WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barilla G. e R. Fratelli S.p.A. v. Cui Long
Case No. DCO2021-0062
1. The Parties
The Complainant is Barilla G. e R. Fratelli S.p.A., Italy, represented by Studio Barbero, Italy.
The Respondent is Cui Long, China.
2. The Domain Name and Registrar
The disputed domain name <barilla.com.co> is registered with NETIM SARL (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2021. On July 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name (the “Domain Name”). On August 3, 2021, 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 August 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2021.
The Center appointed Michelle Brownlee as the sole panelist in this matter on September 3, 2021. 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 owns a number of registrations for the BARILLA word and design marks throughout the world, including the following:
International Registration Number 675652, registered on June 20, 1997, for BARILLA in connection with goods in international classes 29 and 30;
International Registration Number 1077405, registered on April 7, 2011, for BARILLA in connection with goods and services in international classes 29, 30, 31, 32, 33, 35, 41, 42 and 43;
International Registration Number 349555, registered on September 26, 1968 for the mark BARILLA and design in connection with goods in international classes 5 and 30;
International Registration Number 517379, registered on December 2, 1987, for the mark BARILLA and design in connection with goods in international classes 21, 25, 29, 30 and 31.
The Respondent registered the Domain Name on February 23, 2020. The Domain Name is offered for sale for EUR 800 on Sedo.com.
5. Parties’ Contentions
The Complainant states that it was established in 1877 by its founder Pietro Barilla, who ran a small shop selling pasta and bread with an adjoining bakery. In 1910, Pietro’s sons, Gualtiero and Riccardo Barilla, took over the business and oversaw the construction of a bread and pasta factory. Riccardo’s sons continued to increase automation and grow the business by creating and acquiring new brands and invested heavily in advertising.
The Complainant states that today it employs around 8,600 employees and its annual net sales in 2020 was approximately EUR 3,890 billion. The Complainant states that every year about 1.9 million tons of food products, bearing the Complainant’s brands BARILLA, MULINO BIANCO, VOIELLO, PAVESI, WASA, HARRY’S, LIEKEN URKORN AND GOLDEN TOAST, ACADEMIA BARILLA, MISKO, FILIZ, YEMINA and VESTA, are featured on dining tables over the world. The Complainant states that its brands are the leaders in the world pasta market, the European sauce market, the Italian and French bakery and bread markets, and the Scandinavian and Central European crispbread markets.
The Complainant notes that it has been rated the leading food company by The Reptrak Company, an organization that provides reputation data and insights. The Complainant also mentions that it was awarded the prestigious global Catalyst D&I Award for the advancement of women in the workplace.
The Complainant operates web sites at “www.barilla.com” and “www.barillagroup.com”. The Complainant has also registered numerous domain names that incorporate the BARILLA trademark, including <barilla.co> and <barilla.com.cn>.
The Complainant contends that the Respondent registered the Domain Name without the Complainant’s authorization. The Domain Name directs Internet users to web pages of the brokerage platform Sedo.com, which initially offered the Domain Name for sale at a price of EUR 1,499, and later offered the Domain Name for sale at a price of 800 Euro. The Complainant engaged in correspondence with the Respondent, first through a web agent and later through its legal representative, in which the Respondent offered to sell the Domain Name for EUR 1,499 and later EUR 800. After efforts to persuade the Respondent to transfer the Domain Name at no cost were unsuccessful, the Complainant filed the present Complaint.
The Complainant contends that the Domain Name is identical to the Complainant’s BARILLA trademark, that the Respondent has no rights to or legitimate interests in respect of the Domain Name, and that the Respondent has registered and is using the Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it has rights in the BARILLA trademark, and the Panel finds that the third level of the Domain Name is identical to the trademark. Accordingly, the Complainant has proved this element.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is 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 at issue.
The Respondent has not presented evidence that the Respondent used or made preparations to use the Domain Name in connection with a bona fide offering of goods or services, that the Respondent is commonly known by the Domain Name or that the Respondent is making a noncommercial or fair use of the Domain Name, or in any other way refuted the Complainant’s prima facie case. The Complainant has alleged that the Respondent is using the Domain Name in connection with a web page that offers the Domain Name for sale and that the Respondent sent emails to the Complainant offering to sell the Domain Name for sums greater than the expenses associated with registration of the Domain Name. The Respondent has not refuted those allegations. In the Panel’s view, this cannot be considered a bona fide offering of goods or services.
Accordingly, the Panel finds that the Complainant has established this element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name at issue primarily for the purpose of selling, renting, or otherwise transferring the 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 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 its web site or location or of a product or service on its web site or location.
The Panel finds that the Complainant has established bad faith registration and use. The Respondent registered the Domain Name, which incorporated the Complainant’s well-known BARILLA trademark. When the Complainant contacted the Respondent, the Respondent did not offer any explanation for his registration of the Domain Name, and offered to sell the Domain Name to the Complainant for EUR1,499 at first, and then later for EUR 800, both sums that are likely greater than the registration fees for the Domain Name. The Complainant refused the offers and demanded transfer of the Domain Name without any payment. The Respondent did not respond to the Complaint or otherwise offer any explanation of why he registered the Domain Name. Therefore, the evidence submitted by the Complainant tends to demonstrate that the Respondent’s only purpose in registering the Domain Name was to attempt to sell it to the Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <barilla.com.co> be transferred to the Complainant.
Date: September 14, 2021