WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Terroni Inc. v. Gioacchino Zerbo
1. The Parties
The Complainant is Terroni Inc., Toronto, Canada, represented by Lang Michener, Canada.
The Respondent is Gioacchino Zerbo, Senna Comasco, Italy, represented by Valerio Donnini, Italy.
2. The Domain Name and Registrar
The Disputed Domain Name <terroni.com> is registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2008. On April 29, 2008, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the Domain Name at issue. On April 29, 2008, Dotster, Inc. transmitted by email to the Center its verification response stating that the Disputed Domain Name’s registrant is the Respondent. On May 13, 2008, 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 May 13, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 2, 2008. The Respondent filed the response on May 30, 2008.
The Center appointed Alistair Payne as the sole panelist in this matter on June 12, 2008. 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 Terroni Inc., a corporation incorporated under the laws of the province of Ontario, with several locations in Toronto, Ontario, Canada and one in Los Angeles, California. The Complainant provides restaurant services specializing in traditional southern Italian cuisine. The Complainant has continuously used the trade mark TERRONI in association with its services in Canada since at least December 1992 and has a Canadian trade mark registration (No. TMA456021, March 22, 1996) and a US trade amrk registration (No. 3179062, December 5, 2006).
The Complainant is also the registrant of the domain names <terroni.ca>, registered on February 3, 2002 and <terroni.us>, registered on September 30, 2007.
The Complainant, through an agent, Raymond King, registered the domain name <terroni.com> on an unspecified date in 1996. That registration lapsed owing to an oversight on the part of the agent.
The Respondent registered the domain name subsequent to the lapse of the Complainant’s registration, associating the domain name with a set of associated results from a paid advertiser database.
The Complainant is seeking the transfer of the Disputed Domain Name.
5. Parties’ Contentions
The Complainant states that the Disputed Domain Name is identical to the Complainant’s trade mark and confusingly similar to the Complainant’s domain names.
The Complainant contends that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. The Complainant further contends that the Respondent does not have any rights by license or otherwise in the trade mark TERRONI, nor is TERRONI a name of any legitimate business owned or connected with the Respondent. As such, there is no evidence that the Respondent is using the Disputed Domain Name in connection with a bona fide offering of goods or services.
The Complainant asserts that the Disputed Domain Name was registered and is being used in bad faith. The Complainant states that the Respondent has caused public confusion by trading on the goodwill of the Complainant’s trade mark and passing off its website as being associated with the Complainant. The Complainant further argues that the Respondent’s website diverts potential customers of the Complainant to competitors.
The Complainant further states that the Respondent’s use of the Disputed Domain Name constitutes a classic example of monetized parking where the Respondent benefits from the confusion by receiving “click-through” commissions.
Finally, the Complainant asserts that the Respondent has been the respondent party in five other domain name dispute procedures before the Center and in all such cases the disputed domain names were transferred to the complainant.
The Respondent claims that the Disputed Domain Name is based on the generic word “terroni”, which is the plural of the Italian noun “terrone”, used by northern Italians to denote and to address southern Italians. The Respondent further states that it is not acceptable that a complainant claims to have exclusive rights on a highly generic and descriptive word such as “terroni”. The Respondent then asserts that there is no evidence that the word “terroni” has become distinctive of the Complainant or of its goods or services.
The Respondent claims that he has rights or legitimate interests in respect of the Disputed Domain Name. The Respondent’s claims one of his businesses, amongst others, is to register domain names that comprise generic or descriptive terms. The Respondent states that the Disputed Domain Name is a highly marketable domain name in which the Respondent has rights and a legitimate interest by virtue of the commonly descriptive character of the word “terroni”.
The Respondent claims that the Complainant failed to prove that the Respondent had prior notice of the Complainant’s trade mark. The Respondent further asserts that the Disputed Domain Name was not registered primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant.
The Respondent also states that the Complainant’s business is not in Italy and the Complainant’s trade mark is not registered in Italy. Since there is no evidence of the Complainant’s fame in Italy, this can not be considered as a case of mala fide registration and use of a domain name.
6. Discussion and Findings
A. UDRP Elements
If the Complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy.
B. Identical or Confusingly Similar
The Complainant has established in evidence that the mark TERRONI has been in usage since December 1992. The Complainant is also the proprietor of a Canadian and US trade mark for TERRONI. The Complainant is also the registrant of two domain names comprising the mark TERRONI.
The Disputed Domain Name wholly incorporates the trade mark TERRONI and is identical to the Complainant’s domain names save only a difference in the generic top-level domain (“gTLD”) “.com”.
The Complainant has therefore satisfied paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
In order for a complainant to prove that a respondent has no rights or legitimate interests in the Disputed Domain Name, UDRP case law has consistently held that it is sufficient for a complainant to prove a prima facie case. (see amongst others, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). Once a prima facie case is shown the burden of proof then shifts to the Respondent who must demonstrate its rights or legitimate interests to the panel.
In the Panel’s opinion the Complainant in this proceeding has demonstrated a prima facie case and the Panel accepts the Complainant’s assertions based on paragraph 4(a)(ii) of the Policy. The question for the Panel to now determine is whether the Respondent can demonstrate rights or legitimate interests in the Disputed Domain Name. The Respondent’s main argument stems from his assertion that “terroni” is a generic term in his native Italian language and that registering generic terms as domain names to generate pay-per-click advertising revenue is a bona fide offering of goods or services for the purposes of the Policy. In this regard the Panel accepts the principle that if the word in question is generic and the domain name was not registered with a trade mark in mind, the use of a domain name for a website consisting of pay-per-click advertising relevant to the generic meaning of the word at issue might in the circumstances be bona fide.
It is of little doubt that the word “terroni” is not a generic term or even a word in common usage in the countries where the Complainant is trading. Therefore in the eyes of the Complainant, it is the owner of a valuable legitimate trade mark. The Respondent contends that the word “terrone” and its plural “terroni” is a word in common usage in Italy, a generic word, used by northern Italians to denote and to address southern Italians. To this effect the Respondent has provided a print out of an online dictionary evidencing the word, references to the word in literary productions from at least 1945 and a printout of an Italian phone book showing “Terroni” as a surname.
In the Panel’s opinion the Respondent has demonstrated that the word “terroni” is in common usage. This however does not automatically show that the use of the word as part of a domain name corresponds to a bona fide offering of goods and services. The Respondent contends that the name “terroni” was chosen for a number of reasons including its value as a highly marketable domain name with many different possible end users, its value as a commonly used Italian noun and its value as a surname since many Italian or Italian-origin Internet users are likely to be interested in typing such domain names on their browsers. The Respondent further contends that the Disputed Domain Name contains links to other websites associated with the word “terroni” and that the registration of common words as domain names, can be a legitimate interest if the advertising and said links are clearly and directly related to the common word. The Respondent has cited the following cases amongst others in support of his argument, Advanced Drivers Education Products and Training, Inc. v. MDNH, Inc. (Marchex), NAF Case No. FA0567039 and The Landmark Group v. DigiMedia.com, L.P., NAF Case No. FA285459.
The Respondent however has failed to note that these decisions are based on circumstances where the respondent could demonstrate a reasonable connection between the use and the domain name. For example in Advanced Drivers Education Products, the domain name at issue was <teensmart.com> and the Respondent was able to demonstrate links that may be of relevance to teenagers.
The Panel fails to see any connection to “terroni” with the content of the website at the Disputed Domain Name. A quick scan of the Disputed Domain Name provides numerous links including restaurants in Toronto, information on Toronto, financial planning, lifestyle, travel etc. The Panel notes that no link provides information on the word “terroni” or the usage that the Respondent claims it makes. In fact most of the obvious links refer to Toronto which is the Complainant’s primary place of business and to restaurants in Toronto which are competitors of the Complainant. This suggests that the real value of the domain name is based on the value of the Complainant’s trade mark and not the generic word in Italian and that the Respondent is profiting from the Disputed Domain Name in this regard.
The Panel acknowledges that links from a domain name which are truly based on the generic value of the domain name may constitute a bona fide use. The Panel however agrees with the finding of the Panel in mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141 who stated:
“If though, the links are based on the trademark value of the domain names, the trend in UDRP decisions is to recognize that such practices generally do constitute abusive cyber squatting (see e.g. Champagne Lanson v. Development Services/MailPlanet.com Inc., WIPO Case No. D2006-0006 (pay per click landing page not legitimate where ads are keyed to the trademark value of the domain name); The Knot, Inc v. In Knot We Trust, LTD., WIPO Case No. D2006-0340 (same); Brink’s Network Inc v. Asproductions, WIPO Case No. D2007-0353 (same).” (See also to similar effect Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 and Alpine Entertainment Group, Inc. v. Walter Alvarez, WIPO Case No. D2007-1082).
The Respondent has failed to explain the coincidence of the links to the Complainant’s business and accordingly the Panel finds that the Respondent has failed to demonstrate that he is using the Disputed Domain Name in relation to as bona fide offering of goods. In reality the links have a clear connection with competitors of the Complainant and Toronto is the Complainant’s main place of business. In the Panel’s opinion this could never amount to a legitimate interest in the domain name.
The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
In order to demonstrate bad faith, the policy requires a complainant to prove both registration and use in bad faith. In fact the bulk of the Respondent’s contentions in relation to bad faith are based on the Complainant demonstrating that the Respondent was aware of the Complainant’s mark upon registration of the Disputed Domain Name. The Respondent contends that as he is based in Italy and his business is in Italy he could not have been aware of any rights the Complainant had in the trade mark TERRONI. However, the Respondent is a sophisticated user of the Internet who runs a business which is based across numerous countries and carried out in at least two languages. The image that the Respondent paints of himself as a business man in Italy far removed from the Complainant in North America is just not credible.
Although previous panels have been reluctant to fix a respondent with constructive notice, the Panel notes a number of Panel decisions which have now addressed the application of paragraph 2 of the Policy and in particular the words: “It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. It seems to this Panel and others, (see Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448), that people who make a living from registering vast numbers of domain names must make a reasonable efforts to ensure that they are not infringing on the rights of others. In Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304, the Panel found that the Respondent who carried out a business of registering multiple domain names and purchasing lapsed domain names, was not entitled to shield its conduct by “closing its eyes” to whether the domain names it was registering were identical or confusingly similar to a third party’s trade marks.
The three-member panel in the mVisible Technologies Inc. (supra) case adopted an even stronger position on the obligations of professional domainers in the discharge of their obligations under paragraph 2 of the policy. The Panel in that case said:
“Although there may be no obligation that a domain name registrant conduct trade mark or search engine searches to determine whether a domain name may infringe trade mark rights, a sophisticated domainer who regularly registers domain names for use as [pay-per-click] landing pages cannot be willfully blind to whether a particular domain may violate trade mark rights. In this context, a failure to conduct adequate searching may give rise to an inference of knowledge.”
And further, “… an even more thorough search would also include search engine searches to see what new websites may exist that use a name identical or confusingly similar to the domain name at issue even in the absence of a trade mark application or registration. … Similarly, Yahoo! and Google offer highly effective search engines to determine the most relevant references on the Internet in response to a particular search term……..Searching of this kind is particularly appropriate for companies that operate [pay-per-click] landing pages … In this context, registrants that run [pay-per-click] landing page businesses cannot be willfully blind to whether domain names they register are similar to trademarks and are pulling up [pay-per-click] advertising related to those trademark rights….It is reasonable to infer, based upon the circumstantial evidence available, that Respondent, a sophisticated party in the [pay-per-click] landing page business, must have been aware of the relevant trademark”.
Although the Respondent has demonstrated that “terroni” is a generic word in Italian and the Panel acknowledges that prima facie the registration of generic words is a legitimate commercial enterprise, in the circumstances of this case the Panel is still swayed by the common sense approach of the noted decisions. Indeed the Panel notes that the Complainant is the most popular result on a google search for “ Terroni” and the second most popular result on a search carried out on “google.it”.
Respondent’s Prior Conduct
Under paragraph 4(b) (ii) of the Policy, the following is demonstrative of bad faith registration and use:
“you have 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.”
The Panel notes that the Complainant was the original registrant of the Disputed Domain Name but allowed it to lapse due to an administrative oversight. The Respondent subsequently registered the Disputed Domain Name and has used it as a “portal” which contains links, amongst others, to businesses located in the Complainant’s primary place of business Toronto. The Panel further notes that some of the links are to competitors of the Complainant, which has been taken in numerous previous decisions to be indicative of bad faith.
As noted by the Complainant, the Respondent has been the respondent party in five other domain name dispute procedures before the Center and in all such cases the disputed domain names have been transferred to the relevant complainant. In the following cases, Yamaha Motor Corporation, USA v. Gioacchino Zerbo, WIPO Case No. D2007-1879 and Microsoft Corporation v. Gioacchino Zerbo, WIPO Case No. D2005-0644, which demonstrate clear bad faith on the part of the Respondent, the Respondent has registered domain names which correspond to some of the most well known brands in the world including INTERNET EXPLORER and YAMAHA. In Whirlpool Properties, Inc. and Whirlpool Corporation v. Gioacchino Zerbo, WIPO Case No. D2006-0549 and Premier Farnell PLC v. Gioacchino Zerbo, WIPO Case No. D2007-1208 the Respondent had registered domains which nearly correspond to the trade marks WHIRLPOOL and FARNELL in blatant acts of “typosquatting”, a behaviour which has been held in numerous decisions to be indicative of bad faith. In the above cases the Respondent also failed to file a response. A known track record of bad faith makes it very hard for a Respondent to demonstrate that any later disputed registrations have been made in good faith. It is even harder not to infer bad faith when as in this case the Respondent asserts falsely in his response that he has no track record of engaging in preventing trade mark owners from reflecting their marks in corresponding domain names or in intentionally attempting to attract for commercial gain Internet users to a site by creating confusion with the Complainant’s mark.
For the above reasons and in the circumstances of the Respondent’s conduct, the Panel is prepared to infer that the Respondent has registered the domain name to prevent the Complainant from reflecting the trade mark TERRONI in the “.com ”. Therefore in the Panel’s opinion the necessary elements of paragraph 4b (ii) are found to be present.
Under paragraph 4b(iv) of the Policy, the following if found to be present, shall be evidence of the registration and use of a domain name in bad faith:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Based on the discussion above, the Panel is prepared to infer that the Respondent has intentionally used the Disputed Domain Name as a means of attracting consumers to its website for the purposes of generating profit for the Respondent in the form of “click through commissions”. Therefore in the Panel’s opinion the necessary elements of paragraph 4(b)(iv) are found to be present.
The Complainant has therefore satisfied paragraph 4(a)(iii) of the Policy.
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 <terroni.com> be transferred to the Complainant.
Dated: July 1, 2008