WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fiera Milano S.p.A. v. Elio Cazzoli, Gsp S.r.l.
Case No. D2017-1459
1. The Parties
The Complainant is Fiera Milano S.p.A. of Milan, Italy, represented by Kivial s.r.l., Italy.
The Respondent is Elio Cazzoli, Gsp S.r.l. of Baranzate, Italy.
2. The Domain Name and Registrar
The disputed domain name <cateringfieramilano.com> is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed in Italian with the WIPO Arbitration and Mediation Center (the "Center") on July 27, 2017. On July 28, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 28, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, providing the contact details, and noting that English was the language of the registration agreement for the disputed domain name.
On August 9, 2017, the Center sent an email communication to the Parties in English and Italian regarding the language of the proceedings. On August 10, 2017, the Complainant filed an English translation of the Complaint. Subsequent communications from the Center were sent in English only.
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 August 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 31, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 1, 2017.
The Center appointed Angelica Lodigiani as the sole panelist in this matter on September 8, 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.
4. Factual Background
The Complainant, is the Italian company Fiera Milano S.p.A., one of the leading companies in the field of exhibition and fair organization in Italy, and one of the top of the world.
The Complainant manages the exhibition area of Milan (one of the largest in Italy), where the Complainant supplies a variety of services to organizers, exhibitors and visitors, such as renting stands, providing catering and surveillance services, managing and organizing receptions and information points.
Through its controlled companies, the Complainant organizes exhibitions and conferences. Moreover, the Complainant plans and implements special promotional events for companies and exhibitions in Italy and abroad, and supports the penetration of companies in the international markets, through its network of foreign offices.
The Complainant hosts around 50 events per year, of which approximately one third is organized directly, with more than 30,000 exhibiting companies.
These exhibitions embrace several fields, among which fashion, furniture, instrumental mechanics, electrical and electronic computing, information and communication technology, food, healthcare, architecture, pets, art, etc.
Since December 12, 2000 the Complainant is listed on the Italian Stock Exchange.
The Complainant is the owner of the following trademarks:
- FIERA MILANO (word mark), European Union trade mark registration No. 6254213, registered on October 20, 2008, for goods and services in classes 16, 35, 36, 38, 41, 42, 43;
- FIERA MILANO (word mark), Italian trademark registration No. 1441643, registered on April 7, 2011, for goods and services in classes 16, 35, 41, 42, 43;
- FIERA MILANO (word mark), international trademark registration No. 1090544, registered on April 7, 2011, for goods and services in classes 16, 35, 41, 42, 43.
The disputed domain name <cateringfieramilano.com> was registered on December 17, 2015, and redirects to the Respondent's website where it promotes its catering services. The website linked to the disputed domain name is also available at "www.welcomeideagourmet.com". The website contains several references to the Complainant's name and trademark (FIERA MILANO).
5. Parties' Contentions
The Complainant's assertions may be summarized as follows.
(i) The disputed domain name is identical or confusingly similar to the Complainant's trademarks
The Complainant asserts that the disputed domain name is confusingly similar to the Complainant's trademark, since it contains the Complainant's trademark preceded by the word "catering", which is descriptive of one of the many services provided by the Complainant.
The combination of the term "fiera" (fair), with the specific location "Milan", immediately leads the visitor to connect the disputed domain name to the specific events taking place in the exhibition areas managed by the Complainant.
The Internet users would thus erroneously link the disputed domain name with the Complainant's activities.
(ii) The Respondent lacks rights or legitimate interests in the disputed domain name
The Respondent is not affiliated and has no commercial relationship with the Complainant. The Respondent has no authorization to use the Complainant's name and trademark in the disputed domain name.
(iii) The registration and use of the disputed domain name in bad faith
The fact that the disputed domain name is linked to the Respondent's website, (which is also available at the address "www.welcomeideagourmet.com"), is evidence of the fact that the disputed domain name <cateringfieramilano.com> was registered to attract Internet users looking for information on the Complainant's catering services to the Respondent's website. The name and trademark FIERA MILANO is cited in the Respondent's website, as such, creating a misleading association between the Respondent's and the Complainant's services. In particular, the website contains a reference to the "TUTTOFOOD" fair, organized by the Complainant, thus establishing a link between the Respondent and this fair, which could induce Internet users to believe that the Respondent is the official supplier of the fair. On the contrary, the Respondent works on some of the trade fairs organized by the Complainant, but only in relation to some private and limited events.
Therefore, through the use of the disputed domain name, the Respondent gives the impression of a collaboration and exclusive connection with the Complainant, that does not effectively exist. Furthermore, the consumers could also believe that there is a co-branding activity between the Respondent and the Complainant. Therefore, the Respondent is taking unfair advantage from the Complainant's renown, without facing major investments.
For all these reasons, the Respondent should be deemed to have registered and used the disputed domain name in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <cateringfieramilano.com> is confusingly similar with the Complainant's FIERA MILANO trademark.
The disputed domain name fully includes the Complainant's trademark, preceded by the descriptive word "catering". The addition of this word does not diminish the confusing similarity between the disputed domain name and the mark.
The Panel finds that the Complainant has satisfied its burden of proof under paragraph 4(a) of the Policy as to the first element of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish its rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
(i) before any notice of the dispute to the Respondent, the Respondent has used or made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In the instant case, the Complainant has clarified that the disputed domain name redirects to the Respondent's website, offering catering services. The same website is also accessible at the address "www.welcomeideagourmet.com". Therefore, the Respondent is clearly trying to take unfair advantage from the renown of the Complainant and of its trademark, to attract, for commercial gain, Internet users to its own website. Such use cannot be considered a bona fide offering of goods or services or fair use under paragraph 4(c)(i) and (iii) of the Policy.
The fact that the Respondent may have offered its catering services during some private events held during trade fairs organized by the Complainant is not a sufficient condition to support the Respondent's rights or legitimate interests in the disputed domain name, in the absence of any authorization from the Complainant.
Accordingly, the Panel finds that the Complainant has established an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name <cateringfieramilano.com> and, accordingly, the Complainant has satisfied the requirement under paragraph 4(a) of the Policy as to the second element of the Policy.
C. Registered and Used in Bad Faith
In order to meet the bad faith requirement under paragraph 4(a)(iii) of the Policy, the Complainant must demonstrate that the disputed domain name has both been registered, and is being used, in bad faith.
As far as registration in bad faith is concerned, it is clear from the facts exposed in the Complaint, that the Respondent was well aware of the Complainant's name and trademark at the time it registered the disputed domain name <cateringfieramilano.com>. The Panel notes that the European Union trade mark registration No. 6254213, covers catering services and the disputed domain name fully includes the Complainant's trademark, preceded by the word "catering". The addition of this word does not diminish the likelihood of confusion, but rather enhances it, since it is a well-known fact that catering services are provided during trade fairs. Thus, in viewing the disputed domain name <cateringfieramilano.com>, one could easily believe that it refers to the official catering services offered by the Complainant during its fairs.
In view of the importance of the fairs organized and/or managed by the Complainant, the number of exhibitors and attendees, the Complainant and its trademark FIERA MILANO, should be considered renowned.
As a matter of fact, the disputed domain name is associated with a webpage containing references to the Complainant and to "TUTTOFOOD", one of its mostly renown international fairs. Moreover, as indicated by the Complainant, the Respondent has provided its catering services during some private events on the occasion of fairs organized and/or managed by the Complainant.
Therefore, the Panel believes that the Complainant provided sufficient evidence in support of the fact that the Respondent targeted the Complainant's well-known name and trademark, when it registered the disputed domain name <cateringfieramilano.com>.
With respect to use in bad faith, the disputed domain name redirects Internet users to the Respondent's website (also accessible through the address "www.welcomeideagourmet.com"), where the Respondent's business activity is promoted. Said use of the disputed domain name is likely to mislead consumers, looking for information on the catering services of the Complainant. Moreover, said use is likely to induce consumers to believe that the Complainant is sponsoring or endorsing the Respondent's website, or that there is some kind of agreement, or an affiliation between the Parties.
Accordingly, the Panel concludes that the disputed domain name <cateringfieramilano.com> is being used to intentionally attempt to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of such website, in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <cateringfieramilano.com> be transferred to the Complainant.
Date: September 22, 2017