WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Giuseppe Citterio Salumificio S.p.A. v. Mr. Stanley Filoramo

Case No. D2003-0787

 

1. The Parties

The Complainant is Giuseppe Citterio Salumificio 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 <salumicitterio.com> is registered with Wild West Domains, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 7, 2003. On October 8, 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 October 8, 2003, Wild West Domains, Inc. transmitted by email to the Center its verification response indicating that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contacts. 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 10, 2003. In accordance with paragraph 5(a) of the Rules, the deadline for response was October 30, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on November 4, 2003.

The Center appointed Nathalie Dreyfus as the Sole Panelist in this matter on November 12, 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.

There have been no further submissions or any further communications from the Complainant and Respondent or their representatives, after the appointment of the panel.

No extensions have been granted or orders issued in advance to this decision.

The language of proceedings is English, as being the language of the domain registration agreement, pursuant to Paragraph 11(a) of the Rules, and also in consideration of the circumstances of this administrative proceeding and to the fact that there is no express agreement to the contrary by the parties.

 

4. Factual Background

A. The Complainant

The following is derived from the Complaint and the supporting evidence submitted by the Complainant.

The Complainant is Giuseppe Citterio Salumificio S.p.A., a worldwide known Italian food company specialized in ham, salami and other pork-derivated products ("salumi" in Italian).

The Complainant is the owner of over 110 trademark registrations, including the following:

- Canadian trademark registration Nį167715, word and logo "CITTERIO GC RHO MILANO IL SALAME FAMOSO IN TUTTO IL MONDO," registered on February 6, 1970, covering goods in class 29;

- US trademark registration Nį988024, word and logo "CITTERIO" registered on July 9, 1974, covering goods in class 29;

- Community Trademark Registration Nį295287, word and logo "CITTERIO 1878 MILANO," registered on June 23, 1998, covering goods in class 29.

Furthermore, the Complainant owns and operates several websites, among which <citterio.com>, registered on October 11, 1995, and <citteriousa.com>, registered on December 30, 1999, both promoting its renowned products.

B. The Respondent

The Respondent is listed as the Registrant of the disputed domain name <salumicitterio.com>. The record of such registration was created on August 29, 2003.

The Respondent did not reply to the Complaint and is therefore in default.

C. The Domain Name

The domain name resolves to a website featuring hardcore pornographic material that can be accessed by clicking the "click here to enter" link.

When one attempts to leave the website, several successive windows appear including one which displays another pornographic website.

 

5. Partiesí Contentions

A. Complainant

The Complainant asserts that the Respondentís domain name is confusingly similar to its registered trademark "CITTERIO" and to the trade name "Giuseppe Citterio Salumificio S.p.A." Furthermore, the association of the words "salumi" and "Citterio" makes the confusion unavoidable.

The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the domain name. The Respondent has never been commonly known in the usual course of business under the trademark, trade name or domain name "SALUMI CITTERIO." Before notification of the Complaint, there was no evidence of the Respondentís use of, or demonstrable preparations to, use the domain name or a name relating to the domain name in connection with a bona fide offering of goods or services, excepting a link to a pornographic website. The Respondent was not making any legitimate non-commercial or fair use of the domain name as navigating on the <salumicitterio.com> website was subjected to paying a fee.

According to the Complainant, the association of the words "salumi" and "citterio" also demonstrates the Respondent was aware of the existence of the Complainant when registering the domain name, which shows that registration has occurred in bad faith.

To establish that the domain name at issue is also used in bad faith, the Complainant highlights that the domain name is linked to a pornographic website, and that the Respondent has registered several domain names corresponding to famous Italian trademarks, including <bellentani.net>, <lanificiofratellicerruti.com>, <diegodellavalle.info>, <anticocafegreco.info>, and <nigacalze.net>. All these domain names lead Internet users to pornographic material.

B. Respondent

The Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

Under paragraph 4(a) of the Policy, a Complainant can only succeed in an administrative proceeding under the Policy if the Panel finds that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights in or legitimate interests to the domain name;

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

All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.

The Respondent has been properly notified of the Complaint and failed to respond. No exceptional circumstances explaining the default have been established. Therefore, in accordance with Paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and will draw any inferences as it considers appropriate from the Respondentís default.

A. Identical or Confusingly Similar

The Complainant has provided sufficient evidence of its rights in the "CITTERIO" mark. The Complainant has established that it owns numerous well-known trademarks throughout the world incorporating the mark "CITTERIO" in respect of food and pork-derived products.

The domain name <salumicitterio.com> incorporates in its entirety the mark "CITTERIO" in which the Complainant has rights. The word "salumi" designates pork-related products in Italian and refers to the very precise economic sector in which the Complainant operates its business.

The word "CITTERIO" is a nominal word which is hence completely arbitrary, and its association with the word "salumi" indicates clearly that the domain name was intended to lead the internet user to associate it with the Complainant. As a consequence, far from avoiding identity, this association emphasizes the risk of confusion. It has been held that a domain name composed of a famous trademark and a word referring to the economic sector to which the trademark applies, is confusingly similar to the trademark in question (Veuve Clicquot Ponsardin v. Net-Promotion, Inc., WIPO Case No. D2000-0347).

Therefore, as it is obvious that a reader of the disputed domain name would be confused into thinking that it was associated with the Complainant, it appears clearly that the domain name <salumicitterio.com> may be regarded as confusingly similar to the trademark in which the Complainant has rights.

On the basis of the above analysis, the Panel finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights, and therefore finds that the Complainant has satisfied with Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

According to Paragraph 4(c) of the Policy, the following circumstances, if proved, demonstrate a registrantís rights or legitimate interests in a domain name:

(i) the registrant used or demonstrably prepared to use the domain name or a corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute;

(ii) the registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or

(iii) the registrant is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainantís mark.

The Complainant submits that the Respondent, for a number of reasons, has no rights or legitimate interests in the disputed domain name. The Respondent, who did not file a Response, did not dispute this contention, nor did he provide information as to its interests to use the disputed domain name.

Notwithstanding the above arguments, in the absence of a response, it may be useful to analyze whether any of the defenses provided in Paragraph 4(c) might apply.

It can not be ascertained that the Respondent used the domain name in connection with a bona fide offering of goods and services, since the registration of a domain name incorporating somebody elseís trademark attempts maliciously to attract customers who were looking for the products or services associated with the trademark. This conduct is incompatible with a bona fide offer of product and services, as already stated in Motorola Inc. v. NewGate Internet Inc., WIPO Case No. D2000-0079. Paragraph 4(c)(i) of the Policy is hence inapplicable.

The Respondent also failed to establish that it had been commonly known through the disputed domain name, as stated in Paragraph 4(c)(ii) of the Policy. The Complainant does not appear to have licensed or otherwise authorized the Respondent to use its trademarks or to use or apply for any domain name incorporating the trademarks. Moreover, considering the time that has elapsed between the registration of the domain name at issue and the filing of the present administrative proceeding, it is obvious the Respondent did not acquire any right over the domain name through use within that time.

With regard to Paragraph 4(c)(iii) of the Policy, provided that the navigation in the website is subordinated to a fee, the Respondent can no more demonstrate that it is making a legitimate non-commercial or fair use of the domain name. This finding excludes the defense provided by Paragraph 4(c)(iii) of the Policy.

As a result the Panel is of the opinion that the Respondent has no legitimate rights or interests in the disputed domain name under Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the Respondent registered and used the disputed domain name in bad faith. The language of Policy paragraph 4(a)(iii) requires that both bad faith registration and bad faith use be proved. Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a registrant has registered and used a domain name in bad faith:

(i) circumstances indicating that the registrant 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the registrant 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 registrant has engaged in a pattern of such conduct; or

(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.

With regard to the sole registration in bad faith, it seems obvious that, as the domain name is made of a trademark and a word clearly related to the products covered by this trademark, the choice of this very precise domain name <salumicitterio.com> was made to gain profit from the Complainantís trademark renown. Accordingly, it is the Sole Panelistís opinion that registration at least occurred in bad faith since it is obvious that the Respondent had clearly the Complainant in mind when registering the domain name. (Club Monaco Corporation v. Charles Gindi, WIPO Case No. D2000-0936).

Some other elements may be put forward to support the finding that the Respondent did both register and use the domain name in bad faith.

The Complainant did provide the Panel with evidence establishing that the Respondent registered several domain names related to famous Italian trademarks and all leading the Internet user to pornographic websites. The Respondent is accustomed to registering domain names which reproduce famous marks. Thus the Respondent has engaged in "a pattern of such conduct" which is evidence of its registration and use of the domain names in bad faith pursuant to Paragraph 4(b)(ii) of the Policy (Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055).

The mouse-trapping technique is also used by Respondent; when attempting to leave the website under domain name <salumicitterio.com>, another pornographic website automatically appears. As has been clearly pointed out in National Association of Stock Car Auto Racing, Inc., v. RMG Inc. ĖBUY OR LEASE by E-MAIL, WIPO Case D2001-1387, "it is now well-known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques." In consequence, mouse-trapping may be regarded as another element establishing bad faith.

And finally, we may note that it is commonly understood, that, regardless of the motivation of the Respondent, the diversion of the domain name to a pornographic site, also called "pornosquatting," can itself be consistent with the finding that the domain name was registered and is being used in bad faith (Miroglio S.p.A. v. Mr Alexander Albert W. Gore, WIPO Case No. D2003-0557). While proposing pornographic material has to be regarded as a lawful activity, the mere combination of somebody elseís renowned trademark and of a pornographic activity is inherently constituting of bad faith as it irremediably alters the reputation and value of the mark.

Accordingly, the Panel finds that the domain name violates Paragraph 4(a)(iii) of the Policy.

 

7. Decision

For all of the above reasons, the Panel concludes that the Complainant has sufficiently proved:

(a) the Domain Name is confusingly similar to the Trademark;

(b) the Respondent does not have any rights to or legitimate interests in the Domain Name; and

(c) Domain Name was registered and is been used in bad faith.

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

 


 

Nathalie Dreyfus
Sole Panelist

Dated: November 24, 2003