Name") is registered with Wild West Domains, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 19, 2003. On September 23, 2003, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On September 23, 2003, Wild West Domains, Inc. 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. The Center verified that 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 September 25, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 15, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on October 16, 2003.

The Center appointed Dr. Thomas Legler as the Sole Panelist in this matter on November 17, 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.

 

4. Factual Background

The Complainant is Lanificio F.lli Cerruti S.p.A, a well known Italian wool company. The Complainant submits evidence according to which it is the owner of various wordmarks, logos and combined marks in different versions containing in most cases the words LANIFICIO F.LLI CERRUTI SINCE 1881.

There are many national and international registrations of these trademarks in various countries. Some applications are pending, among others, one in Canada (since November 2001), the domicile of Respondent.

The Domain Name was registered by the Respondent on August 29, 2003.

Nothing is known about the Respondent since it did not file any response for the administrative procedure. As Complainantís evidence shows, the Respondent has registered several other domain names identical to or confusingly similar with well- known Italian trademarks, all of them pointing to pornographic websites, like in the present case.

 

5. Partiesí Contentions

A. Complainant

The Complainant indicates that the Domain Name <lanificiofratellicerruti.com> is confusingly similar with the trademark and trade name LANIFICIO F.LLI (i.e. fratelli) CERRUTI.

The Complainant adds that the Respondent has no rights or legitimate interests in respect of the Domain Name, since there is no evidence of Respondentís 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. Moreover, the Respondent has never been commonly known in the normal course of business by the trademark, trade name or Domain Name <lanificiofratellicerruti.com> and finally the Respondent uses the Domain Name for a commercial purpose (paying pornographic website) without any non-commercial or fair use.

Pursuant to the Complainant, Respondent must have been aware of the trade name and trademarks LANIFICIO FRATELLI CERRUTI of Complainant, and registration may therefore only have occurred in bad faith. Furthermore, the Respondent seems to be a specialist in registering domain names corresponding to well known Italian trademarks like <salumiciterio.com>, <bellentani.net>, <diegodelavalet.info>, <anticocafegreco.info> and <nigazalse.net>, all of them pointing to pornographic websites. Pursuant to Complainant, the consequences of linking Complainantís name with a pornographic page are potentially catastrophic, should even a minority of Internet users come to believe that Complainant is actually associated with pornography. The Complainant refers to various WIPO precedents where it has been hold that the redirection to pornographic sites from a domain name incorporating the trademark of another company is per se evidence of bad faith.

The Complainant concludes that the Domain Name shall be transferred to Complainant.

B. Respondent

As indicated above, the Respondent did not file a Response.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant:

(i) the domain name 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 has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the documents submitted by the Complainant, the trademark LANIFICIO F.LLI CERRUTI SINCE 1881 and other trademarks containing the words "Lanificio F.lli Cerruti" have been registered in many countries of the world. One trademark application pending since November 2001 refers to Canada, where the Respondent is domiciled. The Panel is of the opinion that the trademarks in question have to be considered as well known. The Domain Name which takes over the essential parts of the trademark, i.e. "Lanificio" and "Cerruti" as well as "Fratelli" (used without the abbreviation "F.lli") has to be considered as confusingly similar to Complainantís trademarks.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, any of the following circumstances may demonstrate the Respondentís rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice of the dispute, the Respondentís use 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; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name without intent for a commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Under the given circumstances, the Panel has to verify whether the Respondent is using the Domain Name in connection with a bona fide offering of goods or services in the sense of paragraph 4(c)(i) of the Policy.

Running an adult sex site is in itself legal, even if it may be seen by some people as morally questionable. From this point of view, it may constitute a bona fide offering of goods or services (see Motorola Inc. v. Newgate Internet Inc., WIPO Case No. D2000-0079). However, in the present case, the Respondent uses a well known trademark as domain name for its website. Such use cannot be considered as bona fide. Moreover, the Panel has no indication of Respondentís actual intentions, when choosing and registering the Domain Name, since Respondent did not file a Response.

Regarding paragraph 4(c)(ii) of the Policy, the Panel notes that the Respondentís name is "Stanley Filoramo" and that he can therefore not be "commonly know by the domain name." Moreover, the Respondent did not submit any evidence that he is the owner of a company having the Domain Name as its corporate name and that it is commonly known by such name.

Consequently, the Panel is of the opinion that the Respondent has no rights or legitimate interests in the sense of paragraph 4(c) of the Policy.

C. Registered and Used in Bad Faith

The Panel first holds that there are no circumstances showing that the Respondent has registered the Domain Name primarily for the purpose of selling it to the Complainant for a valuable consideration in excess of its out-of-pocket costs (paragraph 4(b)(i) of the Policy).

However, the fact that the trademark LANIFICIO F.LLI CERRUTI is famous and that Respondent was or should have been aware of this (since a trademark application is pending in Canada since 2001), if he would have carried out a trademark search, is an element indicating bad faith.

The Panel has also the impression that Respondent tries to profit from the well known character of Lanificio Fratelli Cerruti to attract, for commercial gain, Internet users to its website (National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Company, a/k/a, Chargergirls, WIPO Case No. D2000-0118; Motorola Inc. v. NewGate Internet Inc., WIPO Case No. D2000-0079; Nokia Corporation v. Nokia girls.com a.k.a IBCC, WIPO Case No. D2000-0102).

Moreover, linking the Domain Name to a pornographic site tarnishes Complainantís well known trademark.

The Panel finally adds that the fact that the Respondent did not file a Response comforts the Panel, under the given circumstances, in its finding of bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <lanificiofratellicerruti.com> be transferred to the Complainant.

 


 

Dr. Thomas Legler
Sole Panelist

Dated: December 5, 2003