WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
S.p.A. Egidio Galbani v. Ms. Jenny Saputo
Case No. D2003-0953
1. The Parties
The Complainant is S.p.A. Egidio Galbani, Milan, Italy, represented by Bird & Bird Solicitors, Italy.
The Respondent is Ms. Jenny Saputo, of Montreal, Quebec, Canada.
2. The Domain Name and Registrar
The disputed domain name <mozzarellavallelata.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 27, 2003. A hard copy of the Complaint was received by the Center on December 1, 2003.
On November 30, 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 December 1, 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.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 3, 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 December 3, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2003. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on December 29, 2003.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on January 9, 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, Complainant filed supplement information with the Center.
On January 16, 2004, the Center sent Complainant an Acknowledgement of Receipt of Supplemental Filing. Because the supplement information was not part of the Complaint, nor requested by the Panel, it has not been taken into account for this decision.
4. Factual Background
Complainant is the owner of the Community trademarks VALLELATA (registration number 69674, registered on March 2, 1998) and MOZZARELLA VALLELATA (logo; registration number 70227, registered on October 29, 1998). In addition, Complainant has submitted copies of several Italian trademark registrations, the oldest of which is dated 1957. As no English translation was provided, nor any evidence of renewal of these registrations, they have not been relied on for this decision.
Complainant has registered the following domain names:
- <mozzarellavallelata.it> on December 31, 1999
- <vallelata.it> on January 10, 2000
- <vallelata.com> on April 1, 2003
Respondent registered the domain name <mozzarellavallelata.com> on September 26, 2003.
When Complainant discovered that Respondent had registered the domain name <mozzarellavallelata.com>, it initiated these proceedings.
5. Applicable rules
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(i) the domain name in issue is identical or confusingly similar to Complainant's trademark, and
(ii) Respondent has no rights or legitimate interest in respect of the domain name, and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of Paragraph 4(a)(iii) above.
Paragraph 4(c) of the Policy sets out, by way of example, three circumstances, each of which, if proven by Respondent, shall demonstrate Respondent’s rights or legitimate interest to the domain name for the purpose of Paragraph 4(a)(ii) above.
6. Parties’ Contentions
Complainant states (and refers for this information to its website "www.galbani.com") that it is the Italian company leader in the production, distribution and sale of dairy Italian foods such as mozzarella cheeses and cured meats and that it has a presence in the international market due to five subsidiaries in Europe and a network of distributors worldwide. With more than 3.800 employees in Italy, six branches in Europe and a distribution network in more than 30 countries on all five continents, the sales revenues of Complainant in the year 2002 were more than €1.090 million.
Complainant produces and distributes since 1957 mozzarella cheese named "Vallelata" all over the world. Complainant has used the trademark VALLELATA for over forty-five years in Italy and internationally to distinguish its own mozzarella cheese product. According to Complainant the Vallelata product is considered one of the market leaders in Italy and one of the best-known all over Europe.
Complainant has become aware that the domain name <mozzarellavallelata.com> is registered by Respondent and that the record of registration of the disputed domain name was created on 26 September 26, 2003.
According to Complainant, the domain name <mozzarellavallelata.com> is used by Respondent to automatically re-direct Internet users to various pornographic websites, such as "www.4.cumstarlets.com", "www.xoomsearch.com", "www.3.abcsearch.com", with several links to further pay-per-download pornographic sites. By clicking on the first webpage that appears when typing the contested domain name, users are automatically directed to several further pornographic websites and are asked to provide credit card numbers to access the pornographic material therein contained.
Complainant states that users who try to close these pornographic websites are "mouse-trapped" into several further websites (always pornographic). When users attempt to leave the Respondent's site, numerous additional windows are generated, each displaying banner advertisements or pornographic sites offering paid services. Attempts to leave the site triggers the Internet browser to generate additional windows. Complainant states that there is no doubt that the Respondent uses the contested domain name for commercial purposes.
Complainant states that the domain name is identical and/or confusingly similar to the trademarks owned by Galbani. The suffix ".com" is not sufficient to avoid confusing similarity.
According to Complainant, Respondent has no rights or legitimate interests in respect of the domain name <mozzarellavallelata.com>. The express association by the Respondent of the term "mozzarella" with the term "vallelata" shows that the Respondent perfectly knew the Complainant's trademarks and products. There is no further relationship between Complainant and Respondent and the Respondent has not been commonly known by the domain name in question nor has made a legitimate non-commercial use of the domain name. Respondent is using the domain name for specific commercial purposes, selling pornographic services and products by means of the contested domain name.
The domain name is registered and used in bad faith. Respondent cannot have been unaware of the trademark when registering the domain name. There is no justification for Respondent to use a domain name corresponding with a trademark of Complainant to promote pay-per-download pornographic sites. Pornographic activity is something with which Complainant does not wish to be associated.
The Respondent mouse-traps Complainant's consumers on the website. This contributes to a disruption of the business of Complainant and shows the bad faith of Respondent.
Bad faith is also confirmed by the fact that the contact details provided to the Registrar and indicated in the registration certificate do not appear to be accurate. This is a violation of Paragraph 2(a) of the Policy. The use of domain name to offer pornographic material tarnishes the Complainant's existing trademarks and exclusive rights.
Based on the above, Complainant requests the immediate transfer of the domain name <mozzarellavallelata.com>.
Respondent has not submitted a Response to the Center, and Complainant's contentions are therefore uncontested.
6. Due Process
Where, as in this case, a Respondent does not submit a Response and the file does not contain any communication from Respondent, the rules of due process require the Panel to verify, to the extent possible, that Respondent is aware of the present proceedings. The Panel is satisfied, on the basis of the file documents, that this is the case.
A copy of the Complaint was sent by the Center to the email address and a hard copy of the Complaint and attachments by courier to the mail address contained in the Whois database of registrar Wild West Domains, Inc. The hard copies were returned as not deliverable due to false contact details. No reaction was received from the email message.
The Panel therefore assumes that Respondent has received the Complaint by email, but has chosen not to respond.
7. Discussion and Findings
A. Trademark rights
Complainant has provided sufficient evidence of its rights to the VALLELATA and MOZZARELLA VALLELATA-trademarks within the European Union and Italy.
B. Identical of confusingly similar
The domain name <mozzarellavallelata.com> is clearly confusingly similar to Complainant's word mark VALLELATA. The domain name incorporates the wordmark VALLELATA with the generic word "mozzarella" and the suffix ".com" which indicates that the domain name is registered in the ".com" gTLD. It is clear that in this combination the distinctive word VALLELATA stands out so that the public may think the domain name is somehow connected to the VALLELATA trademark. The suffix ".com" is not sufficient to exclude the confusing similarity (see: Staatliche Porzellan-Manufaktur Meissen GmbH v. Andi M. Eastman WIPO Case No. D2003-0660; Pomellato S.p.A. v. Richard Tonetti WIPO Case No. D2000-0493; Telecom Personal S.A. v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; Société Générale and Fimat Banque v. Lebanon Index/La France DN and Elie Khouri WIPO Case No. D2002-0760).
The domain name <mozzarellavallelata.com> is also clearly confusingly similar to Complainant's MOZZARELLA VALLELATA trademark, because in this trademark the words "Mozzarella" and "Vallelata" are dominant elements. The public may therefore also think that the domain name is somehow connected to this trademark.
C. Rights or legitimate interest
On the basis of the statements and supporting evidence of Complainant, referred to under section 6. above, the Panel concludes Respondent does not have any rights or legimate interest in the domain name <mozzerellavallelata.com>.
Under Paragraph 4(c) of the Policy, Respondent may demonstrate that it has a right or a legitimate interest to a domain name for the purpose of paragraph 4(a)(ii), inter alia, by providing evidence of any of the following circumstances:
"(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 trademark or service mark at issue."
By not submitting a Response, Respondent has failed to invoke any circumstances, which could demonstrate any right or legitimate interest in the domain name.
It is evident that Complainant did not grant to Respondent any right (license) to use these trademarks and did not grant any right to apply for the domain name <mozzarellavallelata.com>.
Respondent 's use of the domain name for commercial purposes excludes it relying in non-commercial or fair use of the domain name. The redirection by Respondent of users of a domain name which refers to Italian cheese to pornographic websites or pornographic images, cannot be considered a bona fide offering of goods or services.
Furthermore, such use tarnishes Complainant's trademarks. In this respect, the Panel refers to WIPO case law: National City Corporation v. Party Night Inc. WIPO Case No. D2003-0683 and case law therein cited; Sparco S.p.A. v. Oleg Filipov-Guevreyan, WIPO Case No. DLA2003-0001 and case law therein cited; National Football League Properties v. One Sex Entertainment Co., WIPO Case No. D2000-0118 and case law therein cited; BMW AG v. Peter Carrington, WIPO Case No. D2003-0367 and case law therein cited; Sears, Roebuck and Co. v. Party Night Inc., WIPO Case No. D2002-0732 and case law therein cited; Ty Inc. v. O.Z. Names, WIPO Case No. D2000-0370; Geocities v. Geocitiies.com, WIPO Case No. D2000-0326; Dell Computer Corp. v. RaveClub Berlin, WIPO Case No. D2002-0601; Bellsouth v. Peter Carrington, WIPO Case No. D2003-0308; Lycos Asia v. Buy This Name, WIPO Case D2001-0828; CCA Industries Inc. v. Bobby R. Dailey, WIPO Case No. D2000-0148.
In light of the foregoing, the Panel finds that Respondent has no rights or legitimate interests in the domain name at issue.
D. Bad faith
In paragraph 4(b) (iv) it is stipulated that for the purpose of paragraph 4(a) (iii) the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
"By using the domain name, you have intentionally intended to attract for commercial gain, Internet users to your website or other on-line locations, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
The Panel finds that these circumstances are present here.
The fact that Respondent has combined the generic word "mozzarella" with the (fantasy) word "Vallelata" indicates that Respondent was aware of Complainant's trademark(s) when he registered the domain name.
The use of this domain name for a website which directs Internet users to commercial pornographic websites demonstrates that Respondent sought to attract business by confusing Internet users as to the source of the website. Furthermore, such use clearly tarnishes the distinctiveness and reputation of Complainant's trademarks. The fact that the Internet user is mousetrapped in the website and that Respondent has provided false contact details all underline Respondent's bad faith in registering and using the domain name.
The Panel therefore concludes that Complainant has provided sufficient evidence that Respondent's registration and use of the domain name <mozzarellavallelata.com> is in bad faith.
On the basis of the foregoing, the Panel decides that Complainant has provided the required evidence to request the transfer of the domain name from Respondent to Complainant. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel orders the registration of the domain name <mozzarellavallelata.com> be transferred to Complainant.
Wolter Wefers Bettink
Date: January 23, 2004