WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Star Stabilimento Alimentare S.p.A. v. Ms. Jenny Saputo
Case No. D2003-0878
1. The Parties
The Complainant is Star Stabilimento Alimentare S.p.A., of Agrate Brianza (Milano), Italy, represented by Studio Legale Jacobacci e Associati, Milano, Italy.
The Respondent is Ms. Jenny Saputo, Montreal, Canada.
2. The Domain Name and Registrar
The disputed domain name <brodostar.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 November 4, 2003. On November 6, 2003, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On November 6, 2003, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain name as well as being its 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 10, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 2, 2003.
The Center appointed David H. Tatham as the sole panelist in this matter on December 8, 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 date for submitting this Decision was set as December 30, 2003, but on that date the date was extended to January 7, 2004.
4. Factual Background
The Complainant states that it is a well-known Italian food company and the owner of a number of trademark registrations which include the words BRODO STAR, in particular the International Registration No. 266.221R of DOPPIO BRODO STAR dating back to 1963, and the Italian registration No. 405.378 of BRODO STAR RICETTA SAPORE, dating back to 1982. Both of these registrations have been renewed and are in force. The Complainant contends that it is, and has been for many years, the owner of the trademark BRODO STAR which is associated with its food products, and that BRODO STAR has become a household name in several countries.
5. Parties’ Contentions
The Complaint is made on the basis that:
(a) The disputed domain name is confusingly similar (in fact, identical) to the trademark BRODO STAR owned by Complainant.
(b) There is no way that the Respondent could not have been aware of the trademark BRODO STAR of the Complainant, and registration could only have occurred in bad faith.
(c) The Respondent "specializes" in registering domain names corresponding to Italian well-known trademarks and this is evidence of bad faith. She has registered several other domain names identical to, or confusingly similar with, well-known Italian trademarks such as, for example, <cellulase.biz>, <boutiqueprada.net>, <mozzarellavallelata.com>, <ninodanieli.info>, <aiazzonemobili.com>, all of them pointing (or having pointed in the past) to pornographic websites.
(d) Upon the Complainant’s information and belief, the Respondent has no rights or legitimate interests in respect of the domain name. In particular:
- there is no evidence of the Respondent’s 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. The only thing the Respondent offers through her domain name is a link to a pornographic website;
- The Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name BRODO STAR;
- The disputed domain name links to the default page of a website, which can be further navigated only by paying a fee. Hence, its use is commercial, and any possibility of a non-commercial fair use is excluded.
- The Respondent uses the domain name in bad faith. The default page of the disputed domain name resolves to a pornographic page selling various services connected with gay pornography and a copy of this page was attached to the Complaint. The consequences for the Complainant, as a prestigious food company, are potentially catastrophic, should even a minority of Internet users come to believe that the Complainant is actually associated with pornography, the more so considering that BRODO STAR is a line of products traditionally associated in publicity with images of a traditional Italian family. The Complainant refers to, and quotes from a number of Decisions under the Policy in which it had been held that redirection to pornographic sites from a domain name incorporating the trademark of another company is, per se, evidence of bad faith. The Complainant alleges that these decisions all refer to cases, as clear as the present one, of "pornosquatting", where a cybersquatter tries to take advantage of a well-known trademark and/or trade name to attract Internet users to a pornographic website. In particular: (a) a trademark the "pornosquatter" does not own is used; (b) the site to which the user is redirected is obviously pornographic; (c) the site is commercial, i.e. in order to access further pornographic images the Internet user is invited to pay; and (d) there is a "mouse-trapping effect" making it more difficult for the casual Internet user to leave the pornographic website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to prove its case under paragraph 4(a) of the Policy, the Complainant must establish three things:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
In this case, which in the opinion of the Panel has not been very well documented, the Panel has had little difficulty in finding that the second and third of these requirements have been satisfied, but has had more of a problem with the first of them.
A. Identity or Confusing Similarity
The Complainant claims to have rights in the trade mark BRODO STAR and that this is confusingly similar if not identical to the disputed domain name.
Attached to the Complaint was, firstly, a Schedule of what the Complainant claims to be a number of trade marks including the words BRODO STAR. However, the Panel notes that this Schedule is actually headed "World-wide protection of the trademark DOPPIO BRODO". There is no mention of BRODO STAR in this heading, and indeed there is no registration in the list of BRODO STAR itself.
The Complainant has not submitted any evidence that the trademark BRODO STAR is associated with its food products, or that this name has become a household name in several countries.
There are 13 trademark registrations in the Schedule that was attached to the Complaint, 8 of them in Italy, but because one of them is an International Registration, the list includes rights in 19 countries. A copy of the International Registration was also attached to the Complaint but it can hardly be described as being a registration of BRODO STAR. It is a figurative device consisting of a pack folded flat on which is depicted a smiling lady holding a plate of food. Alongside her are the words ‘DOPPIO BRODO’ on one line and, printed below them, a little larger and in a separate box, is the word ‘STAR’. On a side panel of the package appear the words ‘PREPARATO PER BRODO A BASE DI GLUTAMMATO’ which are printed in the same style, the same typeface, and the same size as the words ‘DOPPIO BRODO’. In English the Italian word ‘DOPPIO’ means ‘double’. The word ‘Star’ is of course not Italian and is the first, and the most dominant and distinctive, word in the Complainant’s name. In the opinion of the Panel, this International Registration cannot be relied upon as demonstrating rights in the name BRODO STAR because nowhere in the entire device do these words appear written in this fashion, namely on one line and juxtaposed.
The only other trade mark of which a full copy has been supplied is an Italian registration which consists of the words BRODO STAR RICETTA SAPORE. In English, the word ‘ricetta’ means ‘recipe’ and the word ‘sapore’ means ‘flavour’. The words ‘ricetta sapore’ are purely descriptive and it could therefore be argued that this registration does give some rights in the words BRODO STAR per se.
The other trademarks on the Schedule supplied by the Complainant comprise the following, STAR IL DOPPIO BRODO (in Benelux), DOPPIO BRODO STAR (in Eritrea and Malta), and PRIMOBRODO STAR, BRODO STAR PIENO SAPORE, BRODO STAR RISERVA SAPORE, DOPPIO BRODO STAR, BRODO STAR RICETTA TUTTO SAPORE, BRODO STAR SAPORE MEDITERRANEO all in Italy. Copies of none of these trademarks have been supplied so the Panel must take them at face value and assume that they consist of just the words indicated and that these are not part of a fanciful device like the International Registration. Judging from the dates shown in the Schedule, all of these marks would appear to be in force. They all also, with the exception of the Benelux registration, contain the words BRODO STAR. When these marks are taken in conjunction with the Italian trade mark BRODO STAR RICETTA SAPORE which is discussed above, there is a stronger argument that the Complainant owns a family of trademarks which all have the words BRODO STAR in common. It is true that most of these marks are descriptive, to a greater or lesser degree, but the Panel is prepared to accept that, as a result, the Complainant does have rights in the trademark BRODO STAR and that there is no doubt that this mark is almost identical to the disputed domain name <brodostar.com>, apart from the space between the two words in the trademark, and the generic suffix ‘.com’ in the domain name.
The Panel therefore concludes that the Complainant has satisfied its burden under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Once a Complainant has made out a prima facie case, the burden of proof shifts to the Respondent to demonstrate that it has rights to and legitimate interests in the disputed domain name. Under paragraph 4(c) he can do so if any of the following conditions apply:
(i) if he has used, or made demonstrable preparations to use, the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services; or
(ii) if he (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights in it; or
(iii) if he 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 Complainant’s trademark.
In this case the Panel is satisfied that the Complainant has made out a prima facie case. There is no obvious connection between the Respondent and the domain name other than the fact of registration. Indeed, quite the reverse, for the disputed domain name resolves to a pornographic website.
The Respondent has a case to answer but, by failing to file a Response, she has failed to provide any answer.
The Panel is unable to think of any reason why the Respondent could reasonably be said to have rights or legitimate interests in respect of the disputed domain name, and in these circumstances the Panel finds that the Respondent has no such rights or interests and that paragraph 4(a)(ii) of the Policy has been proved.
C. Registered and Used in Bad Faith
As stated above, a visitor to the disputed domain name is confronted with gay pornographic images, movies, games, live sex shows etc. He is also invited to pay a fee and become a member of a ‘club’ where more of such images can be viewed. So, far from being non-commercial, the disputed domain name is being used to attract customers to another, commercial, website.
The Complainant has referred the Panel to numerous precedents in order to justify its claim that under the Policy this type of so-called pornosquatting is evidence of bad faith and the Panel is not inclined to deflect from these precedents and find otherwise.
As the Complainant says, it would indeed be unfortunate if it were to be associated with such activity particularly because BRODO STAR is a line of products which, in its publicity, is traditionally associated with images of a traditional Italian family. However in this context, the Panel notes, firstly, that the Complainant’s full name is Star Stabilimento Alimentare S.p.A. and, as already remarked upon above, it is the word ‘Star’ which is the most distinctive part of this name. Secondly, no evidence of the manner in which the Complainant’s products are advertised was submitted, so the Panel cannot comment on this claim
The Complainant also states that the Respondent has registered domain names which are identical or similar to the names of several other well-known Italian trademarks. He has produced copies of these registrations, but no evidence that the names in question are indeed either Italian, or trademarks, or well-known. However it is within the knowledge of the Panel that at least one of these names (PRADA) is a household name. In the absence of any rebuttal by the Respondent of the Complainant’s claims in this regard, the Panel must assume that these registrations are a fact and that, by registering them, the Respondent is prima facie a cybersquatter, and then she has fallen foul of paragraph 4(b)(ii) of the Policy under which it is evidence of bad faith if a Respondent 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 you have engaged in a pattern of such conduct".
Nevertheless, there is sufficient evidence, albeit circumstantial, that the Respondent has indeed registered and used the disputed domain name in bad faith and that paragraph 4(a)(iii) of the Policy has been proved.
For all of the foregoing reasons, in accordance with paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the domain name <brodostar.com> be transferred to the Complainant.
David H. Tatham
Dated: January 2, 2004