WIPO Arbitration and Mediation Central

ADMINISTRATIVE PANEL DECISION

Agostani S.r.l v. MILLENIUM DI BINI D. Ditta Individuale

Case No. D2014-0969

1. The Parties

The Complainant is Agostani S.r.l of Milan, Italy, represented by Rapisardi e Ginevra Avvocati Associati, Italy.

The Respondent is Millenium Di Bini D. Ditta Individuale of Genoa, Italy, represented by Avv. Michele Bonacchi, Italy.

2. The Domain Name and Registrar

The disputed domain name <tuttocialde.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2014. On June 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 10, 2014, the Registrar 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 June 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2014. The Response was filed with the Center on July 8, 2014.

The Center appointed Anna Carabelli as the sole panelist in this matter on July 18, 2014. The Panel finds that it was properly constituted. The Panel 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 Complaint was submitted in English.

4. Factual Background

According to the documents submitted to the Panel, the Complainant was established in 2010 following the demerger of limited partnership “Agostani di Agostani Giovanni e C s.a.s.”, and has since been carrying on the business of the latter trading and selling coffee pods and related products on the website “www.tuttocialde.it”. The domain name <tuttocialde.it> was registered in February 2008 by Mr. Agostani, partner of the demerged limited partnership and Complainant’s legal representative and has since then been used by the Complainant and its predecessor-in-interest in connection with the above mentioned business.

The Complainant has provided evidence of the following trademark registrations (Annexes 8 e 9) filed in 2010 and 2013, respectively:

- WWW.TUTTOCIALDE.IT & design Italian Trademark Reg. No. 143003, Registration Date March 8, 2011;

- TUTTOCIALDE Italian Trademark Reg. No. 1585376, Registration Date March 17, 2014, for goods and services in Class 30 of the Nice Classification (covering coffee, tea, cocoa, sugar and coffee substitutes).

The Respondent is also in the business of trading and selling coffee pods, coffee machines and related products on its website “www.offertacialdecaffe.it” since 2007.

On February 15, 2009, the Respondent registered the domain name <tuttocialdecaffe.com> and started using it to redirect Internet users to its website “www.offertacialdecaffe.it” until February 2012, when following the Complainant’s cease-and-desist letter the Respondent accepted to make the webpage “www.tuttocialde.com” inactive. This was satisfactory to the Complainant and both parties dropped their reciprocal claims. The Respondent did not accept the Complainant’s offer to buy the disputed domain name for the price of EUR 5,000.

The disputed domain name is currently offered for sale by the Respondent on Sedo’s domain marketplace at the price of EUR 10,000.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- the disputed domain name is identical to the Complainant’s trademarks;

- TUTTOCIALDE is being used by the Complainant (and before by its predecessor-in-interest) as a trademark in connection with its business activity since 2010 and before the Respondent registered the disputed domain name;

- the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular: The Respondent is not known in the market as “tuttocialde” and was neither licensed nor otherwise permitted or authorized to use Complainant’s trademark; there is no evidence of the domain name being used in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. The Respondent in fact used the disputed domain name to redirect Internet users to its website “www.offertacialdecaffe.it”;

- the disputed domain name was registered in bad faith since the Respondent was clearly aware of the Complainant’s rights in the name “tuttocialde” since when the Respondent registered the disputed domain name the Complainant was the only company in the market using the name “tuttocialde”;

- the disputed domain name is being used in bad faith to divert Internet users to the Respondent’s website for commercial gain and creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement of its website, and it is currently offered for sale for valuable consideration in excess of costs directly related to the disputed domain name.

Based on the above, the Complainant requests the transfer of the disputed domain <tuttocialde.com>.

B. Respondent

The Respondent contends that:

- any matters regarding the disputed domain name were settled by the parties prior to the filing of the present UDRP claim;

- the Complainant has no trademark rights in the name “tuttocialde” since it is clearly generic and descriptive and the fact that the Complainant registered it also as a figurative mark is not relevant here.

- The Respondent also contends that the Complainant’s trademarks were registered after the disputed domain name was created by the Respondent and that the evidence submitted by the Complainant shows the use of the domain name <tuttocialde.it> but not necessarily a trademark use. In connection with the above arguments, the Respondent refers to prior UDRP Panel decisions;

- the Respondent has acquired rights and legitimate interests in respect of the disputed domain name by using it in connection with an active website. Such use made the Respondent commonly associated with the disputed domain name;

- the Complainant’s trademark did not exist when the Respondent registered the disputed domain name and therefore cannot serve as the basis for a claim under the Policy;

- when it registered the disputed domain name, the Respondent was unaware of the Complainant’s claims in the name “tuttocialde”;

- before receiving notice of the Complainant’s claims, the Respondent had been using the disputed domain name in connection with a bona fide offering of goods and services. Subsequently the Respondent agreed not to use the disputed domain name based on the arrangement reached with the Complainant.

6. Discussion and Findings

Preliminarily, the Panel notices that there is no evidence that any matters regarding the disputed domain name were settled by the parties, as claimed by the Respondent. In any case the Complaint is also based on circumstances occurring after the arrangement reached by the parties (i.e., the disputed domain name is currently offered for sale by the Respondent on Sedo’s domain marketplace), and therefore not covered by the parties’ arrangement.

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Under Paragraph 4(a) of the Policy, the complainant must prove each of the following:

(i) the domain name in issue is identical or confusingly similar to the complainant’s 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.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which if proved by respondent, shall be evidence of the respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

In accordance with paragraph 4(a) of the Policy, the first requirement concerns identity and similarity between the domain name and a trademark or service mark in which the complainant has rights.

It is undisputed and accepted practice, that paragraph 4(a)(i) does not expressly limit the application of the Policy to a registered trademark or service mark. Furthermore, the WIPO Final Report on the Internet Domain Name Process (The Management of Internet Names and Address: Intellectual Property Issues, April 1999), from which the Policy is derived, does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names.

Therefore the Policy is applicable to unregistered trademarks and service marks. (The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; see also MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205; Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset, WIPO Case No. D2002-1058).

Based on the above, the fact that in this case the Complainant did not have a registered trademark at the time the disputed domain name was created, does not preclude a finding that the Complainant has established trademark or service mark rights in the name “tuttocialde” under the Policy. Indeed, a fundamental principle of trademark law is that rights in a trademark can be acquired through use, and such rights exist even though the trademark may not be registered.

In the Panel’s view, the documents submitted by the Complainant show that the name “tuttocialde” has been used since 2008 in connection with the business conducted by the Complainant’s predecessor, which was subsequently taken over by the Complainant in 2010. The Panel therefore does not accept the Respondent’s argument that the Complainant has no trademark rights for purposes of paragraph 4(a).

As regards the generic and descriptive nature of the name “tuttocialde”, apart from the general remark that the combination of two words having an otherwise generic meaning could create a valid trademark, the Panel notices that the name “tuttocialde” is reflected in the Complainant’s registered trademarks which are entitled to a presumption of validity. On the other hand the assessment of the validity of the Complainant’s registered trademarks does not fall within the scope of these proceedings.

That being stated, there is no doubt that the disputed domain name is identical to the Complainant’s marks, as it entirely incorporates the name “tuttocialde” and the suffix “.com” has no legal significance when comparing domain names for purposes of paragraph 4(a).

Consequently, the Panel finds that the Complainant has met the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

When the Respondent registered the disputed domain name in February 2009, the Complainant had since February 2008 been operating its website “www.tuttocialde.it” for which it also has acquired trademark rights. The disputed domain name was created in 2009 and, as the evidence shows, had been used by the Respondent to redirect Internet users to its website “www.offertacialdecaffe.it” where the Respondent competes with the Complainant in the online trading and selling of coffee pods and related products. In February 2012 the Respondent accepted to make the webpage resolving to the disputed domain name inactive, following the Complainant’s cease and desist letter.

In the Panel’s view the Complainant has made a prima facie showing under paragraph 4(a)(ii), requiring the Respondent to rebut the showing and come forward with evidence under paragraph 4(c) demonstrating rights to or legitimate interests in the disputed domain name. On this point, however, the Respondent merely maintains to have used the disputed domain name in connection with an active commercial website.

A mentioned above, the evidence shows that the Respondent had used the disputed domain name to redirect Internet users to its website “www.offertacialdecaffe.it” where the Respondent competes with the Complainant. In the Panel’s view this cannot be considered a bona fide use of a domain name as per paragraph 4(c)(iii) of the Policy, (e.g., Lyonnaise de Banque v. Richard J., WIPO Case No. D2006-0142, Motorola, Inc. v. Mr. Josip Broz, WIPO Case No. D2002-1063).

For the foregoing reasons the Panel concludes that also the second condition established in paragraph 4(a) of the Policy has been met.

C. Registered and Used in Bad Faith

As established in paragraph 6.A. above, the disputed domain name is identical to the Complainant’s marks. In the Panel’s view the particular circumstances of the case suggest that it is very unlikely that the Respondent, a competitor of the Complainant, was not aware of the Complainant’s activity carried out under the mark TUTTOCIALDE.

As discussed above, given the specific fact of this case that the parties are competitors, by using the disputed domain name the Respondent has attempted to attract, for commercial gain, Internet users to its website. In addition, although it had accepted to cease using the disputed domain name, the Respondent is now offering it for sale for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name. Also the Respondent’s acceptance to make the disputed domain name inactive following the Complainant’s cease-and-desist letter seems to the Panel to be some admission that the Respondent did not believe it had rights to the disputed domain name but was infringing the Complainant’s rights.

Consequently, the Panel finds that the disputed domain name has been registered and is being used in bad faith by the Respondent.

In light of the above, the Panel concludes that also the third element under paragraph 4(a) has been established.

7. Decision

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

Anna Carabelli
Sole Panelist
Date: August 1, 2014