WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Taffo SRL v. Contact Privacy Inc. Customer 0141464573 / Agenzia Funebre Taffo di Taffo G. & C. SAS Societa/Ditta

Case No. D2019-2266

1. The Parties

The Complainant is Taffo s.r.l, Italy, internally represented.

The Respondent is Contact Privacy Inc. Customer 0141464573, Canada / Agenzia Funebre Taffo di Taffo G. & C. sas Societa/Ditta, Italy, represented by Barzanò & Zanardo Roma SpA, Italy.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed in French with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2019. On September 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 19, 2019, 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 and contact information for the disputed domain name. The Center sent an email communication to the Complainant on September 23, 2019, notifying the Complainant that the Complaint was administratively deficient. The Center has also indicated to the Complainant that the language of the Registration Agreement was English, and invited the Complainant to provide sufficient evidence of an agreement between the Parties for French to be the language of proceeding, a Complaint translated into English, or a request for French to be the language of proceeding.

The Complainant filed an amended Complaint translated into English on September 25, 2019.

The Center verified that the Complaint together with the amended 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 September 27, 2019. On October 11, 2019, the Respondent’s representative sent an email communication to the Center, requesting an additional four calendar days to file a Response, in accordance with the Rules, paragraph 5(b). In accordance with the Rules, paragraph 5, the due date for Response was October 21, 2019. The Response was filed with the Center on October 18, 2019.

The Center appointed Luca Barbero as the sole panelist in this matter on October 24, 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.

On October 22, 2019, the Complainant filed a Supplemental Filing requesting that the Respondent’s contentions be ignored and that priority be given to the Complainant’s trademark registrations.

In accordance with its general powers under paragraph 10 of the Rules, the Panel extended the due date for decision from November 7, 2019 to November 18, 2019.

4. Factual Background

The Taffo family – composed by Luciano Giustino, Giuseppe, Piero, Daniele, Alessandro, Angelo, Giacomo and Giulia – has been together carrying on the funeral services business initiated by their common ancestor Gaetano Taffo (father of Luciano, Giuseppe, Piero and Angelo; grandfather of Daniele, Alessandro, Giacomo and Giulia).

The funeral activity started with the company named Gaetano Taffo SNC, then carried on also by the natural persons and also, since 2012, by the Complainant’s company Taffo SRL, currently based in Rome.

All the family members (i.e. Luciano, Giuseppe, Piero, Angelo, Alessandro, and Giacomo) have been, alternatively, members/shareholders and/or directors of the companies Gaetano Taffo SNC and Taffo SRL

In 2015, for internal disputes, the family decided to separate and continue the funeral activity independently: Luciano, Giuseppe, Piero, Alessandro and Daniele under the company name Taffo SRL.; Giacomo and Giulia under the company name Agenzia Funebre Taffo di Taffo G. & C. SAS, created on January 21, 2015.

From the first moment after the execution of the settlement and separation agreement, the parties began to dispute over the domain name, until various legal actions were brought against each other.

In particular, the Complainant tried, by means of 4 interim judicial actions, to prevent the Respondent from using the sign TAFFO also as domain name. All the 4 interim proceedings have been rejected and the Respondent has been allowed by the Italian Courts to continue using the sign TAFFO as distinctive sign and domain name.

At the moment, the parties are involved in a pending ordinary proceeding in which the Respondent’s use of the sign TAFFO is disputed, also as domain name.

The Complainant is the owner of the Italian trademark registration No. 00014535674 for TAFFO FUNERAL SERVICES (figurative mark), filed on July 10, 2012 and registered on April 11, 2013, in class 45.

The Complainant’s sole administrator Daniele Taffo is the owner, together with Luciano Giustino and Alessandro Taffo, of the European Union trademark registration No. 013662119 for TAFFO (word mark), filed on January 22, 2015 and registered on June 23, 2015, in classes 19, 20 and 45.

The Complainant is also the owner of the domain name <taffo.it>, which was registered on February 4, 2016 and is used by the Complainant to promote its services under the trademark TAFFO, and of the following domain names: <taffo.org>, <taffo.net>, <taffo.biz> and <taffo.eu>, all of which redirect to the Complainant’s website “www.taffo.it”.

The Respondent is another Italian funeral home based in l’Aquila (Italy), and is owned by the son and daughter of Angelo Taffo, one of the brothers of the shareholders of the Complainant. The Respondent has been providing funeral services under the sign TAFFO since 2015.

The disputed domain name <taffo.com> was initially registered on January 27, 2000, but was acquired by the Taffo Family in October 2015 and is currently owned and used by the Respondent to promote its funeral services under the sign TAFFO.

On February 11, 2016 and May 19, 2016, the Taffo family, composed of 4 brothers (Luciano, Giuseppe and Piero and the Respondent), concluded a private agreement through mutual transfers of corporate shares and standard withdrawals, among other things, to allow Angelo Taffo and his son and daughter (i.e,. the Respondent), on the one hand, to acquire the entire corporate participation of Funeral Product SRL and, on the other hand, to transfer by no later than June 6, 2016, in favour of the other brothers, the shares that it owned related to other, different family owned companies.

At that time, the Respondent was authorised by the brothers, for one year starting from the transfer of the company shares (which started on September 27, 2016), the exclusive use of the disputed domain name, in order to be able to redirect its customers to another different website, prohibiting Angelo Taffo and the Respondent from using the disputed domain name at the expiry of the above mentioned period.

5. Parties’ Contentions

A. Complainant

The Complainant contends that disputed domain name is identical to the trademark TAFFO in which the Complainant has rights, as it reproduces the trademark in its entirety with the mere addition of the generic Top-Level Domain (“gTLD”) “.com”.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name because:

- the Complainant registered the trademark TAFFO in 2012 and has been using it to advertise its activity in the field of funeral services ever since;

- the Complainant has made substantial financial investments in the brand, and as a result, since 2010, attracted millions of visitors to its website “www.taffo.it”;

- the Complainant is also the owner of the following domain names: <taffo.org>, <taffo.net>, <taffo.biz> and <taffo.eu> all of which redirect to the website “www.taffo.it”;

- the Respondent is a small company, established in 2015, three years after the Complainant’s company;

- the Respondent has been using the disputed domain name since October 2015, to advertise and sell the same funeral services offered by the Complainant, using the same trademark;

- the Respondent is in no way authorized to use the trademark TAFFO;

- by using a domain name identical to that of the Complainant, identical to the Complainant’s registered trademark and advertising the sale of the same services offered by the Complainant, the Respondent has generated confusion in the consumer public;

- the Respondent is exploiting the reputation of the Complainant’s trademark without any right or authorization to do so.

With reference to the circumstances evidencing bad faith, the Complainant indicates that the Respondent was founded in 2015 and has since tried to obtain commercial gain by using a domain name identical to that of the Complainant with a view to exploiting the trademark, in which it has no rights, to cause confusion in consumer public.

The Complainant further asserts that the Respondent’s use of the disputed domain name amounts to a counterfeit and usurpation of the trademark registered by the Complainant and must be considered as act of unfair competition, through which the Respondent illegitimately takes the notoriety and merits, intercepting potential customers of the Complainant.

B. Respondent

With respect to the disputed domain name being identical or confusingly similar to the trademark or service mark in which the Complainant has rights, the Respondent claims that the Complainant’s Italian trademark No. 00014535674, registered on April 11, 2013, does not designate funeral services, but was registered in relation to class 45 without any other service designation or specification.

The Respondent cites the IP translator judgment issued by the European Court of Justice on June 19, 2012 (Case C-307/10 The Chartered Institute of Patent Attorneys v Registrar of Trade Marks [2012] ECLI:EU:C:2012:361), which confirmed the inclusion of class 45 amongst the list of unacceptable Nice class general indications, totally devoid of a clear indication of the services being provided.

The Respondent further points out that a decision issued in an interim proceeding dated 2017 stated that the Complainant’s Italian trademark is not enforceable and the use of the sign TAFFO (also as a domain name) made by the Respondent is perfectly licit and lawful. The Respondent also highlights that this finding has been confirmed by judges in three other different proceedings filed by the Complainant against the Respondent.

The Respondent also underlines that the creation of the Respondent’s company occurred on January 21, 2015, while the Complainant’s European Union trademark No. 013662119 was filed on January 22, 2015.

In view of the above, the Respondent claims right of prior use on the sign TAFFO, stating that, in the four proceedings filed by the Complainant, it was held that the Complainant’s European Union trademark registration does not prevent the Respondent from using the sign TAFFO.

With regards to the rights or legitimate interests in respect of the disputed domain name, the Respondent asserts that its company was established under the name Agenzia Funebre Taffo di Taffo G. & C. SAS in January 2015 to carry on the family funeral business and that evidence shows that the use of the sign TAFFO was since the beginning made in connection with a bona fide offering of funeral products and services, before receiving any notice of the dispute.

Moreover, the Respondent highlights that it is making a legitimate use of the disputed domain name, fairly competing with the Complainant, that is only a branch of the Taffo family.

The Respondent also claims that the success of the Complainant has nothing to do with the Respondent’s efforts and that the Respondent alone since 2015 has acquired 80,000 followers on Facebook alone.

As far as the disputed domain name being used in bad faith is concerned, the Respondent states that the disputed domain name was not registered or acquired primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, but to identify and advertise the activity of the Respondent’s company, in which Giacomo and Giulia Taffo are shareholders and administrators.

Moreover, the Respondent claims that the disputed domain name was not registered in order to prevent the Complainant from reflecting the trademark in a corresponding domain name since, in fact, the Complainant affirms to be the owner of several domain names encompassing the sign TAFFO.

Lastly, the Respondent concludes by asserting that though the Complainant and the Respondent are in fact competitors, the disputed domain name of the latter was by no means registered to disrupt the Complainant’s business, but simply to identify the Respondent’s company name and reflect the surname of the members of its company.

The Respondent therefore does not consent to hand over the disputed domain name to the Complainant.

C. Complainant’s Supplemental Filing

In response to the Respondent’s replications, the Complainant asserts that, given the indisputable state of the proceedings by the Court of Roma in one of Orders obtained (RG .40188/2018), there is no doubt that the trademark TAFFO should be considered a strong trademark and that it should therefore benefit from the reinforced protection that the Italian Industrial Property Code reserves for this type of trademark which is in fact immediately connected to the surname of the Company founder and has no graphic or phonetic relevance with the specific services it provides to customers.

Moreover, the Complainant asserts that its Complaint is not intended to require the usability of the TAFFO brand, but to highlight the confusion and unfair competition generated by the use of the same domain name, especially when the Respondent’s one was registered six years later with an intent to confuse consumers to the disadvantage of the Complainant.

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 and in accordance with the Policy, these 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 disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

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

A. Preliminary procedural issues.

i) Complainant’s Supplemental Filing

Before entering into the merits of the case, the Panel addresses the issue of unsolicited supplemental filings submitted by parties to the Center.

No provision concerning supplemental filings are made in the Rules or Supplemental Rules, except at the request of the panel according to paragraph 12 of the Rules, which states the panel, in its sole discretion, may request any further statements or documents from the parties it may deem necessary to decide the case.

According to paragraph 10 of the Rules, the Panel has the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition, ensuring that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.

As stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), unsolicited supplemental filings are generally discouraged - unless specifically requested by the panel - and the party submitting an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response.

Accordingly, UDRP panels generally accept supplemental filings only when they provide material new evidence or a fair opportunity to respond to arguments that could not reasonably have been anticipated. See, along these lines, Welcomemat Services, Inc. v. Michael Plummer Jr., MLP Enterprises Inc., WIPO Case No. D2017-0481.

The Panel notes that none of the Respondent’s arguments in the Response was unforeseeable and finds that the Complainant’s supplemental submission is not grounded on evidence that was not available to the Complainant when the Complaint was filed. In view of the above and since the Complainant has not demonstrated the presence of any exceptional circumstance required for admitting a supplemental filing, the Panel will not consider the Complainant’s supplemental submission in issuing its Decision. Nevertheless, the Panel notes that, should the Panel have admitted the Complainant’s supplemental filing, the outcome of the case would have been the same.

ii) Pending Court Proceeding

According to the information provided by the Parties, there is a pending Ordinary Proceeding before the Court of Rome which was initiated by the Complainant against the Respondent for trademark infringement and involving also the disputed domain name.

Section 4.14.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that: “Panels generally issue a UDRP decision on the merits even in an overlapping court-UDRP proceeding scenario where, notwithstanding the fact that a UDRP decision would not be binding on the court, the relative expediency of the UDRP versus courts is seen as a benefit to the parties. Panel reluctance to terminate a UDRP case on this basis often also takes account of, and respects, the potential for a court action to address causes of action separate from that being addressed in the UDRP proceeding. Where there are prior or pending court or administrative (e.g., trademark office) proceedings, it is within the panel’s discretion to determine the relevance to ascribe to such proceeding in the UDRP context, in light of the case circumstances”.

In light of the circumstances of the present case and the Panel’s findings in the paragraphs below, the Panel does not deem appropriate to terminate the proceeding and will therefore proceed to analyze each of the substantive requirements prescribed by the Policy.

B. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of an Italian trademark registration for TAFFO FUNERAL SERVICES (figurative mark) in class 45.

As highlighted in section 1.7 of WIPO Overview 3.0, the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.

Moreover, as held in section 1.1.2 of the WIPO Overview 3.0, “the goods and/or services for which the mark is registered or used in commerce, the filing/priority date, date of registration, and date of claimed first use, are not considered relevant to the first element test. These factors may however bear on a panel’s further substantive determination under the second and third elements”.

In the case at hand, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark TAFFO FUNERAL SERVICES since the denominative element “taffo” is the dominant portion of the trademark and is entirely reproduced in the disputed domain name, with the mere addition of the gTLD “.com”, which is usually disregarded for the purpose of assessing confusing similarity.

Therefore, the first requirement has been met.

C. Rights or Legitimate Interests; Bad faith registration and use

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

“(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 a 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.”

It is well established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a) (ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.

Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Banco Itau S.A. v. Laercio Teixeira, WIPO Case No. D2007-0912; Accor v. Eren Atesmen, WIPO Case No. D2009-0701).

In the case at hand, the Complainant claimed exclusive rights of use of the trademark TAFFO based on its prior registered trademark TAFFO FUNERAL SERVICES and the European Union trademark TAFFO, registered in the name of some members of the Taffo family. The Complainant also claimed that the Respondent, through its registration and use of the disputed domain name, is causing confusion with the Complainant and its trademark.

However, based on the documents on records, the Respondent has proved that it has been carrying on the family funeral business since January 2015 under its company name Agenzia Funebre Taffo di Taffo G. & C. SAS, including the sign TAFFO, which corresponds to the surname of the company founders and shareholders.

Moreover, according to the records, the Respondent acquired the disputed domain name in October 2015, 10 months after the creation of the Respondent’s company, in order to promote the Respondent’s funeral services, and, only after the Respondent’s acquisition of the disputed domain name, the parties began to quarrel about the use of the trademark TAFFO and the ownership and use of the disputed domain name.

In view of the correspondence of the disputed domain name with the name of the Respondent and the complex relationships between the Parties described in the factual section, the Panel finds that, on balance, the Complainant has failed to demonstrate that the Respondent lacks rights or legitimate interests in the disputed domain name. For the same reasons, the Panel finds that the Complainant has failed to prove that the Respondent registered or acquired the disputed domain name in bad faith.

In light of the above, the Panel finds that the Complainant has failed to demonstrate the requirements prescribed by paragraph 4(a)(ii) and 4(a)(iii) of the Policy.

The Panel incidentally notes that the Policy is designed to resolve standard cases of abusive domain name registrations, while the present one is a complex trademark matter that will be more appropriately handled by the Court of Rome before which an Ordinary Proceeding is already pending.

7. Decision

For the foregoing reasons, the Complaint is denied.

Luca Barbero
Sole Panelist
Date: November 19, 2019