WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Star Stabilimento Alimentare S.p.A., v. Efisia Cuccuredda
Case No. D2003-0825
1. The Parties
The Complainant is Star Stabilimento Alimentare S.p.A., of Agrate Brianza, Italy, represented by Studio Legale Jacobacci e Associati, Italy.
The Respondent is Efisia Cuccuredda, of Sassari, Italy.
2. The Domain Name and Registrar
The disputed domain name is registered with R.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 16, 2003. On October 17, 2003, the Center transmitted by email to R a request for registrar verification in connection with the domain name at issue. On October 21, 2003, R 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. 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").
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 October 24, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on November 17, 2003.
The Center appointed Edoardo Fano as the sole panelist in this matter on November 24, 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.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of the Respondent�s default in responding to the Complaint).
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), "to employ reasonably available means calculated to achieve actual notice to Respondent". Therefore, the Panel shall issue its decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of the Respondent�s response.
The language of the proceeding is English, being the language of the Registration Agreement.
4. Factual Background
The Complainant is Star Stabilimento Alimentare S.p.A., a well-known Italian food company. Among others, the Complainant is the owner of the following trademark registrations:
- International registration for "ORZO BIMBO" and design" No. 494.095
- Italian registration for "ORZO BIMBO DONO DI NATURA" No. 611.032
The Complainant�s trademark rights in the wording "ORZO BIMBO" associated with its food products, in particular with a line of food products for children (being "bimbo" the Italian translation of the English word "child"), dates back to 1972.
The Respondent�s domain name was registered on September 16, 2003. It pointed to a pornographic website in English language.
5. Parties� Contentions
A. Complainant
The disputed domain name is confusingly similar with the Complainant�s trademark "ORZO BIMBO".
The Respondent has no right or legitimate interests in respect of the disputed domain name. In fact the Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name ORZO BIMBO.
Moreover, the disputed domain name links to the default page of a pornographic website, which can be further navigated only by paying a fee and therefore its use is indeed commercial and any possibility of a non-commercial fair use is excluded.
The Respondent registered the domain name in bad faith since there is no way that the Respondent, located in Italy, may not have been aware of the trademark "ORZO BIMBO" of the Complainant, certainly well-known in Italy. The fact that the Respondent registered domain names corresponding to other Italian well-known trademarks (such as for example , , , , ), all of them pointing (or having pointed in the past) to pornographic websites, confirms that the Respondent is in bad faith.
The Respondent uses the domain name in bad faith. The default page of the disputed domain name resolves (although it is "not active" at certain times) in a pornographic page advertising and selling various services connected with the peculiar form of sexual perversion known as coprophilia as well as using the so-called "mouse-trapping effect" making it more difficult for the casual internet user to leave the pornographic website. Consequences for the Complainant, as a prestigious food company, are potentially catastrophic, should even a minority of internet users come to believe that the Complainant is actually associated with pornography and a website offering photographs of "shit eaters", the more considering that "ORZO BIMBO" is a line of products primarily intended for children. The redirection to pornographic websites from a domain name incorporating the trademark of another company has been stated as evidence, per se, of bad faith by several Panel decisions (see e.g.: Motorola, Inc. Limited v. NewGate Internet, Inc., WIPO Case No. D2000-0079; Ty, Inc v. O.Z. Names, WIPO Case No. D2000-0370; Youtv v. Alemdar, National Arbitration Forum Case No. 94243; Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362; Simple Shoes, Inc. v. Creative Multimedia Interactive, Nat. Arb. Forum 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; Cattlemen v. Menterprises � Web Development, CPR Case No. CPR0304).
As in the present case, all the above are cases concerning the so-called "pornosquatting", where a cybersquatter tries to take advantage of a well-known trademark and/or trade name to attract Internet users to a pornographic website.
Also considering that the domain name resolves to a web page indicating that the service is "not active" (as it happened in some occasions), the Respondent would still be in a situation of use in bad faith. In fact not only should her "passive holding" of the domain name be regarded as sufficient in light of the decision Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and of many subsequent decisions, but certainly such passive holding would be colored by her previous behavior.
B. Respondent
The Respondent did not reply to the Complainant�s contentions and is in default: no exceptional circumstances explaining the default have been put forward.
A Respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the Complainant, in accordance with paragraph 14(b) of the Rules (see also Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International plc v. Mark Freeman, WIPO Case No. D2000-1080; Alta Vista Company v. Grandtotal Finances Limited et al., WIPO Case No. D2000-0848)
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three tests, which a Complainant must satisfy in order to succeed:
i. the 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 domain name; and
iii. the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
As far as the first of these tests is concerned, the Panel finds that the Complainant is the owner of the trademark "ORZO BIMBO" both by registration and acquired reputation.
The disputed domain name is confusingly similar to the trademark "ORZO BIMBO".
The Complainant has therefore met its burden of proving that the domain name at issue is confusingly similar to Complainant�s trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Respondent has failed to file a Response in accordance with the Rules, Paragraph 5 and has no obvious connection with the disputed domain name.
This and the fact that the Complainant asserts that the Respondent has no right or legitimate interest in the name is enough to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest exists.
However, the Respondent has not presented any evidence of rights or legitimate interests in using the disputed domain name and the Panel therefore finds that also test (ii) of the Policy's paragraph 4(a) has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, "the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or 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 its documented out-of-pocket costs directly related to the domain name; or
(ii) that 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) that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, the Respondent had intentionally attempted to attract, for commercial gain, Internet users to the Respondent�s 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."
As regards the registration in bad faith of the disputed domain name, the reputation of the Complainant�s trademark has been already established and the Panel finds that the Respondent, especially because it is located in Italy where the Complainant is also located and its trademark is especially well-known, knew or should have known that the disputed domain name was confusingly similar to a well-known trademark of a third party.
As pointed out by the Complainant, further evidence of the registration in bad faith of the disputed domain name lies on the fact that the Respondent registered other domain names identical to well-known Italian trademarks, namely , , , , .
As regards the use in bad faith of the disputed domain name, apart from the valid Complainant�s allegation of "passive holding" as set forth in the landmark decision Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003) for the occasions in which the disputed domain name resolved in a "not active" web page, on the basis of the previous behavior of the Respondent the Panel considers the present case a clear case of "pornosquatting" where linking the domain name at issue to pornographic adult-oriented websites is a widely accepted evidence of use in bad faith (MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205; America Online, Inc. v. Viper, WIPO Case No. D2000-1198; Motorola, Inc v. NewGate Internet, Inc., WIPO Case No. D2000-0079; Ty, Inc. v. O.Z. Names, WIPO Case No. D2000-0370; La Union Alcoyana S.A. de Seguros y Reaseguros v. Cosmar Hard-Soft, WIPO Case No. D2003-0570; Youtv v. Alemdar, National Arbitration Forum Case No. FA 94243; Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362; Simple Shoes, Inc. v. Creative Multimedia Interactive, National Arbitration Forum Case No. FA 95343; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022; Cattlemen v. Menterprises � Web Development, CPR Case No. CPR0304), also reinforced by the use of mouse-trapping techniques (Sparco S.p.A. v. Mr. Oleg Filipov-Guevreyan, WIPO Case No. DLA2003-0001; Dell Computer Corporation v. RaveClub Berlin, WIPO Case No. D2002-0601; Miroglio S.p.A. v. Mr. Alexander Albert W. Gore, WIPO Case No. D2003-0557).
Also the other domain names registered by the Respondent and identical to well-known Italian trademarks (namely , , , , ) were used to redirect the internet users to pornographic websites and the Panel finds it as a further evidence of the Respondent�s bad faith behavior aimed to attract, for commercial gain, internet users to her websites, by creating a likelihood of confusion with the Complainant�s (and the other third parties�) trademark(s) as to the source, sponsorship, affiliation, or endorsement of the Respondent�s website, in accordance with Paragraph 4(b)(iv), as well as diluting and tarnishing these trademarks.
Moreover, the Respondent is preventing the Complainant from reflecting one of its well-known trademarks in the corresponding most popular domain name .com, which constitutes bad faith in accordance with Paragraph 4(b)(ii).
Considering the above, the Panel finds that the Complainant has presented sufficient evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and used the disputed domain name 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.
Edoardo Fano
Sole Panelist
Dated: November 28, 2003
Full & Egal Universal Law Academy