World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Panino Giusto S.r.l. v. Toscana Enterprises Corporation

Case No. D2012-0574

1. The Parties

The Complainant is Panino Giusto S.r.l. of Assago, Italy, represented by Avv. Alfio Rapisardi e Associati, Italy.

The Respondent is Toscana Enterprises Corporation of Massachusetts, United States of America, represented internally.

2. The Domain Names and Registrar

The disputed domain names <paninogiusto.com> and <paninogiusto.net> are registered with Wild West Domains, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2012. On March 20, 2012, the Center transmitted by email to Wild West Domains, LLC. a request for registrar verification in connection with the disputed domain names. On the same date, Wild West Domains, LLC. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 March 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2012. The Response was filed with the Center on April 12, 2012.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on April 23, 2012. 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 an Italian company which operates restaurants under the mark PANINO GIUSTO. The Complainant opened the first such restaurant in Milan, Italy in 1979 and has since opened restaurants in other Italian cities and elsewhere in the world. The Complainant is the owner of European Community trademark registration number 872937 registered on December 2, 1999 for goods and services in classes 25, 30 and 42 in respect of a figurative mark representing armorial bearings together with the words PANINO GIUSTO. The Complainant was previously the owner of United States of America (“USA”) registered trademark number 2430731, registered on February 27, 2001 and cancelled on September 30, 2011, for goods and services in class 42, in respect of a device and word mark having the same appearance as the Complainant’s said European Community trademark. The USA registered trademark contains a translation section stating “The words “PANINO GIUSTO” in the mark may be translated from Italian as “suitable bread roll””.

The Respondent is an entity based in Massachusetts, USA. The Respondent’s business is engaged in consulting across several divisions including strategy and branding, venture marketing and an entity named SODB.com or School of Doing Business which operates a domain name registration business. The disputed domain names were both registered on June 21, 2002 and, according to the registrar verification response, were transferred to the registrar, Wild West Domains, LLC, in the name of the Respondent in early 2006. As at the date of this Decision, the website associated with each of the disputed domain names appears to redirect to the site “www.1stnh.com”, which site is not available. However, while no website is displayed, in each case the browser shows the title “::: [the respective disputed domain name] available FOR SALE, for lease or for rent :::”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are identical to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.

In support of its submission that the disputed domain names are identical to its PANINO GIUSTO trademark, the Complainant cites the terms of paragraph 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). The Complainant asserts that full identity between its trademark and the disputed domain names is established by disregarding the figurative elements of the trademark together with the top level domain “.com” in each case.

The Complainant asserts that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods and services. The Complainant submits that the Respondent registered the disputed domain names with the exclusive intent of offering them for sale or lease. The Complainant states that it is expressly provided in the meta-tags that appear at the head of the website associated with each of the disputed domain names that they are available “FOR SALE, for lease, or for rent” (evidence provided). The Complainant submits that this message corresponds with the business of the Respondent in that the Respondent’s various websites show that the Respondent operates in the business of registering and selling domain names.

The Complainant asserts with reference to paragraph 2 of the Policy that it is a registrant’s responsibility to determine whether its domain name registration infringes or violates third party rights. The Complainant submits that the Respondent’s non-fulfillment of such responsibility should be evaluated according to strict criteria because the Respondent has familiarity with the purchase and sale of domain names and has specific experience and skills in searching and using the Internet that are higher than common standards.

The Complainant notes that it has used its trademark since 1979 when its first restaurant opened in Milan and that since that date it has opened new restaurants in other Italian cities as well as in principal cities of other countries. The Complainant submits that this makes PANINO GIUSTO one of the most well-known trademarks of the Italian restaurant industry. The Complainant asserts that it is unlikely that Mr. Lorenzo Geraci, whom it states is the representative of the Respondent in charge of registering the disputed domain names on the Respondent’s behalf, was completely unaware of the existence of the Complainant’s well-known trademark when he created the disputed domain names.

The Complainant notes that when the Respondent registered the disputed domain names the mark PANINO GIUSTO was already the subject of its previous USA trademark registration, as noted in the Factual Background section above. The Complainant states that it is even more unlikely that the Respondent had no knowledge of the Complainant’s PANINO GIUSTO mark in light of the Complainant’s then live USA trademark and that it is more probable that the Respondent knew of the said mark or should have known of it, yet nevertheless proceeded with the registration of the disputed domain names.

The Complainant produces copies of the correspondence between the Complainant’s and Respondent’s representatives, together with translations into English from Italian, regarding a negotiation to purchase the disputed domain name <paninogiusto.com>. The Complainant asserts that in the said correspondence the Respondent repeats its willingness to sell or rent the disputed domain names on many occasions in return for a suitable commercial offer.

B. Respondent

The Respondent states that the Complainant’s registered trademark is limited to its applicable goods and services and use classifications including restaurant/sandwich bars, clothing and various foodstuffs while the Respondent’s intention is to use the disputed domain names for unconnected purposes such as, but not limited to, a book about the lives of Italian expatriates in the USA and a social network for Italians living abroad. The Respondent submits that there is no confusion between its proposed uses and the Complainant or its trademark. The Respondent states that the disputed domain names are part of one of the Respondent's projects that has been on hold for some time and that the Respondent made this clear to the Complainant’s agent in correspondence. The Respondent states that the fact that the disputed domain names were offered for sale is a consequence of the commercial aspect of the capitalist culture of the USA in which everything of a commercial character is for sale for the right price.

The Respondent asserts that the words “panino” and “giusto” are common words in the Italian language. The Respondent submits that, as there are a multitude of legal uses of the disputed domain names outside the use classifications of the Complainant’s trademark, the Complainant is not entitled to the remedy sought in the Complaint. The Complainant asserts that the use of the disputed domain names for business such as enterprise software, promoting a book or a social network would not infringe the Complainant’s trademark.

The Respondent states that the Complainant’s company name is “Panino Giusto” and that a better suitable domain name would be Panino-Giusto.com. The Respondent asserts that the disputed domain names could indicate a three word sentence such as “Pa’ Nino Giusto” where “Pa'” is the contraction used in the Italian language for Father (Papa, or Padre), Nino is a proper name, which the Respondent adds was the Respondent’s representative’s own Italian grandfather's name, and Giusto is a common Italian word often translated as “just, right, exactly, righteous” and which in common parlance is used in the same manner as the word “cool” is used in the English language.

The Respondent submits that as the status of the Complainant’s USA trademark is “dead” it cannot be relied upon in the administrative proceeding. The Respondent states that the Complainant’s contention that the Respondent’s Mr. Lorenzo Geraci was aware of the Complainant’s trademark when the Respondent registered the disputed domain names is mere opinion or speculation and cannot constitute proof in the administrative proceeding. The Respondent asserts that as the disputed domain names are not presently used there can be no bad faith on its part.

The Respondent states that the Complainant acted in bad faith when contacting the Respondent as the Complainant’s agent falsely stated to the Respondent’s representative that he was acting in his own personal interest and failed to disclose the Complainant’s interests. The Respondent also points out that the Complainant failed to provide three elements of the correspondence between the Complainant’s agent and the Respondent’s representative. The Respondent adds that these contained an admission by the Complainant’s agent that he was acting as intermediary for the Complainant together with assertions by the Complainant’s agent that the Complainant was ready to institute legal proceedings against the Respondent.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

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

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

In support of its submission that the disputed domain names are identical to a trademark in which it has rights, the Complainant has cited its European Community trademark for the figurative mark representing armorial bearings together with the words PANINO GIUSTO as outlined in the Factual Background section above. The Complainant asserts that this mark is identical to the disputed domain names. In the Panel’s assessment, this would be the case if the mark were merely for the words PANINO GIUSTO alone, given that white space cannot be reproduced in a domain name and that it is customary in cases under the Policy to disregard the top level domain (in this case “.com” and “.net” respectively in the disputed domain names).

In the present case, however, there is an additional figurative element in the Complainant’s mark besides the words PANINO GIUSTO. As the Complainant points out, the WIPO Overview 2.0 deals with the question of figurative trademarks at paragraph 1.11 under the heading “Are disclaimed or design elements of a trademark considered in assessing identity or confusing similarity?” where it is stated:

“Textual content which has been expressly disclaimed in a complainant's relevant trademark registration is generally disregarded by panels when assessing a domain name's identity or confusing similarity under the first element of the UDRP. Also, as figurative, stylized or design elements in a trademark are generally incapable of representation in a domain name, such elements are typically disregarded for the purpose of assessing identity or confusing similarity, with such assessment generally being between the alpha-numeric components of the domain name, and the dominant textual components of the relevant mark. However, design elements in a trademark may be relevant to the decision in certain circumstances - such as where, for example, they form an especially prominent or distinctive part of the trademark overall. Some panels have found it to be a matter of impression in the circumstances of each case. Where the entire textual component of a complainant's relevant trademark has been disclaimed, or the only protectable component of such mark is comprised of design elements which generally cannot be represented in the alpha-numeric string of a domain name, then (absent a showing of acquired distinctiveness through use of the relevant mark) the complainant may lack any relevant rights under the UDRP on the basis of such mark, rendering moot any assessment of the disputed domain name's identity or confusing similarity with it.”

The Panel respectfully adopts the consensus view. In the present case, there is no disclaimer of any textual content in the Complainant’s trademark registration. The textual elements PANINO and GIUSTO are in the Panel’s assessment clearly and unambiguously represented in uppercase letters in a stylized typeface, and act as the dominant elements of the figurative representation. The non-textual element of the trademark is a heraldic-style symbol which occupies the space between the two words. In the Panel’s opinion this symbol does not detract in any way from the prominence of the word elements of the mark, and, as it is incapable of representation in a domain name, may be disregarded for the purpose of assessing identity or confusing similarity. As such, and also disregarding the white space in the mark and the top level domains in the disputed domain names as outlined above, the Panel finds that the Complainant’s trademark is identical to the disputed domain names and thus that the first element under the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(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 noncommercial 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”.

The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with sufficient evidence of rights or legitimate interests to rebut that prima facie case.

In the present case, the Complainant asserts that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods and services and that the Respondent registered the disputed domain names with the exclusive intent of offering them for sale or lease. The Complainant also submits that the Respondent was aware of the fame of the Complainant’s trademark when it registered the disputed domain names and thus that the offer of sale was targeted at the Complainant. The Panel is satisfied that this constitutes a prima facie case. The burden of production accordingly shifts to the Respondent.

Clearly the Respondent is not commonly known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy, nor, as its submissions make clear, is it making use of the disputed domain names in a noncommercial manner within the meaning of paragraph 4(c)(iii) of the Policy. Accordingly, of the examples set out in paragraph 4(c) of the Policy, the only one which might be applicable is paragraph 4(c)(i), namely the possibility that, before any notice to the Respondent of the dispute, the Respondent was making demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services

The Respondent’s case does indeed appear to run along the lines of paragraph 4(c)(i) of the Policy, however, it is somewhat challenging to decipher, principally because it contains significant amounts of repetition while concerning itself to a large extent with questions of trademark infringement (or the lack thereof) with which the present proceedings are not concerned. However, in so far as the Panel can follow the Respondent’s submissions, the Respondent appears to be asserting that it was not targeting the Complainant in any way by its registration of the disputed domain names and that it has a legitimate interest concerning its project for a book about the lives of Italian expatriates in the USA and a social network for Italians living abroad. The Respondent adds that the disputed domain names could [Panel’s emphasis] indicate a three word sentence such as “Pa’ Nino Giusto”, which, if so, would refer to the Respondent’s representative’s grandfather.

The Respondent notably does not state that it intended “Pa’ Nino Giusto” to be the name of either the book, social network or both, or indeed that this was the reason why it selected the name contained within the disputed domain names. On the contrary, the Respondent merely expresses the possibility that the word compound “paninogiusto” in the disputed domain names might be capable of being read as “Pa' Nino Giusto”. The Panel finds the Respondent’s assertion on this point to be rather curious and it does not promote any feeling of confidence in the mind of the Panel as to the Respondent’s credibility. Clearly if “Pa’ Nino Giusto” is the name of the Respondent’s project, the intended title of its book or social network and/or the reason why it selected the disputed domain names the Panel would have expected the Respondent to state this unambiguously instead of presenting it as one possible interpretation of how the disputed domain names may be read.

In any event, even if the Panel were to assume for present purposes that the Respondent had submitted that “Pa’ Nino Giusto” is the name of its project, book or social network, the Respondent has provided no evidence whatsoever of any preparations to use the disputed domain names in connection with these purposes as required by paragraph 4(c)(i) of the Policy. In the Panel’s view it should have been straightforward for the Respondent to provide support for such an assertion, perhaps by way of drafts or outlines of the book, or business plans/designs for the social network site. Accordingly, in the absence of such evidence the Panel does not find that the Respondent has made demonstrable preparations in connection with an offering of goods or services, whether bona fide or otherwise.

The Respondent’s case also appears to put forward the notion that the Respondent may have registered the disputed domain names for their generic value in containing the generic Italian words, “panino” and “giusto”. This strikes the Panel as being wholly inconsistent with the Respondent’s submissions regarding its reading of the disputed domain names as “Pa’ Nino Giusto”. In any event, as paragraph 2.2 of the WIPO Overview 2.0 provides in part:

“Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase).”

The Respondent has provided no evidence that it has used the disputed domain names or had planned any use concerning the generic meaning of the words contained in the disputed domain names and furthermore, in the assessment of the Panel, while each of these words may be generic, when they are combined, as in the disputed domain names, they do not give rise to a well-known generic term or common phrase. On the contrary, however, they do denote the Complainant’s PANINO GIUSTO trademark.

The Respondent’s case as to its rights or legitimate interests in the disputed domain names must also be examined in the context of its having offered the disputed domain names for sale, a fact which it expressly admits in the Response. The Respondent’s account is that it was selling the disputed domain names while its book and social network projects were on hold, on the basis that everything commercial has its price. This explanation simply does not ring true for the Panel. If it is assumed for present purposes that the Respondent had intended either the book, or the social network, or both to be named “Pa’ Nino Giusto”, in a personal tribute to the grandfather of the Respondent’s representative, and that the disputed domain names were registered in order to reflect the representation of the project name in an online environment, it strikes the Panel as extremely improbable that the Respondent would simultaneously wish to sell the disputed domain names to a third party.

In all of these circumstances, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain names and that the second element under the Policy has been established.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) 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; or

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

(iv) 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”.

The Complainant’s case is that the Respondent knew of the Complainant’s trademark and registered the disputed domain names with a view to selling them to the Complainant. The Respondent notably does not deny knowledge of the Complainant or its trademark however indicates variously that the disputed domain names may have been registered to take advantage of the generic value of the words contained therein or for the Respondent’s project, currently on hold, whereby the disputed domain names may be read as “Pa’ Nino Giusto”. The Respondent also asserts that there can be no bad faith in the event of non-use of the disputed domain names.

The Complainant’s case strikes the Panel as more probable than that of the Respondent. In the first place, it is clear that the Respondent’s representative is fluent in the Italian language and it is not therefore unreasonable to infer that the Respondent might have been familiar with a well-known Italian restaurant brand. It is notable that the Respondent does not take issue with the Complainant’s assertion that its mark is well-known. Furthermore, the Respondent does not deny knowledge of that mark or of the Complainant as at the date when the disputed domain names were registered.

Secondly, the Respondent fails to address the Complainant’s case that if, as the Respondent states, it registered the disputed domain names for their value as generic Italian words then the Respondent as a sophisticated entity involved in the domain name business should be expected to take additional care to avoid registering names that are identical or confusingly similar to marks held by others. It is clear to the Panel that the Respondent might reasonably have been expected to at least carry out a search for the term PANINO GIUSTO at the date of registration of the disputed domain names in the trademark register for the territory in which it was based. Had it done so, the Respondent would have identified the Complainant’s then in-force USA registered trademark and would in this way have been alerted to the Complainant and its activities.

The Respondent argues that the Complainant’s USA trademark should not be taken into consideration by the Panel as it is no longer in force however in the Panel’s view that submission is misconceived. Whether a complainant’s trademark is in force or not may be relevant to paragraph 4(a)(i) of the Policy in that if a complainant who relies exclusively on a particular registered trademark to establish its rights under that paragraph in fact possesses no such rights, because the trademark is no longer in force, then its case will fail. However, in the present case the Complainant does not seek to rely on the USA trademark at all for the purposes of paragraph 4(a)(i) of the Policy and instead refers in that context to its registered European Community trademark, which is still in force and which was registered prior to the registration of the disputed domain names. By contrast, the Complainant does rely upon the USA trademark for the purposes of paragraph 4(a)(iii) of the Policy in order to provide support for its proposition that the Respondent may reasonably be expected to have known of, and thus is likely to have been targeting, the Complainant at the point of registration. In the Panel’s view, the fact that this mark is now no longer registered has no effect upon the merits of such a proposition.

The Respondent’s case in answer that it had good faith plans for the use of the disputed domain names and was not targeting the Complainant is in the Panel’s opinion tainted by the evident inconsistency in its account as outlined in the preceding section, namely the juxtaposition of the Respondent’s “Pa’ Nino Giusto” submission with its explanation of the alleged generic value of the Italian words, “panino” and “giusto”. These two reasons for the Respondent’s registration of the disputed domain names do not sit well together. Furthermore, the latter explanation is also tainted by the fact that the combination of the words “panino” and “giusto” seems to the Panel to denote the Complainant’s trademark and not a common generic phrase. The Panel therefore considers that the Respondent has failed to provide a coherent, consistent or credible response to the Complainant’s case on bad faith.

While the Respondent argues that there can be no bad faith where there is non-use of the disputed domain names, cases under the Policy have long recognized that “passive holding” of a domain name can in certain circumstances constitute bad faith; see for example Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the present case however the Panel considers that the disputed domain names are not truly passively held. The Respondent’s clear statement that each of the disputed domain names is for sale remains within a meta tag and, more overtly, in the title of the web page to which each disputed domain name was pointed even though there is no other content displayed. This in the Panel’s view demonstrates an active use of a kind which is not found in Telstra or similar “passive holding” cases.

In all of these circumstances, the Panel considers on the balance of probabilities that the Respondent registered the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring them to the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs.

The Panel notes that both of the Parties are somewhat exercised in their pleadings regarding the exchange of correspondence between them. For its part, the Complainant asserts that the emails between its representative and that of the Respondent demonstrate the Respondent’s intention to sell the disputed domain names. In reply, the Respondent states that the correspondence was entered into in bad faith on the part of the Complainant or its representative as the latter did not disclose the Complainant’s interest despite an appropriate request having been made. The Panel does not set any store by either party’s submissions on this point. It is clear to the Panel that the disputed domain names were being offered for sale by the Respondent irrespective of the exchange of email. This is evidenced by the title of the associated websites and indeed is expressly admitted by the Respondent. As far as the Respondent’s submissions are concerned, it is true that admissibility of negotiations may turn on whether a complainant initiated these and on whether the complainant itself may have solicited any offer to sell (WIPO Overview 2.0 paragraph 3.6) however in the present case a general offer of sale was on the Respondent’s websites and the Panel is of the opinion that the content of the email exchange is of neutral effect upon each party’s case.

The Panel finds that the disputed domain names have been registered and are being used in bad faith and accordingly that the third element under the Policy has been established.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <paninogiusto.com> and <paninogiusto.net> be transferred to the Complainant.

Andrew D. S. Lothian
Sole Panelist
Dated: May 4, 2012

 

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