WIPO Domain Name Decision D2003-0867 for frezza.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Frezza S.p.A. & Frutta Inc

Case No. D2003-0867

 

1. The Parties

The Complainant ("Complainant") in this administrative proceeding is Frezza S.p.A. of Vidor (Treviso), Italy. Complainant�s authorised representative is Dr. Modiano & Associati S.p.A., Milan, Italy.

The Respondent ("Respondent") in this administrative proceeding is Frutta Inc., Bellevue, Washington State, United States of America.

 

2. The Domain Name and Registrar

The Domain Name at issue is ("Domain Name"), registered with Network Solutions Inc. Registrar ("Registrar").

 

3. Procedural History

A complaint ("Complaint"), pursuant to the Uniform Domain Name Dispute Resolution Policy, implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy, implemented by ICANN on the same date ("Rules"), was submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on October 31, 2003, by e-mail and in hardcopy on November 3, 2003.

The Acknowledgement of Receipt of Complaint was submitted to the Complainant by the WIPO Center on October 31, 2003.

On the same date, a Request for Registrar Verification was transmitted to the Registrar, which confirmed on November 7, 2003, with its Verification Response that the disputed Domain Name was registered with it, and that Respondent was the current registrant of the disputed Domain Name.

The assigned WIPO Center Case Manager completed a Formal Requirements Compliance Checklist on November 10, 2003, without recording any formal deficiencies.

The Panel independently determines and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the applicable requirements.

A Notification of Complaint and Commencement of Administrative Proceeding ("Commencement Notification") was transmitted to the Respondent on November 10, 2003, setting a deadline of November 30, 2003, by which the Respondent could file a response to the Complaint.

Since Respondent failed to submit any response to the Complaint within the set time-limit, a Notification of Respondent Default was sent by the WIPO Center to Respondent on December 2, 2003. The Panel notes that Respondent has until today failed to file any form of response to the Complaint.

Complainant requested a single-member panel. Since Respondent did not file a response, the WIPO Center invited the undersigned to serve as Sole Panelist in this case and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence which was duly signed and returned to the WIPO Center on December 8, 2003.

The WIPO Center transmitted to the parties on December 9, 2003, a Notification of Appointment of Administrative Panel and Projected Decision Date as of December 23, 2003. The Panel finds that it was properly constituted and appointed in accordance with the Policy, the Rules and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy.

 

4. Factual Background

The following facts and statements appear from the Complaint and its annexed documents which have not been contested by Respondent:

Complainant Frezza S.p.A., is a company of Italian nationality with its principal place of business in Vidor (Treviso), Italy. Complainant is leader in Europe in the field of office furniture. Frezza was legally established in 1954, following a family tradition in the field of furniture with a business going back to the 19th century. Today, Frezza is a group that includes Frezza Office Furniture and the divisions Target and Casamania, with six production units located in some 45,000 square meters of buildings. Complainant�s investment in advertising and promoting its products and trademarks is about 2.5 million Euro per year since 1998, and about 200.000,00 Euro per year have been spent for the American market alone.

Complainant has continuously used the "FREZZA" trademark around the world to identify its products. Complainant is the owner of national and international registered trademarks having registered the same trademark in about 30 countries (see Annexes 5 and 5.1 to Complaint). In the United States the first filing dates back to July 28, 1994 (see Annex 6 to Complaint).

The disputed Domain Name was registered by Respondent on January 22, 1998.

 

5. Parties� Contentions

A. Complainant

Complainant contends that:

- the Domain Name is identical to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the Domain Name; and

- the Domain Name was registered and are being used in bad faith; and

- the Domain Name should be transferred to the Complainant.

Additional respective contentions of the Complainant are contained in the following discussions and findings.

B. Respondent

As mentioned above, Respondent has been notified in accordance with paragraph 2(a) of the Rules but failed to submit a response in accordance with the requirements under the Policy. Thus, Complainant�s allegations are deemed to be non contested.

 

6. Discussion and Findings

Paragraph 4(a) of the policy directs that the Complainant must prove each of the following:

"(i) that the Domain Name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

"(ii) that the 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."

Identical or confusingly similar Domain Name: Policy 4(a)(i)

The Domain Name at issue is . Complainant is the holder of the registered trademark "FREZZA." So, the Domain Name at issue is clearly identical to Complainant�s trademark under which Complainant was internationally known before Respondent�s registration of the Domain Name at issue. Respondent does not contest this point.

Therefore the Panel holds that the Complainant has readily met the burden of proof as established by subparagraph (i) of the Policy�s paragraph 4(a).

Respondent�s Rights or Legitimate Interests in the Domain Name: Policy 4(a)(ii)

It is first convenient to recall that, according to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

"(i) before any notice to you [Respondent] 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; or

"(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

"(iii) you [Respondent] are 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."

Respondent has not provided any evidence of legitimate rights or interests in the above sense and has not shown any other circumstances reflecting right or legitimate interest in the disputed Domain Name.

Furthermore, Respondent failed to submit any proof of the fact that he, as an individual, as a business, or as another organization, has been commonly known by the Domain Name and, to this Panel�s knowledge, the Respondent is not presently conducting real activities under the name "frezza."

Complainant, in order to ascertain the existence of potential rights of Respondent, has made several attempts to contact Respondent via email, fax, phone and registered letter, at the addresses indicated and appearing from the Whois database. All these attempts failed for lack of any response from Respondent.

According to Annex 10 to the Complaint, Complainant registered the Domain Name before Respondent, namely on July 5, 1997. Complainant started publishing the company�s advertising through the corresponding website immediately after its registration. Subsequently, due to an unknown technical problem, the Domain Name lapsed. At this point, the disputed Domain Name was registered by the Respondent, and Complainant was forthwith forced to register alternative Domain Names, such as and .

Complainant, having the intention to protect its intellectual property rights, tried to contact the Respondent several times by phone and email without any success. Complainant then decided to make a final attempt through its counsel. Written attempts (by fax, registered mail and email) also failed for lack of any answer (see Annex 12 to Complaint). A research made with "," showed no listings for any business named Frutta Inc. located in Bellevue, Washington State (or nation wide), or any business having the phone number provided by Respondent on the Whois page (see Annex 13 to Complaint).

Upon information published on the USPTO official site, it appears that there are only four US trademarks corresponding to or including the word "frezza": two of them in the name of Gustav Paulig LTD Corporation Finland, another belongs to Complainant and the fourth, which is US reg. No. 75434906 Frezza Italian Soda is in the name of a certain Frutta Inc. Corporation with address in Seattle, Washington State, United States (see Annexes 14 and 15 to Complaint). Apart from the name (Frutta Inc.), all other data as compared to Respondent is different, i.e. address and city. Thus, it appears that Frutta Inc., the owner of the above said trademark, is either a different entity from Respondent or it is Respondent and has moved to a different address. In any event, Respondent also failed to show an existing link with this company (i.e. the Frutta Inc. of Seattle).

Furthermore, it is contended that the US trademark reg. No. 75434906 for Frezza Italian Soda appears to have been abandoned for lack of use, thus inferring also a lack of interest in this name (see Annex 15 to Complaint).

All the above confirms that no registered trademark identical or including the word "frezza" was in the name of the Respondent when it registered the Domain Name. Since registration, i.e. September 18, 2002 (or January 22, 1998, should the two companies result to be one and the same), the Respondent has never used the disputed Domain Name (see Annexes 19, 19.1 and 19.2 to Complaint). Thus Respondent has not been able to become known under this Domain Name.

After having thoroughly examined the facts and statements presented by Complainant, the Panel is convinced that the Domain Name at present is not in use for any sort of business matters in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use of the Domain Name.

Hence, in the absence of any indications as to a legitimate interest of Respondent to use the Domain Name, the Panel finds that Complainant has fulfilled its burden of proof under paragraph 4(a)(ii) of the Policy.

Domain Name Registered and Used in Bad Faith: Policy 4(a)(iii)

The third element to be established by Complainant is that the Domain Name has been registered and used in bad faith.

Paragraph 4(b) states the following four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the Domain Name:

"(i) circumstances indicating that you [Respondent] have registered or you [Respondent] have 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 your documented out-of-pocket costs directly related to the Domain Name; or

"(ii) you [Respondent] have 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 you have engaged in a pattern of such conduct; or

"(iii) you [Respondent] have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

"(iv) by using the Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or your location."

Complainant alleges that Respondent registered and intends to use the Domain Name in bad faith.

Respondent�s passive holding of the disputed Domain Name does not constitute any rights of the Respondent in the Domain Name , on the contrary, this passive holding infers bad faith use and registration, see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Panel in that case found for the Complainant because Complainant�s trademark was well known world-wide, while Respondent was neither using the Domain Name, nor had shown any good faith use or intent to use the corresponding website and it was not possible to find any legitimate use of the Domain Name by the Respondent.

The fourth criteria set forth in the Policy paragraph 4(b) are nonexclusive. In addition to these criteria, other factors alone or in combination can support a finding of bad faith:

Respondent did not answer Complainant�s letters claiming rights in the "FREZZA" trademark and did not deny Complainant�s claims that Respondent has no rights on the Domain Name and that it was not making any use thereof. In this sense see Sanrio Company, Ltd. and Sanrio, Inc. v. Neric Lau, WIPO Case No. D2000-0172, where the Panel stated that further evidence of bad faith use may be based on the fact that Respondent never replied to Complainant�s correspondence to assert any legitimate interest in, or right to use, the Domain Name.

Respondent registered the Domain Name on September 18, 2002 (or January 22, 1998) and has since then never used it. Holding a Domain Name for such a long period (at least more than 1 year) without making any use of it, constitutes passive holding and it is inference of bad faith use and registration.

When Complainant tried to call the phone number indicated on the Whois page, the answers received indicated that there was no Frutta Inc. under this phone number. Respondent�s bad faith registration may also be assumed from the fact that Respondents supplied incorrect contact information when registering the Domain Name. Although it is clear that supplying incorrect information cannot be considered by itself as an act of bad faith, when considered jointly with other elements, it can be interpreted as evidence of such bad faith, see Grupo Televisa, S.A., de C.V et al. v. Autosya S.A. de C.V., et al., WIPO Case No. DTV2001-0007, and BellSouth Intellectual Property Corporation v. Texas Internet, WIPO Case No. D2002-0559. In addition, as was affirmed in Clerical Medical Investment Group Limited v. C (Clerical & Medical Services Agency), WIPO Case No. D2000-1228, the failure to respond to any communication might lead to the conclusion that a false identity has been provided to the Registrar, which would be a clear indicator of bad faith. Moreover, the search made by Complainant with "" provided no listings for any business named Frutta Inc. or having the same phone number as the one given by the Respondent to the Registrar, in this sense see also Société Softissimo v. Owner, WIPO Case No. D2001-1105.

In an overall assessment of the contentions and the facts mentioned above, the Panel concludes that the requirements of paragraph 4(a)(i) and (iii) of the Policy have been sufficiently made out by the Complainant, and that Respondent�s bad faith registration of the Domain Name has been proven.

 

7. Decision

In view of the circumstances and facts discussed above, the Panel decides that the disputed Domain Name is identical to the registered trademarks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent�s Domain Name has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the disputed Domain Name, , shall be transferred to the Complainant.

 

 

Bernhard F. Meyer-Hauser
Sole Panelist

Dated: December 22, 2003

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