WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Heineken Italia S.p.A. v. Contact Privacy Inc. Customer 0148158017 / Pasquale Giacobbe

Case No. D2019-0874

1. The Parties

The Complainant is Heineken Italia S.p.A. of Italy, represented by Perani Pozzi Associati - Studio Legale, Italy.

The Respondent is Contact Privacy Inc. Customer 0148158017 of Canada / Pasquale Giacobbe of Italy, represented by Flavia Tomasello, Italy.

2. The Domain Name and Registrar

The disputed domain name <birramessina.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2019. On April 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 17, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 18, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 19, 2019.

The Center verified that the Complaint together with the amendment to 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 April 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 14, 2019. The Response was filed with the Center on May 11, 2019.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on May 22, 2019. 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. The Respondent first filed his response in Italian on April 29, 2019 and then - after receiving a note from the Center advising that the language of the proceeding was English – filed an English version of the response on May 11, 2019. This Panel, familiar with both languages, having noticed that some of the arguments given in the English version were quite unclear, and also some other minor differences from the Italian version, has decided, in the interests of the procedure, to consider both versions.

Notwithstanding the above, some arguments made by the Respondent still remain at best unclear. The Panel has however concluded that the concepts and the substance of the defensive arguments made by the Respondent are sufficiently clear to take a decision on the case without the need to request further explanations.

4. Factual Background

The Complainant in this administrative proceeding is Heineken Italia S.p.A., a renowned company representing the Italian branch of Heineken NV. In 1988, the Complaint acquired the Italian brand BIRRA MESSINA and its company, founded in 1923 in Messina, Sicily.

The Complainant is, inter alia, the owner of:

European Union trademark registration No. 009255456 BIRRA MESSINA, filed on July 19, 2010 and granted on December 6, 2010, in class 32;

European Union trademark registration No. 008847337 BIRRA MESSINA & device, filed on January 29, 2010, and granted on July 27, 2010, in class 32;

European Union trademark registration No. 009247602 BIRRA MESSINA & device, filed on July 14, 2010, and granted on December 27, 2010, in class 32.

In addition, the Complainant is also the owner, inter alia, of the domain names <birramessina.net>, <birramessina.eu> and <birramessina.it>.

The Respondent registered the disputed domain name <birramessina.com> on May 2, 2017.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name is confusingly similar to the Complainant’s registered trademarks; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith.

The Complainant in support of the above assertions emphasizes that there is no connection between the Respondent and the Complainant, that the Respondent is not known by the disputed domain name or by any similar name, and that it is objectively not possible to understand what kind of legitimate use the Respondent could make with a domain name which exactly corresponds to the Complainant’s trademarks and which is so similar to the Complainant’s domain names that are currently used by the latter.

Finally, there is no question that the Respondent had knowledge of the Complainant’s trademark given that the BIRRA MESSINA trademark and logo were previously displayed on the website. The Complainant further states that inference of bad faith registration and use can be seen in this use of the disputed domain name and from the behavior of the Respondent who, after receiving the Complainant’s cease and desist letter, disconnected the website but did not reply to the Complainant’s letter or comply with the Complainant’s request to transfer the disputed domain name.

B. Respondent

The Respondent claims that the registration of the disputed domain name is legitimate and devoid of any connection with the brand of the same name for various reasons:

1) The absolute lack of a business activity similar to the one exercised by the Complainant and for which the aforementioned brand has become renowned in the field of beverages;

2) The disputed domain name relates to a site created exclusively for educational and amateur purposes, including images reminiscent of the fashion sector for purely aesthetic reasons, without entailing any economic advantage. On the website corresponding to the disputed domain name no profit-making activity is carried out;

3) The disputed domain name remains solely “an address”, owing to its “amateur” use and the absolute lack of a commercial function attributable to electronic commerce and /or advertising. In support of this thesis the Respondent, referring to a decision issued by the General Court of the European Union which joined cases T-321/11 and T-322/11, asserts that in the absence of a commercial use of the disputed domain name there cannot be any confusion between the disputed domain name and the Complainant’s trademarks. Consequently the Respondent must be considered entirely legitimate to use the disputed domain name, as no infringement of industrial property rights is possible.

The Respondent concludes by asserting that he has no interest in causing harm to the Complainant and is available for any agreement, provided that it differs from the one proposed by the Complainant (i.e. to transfer the disputed domain name at no cost), including the possibility of renting the disputed domain name to the Complainant.

6. Discussion and Findings

In order for the Complainant to obtain a transfer of the disputed domain name, paragraph 4(a) of the Policy requires that the Complainant must demonstrate to the Panel that:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established rights in the BIRRA MESSINA trademark. The disputed domain name is clearly identical to the Complainant’s BIRRA MESSINA trademark, save for the “.com” Top-Level Domain indicator.

Owing to the fact that the generic Top-Level Domain (“gTLD”) suffix is generally disregarded under the test for confusing similarity for the purposes of the Policy, the Panel finds that the disputed domain name <birramessina.com> is identical to, the BIRRA MESSINA trademark in which the Complainant has rights.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

This Panel finds that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to make any legitimate non commercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. In addition, the Respondent does not appear to be commonly known by the name “Birra Messina” or by a similar name.

Once the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the onus onto the Respondent, to come forward with evidence of rights or legitimate interests in the disputed domain name. It would therefore have been up to the Respondent to show the contrary, namely that he does have rights or legitimate interests in the disputed domain name.

According to paragraph 4(c) of the Policy, a 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 to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the disputed domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate non-commercial 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.”

The Respondent has asserted that the disputed domain name relates to a site created exclusively for educational and amateur purposes, including images reminiscent of the fashion sector for purely aesthetic reasons. However, he has not provided any details and/or proof of this use. In addition, he has not denied nor given any explanation of the reasons why (at least for a certain period of time) the BIRRA MESSINA trademark and logo were displayed on his website, as the Complainant has shown.

Indeed, the Complainant has argued and demonstrated, by providing screen shots of the Respondent’s website at different dates, that the disputed domain name was previously connected to a webpage mimicking the Complainant’s official website and exactly reproducing the Complainant’s device trademarks, and that, after the Complainant’s representatives sent a cease and desist letter to the Respondent on March 11, 2019, asking for the voluntary transfer of the contested domain name to their client, the Respondent disconnected such website, which resulted in the current situation of the passively-held disputed domain name.

Finally, the Respondent has not been shown to have been commonly known by the disputed domain name or to have any other rights to the disputed domain name.

To conclude, the evidence before this Panel does not reflect the Respondent's use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has made no claim to have been commonly known by the disputed domain name, nor to have acquired trademark or service mark rights in the disputed domain name. Nor is the Respondent making any legitimate noncommercial or fair use of the disputed domain name. In short, the Respondent has not come forward with evidence of rights or legitimate interests in the disputed domain name.

For the sake of completeness, regarding the Respondent’s assertion that: “the disputed domain name remains solely ‘an address’, owing to its ‘amateur’ use and the absolute lack of a commercial function, attributable to electronic commerce and /or advertising”, the Panel notes that the Complainant has shown evidence of quite a different story, namely that the disputed domain name was connected to a website displaying the Complainant’s trademarks and mimicking the Complainant’s official websites.

Whereas, regarding the second assertion that, owing to the absence of a commercial use of the disputed domain name there cannot be any confusion between the disputed domain name and the Complainant’s trademarks and as a consequence the Respondent must be considered entirely legitimate to use the disputed domain name, the Panel notes that this thesis, i.e. the absence of confusion when there is no commercial use of a sign, appears to have its rationale when the comparison, and the evaluation regarding the confusion, is done between two trademarks, but it definitely has no value in the present case. In addition, the decision of the General Court of the European Union T-321/11 and T-322/11, in the Appeal of the Decisions R1303/2010-1 and R1304/2010-1 issued by the First Board of Appeal of EUIPO (European Union Intellectual Property Office), basically regarding whether the domain name at issue can be considered or not as an unregistered or common law trademark on the basis of its use, has no practical application to the present case.

Moreover, it is well established that the mere registration of a domain name does not per se confer any right or legitimate interest on the registrant, still less when a domain name, as is in the present case, corresponds perfectly to a third party’s renowned trademark and it is (or has been) used to display on the corresponding website trademarks and images belonging to said third party (in this case the trademark and logo of the Complainant).

Furthermore, for the sake of completeness, the allegations made by the Respondent regarding the interpretation of European Union Regulation 207/2009 should be dismissed, as the European Union Regulation refers to conflicts between trademarks and is not applicable, neither by itself nor by analogy, to the present case.

The Panel therefore concludes that while the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name, the Respondent has failed to show the contrary.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used 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 disputed domain name in bad faith:

i) circumstances indicating that the holder has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed 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 holder’s documented out-of-pocket costs directly related to the domain name; or

ii) the holder has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or

iv) by using the disputed domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s web site 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 holder’s web site or location or of a product or service on the holder’s web site or location.

To be successful, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.

The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant’s contentions that the disputed domain name was registered and has been used in bad faith.

Particularly relevant are the following facts:

The Respondent, who apparently resides in Messina, could not be unaware of the existence of the Complainant’s renowned trademarks when registering the disputed domain name. The Respondent’s knowledge of the BIRRA MESSINA mark is particularly obvious, given that the BIRRA MESSINA logo was previously displayed on the website at the disputed domain name. In addition, the Respondent himself in his response acknowledged that the Complainant’s brand is renowned in the field of beverages.

As seen, the disputed domain name was previously connected to a webpage mimicking the Complainant’s official website and exactly reproducing its device trademarks, and this amounts to bad faith use of the disputed domain name under paragraph 4(b) of the Policy.

Further inference of bad faith registration and use of the disputed domain name is given by the fact that the Respondent has not replied to the contentions made in the Complainant’s cease-and-desist letter.

The Respondent, indeed, after receiving the cease and desist letter, without responding to the Complainant, disconnected the disputed domain name and is now passively holding it.

The Respondent has concealed its identity by using a privacy shield service.

Finally, while claiming good faith and the intention not to damage the Complainant’s business, the Respondent has refused to settle the matter by transferring the disputed domain name free of charge. On the contrary, in order to effect the transfer, the Respondent has requested an unspecified compensation, also suggesting the option to rent the disputed domain name to the Complainant.

This Panel, having regard to all the circumstances of this case, sees this request as further and final inference of bad faith registration and use of the disputed domain name under paragraph 4(b)(i) of the Policy, rather than a genuine offer (to settle the matter) made in good faith.

Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith.

Therefore, the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

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, <birramessina.com>, be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist
Date: May 31, 2019