WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Parmalat S.p.A. v. RVA Network Solutions Inc.

Case No. D2003-0412

 

1. The Parties

The Complainant is Parmalat S.p.A., of Collecchio, Italy, represented by Società Italiana Brevetti of Italy.

The Respondent is RVA Network Solutions Inc., of Hialeah, Florida, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <aquaparmalatusa.com> is registered with Go Daddy Software (the "domain name").

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 28, 2003. On the same date, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On May 28, 2003, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 10, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on July 3, 2003.

The Center appointed Geert Glas as the sole panelist in this matter on July 9, 2003. 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

Complainant states and evidences that it is the owner of registrations and applications for the trademark AQUA PARMALAT in various countries. More specifically, Complainant owns the following trademark registrations:

- The Italian semi-figurative trademark No. 829814, filed on August 1, 2000, and registered on December 5, 2000, for water.

- The International semi-figurative trademark No. 750868, registered on December 12, 2000, for water, covering the following countries: China, Russian Federation, Hungary, Romania, Australia and Singapore.

- The Australian semi-figurative trademark No. 845360 filed on August 7, 2000, and registered on August 3, 2001, for water.

- The U.S. trademark application No. 76488667 filed on February 7, 2003, for goods comprised in class 32, including water.

Complainant also states and evidences that it is the owner of the trademark PARMALAT in various countries. More specifically, Complainant owns among others, the following trademark registrations:

- The U.S. semi-figurative trademark No. 73182587, filed on August 18, 1978, and registered on November 18, 1980, renewed on January 3, 2002, for goods comprised in classes 29, 30 and 32.

- The U.S. semi-figurative trademark No. 76264654 filed on May 31, 2001, and registered on February 11, 2003, for goods comprised in classes 5, 29, 30 and 32. Noteworthy is also the date of first use in commerce: February 11, 1982.

- The Community trademark No. 244319, registered on July 12, 1999, for goods comprised in classes 5, 29, 30 and 32.

- The International trademark No. R 378105, registered on May 6, 1971, and renewed on May 6, 1991, for goods comprised in classes 5, 29, 30 and 32, covering numerous countries.

Complainant states that the trademark PARMALAT is also the subject of several national registrations in Asia, Africa, Oceania and South America.

According to a copy of Complainantís financial statements of 2001, Complainant is a leading Italian company in the food market. Complainant operates in more than 30 countries and Complainantís group has a combined workforce of more than 36,350 employees. In 2001, its worldwide turnover was in excess of 7,8 billion Euro. Complainant has many subsidiaries and factories in several countries, many of which include the word "Parmalat" in their company name. Complainant states that it uses the trademark PARMALAT worldwide to distinguish milk, milk products, bakery products, water and other non-alcoholic drinks, fruit and vegetable juices, tomato sauces.

Complainant also uses the trademark AQUA PARMALAT to distinguish its mineral water.

The domain name resolves to a simple web page, which states:

"Website under Construction Please Contact us at: info@aquaparmalatusa.com."

It does not appear from the documents on file that the parties exchanged any correspondence before the initiation of the present procedure.

 

5. Partiesí Contentions

A. Complainant

Complainant contends that the component "aquaparmalat" of the domain name <aquaparmalatusa.com> is identical to Complainantís trademark AQUA PARMALAT, since the suffix "usa" indicates that this is a website promoting the water named AQUA PARMALAT in the U.S.A. Complainant furthermore states that Respondent has no legitimate interest in respect of the domain name and that the domain name has been registered and is used in bad faith.

Consequently, Complainant requires the cancellation of the domain name registration.

B. Respondent

The Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles the Administrative Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Applied to this case, Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(1) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has right; and
(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The domain name is <aquaparmalatusa.com>.

AQUA PARMALAT is a registered trademark of the Complainant.

The domain name consequently consists of the trademark of the Complainant to which the acronym "usa" is added. This acronym "usa" does not at all distinguish the domain name from the trademark of the Complainant, but rather indicates that the website relates to the United States.

In view of the above, the Administrative Panel finds that the domain name is confusingly similar to the trademark AQUA PARMALAT of the Complainant.

B. Rights or Legitimate Interests

Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating any such mark. In addition to that, there is no element on the website of Respondent that would in some way justify the use of the word AQUA PARMALAT within the domain name.

By not submitting a Response, Respondent has failed to invoke any circumstance, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the domain name.

Therefore, and in light of the arguments and the evidence brought by Complainant, the Administrative Panel finds that he has sufficiently established that Respondent has no right or legitimate interest in the domain name.

C. Registered and Used in Bad Faith

1) Complainant has evidenced that the trademark AQUA PARMALAT is currently enjoying such fame internationally, including in the United States where Respondent resides, that it cannot reasonably be argued that Respondent could have been unaware of the trademark rights vested therein when registering the domain name.

2) It is reasonable to assume that the combination aqua-parmalat-usa is not accidental. Rather, the Panel finds that this combination shows that Respondent must have had prior knowledge of Complainant and its activities.

3) The content of Respondentís website is very limited as it merely consists of the following sentence: "Website under Construction Please Contact us at: info@aquaparmalatusa.com." This poor content and the way that it is presented leads the Panel to believe that this may constitute a hidden attempt of Respondent to offer the domain name for sale to whomever may find it interesting.

4) In this case, as in the Telstra case (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), the Panel finds that the holding of the domain name by Respondent amounts to Respondent acting in bad faith. Indeed:

(i) Complainantís trademark has a strong reputation and is widely known, as evidenced by its use in the United States and in other countries;

(ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name, as Respondent has failed to submit any argument at all for its defense; and

(iii) taking the above into account, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by Respondent that would not be illegitimate.

In conclusion and in view of the above, the Administrative Panel finds that the domain name has been registered and is being used in bad faith.

 

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 domain name, <aquaparmalatusa.com>, be cancelled.

 


 

Geert Glas
Sole Panelist

Dated: July 25, 2003