WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F.lli De Cecco S.p.A. v. Xiamen Privacy Protection Service Co. Ltd. / CAIHEQIONG, AGRINOON (FUJIAN) ECOLOGICAL AGRICULTURE CO.,LTD. / Cai Heqiong
Case No. D2016-1273
1. The Parties
The Complainant is F.lli De Cecco S.p.A. of Naples, Italy, represented by FIAMMENGHI-FIAMMENGHI, Italy.
The Respondent is Xiamen Privacy Protection Service Co. Ltd. of Xiamen, China / CAIHEQIONG, AGRINOON (FUJIAN) ECOLOGICAL AGRICULTURE CO., LTD. of Xiamen, China / Cai Heqiong of Xiamen, China, represented by Muscovitch Law P.C., Canada.
2. The Domain Name and Registrar
The disputed domain name <dececco.com> is registered with eName Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2016. On June 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 24, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 27, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center transmitted by email to the Parties a request for comment on the language of proceedings. The Complainant filed an amended Complaint which included a request for English to be the language of proceedings on June 28, 2016. The Respondent submitted by email a request for Chinese to be the language of proceedings on July 1, 2016 and July 2, 2016.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2016. The Response was filed with the Center July 23, 2016. The Respondent withdrew the request for Chinese to be the language of proceedings in the Response and requested that English be the language of proceedings.
The Center appointed Warwick A. Rothnie, Nicoletta Colombo and The Hon Neil Brown Q.C. as panelists in this matter on August 19, 2016.
Shortly after the Panel was appointed and the case file provided to the panelists, it became necessary for one of the panelists to recuse themselves from further participation. Accordingly, the Center appointed Assen Alexiev as the third panelist. The Panel finds that it was properly constituted. Each member of 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 August 23, 2016, the Complainant filed what purported to be a supplemental filing. Later that same day, the Respondent filed a rebutting supplemental filing objecting to the admissibility of the Complainant’s filing.
4. Factual Background
The Complainant was founded in 1886 in Italy and is a producer of pasta; it claims to be one of the largest producers of pasta in the world. It also produces olive oil, prepared sauces and what it describes as tomato derivatives bakery. It says it is active in over 120 different countries around the world and has revenues of Euros 220 million of which, it says, one third is derived from the export market.
It would appear that its main channel for online operations is conducted from a website at “www.dececco.it”.
The Complainant provides evidence of a number of trademarks which include as a prominent verbal element “DECECCO”, often accompanied by figurative elements. A number of these trademarks are registered in China in goods classes relevant to pasta and the other products identified above.
The disputed domain name was originally registered in the 1990s by, as it turns out, the Complainant’s distributor for the United States of America (“USA”). In about 2001, the website to which the disputed domain name resolved became inactive.
In the course of 2003, the US company assigned to the Complainant the trademark for DECECCO which that US company had registered in the USA. Further, by October 11, 2004, the registration of the disputed domain name had been transferred to the Complainant. The disputed domain name remained inactive. By February 22, 2013, the Complainant allowed the registration of the disputed domain name to lapse.
The Complainant did not disclose any of this information in the Complaint. It plainly should have been disclosed.
On or about May 15, 2013, the Respondent acquired the right to register the disputed domain name at a public auction conducted by Namejet. The disputed domain name has remained inactive since that date.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Preliminary matters
Before addressing the substantive requirements under the Policy, the Panel deals with the Complainant’s request to file a supplemental filing.
Apart from documents requested by the Panel, pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case.
Where unsolicited supplemental filings are admitted, it is usually because the material corrects some error or addresses something raised in a response which could not reasonably have been anticipated or which was not otherwise appropriate to deal with until a respondent’s position on a particular point was clear.
The Panel agrees with the Respondent that the Complainant’s supplemental filing does not fall in this category. At best, it makes explicit some points which were clearly implicit in the Complaint as filed. In these circumstances, therefore, the Panel does not propose to admit either supplemental filing into the record in this proceeding.
Initially, the Respondent objected to the proceeding being conducted in English, the language nominated by the Complainant. The Respondent is located in China and Chinese is the language of the registration agreement which, as the Respondent points out, is the default language of the proceeding under paragraph 11 of the Rules unless the parties agree otherwise or the Panel rules to the contrary.
In the Response, however, the Respondent has withdrawn that objection; it says because it was confronted by the fait accompli of the Center proceeding in English.
The Center did not rule, however, that English was the proper language of the proceeding; leaving that decision, as it was required to do under the Rules, to the Panel.
The Panel considers that English is an appropriate language for the proceeding. First, it notes that the Complainant is located in Italy and English is not the first language of it or its authorised representatives. Secondly, the Respondent organisation identified as the registrant organisation in the Registrar’s WhoIs report operates a website in English. Thirdly, the Respondent is represented in this proceeding by Canadian lawyers who are plainly fluent in English. Finally, as noted above, the Respondent has withdrawn its initial objection. In the Panel’s view, the decision to withdraw that objection was entirely proper in the circumstances.
The third preliminary matter is the identity of the Respondent. The Complaint was initially filed identifying the Respondent as a Privacy Service. The Registrar, however, identified the registrant using the Privacy Service as a named individual, Cai Heqiong, and a registrant organisation, Agrinoon (Fujian) Ecological Agriculture Co. Ltd (“Agrinoon”).
The Response claims this registration is wrong. It has submitted a WhoIs report showing only the named individual as the registrant. The Response further discloses that the named registrant organisation, Agrinoon, is in fact the employer of Cai Heqiong.
The Response does not expose how the WhoIs details provided by the Registrar in response to the verification request from the Center includes Agrinoon as the registrant organisation. The natural inference is that the person who registered the disputed domain name following the public auction by Namejet nominated Agrinoon as the registrant organisation.
The Response also does not expose how the WhoIs details it has submitted come to show different details to those provided by the Registrar in response to the official verification request.
In the absence of a full and convincing explanation of these matters, the Panel considers it is appropriate to proceed on the basis of the information provided by the Registrar. In the Panel’s experience, the practice is to treat the registrant as the registrant organisation where a registrant organisation is identified in the WhoIs details. The Panel proceeds on that basis.
B. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of a number of registered trademarks which include DECECCO as the prominent verbal element. As noted above, some of these registrations extend to China.
The Respondent quite properly accepts that the disputed domain name is confusingly similar to the Complainant’s trademark.
Accordingly, the Panel finds that the Complainant has established the requirement under the first limb of the Policy is satisfied.
C. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
It is not in dispute between the parties that the Respondent is not authorised by the Complainant to use the disputed domain name or in any way affiliated with the Complainant. Nor is it in dispute between the parties that the disputed domain name is not derived from the Respondent’s name or any name by which the Respondent (whether the individual or the registrant organisation identified in the WhoIs record) is known. Also, as the Panel has identified in section 5B above, the Complainant has trademarks registered, including in China where the Respondent is located, the primary distinguishing verbal element of which is “DECECCO”.
In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
In broad outline, the Respondent mounts three arguments to rebut that case. First, the Respondent says that until the Respondent saw the disputed domain name listed for auction by Namejet, the Respondent had never heard of the Complainant or its trademark. Rather, the Respondent’s researches identified that DECECCO is a surname and there are a number of businesses other than the Complainant which are known by that name. Thus, the Respondent says, the disputed domain name was registered for its significance as a common surname. The Respondent then points to the fact that the Complainant was the registrant of the disputed domain name and let it lapse. The Respondent points to decisions under the Policy in which the Panel has been prepared to hold that such conduct in effect constituted abandonment of the domain name and acceptance that anyone else could register and use it free of trademark claims. The Respondent cites in particular Corbis Corporation v. Zest, NAF Claim No. 98441 and CB Publishing, LLC v. Akway International Ltd c/o Hostmaster, NAF Claim No. 926506.
In this connection, the Respondent points out that the Complainant has not provided any evidence of sales under its trademark in China and does not list on its website any office or other establishment in China among the countries it identifies as having operations in. In addition, the Respondent claims that China has its own well established noodle brands and so it is unlikely that there would be much, if any, demand for the Complainant’s products in China.
While the Respondent may not have heard of the Complainant before the name was listed by Namejet, it is clear from the Response that the Respondent identified that the Complainant had held the disputed domain name before the registration lapsed. The Panel considers therefore that the evidence shows the Respondent was well aware of the Complainant and its trademark when the Respondent registered the disputed domain name.
With all due respect to the panels cited by the Respondent, the Panel is unable to concur in the proposition that allowing a domain name to lapse is a signal that any trademark claim to the domain name has been abandoned and anyone may register and use it for any purpose. Allowing a domain name registration to lapse may or may not be a deliberate action. Even a deliberate choice to allow a domain name to lapse, however, does not by itself constitute abandonment of any trademark claim over its use. By itself, all it indicates is that the former registrant no longer wishes to retain the domain name in question. There can be many reasons for that. For example, as in this case, the former registrant may have another domain name which it prefers to use. In an environment where there is almost an infinite number of potentially confusingly similar domain names that are available to be registered for any given trademark, a rule of the kind advanced by the Respondent could impose an intolerable burden on trademark owners. It also ignores that domain name registrations and use are subject to domestic trademark laws and, as in this case, the requirements of the Policy.
The Panel accepts that it can be a right or legitimate interest to register a domain name to exploit it for its general significance as a surname or descriptive term. Typically, however, such a claim requires actual use or demonstrable preparations to use the domain name in question for that purpose. An example of this approach is the case S.C. Altom Consulting S.R.L. v. Domain Administrator, PortMedia and Moniker Privacy Services WIPO Case No. D2012-1326, on which one of the present panelists served as Presiding Panelist. After referring to paragraph 2.2 of the WIPO Overview 2.0, the panel said:
“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 to trade off third-party rights in the name.”
The panel went on to point out that use of the domain name in connection with pay per click advertising which did not target the goodwill of the complainant could be legitimate. In that case, however, the complainant did not hold relevant registered trademarks and had not provided evidence of accumulated goodwill. Further, the respondent had registered the domain name in question six years before the complainant in that case had been incorporated. Thus, the respondent could not have had the complainant in mind when registering the domain name. That is a very different situation to the present case.
The Respondent also points to its registration of seven other domain names which it says it registered for the significance as surnames to demonstrate bona fides. The Respondent says that these registrations were made before and after the Respondent registered the disputed domain name.
The Panel is unable to tell from the details submitted when the Respondent registered these other domain names. The WhoIs details do show creation dates going as far back as the 1990s. That is also true of the disputed domain name, although the Respondent did not become the registrant until 2013. In addition, the WhoIs details submitted show the individual Respondent as the registrant of each domain name. As discussed above, however, the Respondent has provided the same details for the disputed domain name inconsistently with the information provided by the Registrar in its verification response. It is not clear from the materials submitted when the domain names in question were actually registered in the name of the individual Respondent. Finally, the Panel notes that each of these other domain names is also inactive.
In these circumstances, the Panel does not consider that the Respondent has provided sufficient evidence to rebut the prima facie case established by the Complainant.
D. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
As noted in section 5C above, it is clear that the Respondent registered the disputed domain name with knowledge of the Complainant and its trademark. The Panel also cannot overlook the fact that the registrant organisation, Agrinoon, is a company which operates in the field of agricultural products. Its website does say its main activities are in the production, sale and export of mushrooms and organic vegetables. That does not appear to be directly competitive with the Complainant’s fields of activity.
However, the Panel considers that the facts here support a finding that the Respondent, having recognised that the disputed domain name was the same as the distinctive verbal element of the Complainant’s trademark, opportunistically registered it. It does not seem very likely to the Panel that an agricultural business, or a person engaged in an agricultural business, in China would register a domain name for its significance as an Italian surname. Rather, it is much more likely that the Respondent recognised the trademark significance of the disputed domain name and registered it to take advantage of that in some way. While the Panel does not consider the present case is on all fours with Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003, that case is relevant in the present context as it demonstrates that a passive holding of a domain name which has been registered for its significance as someone else’s trademark constitutes use in bad faith under the Policy.
Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
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 <dececco.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: September 6, 2016