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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Direct Marketing Company S.p.A. v. Emilio Morelli

Case No. D2010-1335

1. The Parties

The Complainant is The Direct Marketing Company S.p.A. of Rovereta, San Marino, represented by CBA Studio Legale e Tributario, Italy.

The Respondent is Emilio Morelli of Mondragone, Italy.

2. The Domain Names and Registrar

The disputed domain names <dietattivagiornoenotte.com> and <giornoenottetotal.com> are registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2010. On August 6, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain names. On the same day, Tucows Inc. 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 August 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 29, 2010. The Respondent submitted multiple e-mail communications and on August 17, 2010, upon the request of the Center, confirmed those e-mail communications to be its Response.

The Complainant submitted additional emails on August 23, 2010 and September 3, 2010 and the Respondent submitted an additional email on August 27, 2010. These Supplemental Filings played no role in the Panel’s Decision per the Panel’s discretion under the Rules, paragraph 12.

The Center appointed Dennis A. Foster as the sole panelist in this matter on August 23, 2010. 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

The Complainant is a company located in San Marino that operates extensively within Italy in the direct marketing of dietary supplement products. It owns a European Union Office for Harmonization in the International Market (“OHIM”) registration (Registration No. 8151185, issued December 11, 2009) for the device mark GIORNO NOTTE. The Complaint also owns OHIM registrations (Registration Nos. 7547334, issued September 9, 2009; and 7547383, issued December 10, 2009) for the mark, GIORNO NOTTE TOTAL.

The Respondent is the registered owner of the disputed domain names, <dietattivagiornoenotte.com> and <giornoenottetotal.com>. The dates of registration are, respectively, July 10, 2008 and March 8, 2010. The Respondent uses the disputed domain names to market dietary supplement products that compete directly with those offered by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant is a San Marino company that is involved in direct marketing, primarily in Italy. The Complainant has more than 500 employees based in two offices in Switzerland and San Marino. The Complainant posted 2007 revenue in excess of EUR 44 Million, a 37% increase over the preceding year.

The Complainant commenced its production and marketing of a dietary supplement product under the brand name, “Giorno e Notte”, in 2002. Since then, the Complainant has added other similar products to the line, including “Giorno e Notte Total”, which incorporate the brand name.

To date, the Complainant has invested in excess of EUR 65 Million to advertise its “Giorno e Notte” brand of dietary supplement products. It also registered the domain name <giornoenotte.com> to assist in its marketing of its products. As a result, the Complainant has established substantial goodwill and reputation in its brand and corresponding trademark.

The Complainant has acquired trademark registrations for the mark GIORNO NOTTE with the Italian Patent and Trademark Office (“UIBM”) and the OHIM. Moreover, the Complainant also registered the mark GIORNO NOTTE TOTAL with the OHIM.

The disputed domain names are confusingly similar to the Complainant’s marks. The disputed name, <giornoenottetotal.com> is almost identical to the GIORNO NOTTE TOTAL mark, adding only the Italian conjunction “e” (“and” in English), and incorporates the full base mark, GIORNO NOTTE. Meanwhile, the disputed domain name <dietattivagiornoenotte.com> again incorporates in full the Complainant’s GIORNO NOTTE mark – adding only the generic words “diet attiva” (“active diet” in English). That addition actually increases confusion, since the Complainant’s business involves dietary products.

The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not making use of the names in connection with a bona fide offering of goods or services. The Respondent has not been commonly known by either of the disputed domain names. Finally, the Respondent has failed to make noncommercial or fair use of the names.

The disputed domain names were registered and are being used in bad faith. Clearly, the Respondent is in the same business as the Complainant and therefore must have known about the Complainant’s trademarks. The Respondent uses the disputed domain names to divert Internet traffic to websites through which the Respondent offers dietary supplement products which compete directly with the Complainant’s wares. The Respondent uses such diversion for its own profit.

B. Respondent

The Respondent filed the mark DIETATTIVA GIORNO E NOTTE with the UIBM on June 10, 2008.

The Respondent alleges that the Complainant registered most of its trademarks having to do with “Giorno e Notte” after registration of the Respondent’s trademark, and the Respondent’s registration of the disputed domain name, <dietattivagiornoenotte.com>, has nothing to do with the Complainant’s marks.

The Respondent’s ownership of <dietattivagiornoenotte.com> does not create confusion, any more than “Coca Cola” is confused with “Pepsi Cola”. The Complainant is simply afraid of competition in its field.

The Respondent, now aware of the Complainant’s registration of GIORNO NOTTE TOTAL, will discontinue payment of registration fees for the disputed domain name, <giornoenottetotal.com>, and remove the website found at that name.

6. Discussion and Findings

The Complainant may succeed in these proceedings and obtain transfer of the disputed domain names, <dietattivagiornoenotte.com> and <giornoenottetotal.com>, if, pursuant to paragraphs 4(a)(i) – (iii) of the Policy, the Complainant can establish that:

The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

The Respondent has no rights or legitimate interests in respect of the disputed domain names; and

The disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has presented the Panel with persuasive evidence (Annex 3) of the Complainant’s OHIM registration for the trademark, GIORNO NOTTE, along with similar evidence (Annex 3) of the Complainant’s OHIM registration for the trademark, GIORNO NOTTE TOTAL. That evidence is sufficient to convince the Panel that the Complainant has rights in those trademarks. See, Argenta Spaarbank NV v. Argenta, Mailadmin Ltd., WIPO Case No. D2009-0249 (“[c]omplainant has provided evidence and has thus established its rights […] in the Community trademark”); and Devitt Insurance Services Limited v. Randall Stevens, NAF Claim No. 1257387 (“The Panel finds Complainant has established rights in the […] mark for purposes of Policy [paragraph] 4(a)(i) through its trademark registration with the OHIM”).

The disputed domain name <dietattivagiornoenotte.com> incorporates fully the Complainant’s GIORNO NOTTE mark, and adds to it the generic term “diet attiva”, the conjunction “e” and the gTLD “.com”. Since “diet attiva” is Italian for “active diet”, that addition hardly serves to distinguish said disputed domain name from the Complainant’s mark, as the Complainant operates in the dieting business. Also, adding “e” (“and”) between the words “Giorno” and “Notte” does little to distinguish the name from the mark. Many prior UDRP panels have held that such minor and/or generic additions to a full trademark – particularly when such additions relate directly to a complainant’s operations – fail to eliminate the confusing similarity between a disputed domain name and the mark. The Panel finds itself in agreement with such reasoning and will apply it to the instant case. See, The Proctor & Gamble Company v. Fast Track Corporation, NAF Claim No. 289085 (“A domain name that incorporates a well-known mark, in combination with a generic or descriptive term that relates to the goods or services offered by the owner of the mark, has been consistently found to be confusingly similar to the mark under Policy [paragraph] 4(a)(i)”); Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888 (finding <porsche-autoparts.com> to be confusingly similar to the PORSHE trademark, and stating “that the word ‘autoparts’ is added to Complainant’s trademark does not eliminate the identity, or at least the similarity, between Complainant’s trademark and the disputed domain name”); and Intesa Sanpaolo S.p.A. v. Intesa Sanpaolo s.p.a., WIPO Case No. D2009-0202 (“The addition of the generic top-level domain ‘.com’ is immaterial for purposes of the Policy”).

The disputed domain name <giornoenottetotal.com> is almost exactly the same as the Complainant’s GIORNO NOTTE TOTAL trademark, save for the addition of an “e” between the words “Giorno” and “Notte” and the obligatory gTLD. For the reasons enumerated above, the Panel determines that this disputed domain name is confusingly similar to said trademark.

In view of the above, the Panel finds that the Complainant has proved that the disputed domain names are identical or confusingly similar to trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

In response to the burden of proof placed upon it by the Policy, the Complainant has come forward with a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has done so by establishing its ownership of trademarks that are confusingly similar to the names and by making plausible assertions that the Respondent cannot rely on the criteria set forth in Policy paragraph 4(c) to justify its registration and use of those names. Thus, it falls upon the Respondent to rebut that prima facie case with clear evidence on its behalf. See Aetna Inc. v. Peter Carrington a/k/a Party Night, Inc., NAF Claim No. 154527 (“When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy [paragraph] 4(a)(ii)”); and Pfizer Inc. v. Websites, WIPO Case No. D2004-0730 (“Once a complainant makes a prima facie showing that a respondent lacks rights to the domain name at issue, the respondent must come forward with proof that it has some legitimate interest in the domain name to rebut this presumption”).

With respect to the disputed domain name <dietattivagiornoenotte.com> the Respondent’s sole argument – put forth in a Response consisting of a series of cryptic emails to the Center – that it has the requisite rights is based upon the Respondent’s assertion that it has registered the trademark, DIETATTIVA GIORNO E NOTTE, with the UIBM. However, unlike the Complainant, who has presented clear evidence of its trademark registrations (Annex 3), the Respondent has failed to furnish the Panel with satisfactory evidence to support its assertion. Though the Policy, in contrast to a full judicial proceeding, allows for only a cursory examination of evidence, it does permit the Panel to receive and review basic documents that might support the contentions of either party. In any case, no evidence in the record suggests the existence of more than a mere application for trademark registration (dated 2008) with no update as to the progress of this application. Moreover, a trademark application (or registration) without evidence of a bona fide use of the mark in connection with the provision of goods and services in relation to the disputed domain names, does not automatically ground a legitimate interest in the disputed domain names under the Policy. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No., D2000-0847.

With respect to the disputed domain name <giornoenottetotal.com> the Respondent appears in its last email to the Center to concede its lack of rights or legitimate interests, as the Respondent avers that it will cease further registration payments and discontinue use of the website found at the name.

Otherwise, the Panel finds that the Respondent fails to fall within the parameters of paragraph 4(c) of the Policy regarding either of the disputed domain names. There is absolutely no evidence in the record to cause the Panel to believe that the Respondent, Emilio Morelli, has ever been commonly known as either name as stipulated under subparagraph 4(c)(ii). Moreover, based on the evidence supplied the Panel by the Complainant (Annex 4), it appears to the Panel that the Respondent is using the disputed domain names, which contain the Complainant’s full trademarks, to host websites that offer products that compete directly with those of the Complainant. Such use constitutes neither a bona fide offering of goods or services per paragraph 4(c)(i) of the Policy, nor a noncommercial or fair use of the names per paragraph 4(c)(iii) of the Policy. See, Viacom International Inc. v. Domains By Proxy, Inc./ Corey Mandell, WIPO Case No. D2009-0001 (“the sale of competitive products using a complainant's trademark typically is not considered bona fide or ‘legitimate’ or ‘fair’ for purposes of paragraph 4(a)(ii).”); and The Coryn Group, Inc., and AM Resorts, LLC v. Media Insight, NAF Claim No. 198959 (“[r]espondent uses the names to divert Internet users to its website that offers competing services. Thus, [r]espondent is not providing a bona fide offering of goods or services, or a legitimate noncommercial or fair use, within the meaning of Policy [paragraphs] 4(c)(i) [and] (iii).”).

As reasoned above, the Complainant’s prima facie case prevails, and the Panel rules that the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

The Respondent contends that the Complainant is possibly afraid of competition – at least competition from the Respondent – and that there should be no more confusion resulting from the Respondent’s use of the words “giorno” and “notte” in its offerings than there is confusion between “Coca Cola” and “Pepsi Cola”. However, the Panel notes that “colas” constitute a distinct class of soft drinks and that the common names for those two cola drinks are “Coke” and “Pepsi”, which are clearly distinguishable. On the other hand, there is no class of dietary supplemental products that correspond to the words “giorno” (“day”) and “notte” (“night”); those words having been given meaning within the context of dietary products since 2002 solely because those words appear in the Complainant’s registered trademark. Therefore, the Panel does detect confusion when the Respondent employs the disputed domain names, which incorporate in full the Complainant’s trademarks, and believes that the Complainant rightfully fears competition that results from the intentional misuse of its trademarks by the Respondent.

Moreover, the Panel concludes that the Respondent is intentionally attempting to attract Internet users to its website to sell its products for its commercial gain based on said confusion. This circumstance calls for a finding of bad faith registration and use of the disputed domain names per paragraph 4(b)(iv) of the Policy. See, Littleford Day Inc. v. NRM Equipment Company, WIPO Case No. D2004-0201 (the panel found the circumstance set forth in paragraph 4(b)(iv) applicable to the case, after stating, “the fact that [r]espondent used <littlefordday.com> to automatically redirect users to its website located at “www.nrmequipment.com” is evidence of bad faith. Respondent sells the same type of goods sold by [c]omplainant and competes with [c]omplainant in its line of business.”); and AutoNation, Inc. v. Paul Schaefer, WIPO Case No. D2001-0289.

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 names <dietattivagiornoenotte.com> and <giornoenottetotal.com> be transferred to the Complainant.

Dennis A. Foster
Sole Panelist
Dated: September 6, 2010

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