WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Centrale del Latte di Torino & C. S.p.A. v. Mr. Stanley Filoramo
Case No. D2003-0931
1. The Parties
The Complainant is Centrale del Latte di Torino & C. S.p.A., Torino, 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 <lattepiemonte.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 25, 2003. On November 25, 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 November 25, 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 November 27, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on December 23, 2003.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on January 8, 2004. 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.
On January 14, 2004, the Panel issued Procedural Order No. 1 requesting further information as to the name and ownership of the trademark in this case since the name of the trademark did not appear on the registration form which belonged to Centrale del Latte di Torino & C. S.p.A.
4. Factual Background
4.1 The Complainant
The Complainant, Centrale del Latte di Torino & C. S.p.A. certifies the quality of milk and milk-derivative products of the Piedmont Region using the trademark in issue and since December 1986, for "Fully Homogeneized Milk," has registered in the Italian Trademark Office its LATTE PIEMONTE-IL LATTE DELLA CENTRALE trademark [see paragraphs 4.3 and 4.4. below].
4.2 The Respondent
No Response to the Complaint was received from the Respondent.
4.3 The Complainant's Trademark
The Complainant has provided evidence that it is the proprietor of the following trademark: LATTE PIEMONTE-IL LATTE DELLA CENTRALE, Italian registration No. 772.764 [Class 29] filed December 3, 1986, for "Fully Homogeneized Milk."
4.4 Respondent's use of the domain name at issue
No explanation as to the use by the Respondent was provided except in annex number 3 of the Complaint where the Complainant attempted a telnet communication to an apache server to "www.lattepiemonte.com" which diverted to a pornographic webpage.
4.5. The Respondent's generic TLDs
The Complainant cites 6 other domain names which it says have been registered by the Respondent and these generic domains correspond to famous European third party trademarks.
5. Partiesí Contentions
The Complainant offers milk and milk derivatives products of the Region for sale and uses in several other ways the trademark LATTE PIEMONTE. The mark is listed on the Italian register of the Trademark Office as LATTE PIEMONTE-IL LATTE DELLA CENTRALE.
The domain name <lattepiemonte.com> is confusingly similar to the trademark LATTE PIEMONTE.
The Respondent must have been aware of the well known trademark LATTE PIEMONTE and registration must only have occurred in bad faith. Respondent specializes in registering domain names corresponding to famous Italian trademarks in order to link them through to pornographic websites, further confirms his bad faith.
Respondent has no rights or legitimate interests in respect of the domain name: (i) there is no evidence of the 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. Respondent only offers pornographic images for a fee through its website, (ii) Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name LATTE PIEMONTE; (iii) the use which Respondent makes of the domain name is commercial, thus excluding the possibility of a non-commercial fair use.
Respondent operates in bad faith is evidenced by his registration of several other domain names identical to, or confusingly similar to, well-known European Trademarks. Furthermore, the domain name is used in bad faith as the default page of <lattepiemonte.com> resolves to a pornographic page selling (for a fee) images and videos.
As noted above, Respondent has defaulted.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy of transfer of a domain name to a Complainant under the Policy it is necessary that the Complainant must prove, as required by Paragraph 4(a) of the Policy, that:
(i) the contested 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.
The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, Paragraph 5(e) of the Rules expressly requires the Panel to "decide the dispute based upon the complaint". Under Paragraph 14(a) of the Rules in the event of such a "Default" the Panel is still required "to proceed with a decision on the complaint," whilst under Paragraph 14(b) it "shall draw such inferences therefrom as it considers appropriate."
A. Identical or Confusingly Similar
The Complainant holds the Italian Trademark Office registered its LATTE PIEMONTE-IL LATTE DELLA CENTRALE. The domain name is <lattepiemonte.com>. The domain name is identical a part of the Complainantís trademark.
The Panel notes and agrees with the Panel in Consorzio del Prosciutto di Parma v. Matthias Gasser, Hanslmeier Fleischwarenfabrik; WIPO Case No. D2003-0474:
"Where, however, the Complainant owns a trademark that includes, as part of the mark, a geographic term, such trademark can be invoked in the sense of paragraph 4(a)(i) of the Policy (see for example City of Potsdam v. Transglobal Networx Inc., WIPO Case No. D2002-0856, <potsdam.com>)."
The Panel also notes in Fondazione Arena di Verona v. Giovanni Albertin, WIPO Case No. D2001-0567, in which the Panel found the domain names <arenaverona.com>, <arenaverona.tv>, <arena-verona.tv> and <arenadiverona.tv> confusingly similar to the trademark FONDAZIONE ARENA DI VERONA.
The Panel concludes that the Complainant has met the test under Policy paragraph 4(a)(i) to show that the disputed domain name is identical or confusingly similar to a trademark in which it has rights.
B. Rights and legitimate interest
This Panelist finds that the Respondent has registered numerous domain names identical or confusingly similar to well-known Italian trademarks (Lanificio F.lli Cerruti S.p.A. v. Mr. Stanley Filoramo, WIPO Case No D2003-0740; G. Bellentani 1821 S.p.A. v. Stanley Filoramo, WIPO Case No D2003-0783; Giuseppe Citterio Salumificio S.p.A. v. Mr. Stanley Filoramo, WIPO Case No D2003-0787; Jil Sander AG v. Mr. Stanley Filoramo, WIPO Case No D2003-0816; Helmut Lang S.a.r.l. v. Mr. Stanley Filoramo, WIPO Case No D2003-0822; Perlier S.p.A. v. Mr. Stanley Filoramo, WIPO Case No D2003-0848; Cameo S.p.A. v. Mr. Stanley Filoramo, WIPO Case No D2003-0857; Miroglio S.p.A. v. Stanley Filoramo, WIPO Case No. D2003-0887) and so this Panelist finds this to be evidence that the Respondent most likely was aware of the Complainantís trademarks when registering the Domain Name.
In relationship with this circumstance, many decisions adopted under the Policy (see for example, Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465 or Adventis Pharmaceuticals Products, Inc. v. Nejat, WIPO Case No. D2003-0401), have stated that by defaulting and failing to respond, the Respondent fails to offer the Panel evidences of any of the circumstances foreseen by paragraph 4(c) of the Policy or any other aimed at providing the Panel evidences of his rights or legitimate interests on the disputed domain names.
Furthermore, there is no evidence of legitimate interest since there is no proof of the 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 and services. The only thing Respondent offers through its 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 "Lattepiemonte" and the Respondent links to a website which can be further navigated only by paying a fee. The use is commercial and any possibility of a non commercial fair use is excluded. Therefore, this Panelist finds that the Complainant has established element (ii) of the Policyís paragraph 4(a).
C. Registration and Use in Bad Faith
Paragraph 4(b) of the Policy describes circumstances that are evidence of bad faith in the registration and use of a domain name. Most applicable to the present dispute is paragraph 4(b)(iv), which provides that bad faith is shown when the Respondent, by using the domain name, has "intentionally attempted to attract, for commercial gain, Internet users to [the Respondentís] website . . ., by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement" of the Respondentís website or of products on the website.
Not having filed a response, Respondent has not provided any explanation for the numerous circumstances which the Complaint has asserted, lead to a conclusion of Respondentís bad faith in registering and using the domain name. Indeed, the Complainant expresses great concern of Internet users coming to believe that the Complainant is actually associated with the sale of the pornography displayed on the re-directed website. WIPO Panel decisions have determined that the use of a domain name that is confusingly similar to anotherís protected trademark to divert Internet users to a pornographic site is consistent with the finding that the domain name was registered and is being used in bad faith. Six Continental Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022; Caledonia Motor Group Limited v. Amizon, WIPO Case No. D2001-0860; CCA Industries, Inc. v. Bobby R. Dailey, WIPO Case No. D2000-0148.
The Panel concludes that the domain name in issue is confusingly similar to Complainantís mark, that Respondent lacks legitimate rights in this domain name, and that Respondent registered and used the domain name in bad faith. Accordingly, the domain name <lattepiemonte.com> should be transferred to Complainant.
Dated: January 22, 2004