WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bernardelli Cesarina v. Paola Ferrario, Ferrario Photography

Case No. D2017-0091

1. The Parties

The Complainant is Bernardelli Cesarina of Mozzate, Italy, represented by Paolo Caione, Italy.

The Respondent is Paola Ferrario, Ferrario Photography of Holyoke, Massachusetts, United States of America, self-represented.

2. The Domain Name and Registrar

The disputed domain names <farmaciabernardellicaione.com>, <farmaciabernardellicaione.net> and <farmaciabernardellicaione.org> are registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 17, 2017. On January 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 19, 2017, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on January 26, 2017.

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 January 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2017.

In light of an email from the Respondent manifesting the lack of interest in the disputed domain names, the Center requested the parties if they were willing to explore settlement options, and in that case it requested the Complainant should submit a request for suspension. The Parties entered into negotiations but were not able to settle the case, so the Center proceeded to appoint the Panel.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on March 9, 2017. 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 April 6, 2017, the Panel instructed the Center to issue the Administrative Panel Procedural Order No. 1. The Complainant submitted a reply to such Panel Order on April 6, 2017. The Respondent filed a submission on April 8, 2017.

4. Factual Background

The Complainant is running a pharmacy business located in Mozzate, Italy and operating under the name "Farmacia Bernardelli Caione". The Complainant is one of the shareholders of an entity created on March 2007 whose name is Farmacia Bernardelli Caione di Dott. Ssa. Cesarina Bernardelli E.C. S.A.S.¹ The business has been active for the last ten years.

The Respondent is a Visiting Artist and professor at Smith College, United States.

The disputed domain names <farmaciabernardellicaione.com>, <farmaciabernardellicaione.net> and <farmaciabernardellicaione.org> were registered on June 15, 2015, June 15, 2015 and June 13, 2016, respectively.

At the time of filing the Complaint the disputed domain name <farmaciabernardellicaione.com> contained several posts and alleged artwork presumably made by the Respondent. The disputed domain names <farmaciabernardellicaione.net> and <farmaciabernardellicaione.org> do not resolve to an active page.

5. Parties' Contentions

A. Complainant

The Complainant states the following:

- the disputed domain names make clear reference to the Complainant's company;

- the Respondent is related to the Complainant by a family relationship;

- the Respondent registered without authorization the disputed domain names containing the name of the Complainant's family business;

- the Respondent has never been part of the Complainant's company;

- the Complainant contacted the Respondent in order to avoid publication of unauthorized content in the disputed domain names;

- the Respondent requested the Complainant to pay EUR 20,000 for each of the disputed domain names;

- the Complainant submitted locally a complaint against the Respondent and the Italian domain name (under the country-code Top-Level Domain ".it") has been blocked;

- the Respondent has published content in the disputed domain names that is offensive to the Complainant's company;

- the Complainant has been operating under the name Bernardelli Caione for nearly ten years since May 2007;

- the Complainant does not have any trademark registered in Italy;

- the names Bernardelli and Caione are associated in the territory to the Complainant's business;

- the Respondent did not ask for authorization to register the disputed domain names containing the name of the Complainant's business (Caione and Bernardelli);

- the Respondent cannot use the Complainant's name to advertise her ideology;

- the Respondent is using the disputed domain names to publish issues related to politics in Italy and cartoons with clear political references.

The Complainant attached a copy of a criminal complaint filed in Italy in the original filing and also a copy of the certificate of incorporation in the Amended Complaint.

The Complainant requests the transfer of the three disputed domain names.

B. Respondent

The Respondent sent several communications to the Center and finally on February 21, 2017 filed an answer to the Complaint.

On February 16, 2017, the Respondent sent an email to the Center stating "To whom it may concern, At this moment I do not wish to retain possession of this domains. I had offered to sell the domains to Ms. Bernardelli for a small fee but she preferred to go through elaborate legal proceeding through you."

After settlement negotiations failed, the process was reinstated and the Respondent stated that the Complainant "has refused to make a reasonable offer to be carried out in realistic time and with due protocol". She added that it was in her best interest to keep the disputed domains and the "site".

The Respondent requested the Complaint to be dismissed on the basis that most of the facts stated in it are false and that that the Complainant was incapable of interpreting the site due to the Complainant's lack of knowledge of contemporary art practices. The Respondent also included a letter with her justification for the request and a copy of her curriculum vitae to clarify her identity and status in academia and in the world of art.

The Respondent explained that releasing the disputed domains names to the Complainant would require the Respondent to "move her digital artwork to a different domain, and this requires time and labor". The Respondent also states that "the site has started to generate a satisfactory number of followers, starting over would require much social media work to redirect my audience". The Respondent stated that "a total compensation of 30 Euro for my three domains and my site is not worth my effort".

The Respondent's view is that the disputed domain names do "not break any intellectual, property or domain laws". According to the Respondent, the disputed "domain name Farmaciabernardellicaione.com is a work of art, which lives and evolves on line. It is inspired by my family relations and by the Italian provincial right-wing middle class. This particular piece finds its tradition in many art currents from the Italian Arte Povera movement to postmodernism (artists like Richard Prints) or to contemporary web practices (artists like Penelope Umbrico and Luke Dubois and Martin Creed)".

The Respondent states that the disputed domain names in no way try to simulate being the site of the business Farmacia Bernardelli Caione S.A.S. in Mozzate, Italy. In addition, the Respondent states that the site does not use photographs of the actual Farmacia Caione Bernardelli, its employees or shareholders, nor does it use or try to falsify any logos belonging to Farmacia Bernardelli Caione S.A.S.

C. Panel Order and its responses

On April 6, 2017, the Panel issued the following procedural order: "The Panel requests the Complainant to submit evidence that its company name has become an identifier associated with the Complainant's business. Such evidence may include, for example, copies of brochures, invoices, letterhead, stationery, photos of the store's signboard or names of the store used in the street, location of the store, if there are any other stores in the city of Mozzate. The Complainant may file any document that proves that the name is being used in commerce. The Complainant may also state the length of use of its name for the business and clarify it they have their own website. The Complainant has seven (7) calendar days from the date of this Administrative Panel Order to provide the requested evidence. The Respondent is afforded seven (7) calendar days after receipt by the Center of the Complainant's comments, to respond thereto. All communications from the Parties are to be exclusively with the Center. The Panel informs the Parties that the due date to submit the Decision to the Center is extended to April 19, 2017".

The same day, in response to the procedural order, the Complainant made a filing in which he attached some documents, including the following: (i) the "visura": a formal document which the Complainant stated it was "recording the presence of pharmacy in the territory for over 10 years. Farmacia Bernardelli it is the only pharmacy on the whole territory of Mozzate"; (ii) photographs of the pharmacy; (iii) display of the pharmacy from Google Maps obtained by searching for "pharmacy bernardelli caione" (name identical to that used by the domain of Mrs. Paola Ferrario); (iv) a review on Google of the pharmacy; and (v) advertising of his business.

In its supplemental filing the Complainant stated the following: "We are currently not in possession of a website because when we tried to buy the domain to be able to achieve with our name (Farmacia Bernardelli Caione) we noticed with surprise that Mrs. Paola Ferrario was publishing the content for which we also filed a complaint to the Italian authorities. Create a website now would lead people to search online 'pharmacy bernardeli caione.it' and we would like to avoid giving additional visibility to the website of Mrs. Paola Ferrario where [s]he continues to publish content from which we distance ourselves".

On April 8, 2017, the Respondent sent the following comments: "Just for clarification, I am stating that none of the images that have been sent by Mr. Caione ever appeared on my website nor have been printed by me. I believe that the Complainant might have misunderstood your panelist's request and just sent images of their business. As I stated my site is an autobiographical art project with no intention to mislead consumers. Sincerely, Paola Ferrario".

On April 10, 2017, the Complainant filed an unsolicited filing in reply to the Respondent's filing. This filing will not be taken into account by the Panel since it was unsolicited.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable provider, in compliance with the Rules, that:

"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith."

The Complainant has also the burden of providing evidence of all of these requirements.

A. Identical or Confusingly Similar

The Complainant has no registered trademark rights in Italy, so the first issue is to determine whether or not he has unregistered trademark rights or their equivalent for the purpose of the UDRP.

The consensus view provides that "[...] a conclusory allegation of [...] unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required [...]. Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence [...]." (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, section 1.7, hereinafter "WIPO Overview 2.0").

There is no question that the disputed domain names (absent the generic domain suffixes ".com", ".org" and "net") are identical to the name in respect of which the Complainant claims to have unregistered trademark rights. The issue is as to whether or not the Complainant has demonstrated the existence of those rights.

The Complainant has stated that:

- he has been operating under the name Bernardelli Caione for nearly ten years since May 2007;

- the names Bernardelli and Caione are associated in the territory to the Complainant's business.

In his filing in response to the Procedural Order, the Complainant stated that the incorporation document was "recording the presence of pharmacy in the territory for over 10 years". The Complainant added that Farmacia Bernardelli is the only pharmacy in the whole territory of Mozzate, Italy.

In response to the Panel Order, the Complainant submitted the following evidence:

- certificate of incorporation ("visura") of the company in which the Complainant is one of its shareholders.

- photos of the pharmacy and of a sign mentioning the name of the pharmacy;

- display of the pharmacy from Google Maps obtained by searching for "pharmacy bernardelli caione";

- review in Google of the pharmacy;

- a mention of the business in Google;

- advertising of the pharmacy containing the name Bernardelli Caione.

The Complainant has put only limited evidence before the Panel in this regard. However, the Panel conducted a Google search of the name "Bernardelli Caione". The Panel was able to verify that all the references on the first page of results are references to the Complainant's business. It is clear to the Panel that that name is only known as the name of the Complaint's pharmacy in the town of Mozzate, Italy.

The Panel also notes that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on the complainant to present the panel with extensive supporting evidence. In this case the Panel notes that the Respondent's website features a disclaimer with respect to the business stating: "Farmacia Bernardelli Caione in Via F.lli Rosselli, 6 Mozzate, CO 22076, Italy is not responsible for the content of this site nor it is associated with it". The Panel considers that this is also evidence taken into account of the recognition of the Complainant's trademark rights by the Respondent.

The Panel is of the view that in a civil law jurisdiction such as Italy, and under the specific circumstances of the present case, the Complainant could achieve protection of its unregistered trademark by way of the recognition afforded to these unregistered rights known as "marchio di fatto" under Italian law² or by an unfair competition action³ , provided of course that it could prove a reputation and goodwill in respect of the name, the deceptive activity of the Respondent and the likelihood of damage.

Therefore, given that the Complainant has provided evidence as to the extent that he has been using the trademark BERNARDELLI CAIONE in association with his business for a number of years prior to the disputed domain names being registered, the Panel is of the opinion that the Complainant has provided adequate grounds for a finding that he holds unregistered rights in the trademark FARMACIA BERNARDELI CAIONE.

The other aspect of Policy, paragraph 4(a)(i) that the Complainant must establish is that the disputed domain names are identical or confusingly similar to his trademark. The three disputed domain names contain the Complainant's trademark in its entirety. Thus, the Panel concludes that the similarity of the disputed domain names to the mark could hardly be more confusing.

The first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name. The content of a website (whether it is similar to or different from the business of a trademark holder) would usually be disregarded in the threshold assessment of confusing similarity under the first element of the UDRP (WIPO Overview 2.0, paragraph 1.2.).

Accordingly, the Panel rules that the Complainant has satisfied his burden in proving that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists certain circumstances in which a respondent may have rights or legitimate interests in a domain name. 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. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is, or is 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 the burden of production will shift to the respondent to rebut that prima facie case. See, paragraph 2.1 of the WIPO Overview 2.0.

From the available record, the Respondent does not appear to hold any trademark rights for the disputed domain names.

The Complainant has not authorized the Respondent to use the disputed domain names and the Respondent is not affiliated with the Complainant. The Parties appear to have a family relationship, but the Complainant stated expressly that the Respondent is not part of the pharmacy business, which submission the Respondent has not rebutted.

The Complainant has not licensed the Respondent to use his trademark in the disputed domain names.

Finally, the disputed domain names are plainly not derived from the Respondent's name, i.e., the Respondent is not commonly known by the disputed domain names. The Panel notes that the three disputed domain names contain the term "farmacia" (which means pharmacy in Italian language) and the addition of the names of the two shareholders of the pharmacy business located in the town of Mozzate, Italy. This is identical to the Complainant's unregistered trademark rights. However, the Respondent seems not to be related to any pharmacy business. To the contrary, the Respondent is a graduate of the Yale School of Art, a Guggenheim fellow and holds a position as Visiting Artist at Smith College (located in the United States), where she teaches photography and digital media.

The Respondent is using one of the disputed domain names to post content about the Complainant and his business partner in the pharmacy business. The content of one of the disputed domain names included mentions of the Complainant's alleged ideology, political opinions, and other references that are clearly a commercial disparagement of the Complainant's business. This has been verified by the Panel who has visited the websites at the disputed domain names several times during this controversy. Disparaging the Complainant or his business cannot constitute rights or legitimate interests in the disputed domain names.

The Respondent's work posted in one of the disputed domain names consist of digital files but the Respondent also has an existing website located at "www.ferrariointernationalprinting.com" where she is already publishing her artwork, including artwork related to the disputed domain names.

In these circumstances, the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. Accordingly, the burden of production on the second element shifts to the Respondent, who has not come forward with substantive evidence of her rights or legitimate interests in the disputed domain names. The Panel finds that the commercial disparagement of the Complainant's business is not legitimate use of the three disputed domain names, consisting of the Complainant's trade name and unregistered trademark. Furthermore, in light of the Panel's findings under the below section regarding bad faith, the Panel finds the Respondent's arguments that she is using the disputed domain names for displaying her artwork, i.e., arguably for a non-commercial good faith use, unpersuasive and such arguments rather appear to have been made in order to frustrate these Policy proceedings.

The Panel therefore finds that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

In order to succeed under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain names were both registered by the Respondent in bad faith and have been used in bad faith.

A non-exclusive list of circumstances constituting evidence of bad faith for the purposes of paragraph 4(a)(iii) are set out in paragraph 4(b) of the Policy. They are as follows:

"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purposes 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 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 website 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 website or location or of a product or service on your website or location."

The Complaint does not specify the particular sub-paragraphs of paragraph 4(b) of the Policy upon which the Complainant relies. Key to the question of bad faith is whether, at the time of registration of the disputed domain names, the Respondent targeted the Complainant and sought to abusively take advantage of the Complainant's goodwill to his trademark.

The Panel is of the view that the Respondent was aware of the Complainant's existence when she registered the disputed domain names. First, the disputed domain names contain the three terms that form the Complainant's trademark, that is "Farmacia", "Bernardelli" and "Caione". There is no other meaning for these three terms together but to identify the business of the Complainant located in Mozzate, Italy. Furthermore, the Complainant mentioned a family relationship with the Respondent, a fact not denied by the Respondent, which also serves as indicia of the Respondent being fully aware of the Complainant and his business at the time of registration of the disputed domain names.

The only disputed domain name in use, <farmaciabernardellicaione.com>, contains a disclaimer that states both in English and Italian languages: "Farmacia Bernardelli Caione in Via F.lli Rosselli, 6 Mozzate, CO 22076, Italy non e' responsabile per i contenuti di questo sito ne ne e' associata Farmacia Bernardelli Caione in Via F.lli Rosselli, 6 Mozzate, CO 22076, Italy is not responsible for the content of this site nor it is associated with it".

The Panel notes that the existence of a disclaimer cannot by itself cure bad faith, when bad faith has been established by other factors (WIPO Overview 2.0, paragraph 3.5.).

With respect to use of the disputed domain names, the Panel makes the following findings.

The Panel is of the view that there is in this case a pattern of conduct preventing the Complainant from reflecting the mark in a corresponding domain name. The consensus view of UDRP panels states the following: "A pattern of conduct can involve multiple UDRP cases with similar fact situations or a single case where the respondent has registered multiple domain names which are similar to trademarks. However the registration of two domain names in the same case is not generally sufficient to show a pattern, nor is a single prior example of apparent bad faith domain name registration. Although panels will generally look to the specific circumstances, a pattern normally requires more than one relevant example" (WIPO Overview 2.0, paragraph 3.3).

The Panel also verified the WhoIs database for the ccTLD for Italy ("web-whois.nic.it") and was able to verify that the domain name <farmaciabernardellicaione.it> was also registered by the Respondent on June 17, 2015 (two days after registration of the disputed domain names in this case). This local domain name does not resolve to any website, and its status is displayed as "challenged" in the WhoIs database (probably due to the complaint filed by the Complainant with the local ccTLD Registry as argued in the original Complaint). This domain name is not part of this UDRP proceeding but, in the view of the Panel, its registration, together with the three disputed domain names, clearly shows that the Respondent has engaged in a pattern of conduct of preventing the Complainant from reflecting his trademark in a corresponding domain name.

In addition, there is evidence indicating that the Respondent offered to sell the disputed domain names "for valuable consideration in excess of [...] documented out-of-pocket costs directly to the domain name".

In this case, the Respondent sent an email to the Complainant's representative on October 25, 2016 confirming to be the owner of the domain name <farmaciabernardellicaione.it>, as well as of the disputed domain names <farmaciabernardellicaione.com>, <farmaciabernardellicaione.net> and <farmaciabernardellicaione.org> and stating that if Paolo (Caione) was interested in the disputed domain names, they were for sale at EUR 20,000 each. The first answer by the Respondent to the Center on February 16, 2017 stated "At this moment I do not wish to retain possession of this domains. I had offered to sell the domains to Ms. Bernardelli for a small fee but she preferred to go through elaborate legal proceeding through you". Then, the Respondent stated that it was only a joke. Finally, in the answer to the Complaint, the Respondent stated that "a total compensation of 30 Euro for my three domains and my site is not worth my effort".

Evidence of offers to sell the disputed domain names are generally admissible under the UDRP, and those offers are often used to show bad faith. This is so both in relation to offers by a respondent to sell made prior to a complainant's filing of a UDRP complaint, or after such filing (WIPO Overview 2.0, paragraph 3.6). In this case, the Panel concludes that it is more likely than not that the Respondent intended to sell the disputed domain names to the Complainant.

Finally, and as discussed under the second element above, the Panel visited the website under the disputed domain name <farmaciabernardellicaione.com> and was able to verify that it contains several references to the Complainant and its business. Clearly, the registration and use of the disputed domain names was intended to disrupt the Complainant's business by taking advantage of the fact that Internet users seeking the Complainant's site are likely to go to the address of the disputed domain names. The Respondent's primary purpose appears to be harassing the Complainant, diverting his clients to websites that disparage and defame the Complainant, and interfering with the Complainant's business; all these factors are evidence of the Respondent's bad faith (Hunton & Williams v. American Distribution Systems, Inc. et al., WIPO Case No. D2000-0501; Compagnie Generale des Matieres Nucleaires v. Greenpeace International, WIPO Case No. D2001-0376; Sociedad General de Autores y Editores v. Realmente Cabreados con la SGAE, WIPO Case No. D2002-0953; Chung, Mong Koo and Hyundai Motor Company v. Individual, WIPO Case No. D2005-1068 and Nobre Seguradora do Brasil S.A. v. Privacy Protection Service Inc. / Luis Soldado, WIPO Case No. D2016-0775).

The Panel therefore finds that paragraph 4(a)(iii) of the Policy is satisfied.

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 <farmaciabernardellicaione.com>, <farmaciabernardellicaione.net> and <farmaciabernardellicaione.org> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: April 24, 2017

¹ The Panel notes that the Complaint has been filed by the Complainant pro se, without a legal representative. For the purposes of this administrative proceeding the Panel is prepared to accept that the individual filing the Complaint, one of the shareholders of the pharmacy business, has standing to file this Complaint for and on behalf of Farmacia Bernardelli Caione di Dott. Ssa. Cesarina Bernardelli E.C. S.A.S.

² See Adriano Vanzeti and Vincenzo Cataldo, Manuale di Dirito industriale, 5th edition, Giuffre editore, pp. 279 et. seq.; Cendon (ed.), "Il marchio di fatto", in Commentario al Codice Civile, Giuffrè Milan, 2010, pp. 284 et. seq. and Luca Pecoraro, "Il marchio di fatto" published in Bottero - Travostino, Il diritto dei marchi di impresa, Utet, 2009, pp. 173 et seq. See also article 2571 of the Italian Civil Code.

³ See Rotondi, Diritto Industriali, pp- 156-157; Mangini, Il marchio non registrato, Padova, 1964, cap. III, spec. a pp. 87 and Francisco Sciré, La concorrenza Sleale. Tomo secondo. L'atto confusorio, pp.62-67. See also article 2598 of the Italian civil code.