Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Consorzio per la Tutela del Formaggio Gorgonzola v. Rob Monster / DigitalTown, Inc.

Case No. D2017-0253

1. The Parties

The Complainant is Consorzio per la Tutela del Formaggio Gorgonzola of Novara, Italy, represented by Jacobacci & Associati, Italy.

The Respondent is Rob Monster / DigitalTown, Inc. of Bellevue, Washington, United States of America, represented by Parsons/Burnett/Bjordahl/Hume, LLP, United States of America (“U.S.”).

2. The Domain Name and Registrar

The disputed domain name <gorgonzola.city> (“Disputed Domain Name”) is registered with Epik, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the Arbitration and Mediation Center (the “Center”) on February 9, 2017. On February 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 17, 2017, 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 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 February 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2017. The Response was filed with the Center on March 1, 2017.

The Center appointed Gabriela Kennedy, Nicoletta Colombo and Richard G. Lyon as panelists in this matter on March 29, 2017. The Panel finds that it was properly constituted. Each member of 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 was established in 1968 to control the use of the denomination of origin and the GORGONZOLA trade mark in relation to gorgonzola cheese. The Complainant is the holder of trade mark registrations for CG GORGONZOLA, including European Union registration number 010595015, registered on July 4, 2012.

The Respondent is a U.S. public company, and is engaged in developing a platform to enable cities worldwide to provide access to local information, including restaurants, lodging and city services. The Respondent registered the Disputed Domain Name on January 2, 2017.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows:

(a) The Complainant is the registered owner of several trade marks, including European Union registered CG GORGONZOLA device mark (registration number 010595015, registered on July 4, 2012). The Disputed Domain Name is confusingly similar to the Complainant’s registered trade marks and the denomination of origin of Gorgonzola. It is well established that the generic Top-Level Domain (“gTLD”) extension (i.e., “.city”) may be disregarded.

(b) The Complainant asserts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. There is no evidence of the Respondent’s 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. The Respondent has never been commonly known in the normal course of business as “gorgonzola”, and there is no noncommercial fair use of the Disputed Domain Name.

(c) The Respondent must have been aware of the Complainant and its CG GORGONZOLA mark, in light of its worldwide fame. Whilst the Complainant accepts that Gorgonzola is also a small town in Italy, its very existence is unknown to the public globally, and “gorgonzola” is immediately associated with the Complainant and a type of cheese.

(d) The Disputed Domain Name resolves to a website that offers a web search engine for restaurants and dishes, and can be used to order food delivery. The Complainant asserts that this will be commercially detrimental to the Complainant’s interests. The Respondent must have been aware of the Complainant’s trade mark rights at the time it registered the Disputed Domain Name, as the Complainant recorded its rights in the GORGONZOLA mark with the Trademark Clearinghouse.

B. Respondent

The Respondent’s contentions can be summarised as follows:

(a) The Respondent is the owner of over 20,000 domain names with the “.city” gTLD extension. The Respondent registered the Disputed Domain Name as it corresponds to the name of a city in Italy. Gorgonzola, as a city, is a potential target for the Respondent’s services, which allow users to access local information (e.g., restaurants, etc) about certain cities.

(b) The Respondent accepts that the Complainant has developed a reputation in the CG GORGONZOLA mark in relation to food products, but this does not dictate a conclusion that the Respondent’s use of the Disputed Domain Name is deceptively similar. Other domain names have been registered by third parties that incorporate the word “gorgonzola”, which do not appear to have been objected to by the Complainant.

(c) The Respondent is in the process of launching a platform for residents and visitors to connect with the local government, business and each other using a single platform. The platform will enable users to simply type the name of the municipality, and search it for restaurants, hotels, government services and events. The Respondent has spent considerable time and financial resources to develop this platform, and has a vested interest in maintaining its substantial domain name portfolio. If the Complainant were to have the sole right to use the Disputed Domain Name, this would create confusion for users as they would expect to receive the services provided by the Respondent in relation to other “.city” domain names.

(d) The Respondent contends that if the Complainant were allowed to prevail in these proceedings, then this would mean that no other organization could ever be able to register a Top-Level Domain extension with “gorgonzola” as a preface (e.g., <gorgonzola.travel>, <gorgonzola.law>, etc), regardless of the ultimate use of the domain name.

(e) The Respondent has no intention of taking advantage of the Complainant’s trade mark rights. The Respondent only seeks to allow its users to have access to information regarding the city of Gorgonzola.

(f) The Respondent asserts that the Complainant has failed to establish that the Respondent registered and is using the Disputed Domain Name in bad faith. There is no evidence that the Disputed Domain Name is being used to intentionally attract users to the Respondent’s website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. There is also no evidence that the Respondent offered to sell the Disputed Domain Name for profit, that the Respondent has been engaged in a pattern of conduct preventing the Complainant from using its trade mark, or any evidence that the Respondent has been trying to disrupt the Complainant’s business.

(g) The Respondent claims that it did not register and is not using the Disputed Domain Name in bad faith. The Policy is intended to address situations of bad faith cybersquatting. Notification of the Complainant’s rights by the Trademark Clearinghouse is insufficient in itself to establish bad faith. The Complainant and the Respondent are not competitors, and the Respondent is not attempting to use the CG GORGONZOLA mark to confuse users in relation to the Disputed Domain Name. The Respondent registered and shall use the Disputed Domain Name (along with thousands of other “.city” domain names) in relation to its geographic meaning, and not in relation to the Gorgonzola cheese.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the CG GORGONZOLA device trade mark, based on its CTM registration.

The Disputed Domain Name is identical to the most prominent element of the Complainant’s CG GORGONZOLA device trade mark, i.e., the word “gorgonzola”. It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the gTLD extension, in this case “.city”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, Case No. D2006-0762).

Accordingly, the Panel finds paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 2.1 of the Overview of Panel Views on Selected UDRP Questions, Second Edition (“ Overview 2.0”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Panel accepts that the Complainant has not authorised the Respondent to use the CG GORGONZOLA device mark, and there is no relationship between the Complainant and the Respondent which would otherwise entitle the Respondent to use the CG GORGONZOLA device trade mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to prove it has rights or legitimate interests in the Disputed Domain Name.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trade mark 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 trade mark or service mark at issue.

The Complainant accepts that the word “gorgonzola” is a geographic term that refers to a city in Italy. The Respondent alleges that it is in the process of developing and launching a platform to allow users to search a municipality and find hotels, restaurants, etc, in that area. As part of such operations, the Respondent therefore claims to have registered the Disputed Domain Name due to its geographic meaning and as part of its domain name portfolio, consisting of over 20,000 domain names with the “.city” gTLD extension that correspond to the names of cities. However, absolutely no supporting evidence was submitted by the Respondent. In this case, the Respondent is legally represented and so the Panel is not inclined to give the Respondent an opportunity to file further evidence that should have been filed at the time he submitted the Response. In this case, the Panel finds it necessary to exercise its power to review the website to which the Disputed Domain Name currently resolves, and to carry out a Reverse WhoIs search in relation to the Respondent (see paragraph 4.5 of Overview 2.0). The Panel wishes to remind the Respondent that whilst panellists may undertake limited factual research into matters of public record, this does not mean that they should do most of the “legwork” to establish the Respondent’s contentions.

The Panel found that the Respondent has in fact registered over 22,000 domain names (which is consistent with the Respondent’s assertions), and many of them do appear to be the names of cities registered in the “.city” gTLD extension. The Panel visited a few of these domain names and found that they resolve to websites concerning their geographic meaning. The Disputed Domain Name also currently resolves to a website that offers information regarding the city of Gorgonzola. Such business activities can be legitimate and are not in themselves a breach of the Policy, so long as they do not unfairly take advantage of the owner’s trade mark rights. In this case, no evidence has been provided to establish that the Respondent has engaged in the registration of domain names that take advantage of another’s trade mark rights.

Whilst the Panel notes that the Complainant provided evidence that the Disputed Domain Name used to resolve to a website that offered worldwide food delivery services, there is no evidence that the Respondent was specifically targeting the Complainant (e.g., there was no reference to cheese). Further, the screenshots provided by the Complainant were taken weeks before the Complaint was filed.¹ Additionally, screenshots from the Internet Archive on dates immediately prior to the Center providing notice to the Respondent of these proceedings show that the Disputed Domain Name was being used in relation to its geographic meaning. Gorgonzola is a small town in Italy with little touristic attraction. While it is entirely possible that the choice of an American company to register the Disputed Domain Name <gorgonzola.city> might have been prompted by the famous trademark for cheese, no evidence has been given to support this. On the evidence, the Panel finds that before notice of this dispute the Respondent had made use of the Disputed Domain Name in connection with a bona fide offering of services.

Taking all of the above into account, and based on the record before it, the Panel concludes that the Respondent is using the Disputed Domain Name in a descriptive manner, rather than in order to target the Complainant’s CG GORGONZOLA mark, and that such activity provides the defense to the Respondent set out in paragraph 4(c)(i), in respect to the Disputed Domain Name.

The Panel finds that the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

As the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy, the Panel does not need to consider whether the requirements of paragraph 4(a)(iii) are met.

D. Reverse Domain Name Hijacking

Under paragraph 15(e) of the Rules, “if after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.” Mere lack of success of the Complaint is not in itself sufficient for a finding of Reverse Domain Name Hijacking. There must be evidence showing knowledge on the part of the Complainant of the Respondent’s rights or legitimate interests in the domain name and evidence of harassment or similar conduct by the Complainant in the face of such knowledge (see Sydney Opera House Trust v. Trilynx Pty. Limited, Case No. D2000-1224). In this case, there is no evidence that the Disputed Domain Name was being used in relation to its geographic meaning at the time the Complaint was filed, but rather this appears to have only occurred after the Complaint was filed but before the Respondent received notice of the Complaint. There is also no evidence that the Complainant engaged in any harassing behavior or similar conduct. As such, the Panel does not make a finding of Reverse Domain Name Hijacking.

7. Decision

For the foregoing reasons, the Complaint is denied.

Gabriela Kennedy
Presiding Panelist

Nicoletta Colombo
Panelist

Richard G. Lyon
Panelist
Date: April 12, 2017

¹ In this respect, use of the gTLD “.city” supports the Respondent’s position that he registered the Disputed Domain Name for use in connection with his city-based tourism business rather than to sell cheese.