WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
G. Bellentani 1821 S.p.A. v. Stanley Filoramo
Case No. D2003-0783
1. The Parties
The Complainant is G. Bellentani 1821 S.p.A., Vignola, Modena, Italy, represented by Studio Legale Jacobacci e Associati, Italy.
The Respondent is Stanley Filoramo, Montréal, Québec, Canada.
2. The Domain Name and Registrar
The domain name at issue, , is registered with Wild West Domains, Inc. (the "Registrar").
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint on October 6, 2003, (electronic version) and on October 8, 2003, (hard copy). On October 6, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On October 6, 2003, the Registrar transmitted by email to the Center its verification response and confirmed that it was the Registrar for and the Respondent is listed as the registrant of . Further, the Registrar provided contact details for the administrative, billing, and technical contact and confirmed that the Uniform Domain Name Dispute Resolution Policy (the "Policy") applied to the domain name at issue.
The Center verified that the Complaint satisfied the formal requirements of 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"). The Complainant made the required payment to the Center.
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the administrative proceedings commenced on October 9, 2003. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 29, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on November 3, 2003.
The Center appointed Markus S. Hellgren as the sole panelist in this matter on November 7, 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 paragraph 7 of the Rules. The Panel was required to forward its decision to the Center by November 21, 2003, in accordance with paragraph 15 of the Rules.
The language of the proceeding is English.
4. Factual Background
The Complainant is an Italian food company founded in 1821. The Complainant is the owner of several trademark registrations worldwide, incorporating the mark BELLENTANI, e.g.;
Canadian Trademark Registration No. TMA324,440, BELLENTANI MODENA 1821, registered March 6, 1987, in International Class 29.
International Trademark Registration No. 267424, GIUSEPPE BELLENTANI, registered March 23, 1963, in International Class 29, which designates Austria, Benelux, Switzerland, Germany, Spain and France.
On August 29, 2003, the Respondent registered the domain name .
5. Parties� Contentions
A. Complainant
Identical or Confusingly similar
The Complainant contends that the domain name is confusingly similar to the trademark BELLENTANI and the trade name G. BELLENTANI 1821 S.p.A. in which the Complainant has exclusive rights.
Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name at issue. Further, the Complainant contends the following;
There is no evidence of the Respondent�s 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. The Respondent only offers a link to a pornographic website.
The Respondent has never been commonly known, in the normal course of business, by the trademark, trade name or domain name BELLENTANI.
The Respondent links to the default page of a website, which can be further navigated only by paying a fee. Hence, his use is commercial, and any possibility of a non-commercial fair use is excluded.
Registration and Use in Bad Faith
The Complainant contends that the domain name at issue was registered and is being used in bad faith since the Respondent was aware of the trade name and trademark BELLENTANI. Further, the Respondent has registered several domain names identical or confusingly similar to Italian well-known trademarks, such as , , , , , all of them pointing to pornographic websites. The Respondent is familiar with the Italian food industry�s most well reputed trademarks.
Further, the default page of resolves in a pornographic page selling various services connected with pornography. The redirection to pornographic websites from a domain name incorporating a third party trademark is, per se, evidence of bad faith. In this respect, the Complainant refers to the following cases; Motorola, Inc. vs NewGate Internet, Inc. WIPO Case No. D2000-0079, Ty, Inc. v. O.Z. Names WIPO Case No. D2000-0370, Youtv, Inc. v. Alemdar NAF Case No. FA 94243, Oxygen Media, LLC v. Primary Source WIPO Case No. D2000-0362, Simple Shoes, Inc. v. Creative Multimedia Interactive NAF Case No. 0008000095343, Dell Computer Corporation v. RaveClub Berlin WIPO Case No. D2002-0601, Six Continents Hotels, Inc. v. Seweryn Nowak WIPO Case No. D2003-0022, Cattlemens vs Menterprises �Web Development CPR Case No. CPR0304.
The Complainant contends that all the above decisions refer to cases where a cybersquatter tries to take advantage of a well-known trademark and/or trade name to attract Internet users to a pornographic website.
B. Respondent
The Respondent did not reply to the Complainant�s contentions.
6. Discussion and Findings
The Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and commencement of this administrative proceeding, and that the Respondent�s failure to submit a Response is not due to any omission by the Center.
In view of the Respondent�s failure to submit a Response, the Panel shall decide the dispute based upon the Complaint according to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate according to paragraph 14(b) of the Rules.
According to paragraph 4(a) of the Policy, the Complainant must assert and prove each of the following:
i) that Respondent�s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
ii) that Respondent has no rights or legitimate interests in respect of the domain name; and
iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant contends that the domain name is confusingly similar to the trademark BELLENTANI and the trade name G. BELLENTANI 1821 S.p.A..
First of all, the Policy does not extend to trade names. The reasons as to why the Policy should not extend to trade names have been discussed in the final Report of the Second WIPO Internet Domain Name Process, WIPO Publication No. 843, Paragraph 306-320. However, it is possible to obtain unregistered trademark and/or service mark rights to a trade name and unregistered trademark and/or service mark rights are sufficient for the purposes of paragraph 4(a)(i) of the Policy. In this case, the Panel need not make a determination regarding whether or not the Complainant has obtained unregistered trademark rights to its trade name due to the fact that the Complainant has shown that it owns several trademark registrations, incorporating the mark BELLENTANI.
The Complainant owns the trademarks GIUSEPPE BELLENTANI, B 1821 GIUSEPPE BELLENTANI and BELLENTANI MODENA 1821. The mark BELLENTANI may be considered as the distinctive part of the Complainant�s trademarks. The domain name at issue consists of the mark BELLENTANI and the gTLD ".net". The gTLD ".net" is of no significance when determining whether or not a domain name is confusingly similar to a trademark or service mark. Accordingly, the Panel finds that the domain name at issue is confusingly similar to the Complainant�s registered trademarks.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, a Respondent may demonstrate its rights to or legitimate interest in the domain name by proving any of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondent�s 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; 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 or service mark at issue.
The Complainant has shown that the Respondent uses the domain name at issue in order to divert Internet users to a pornographic website. The Respondent�s only reason to use the mark BELLENTANI as a domain name is to attract customers who were looking for the products associated with the Complainant�s mark. Such use does not amount to a right to or legitimate interest in the domain name at issue and the Complainant has thereby made a prima facie showing that Respondent has no rights to or legitimate interests in the domain name at issue. See e.g. Caledonia Motor Group Limited v. Amizon WIPO Case No. D2001-0860.
A number of WIPO cases have established that, by virtue of paragraph 4(c) of the Policy, once a Complainant establishes a prima facie case that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent. See e.g. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 and Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022.
In this case, the Respondent has failed to meet that burden.
Accordingly, the Panel finds that the Respondent has no rights to or legitimate interests in the domain name at issue.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four nonexclusive criterions for Complainant to show bad faith registration and use of a domain name:
(i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name 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 the respondent�s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent�s website or location or of a product or service on the respondent�s website or location.
In addition to these criterions, other factors alone or in combination can support a finding of bad faith.
The Complainant has shown that the Respondent has registered several domain names incorporating Italian trademarks. This fact is a clear indication that the Respondent was aware of the Complainant�s trademark when registering the domain name at issue.
As mentioned under section B above, the Complainant has shown that the Respondent uses the domain name at issue in order to divert Internet users to a pornographic website.
Several WIPO decisions have established that a diversion of a domain name to a pornographic website is evidence of that the domain name was registered and is being used in bad faith. See e.g. Caledonia Motor Group Limited v. Amizon, WIPO Case No. D2001-0860 and Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022.
Further, the Respondent is using the domain name at issue intentionally to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant�s mark. This is evidence that the domain name at issue was registered and is being used in bad faith according to paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that the domain name at issue was registered and is being used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, , be transferred to the Complainant.
Markus S. Hellgren
Sole Panelist
Date: November 21, 2003
Full & Egal Universal Law Academy