WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mionetto S.p.A. v. Hbmeo Concepts B.V.
Case No. DNL2013-0056
1. The Parties
The Complainant is Mionetto S.p.A. of Valdobbiadene (TV), Italy, represented by Mai Rechtsanwälte, Germany.
The Respondent is Hbmeo Concepts B.V. of Amsterdam, the Netherlands.
2. The Domain Name and Registrar
The disputed domain name <mionetto.nl> (the “Domain Name”) is registered with SIDN through Metaregistrar.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2013. On November 8, 2013, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On November 8, 2013, SIDN 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 Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 13, 2013. In accordance with the Regulations, article 7.1, the due date for Response was December 3, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2013.
The Center appointed Willem Hoorneman as the panelist in this matter on December 31, 2013. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.
4. Factual Background
The Complainant is a renowned winery and one of Italy’s leading Prosecco (sparkling wine) producers. The company was founded in 1887 by the master winemaker Francesco Mionetto. The Complainant produces, distributes and sells Prosecco wines under its brand MIONETTO in many countries worldwide, including in the Netherlands since 2005.
The Complainant is holder of several MIONETTO trademarks, includingthe International Registration, designating the Benelux, of the figurative (stylized letters) mark MIONETTO, with registration no. 623782, registered on August 31, 1994 for wines and liqueurs (the “Trademark”).
The Complainant is also commercially active on the Internet operating a website under the domain name <mionetto.com> through which its goods are also offered and advertised. In addition, it has registered several other domain names comprising the name “mionetto” under several different TLD extensions.
The Domain Name was first registered on May 16, 2010. The Respondent became the current registrant of the Domain Name by change of ownership on January 24, 2011.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical to its trade name and Trademark. The Domain Name contains the Trademark in its entirety. Therefore, a risk of confusion amongst the public is very likely.
The Complainant claims that the Respondent has no rights to or legitimate interests in the Domain Name. The name “Mionetto” is a rare family name in Italy, and has no meaning in any language in the world. The Respondent has never been known under the Domain Name, and the Complainant has never licensed or authorized the Respondent to use its Trademark in any way. According to the Complainant, in no way does the Respondent use the Domain Name in a bona fide manner for offering products or services.
The Complainant asserts that the Domain Name has been registered or is being used in bad faith. The Complainant claims that the Respondent must have been familiar with the Complainant’s Trademark at the time of registering the Domain Name. According to the Complainant, it is at least established that the Domain Name is used in bad faith for commercial gain by attracting Internet users to the website of the Respondent where identical goods from the Complainant’s competitors are promoted. In this regard the website serves as a “bait and switch”-site by attracting customers interested in the MIONETTO products of the Complainant through the use of the Trademark in the Domain Name to subsequently persuade such users to mainly purchase goods from the Complainant’s competitors. The Complainant contends that it is therefore evident that the Respondent has registered and used the Domain Name for commercial gain, to disrupt the Complainant’s activities and to create confusion and attract Internet users to a website that such users assume is associated with the Complainant and its Trademark.
The Respondent did not reply to the Complainant’s contentions.
The Respondent is an advertising & PR agency. In the Complaint, the Complainant states that prior to filing the Complaint it contacted the Respondent and demanded transfer of the Domain Name against compensation for out-of-pocket costs. According to the Complainant, the Respondent in response alleged that it had registered the Domain Name for its client Vinites, the former importer/distributor of MIONETTO products in the Netherlands. The Complainant, however, contests that this is the case and contends that, even if this were true, the Respondent would still not have had any rights or legitimate interests in the Domain Name at the time of registration nor currently, because Vinites had no right to register the Domain Name, nor to instruct any other party including the Respondent to do so. Moreover, the Complainant indicates in this regard that in April 2010, i.e. prior to the registration of the Domain Name, the co-operation between Vinites and the Complainant had already been terminated.
6. Discussion and Findings
As the Respondent has not filed a Response, the Panel shall rule on the basis of the Complaint. In accordance with article 10.3 of the Regulations, the Complaint shall in that event be granted, unless the Panel considers it to be without basis in law or fact.
The Panel notes that, in accordance with article 16.4 of the Regulations, the Center has fulfilled its obligation to employ reasonably available means to achieve actual notice of the Complaint to the Respondent.
Pursuant to article 2.1 of the Regulations, the Complainant's request to transfer the Domain Name must meet three cumulative conditions:
a. The Domain Name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which the Complainant has rights, or other name by means of article 2.1(a) under II of the Regulations; and
b. The Respondent has no rights to or legitimate interests in the Domain Name; and
c. The Domain Name has been registered or is being used in bad faith.
Considering these conditions, the Panel rules as follows.
A. Identical or Confusingly Similar
The Complainant has based its Complaint on the Trademark and has submitted a copy of its trademark registration demonstrating that it is the holder of the Trademark. The Trademark is protected under Dutch law.
It is established case law that the top level domain “.nl” may be disregarded in assessing the similarity between the relevant trademark or trade name on the one hand, and the domain name on the other hand (see: Taylor Made Golf Company, Inc. v. Lotom Group S.A., WIPO Case No. DNL2010-0067; Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).
The Panel finds that the word element is clearly the dominant element of the Trademark. There is no difference between the Domain Name and (the word element of) the Trademark, so that the Domain Name is textually (and therefore visually and phonetically) identical to the Trademark.
Therefore, the Panel finds that the Domain Name is confusingly similar to the Trademark.
B. Rights or Legitimate Interests
As a result of its failure to submit a Response, the Respondent did not use the opportunity to show rights to or legitimate interests in the Domain Name. It may be assumed that the Respondent was and is not commonly known by the Domain Name. The record does not include any indication that the Respondent has any relevant trademark or trade name rights regarding the term “mionetto”.
The Domain Name links to a website of the Respondent where it presents itself as the Prosecco Information Office. Other than this name may suggest, the Respondent does not appear to make a legitimate noncommercial use of the Domain Name, but rather uses the Domain Name with intent for commercial gain to misleadingly divert consumers attracted by the Complainant’s Trademark to the Respondent’s website where products of the Complainant’s competitors are promoted, as the Complainant has indicated, and which the Respondent has not disputed.
Based on the foregoing, the Panel is of the opinion that the Respondent has no rights to or legitimate interests in the Domain Name.
C. Registered or Used in Bad Faith
The registration and use of the Complainant’s Trademark predate the registration and use by the Respondent of the Domain Name by several years. As the Complainant owns trademark rights effective and enforceable in the Netherlands and has substantiated actual use thereof in the Netherlands, while the Domain Name is in the “.nl” domain space and the Respondent on its website provides information on Prosecco wines and even promotes such wines of competitors of the Complainant, the Panel deems it certain that the Respondent was aware of the Complainant’s Trademark when registering and using the Domain Name.
As indicated above, the website of the Respondent serves as a “bait and switch” site. The Domain Name is used for commercial gain, by attracting Internet users to the website of the Respondent through the likelihood of confusion which may arise with the Trademark as to the source, sponsorship, affiliation or endorsement of the website of the Respondent and/or of products promoted on such website or another online location.
Having refrained from submitting a Response, the Respondent has failed to provide any evidence to the contrary.
On the above grounds, the Panel finds that the requirements of registration or use in bad faith of the Domain Name pursuant to article 2.1(c) of the Regulations have been met.
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name <mionetto.nl> be transferred to the Complainant.
Date: January 10, 2014