WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Consorzio per la Tutela del Formaggio Gorgonzola v. William Wise
Case No. D2017-0554
1. The Parties
The Complainant is Consorzio per la Tutela del Formaggio Gorgonzola of Novara, Italy, represented by Jacobacci & Associati, Italy.
The Respondent is William Wise of Brooklyn, New York, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <gorgonzola.club> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 20, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 13, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Parties of the commencement of the Panel appointment process on April 18, 2017.
The Center appointed Nicholas Smith as the sole panelist in this matter on April 25, 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 28, 2017, the Panel issued the Administrative Panel Procedural Order No. 1 to the Parties, the relevant text being reproduced below.
“Under the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), the Panel may, at its sole discretion request, in addition to the complaint and the response, further statements or documents from either of the Parties.
The Panel notes that:
1) In paragraph 12 of the Complaint (final dot point) the Complainant submits that the Complainant had registered GORGONZOLA with the Trademark Clearinghouse, prior to the registration of the Domain Name, and that the Respondent would have been made aware of the existence of the Complainant’s rights prior to the registration of the Domain Name.
2) The Complaint does not annex any documents or provide any information as to what precisely was registered with the Trademark Clearinghouse, when it was registered, and what likely notification the Respondent would have received.
Therefore the Panel makes the following orders:
1) The Complainant has until May 4, 2017 to make further submissions or file any additional evidence that it sees fit:
a) to support its claims that it registered GORGONZOLA or any related trademarks with the Trademark Clearinghouse on or before January 12, 2017.
b) to show that the Respondent, when seeking to register the Domain Name, would have received a notification of the Complainant’s rights; and
c) what the content of the notification would have been (an illustrative example of the notice provided by the Trademark Clearinghouse would be sufficient).
The additional evidence/submissions should be served on the Respondent using the e-mail addresses […]@gmail.com; […]@gorgonzola.club and […]@gmail.com.
2) The Respondent shall thereafter have an opportunity to provide any submission or any evidence in reply it may choose to make regarding the Complainant’s additional evidence/submissions in response to this Panel Order, by May 10, 2017.
3) Any submissions or amended documents should be submitted to the WIPO Arbitration and Mediation Center by email to email@example.com for forwarding to the Panel.
4) The Panel will deliver its decision on or before May 16, 2017.”
On May 2, 2017, the Complainant filed a further submission and additional evidence in response to the Procedural Panel Order No. 1. This evidence consisted documents from the Trade Mark Clearinghouse that confirmed that the CG GORGONZOLA Mark (see below) had been registered with the Trade Mark Clearinghouse since November 14, 2013 and a statement by the Complainant indicating that the Complaint as filed contained an error. In fact the Respondent did not receive a warning of the existence of the CG GORGONZOLA Mark from the Trade Mark Clearinghouse at the time of registration as the Clearinghouse only provides these notifications for the first three months after each new Top-Level Domain becomes available.
The Respondent did not file any reply in response to the Administrative Panel Procedural Order No. 1.
4. Factual Background
The Complainant is an Italian entity created in 1968 in order to control the use of the denomination of origin and trade mark GORGONZOLA for use for a specific type of cheese. Denominations of origin are names recognized officially for designating products originating from certain territories and including certain characteristics. The right to use a denomination of origin is controlled by an entity, normally organized in the form of a consortium, which has the sole authority to certify what products may bear the denomination, on the basis not only of the territorial origin but also of specific qualities of the products.
In some jurisdictions, including Italy, the term “Gorgonzola” is a denomination of origin which is recognized officially for designating products originating from certain territories and including certain characteristics. The Complainant is the entity that has sole authority to certify which products may bear the denomination on the basis of territorial origin and the specific qualities of the products. The Complaint does not provide a detailed list of countries that recognize the term “Gorgonzola” as a denomination of origin, nor any evidence that the term “Gorgonzola” is protected as a denomination of origin in the United States, the location of the Respondent.
The Complainant is the sole authority in Italy with the authority to authorize the use of the denomination of origin “Gorgonzola”. It is also is the owner of a European Union Trade Mark, registered on July 4, 2012 for a mark that consists of the letters “c” and “g” in a single device over the word “gorgonzola” (the “CG GORGONZOLA Mark”). The Complainant is also the owner of the Domain Name <gorgonzola.com> from which it operates a website promoting Gorgonzola cheese. The Complainant does not have a registration for the CG GORGONZOLA Mark in the United States, rather it has a registration for the device that consists of the letters “c” and “g” (the “CG Mark”).
The Domain Name was registered on January 12, 2017. The Domain Name does not re-direct to an active site, rather it remains parked with the Registrar.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is confusingly similar to the Complainant’s Gorgonzola denomination of origin and CG GORGONZOLA Mark;
(ii) that the Respondent has no rights nor legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the CG GORGONZOLA Mark, being the owner of the European Union Trade Mark of CG GORGONZOLA in various European countries for various goods in class 30. The Complainant is also the entity that is authorized to control the use of the denomination of origin “Gorgonzola” which operates as a collective trade mark.
The Domain Name is identical to the trademarks owned by the Complainant and the denomination of origin “Gorgonzola”.
The Respondent is not commonly known by the Domain Name nor does it have any trade marks that correspond to the Domain Name. The Respondent has not made demonstrable preparations to use the Domain Name for a bona fide offering of goods and services or made a legitimate noncommercial or fair use of the Domain Name.
The Respondent has registered and uses the Domain Name in bad faith. The Respondent must have known of the Complainant when he registered the Domain Name and its registration suggests opportunistic bad faith. A cursory search Google search for “gorgonzola” would reveal the identity of the Complainant and the Complainant’s role in protecting the “Gorgonzola” denomination of origin. The Domain Name is currently passively held by the Respondent and the Complainant suggests the registration and passive holding of a domain name identical to a well-known mark must be use in bad faith. The Respondent’s passive holding of the Domain Name amounts to use of the Domain Name in bad faith.
The Complaint as filed also submitted that the Respondent would have been made aware of the existence of the Complainant’s rights prior to the registration of the Domain Name as a result of the registration of the CG GORGONZOLA Mark with the Trademark Clearinghouse however following the additional material provided by the Complainant in its supplemental filing, the Panel will treat that submission as having been withdrawn.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
It is not necessary for the Panel to conclude whether the denomination of origin “Gorgonzola” is a trade mark for the purposes of satisfying this element of the Policy: the Complainant is the owner of the CG GORGONZOLA Mark, having a European Union Trade Mark registration for the CG GORGONZOLA Mark.
The Domain Name <gorgonzola.club> consists of the CG GORGONZOLA Mark without the device “CG” and the gTLD “.club”. Discounting the necessary Top-Level Domain element, the Domain Name <gorgonzola.club> is confusingly similar to the CG GORGONZOLA Mark since the graphical device “CG” cannot be incorporated in a Domain Name. Consumers who are aware of the CG GORGONZOLA Mark may see the Domain Name and think it is connected to the Complainant. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant may make out a prima facie case that the respondent lacks rights or interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the “Gorgonzola” denomination of origin, or CG Gorgonzola Mark or a domain name similar to the “Gorgonzola” denomination of origin, or CG Gorgonzola Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name.
There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. In fact there is no evidence of any demonstrable preparations to use the Domain Name at all.
An issue in the present case is that the evidence in the Complaint, including the Wikipedia page and various articles annexed to the Complaint, strongly suggests that the word “gorgonzola” has a descriptive meaning, referring to a particular type veined Italian blue cheese, made from unskimmed cow’s milk and produced in a particular manner, using the mold “penicillium glaucum”. While the word “gorgonzola” has been certified as a denomination of origin in Italy since 1955 and in the European Union from 1996, there is no evidence in the Complaint that it is a protected denomination of origin in the United States, the location of the Respondent, and cheese described as “gorgonzola” is produced in the United States. While the Panel is prepared to conclude that the word “gorgonzola” is a protected denomination of origin in Italy and Europe, it is not satisfied by the evidence in the Complaint that the word “gorgonzola” is anything other than a descriptive term for a particular type of cheese in the United States, the location of the Respondent.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), states, in response to the question “Does a respondent automatically have rights or legitimate interests in a domain name comprised of a dictionary word(s)?”
“Consensus view: If the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the UDRP, or any other basis for rights or legitimate interests, then the respondent may lack a legitimate interest in the domain name, even if it is a domain name comprised of a dictionary word or phrase. Factors a panel tends to look for when assessing whether there may be rights or legitimate interests would include the status and fame of the trademark, whether the respondent has registered other domain names containing dictionary words or phrases, and whether the domain name is used in connection with a purpose relating to its generic or descriptive meaning (e.g., a respondent may well have a right to a domain name “apple” if it uses it for a genuine site for apples but not if the site is aimed at selling computers or MP3 players, for example, or an inappropriate other purpose). Panels have recognized that mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name. Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, 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, for example, to trade off third-party rights in such word or phrase).”
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Name. However, the Respondent has chosen not to respond to the Complaint and thus has failed to provide any evidence of rights and legitimate interests in the Domain Name including any evidence that that the Domain Name is (or is demonstrably intended) to be used in connection with its descriptive qualities. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b) provides that for the purposes of paragraph 4(a)(iii), 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 a domain name in bad faith:
(i) circumstances indicating that the Respondent 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 owners of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The registration and use requirements of paragraph 4(a)(iii) of the Policy are conjunctive, and a complainant bears the burden of proof on each. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. If either of the required elements are not established, the Complaint must fail. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 (denying transfer of the Domain Name because Complainant failed to prove bad faith registration).
There is no evidence before the Panel that the Respondent has engaged in a pattern of conduct of registering domain names (including the Domain Name) to prevent trade mark owners from registering a corresponding domain name. There is no evidence that the Respondent has ever registered a domain name other than the Domain Name. Nor is there any evidence that the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor: there is no evidence that the Complainant and the Respondent are competitors.
There are no circumstances that indicate that the Respondent has registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant. There is no evidence that the Respondent has ever attempted to sell the Domain Name or that the Respondent is in the business of registering Domain Names for sale to trade mark owners.
The Panel finds that the Complainant has not satisfied the burden of proof to show that the Respondent registered the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. This is a decision reached with some difficulty as there is:
(a) no evidence whatsoever from the Respondent about its reason for registering the Domain Name;
(b) no evidence whatsoever about the Respondent that would assist the Panel in inferring the Respondent’s intentions in registering the Domain Name;
(c) no evidence of use of the Domain Name such that the intention behind the registration of the Domain Name can be inferred.
The Complainant has submitted that “There is no way that Respondent may have not been aware of the association of “GORGONZOLA” with Complainant… as a cursory Google search would easily reveal, the name GORGONZOLA evokes immediately the Complainant’s trademark as used for a cheese. Italian and European authorities have recognized Complainant’s rights on the trademark GORGONZOLA and to control its use internationally […]”. The evidence in the Complaint is that the CG GORGONZOLA Mark is not registered in the United States (the CG Mark is registered in that country) and neither is the Gorgonzola denomination of origin protected in the United States. There is insufficient evidence for the Panel to conclude that the Complainant has an unregistered trade mark for “Gorgonzola” in the United States. As noted above the Panel is not satisfied by the evidence that the word “gorgonzola” is anything other than a descriptive term for a particular type of cheese in the United States.
The evidence in the Complaint does not show that the Complainant and the denomination of origin “gorgonzola” has such a strong reputation in the United States that any person who sought to register a domain name featuring the word “gorgonzola” must have been aiming to take advantage of the confusion between the Domain Name and any rights the Complainant has in words or marks corresponding to the Domain Name, as opposed to registering the Domain Name for its descriptive qualities. It is not implausible that a party unaware of the Complainant, or a party aware of the Complainant but cognizant that the protection of the denomination of origin “Gorgonzola” does not extend to the United States, would seek to register a Domain Name consisting of the word “gorgonzola” to take advantage of the descriptive meaning of the word in the United States, namely as a particular type of cheese.
While the failure of the Respondent to respond and provide any explanation of its conduct are concerning, the consensus view, as set out in the WIPO Overview 2.0 is that:
“A respondent’s default does not automatically result in a decision in favor of the complainant. Subject to the principles described in paragraph 2.1 above with regard to the second UDRP element, the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. Although a panel may draw appropriate inferences from a respondent’s default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding [...]”.
There is insufficient evidence that any of the four circumstances listed in paragraph 4(b) of the Policy as evidence of bad faith exist in the present proceeding. However, the list of circumstances is non-exhaustive. See TV Globo Ltda. v. Radio Morena, WIPO Case No. D2000-0245. The Panel also considers whether the fact that the Domain Name has been passively held amounts to bad faith. The mere failure to maintain an active website at a domain name does not automatically result in a finding of bad faith. The WIPO Overview 2.0 notes in relation to cases in which the domain name is passively held:
“With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”
When examining all the circumstances of the case the matters considered above would suggest that, despite the fact that there has no evidence of use of the Domain Name, this is not a case where the mere fact that the Domain Name has been passively held should lead to a finding that the Domain Name was registered in bad faith.
In this case, the Domain Name has only been registered for four months. The word “gorgonzola” has a descriptive meaning in the United States, the location of the Respondent, and for that reason it is not implausible that there is a legitimate purpose in the registration of the Domain Name. There is no evidence that the Respondent is a domain name trader or has ever registered any other domain names for illegitimate commercial purposes, nor is there any evidence that the Respondent has concealed its identity.
In this case the Panel has been asked to infer the intention of the Respondent in registering the Domain Name that has a descriptive meaning in the Respondent’s location, in the absence of any evidence from the Respondent or any evidence about the Respondent other than its name. In the present case, by reason of the limited evidence provided by the Parties, the Panel finds that the Complainant has not satisfied its burden of showing that circumstances that bring the case within the provisions of paragraph 4(b) of the Policy exist, or other facts showing that Respondent registered the Domain Name in bad faith.
The Panel notes that in the event that further information arises that establishes the motives of the Respondent in registering the Domain Name and/or the Respondent’s awareness of the Complainant as opposed to the descriptive meaning of the term “gorgonzola”, there may be grounds to consider a refiled complaint, subject to the applicable criteria.
For all the foregoing reasons, the Complaint is denied.
Date: May 14, 2017