WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Consorzio del Prosciutto di Parma v. Matthias Gasser, Hanslmeier Fleischwarenfabrik
Case No. D2003-0474
1. The Parties
The Complainant is Consorzio del Prosciutto di Parma, Italy represented by Dr. Modiano & Associati S.p.A., Italy.
The Respondent is Matthias Gasser, Hanslmeier Fleischwarenfabrik, Germany.
2. The Domain Name and Registrar
The domain name at issue is <parma-schinken.com> (hereinafter the "Domain Name"). The registrar is CORE Internet Council of Registrars.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received a Complaint (hereinafter the "Complaint") by email on June 19, 2003, and in hardcopy on June 23, 2003. On June 20, 2003, the Center transmitted via email to CORE, a request for registrar verification in connection with this case.
On June 24, 2003, CORE transmitted by email to the Center the Verification Response, confirming that the Domain Name is registered with CORE, that 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"). The Complainant made the required payment to the Center.
On June 24, 2003, the Respondent sent a fax in the German language to the Center stating in essence that the word "Parma-Schinken" cannot be monopolized and that since 1972 Respondent is in the business of importing and reselling genuine Parma ham. On June 25, 2003, the Center notified the Respondent that all submissions must be made in English.
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 25, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2003. The Respondent did not submit any formal response within this deadline. Accordingly, the Center notified the Respondentís default on July 16, 2003.
The Center appointed Andrea Mondini as the sole Panelist in this matter on July 29, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Having reviewed the communication records in the case file, the Panel finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
In order to give Respondent an opportunity to be heard, the Panel acting on its authority determines that Respondentís fax of July 24, 2003, to the Center shall be taken into consideration, however without giving it the status of a formal Response.
4. Factual Background
The Complainant is a consortium of certified producers of Parma ham. It is the owner of registrations of the certification marks "PARMA", "PROSCIUTTO DI PARMA" and "PARMA HAM" in several countries. In 1996, Parma ham was awarded the Denomination of Protected Origin status.
The Respondent registered the Domain Name <parma-schinken.com> on February 7, 2001. "Schinken" is the German word for ham.
The Domain Name resolves to a website on which the Respondent offers a multitude of different types and brands of meat products including, among others, products advertised as Parma ham.
5. Partiesí Contentions
The Complainant contends:
• that the Domain Name is confusingly similar to the trademarks PROSCIUTTO DI PARMA and/or PARMA HAM because "Schinken" translates into "prosciutto" in Italian and "ham" in English. Complainant further asserts to have common law rights in the trademark "Parmaschinken" (without specifying under what legal system);
• that no authorizations or licenses have been granted to Respondent to use Complainantís trademarks;
• that Respondent was aware of Complainantís rights, and therefore acted in bad faith, because it placed on its website a reference to certain EU legal provisions regarding the Denomination of Protected Origin status of Parma ham and the PARMA (& crown device) trademark;
• that on May 2, 2003, Complainant sent to Respondent a cease and desist letter (Annex 22 to the Complaint) but that Respondent refused to transfer the Domain Name alleging to be authorized by an unidentified employee of the Complainant to register and use the Domain Name. Complainant denies this allegation;
• that Respondent advertises as "Parmaschinken" certain ham products, which do not appear to originate from producers allowed to sell original Parma Ham.
In its letter of June 24, 2003, to the Center, Respondent contended that the word "Parma-Schinken" is generic and cannot be monopolized and that since 1972 Respondent is in the business of importing and reselling genuine Parma ham. After this letter, Respondent did not file a formal Response.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
6.1. Domain Name Identical or Confusingly Similar
The Complainant has provided evidence of ownership of registration of certification marks for "PARMA", "PROSCIUTTO DI PARMA" and "PARMA HAM" in several countries.
"PARMA", "PROSCIUTTO DI PARMA" and "PARMA HAM" are (also) geographical identifiers. The Panel notes that the abusive registration of geographical identifiers does not per se fall within the scope of the Policy. The Report of the Second WIPO Internet Domain Name Process concluded that the international framework in this area needs to be further advanced before an adequate solution is available to the misuse of geographical indications in the DNS and recommended that no modification be made to the Policy at this stage. The fact that Parma ham was awarded the Denomination of Protected Origin status is, therefore, not relevant under the limited scope of the Policy.
Where, however, the Complainant owns a trademark that includes, as part of the mark, a geographic term, such trademark can be invoked in the sense of paragraph 4(a)(i) of the Policy (see for example City of Potsdam v. Transglobal Networx Inc., WIPO Case No. D2002-0856, <potsdam.com>).
Considering that Complainant owns the above certification marks and that "Schinken" is the literal German translation of the generic words "prosciutto" and "ham", the Panel finds that the Domain Name is confusingly similar to Complainantís certification marks.
6.2. Rights and Legitimate Interest
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) that he used or has made 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 prior to the dispute;
(b) that he is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) that he intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Domain Name resolves to a website stating that since 1972 Respondent is in the business of importing meat products and reselling them to German butcheries, food stores and wholesalers. Respondentís homepage depicts the logo "Val Verde" without indicating whether this logo is the brand for genuine Parma ham. Respondentís website advertises several types and brands of food products under the buttons "sausages" ("Wurstwaren"), "fresh poultry" (Frischgeflügel"), game ("Wild") and also vegetables and frozen products.
When clicking on the button "sausages", further buttons listing types of sausages from several countries such as France, Germany, Italy and Belgium appear. If the user further clicks on "raw salt meat" (Rohpökelware") and then "Italy", she or he reaches a list of Italian raw meat products including (among other) products advertised as Parma ham of the brands Val Verde, Levoni, Don Romeo etc.
Complainant contends that Respondent advertises as "Parmaschinken" ham products, which are not original Parma hams because they are not marked with the "crown" certification mark. However, the small photo of a ham on Respondentís website does not enable the Panelist to assess how that ham is marked. Complainant has not submitted any further evidence for this allegation, so that the Panel does not have sufficient factual elements to determine whether the hams advertised as Parma ham on Respondentís website are genuine or not.
In determining whether a reseller or service agent of trademarked goods can use the trademark at issue in its domain names, previous decisions have held that a respondent must at the minimum: (i) actually be offering the goods or services at issue; (ii) use the site to sell only the trademarked goods; (iii) accurately disclose the registrantís relationship with the trademark owner; and (iv) not try to corner the market in all domain names (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, <okidataparts.com>).
In the present case, even assuming that the Parma hams advertised on Respondentís website were genuine, it is established that Respondent uses the site to sell a multitude of different types and brands of competing meat products, and not only Parma ham. As discussed above, a user must navigate through Respondentís website by clicking several buttons before even reaching the products offered as Parma ham. Such a use is not "bona fide" under the standard outlined in WIPO Case No. D2001-0903, because such use enables Respondent to bait Internet users looking for "Parmaschinken" and then switch them to other goods.
The Panel is aware of the decision Consorzio del Prosciutto di Parma v. Domain Name Clearing Company, LLC, WIPO Case No. D2000-0629 in which the complaint regarding <parmaham.com> had been denied. Although the domain names are similar, the factual background of the two cases is significantly different. In the <parmaham.com> decision, the panel considered that the respondent had not yet actually used that domain name and concluded held that it was possible to conceive of a legitimate use of the term "Parma ham". In the present case, however, the Respondent actually uses the Domain Name in a way which, as discussed above, does not qualify as "bona fide". Therefore, the present case must be distinguished from WIPO Case No. D2000-0629.
The Panel therefore finds that Complainant has shown that Respondent has no rights or legitimate interests in respect of the Domain Name, according to paragraph 4(a)(ii) of the Policy.
6.3. Registration and Use in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the holder has registered or has 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 the holderís documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holderís website or other online location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of the holderís website or location or of a product or service on the holderís website or location.
By using the Domain Name to sell a multitude of different competing meat products (and not only Parma ham), the Respondent attempts to attract, for commercial gain, Internet users looking for Parma ham to its website. Respondentís use of Complainantís certification marks creates a likelihood of confusion in that Internet users may assume that Respondentís website is affiliated to or otherwise sponsored by the certified producers of Parma ham.
Therefore, the Panel finds that Complainant has shown that Respondent registered and used the Domain Name in bad faith in the sense of paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, the Administrative Panel orders that the registration of the Domain Name <parma-schinken.com> be transferred to the Complainant.
Dated: August 15, 2003