WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Urbani Tartufi s.n.c. v. Urbani U.S.A.
Case No. D2003-0090
1. The Parties
The Complainant is Urbani Tartufi s.n.c. of Perugia, Italy, represented by Eva Fiammenghi of Rome, Italy.
The Respondent is Urbani U.S.A. of Long Island, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, Inc., Registrar.
3. Procedural History
3.1. The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 7, 2003. On February 12, 2003, the Center transmitted by email to Network Solutions, Inc., Registrar, a request for registrar verification in connection with the domain name at issue. On February 14, 2003, Network Solutions, Inc., Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On February 17, 2003, the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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").
3.2. In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 17, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2003. The Respondent did not submit a formal Response. Accordingly, the Center notified the Respondent�s default on March 13, 2003.
3.3. The Center appointed Dr. Clive N. A. Trotman as the Sole Panelist in this matter on March 18, 2003. 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
4.1. On the basis of information supplied by Complainant, the Complainant�s company is derived from the Urbani family concern that has harvested and sold truffles in Italy for more than a century. Thus its name has long been well known. Complainant sells truffles around the world and maintains high standards of quality. Urbani is a world leader in truffle production.
4.2. Complainant registered the trademark word Urbani in Italy with an application dated September 29, 1989, the trademark being issued on December 2, 1992, and renewed on September 10, 1999. Complainant has other relevant trademarks or applications.
4.3. Also according to Complainant it signed in 1989, a distributorship agreement with Urbani Truffles U.S.A. in the person of Mr. Rosario Safina, part of the agreement being in effect to promote the Urbani product in the U.S.A. and Canada and not to compete with it. Respondent was to be allowed to use Complainant�s trademark as necessary for this purpose.
4.4. Respondent registered the disputed domain name on August 25, 1997.
4.5. A Deed of Assignment was signed on September 6, 2002, by Rosario Safina on behalf of "Rosario�s Epicureo Ltd (d.b.a. Urbani Tartufi U.S.A.)," which in part confirmed ownership by Complainant of U.S.A. trademark 1644515 filed on February 9, 1990 and registered on May 14, 1991.
4.6. Complainant revoked the distributorship agreement with Respondent by a deed dated November 25, 2002.
5. Parties� Contentions
A. Complainant
5.1. Complainant contends among other things that a Distributionship Agreement signed between Complainant and Urbani Truffles U.S.A. Inc in 1989 imposed obligations that apply to Respondent Urbani U.S.A.
5.2. The disputed domain name is identical to a trademark in which Complainant has rights. Complainant claims ownership of seven Italian and four U.S.A. trademark registrations or applications (most but not all containing the word Urbani). Of the seven Italian trademark registrations or applications, two were issued in 1992 and renewed in 1999; five are applications filed between August 9, 2001, and January 17, 2003. Of the U.S.A. trademark registrations or applications, one bearing Registration No. 1644515 is a depiction of truffle gathering emblazoned MARCA DI FABBRICA not including the word Urbani, issued on May 14, 1991, evidently assigned to Complainant on September 6, 2002, and stated to be identical to an Italian trademark filed on September 29, 1989, issued on February 12, 1992, with renewal applied for on September 10, 1999. The other three are applications filed between October 10, 2002, and January 22, 2003.
5.3. Respondent has no rights or legitimate interests in respect of the domain name. A Decision is requested that would halt the alleged dilution of Complainant�s trademark and damage to Complainant�s image.
5.4. Respondent has acted in bad faith by using Complainant�s name in the form of the disputed domain name for purposes of trade in competition with Complainant. The corresponding website resolves to which Respondent uses to misrepresent its present relationship with Complainant. Respondent is trading on the goodwill value of Complainant�s name without authority. Cease and desist communications from Complainant have not been acted upon by Respondent. Respondent has attempted to attract Internet users to its website for commercial gain, causing a likelihood of confusion with the Complainant�s trademarks, contrary to Paragraph 4(b) of the Policy.
5.5. Complainant requests that the disputed domain name be transferred to Complainant.
B. Respondent
5.6. No Response was received.
6. Discussion and Findings
Jurisdiction of the Administrative Panel
6.1. Paragraph 4(a) of the Policy states:
"You are required to submit to a mandatory administrative proceeding in the event that a third party (a "Complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith."
6.2. Complainant has made the relevant assertions as in 6.1 above. This dispute is properly within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute.
Whether the Domain Name is Identical or Confusingly Similar to a Trademark
6.3. The domain name subject to this Complaint is . The Complainant Urbani Tartufi s.n.c. provides evidence of a trademark including the word Urbani having been applied for in Italy in 1989 and issued in 1992. In any case it is not necessary in the present context for a trademark to have registered status (SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs, WIPO Case No. D2000-0131). The gTLD suffix ".com," or equivalent, is inevitable and of no consequence for the determination of identity or confusing similarity. The Panel finds the disputed domain name to be identical to Complainant�s trademark in terms of Paragraph 4(a)(i) of the Policy.
Whether Respondent Has Rights or Legitimate Interests in Respect of the Domain Name
6.4. Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name. The onus of proof is on Complainant. The Policy in Paragraph 4(c) lists specific circumstances, without limitation, whereby Respondent may have legitimate rights or interests in a domain name. Paragraph 4(c)(i) of these recognizes:
"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;"
6.5. According to the Complainant, "On the year 1989, URBANI Tartufi s.n.c. in the person of Paolo URBANI signed a Distributionship Agreement ... with Urbani Truffle[s] U.S.A. Inc. in the person of Mr. Rosario Safina (hereinafter referred to as the "Distributor") who is the President of URBANI U.S.A. ..." The present Respondent is not correctly Urbani Truffles U.S.A. but Urbani U.S.A., seemingly a different entity. However, the Distributionship Agreement at section 16 reads, "To better clarify all said under sect. 1.3/1.4, it is clear that all the obligations undertaken by the distributor are considered as extended to ROSARIO and ANDREA SAFINA on their own and to any other SAFINA�S controlled or related companies." The Distributionship Agreement contains an Enclosure. Agreement and Enclosure were signed on the Respondent�s side on the same date by both Rosario Safina and Andrea Safina, and in the Enclosure those signatures appear under the heading "Rosario d�Epicureo Ltd." Complainant states that the website of the disputed domain name registered by Respondent resolves to and Complainant provides evidence that copyright of the latter website is claimed by Rosario d�Epicureo Ltd.
6.6. From what was said in paragraph 6.5 above the Panel concludes that the Distributionship Agreement applies to Respondent, Urbani U.S.A. Consequently Complainant and Respondent have had a long-standing business arrangement.
6.7. There is further evidence that Complainant and Respondent had a long-standing business arrangement. For instance, the Complainant says, "The Distributor, Mr. Rosario Safina, President and owner of several affiliated Companies as Urbani Truffle U.S.A., URBANI U.S.A. Urbani Holding and Rosario�s Epicureo d/b/a Urbani Truffles U.S.A. Inc. by the foregoing Agreement of 1989 was allowed to use the trade mark "URBANI" in marketing the products, and he was allowed to deal with the manufacturers and with the customers in his quality of a sole Distributor in the "Territory." The Agreement has been concluded for an indeterminate period of time." Again the Complainant says, "The domain name "www." has been registered by Urbani U.S.A. on August 25, 1997, only to advertise the goods of URBANI Tartufi s.n.c. and with the aim of being the only Distributor in the U.S.A. for URBANI Tartufi s.n.c."
6.8. Complainant goes on to say the Distributionship Agreement was revoked by a deed dated November 25, 2002, and also says "Thus, from November 25, 2002, the Respondent has not anymore legitimate right on the use of the domain name �www.�." The inescapable deduction is that at the time of registration of the disputed domain name on August 25, 1997, and for at least part of the time between then and November 25, 2002, Complainant and Respondent were in a business relationship and Respondent had a legitimate right to use the domain name.
6.9. The Deed of Assignment (paragraph 4.5 above), which Complainant considers to be applicable to the present Respondent, also confirms the pre-existence of a business arrangement.
6.10. Complainant has not established that Respondent did not have a legitimate right or interest in respect of the disputed domain name within the meaning of Paragraph 4(c)(i) of the Policy.
6.11. Complainant�s citation of Christian Dior Couture SA v. Liage International Inc., WIPO Case No D2000-0098, was unhelpful since that case concerned abusive registration in bad faith of the most blatant kind.
Whether Domain Name Has Been Registered and Is Being Used in Bad Faith
6.12. Paragraph 4(a)(iii) of the Policy requires Complainant to prove that the domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) lists four circumstances (without limitation) that shall be evidence of the registration and use of a domain name in bad faith.
6.13. Registration of the disputed domain name was done with the evident consent of Complainant at a time when Complainant and Respondent were in a business relationship. Complainant says, for instance, "Lately and after several years of good business relationship..." (then describes recent problems). No evidence has been produced that could satisfy Paragraphs 4(b)(i), (ii) or (iii) of the Policy to the effect that Respondent registered the domain name to sell for a profit, or had intended to block Complainant from reflecting its mark in a domain name (and had engaged in a pattern of doing so), or had the primary intention of disrupting Complainant�s business. In the terms of Paragraph 4(b)(iv), which is governed by Paragraph 4(a)(iii), there has to be both registration of the domain name in bad faith and use in bad faith, and whilst Complainant may now want to make Complaints about the recent use of the website, for reasons stated previously there is no evidence its registration was made in bad faith. Complainant has failed to prove that the domain name was registered and used in bad faith within the meaning of Paragraph 4(a)(iii) of the Policy.
Summary
6.14. On August 25, 1997, when the domain name was registered, the Parties evidently were in a business relationship and Complainant constructively approved or at least acquiesced in the registration. There is no evidence or assertion from Complainant that the registration was other than authorized, bona fide and in good faith.
6.15. This dispute is not about abusive registration of a domain name within the ambit of the UDRP. It is about a business relationship gone wrong. Some time prior to November 25, 2002, when the deed to revoke the distributorship was executed, clearly the business relationship fell apart. Complainant understandably regrets parting with its long-established name in the form of a domain name and now wants it back. The UDRP is not the basis on which the Parties may argue the ownership or usage rights of a business asset. The Panel�s Decision has not required determination of the numerous non-relevant allegations placed before it.
7. Decision
The Decision of the Administrative Panel is that the disputed domain name is identical to the trademark URBANI in which Complainant has rights. Complainant has not proven that Respondent has no rights or legitimate interests in the disputed domain name and has not proven that Respondent registered the disputed domain name in bad faith. Complainant�s application for transfer of the domain name is denied.
Dr. Clive N. A. Trotman
Sole Panelist
Dated: April 7, 2003
Full & Egal Universal Law Academy