WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
G. Bellentani 1821 S.p.A. v. Ms. Efisia Cuccuredda
Case No. D2003-0917
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 Ms. Efisia Cuccuredda, 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 November 18, 2003. On November 18, 2003, the Center transmitted by email to R a request for registrar verification in connection with the domain name at issue. On November 24, 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 November 26, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on January 12, 2004.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on January 30, 2004. 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.
Having reviewed the communication records in the case file, the Panel finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent".
The language of the proceeding is English.
4. Factual Background
Complainant G. Bellentani 1821 S.p.A. is an Italian food company, which traces its origins back to the year 1821. It is the owner of several trademarks "BELLENTANI" and "BELLENTANI MODENA 1821" throughout the world among which the Italian "B. GIUSEPPE BELLENTANI 1821" dating back to 1970, the International registration "GIUSEPPE BELLENTANI" and the Canadian registration "BELLENTANI MODENA 1821", dating back to 1985.
Respondent registered the domain name on September 16, 2003.
5. Parties� Contentions
A. Complainant
The Complainant submits that:
The domain name is confusingly similar to the trademarks BELLENTANI and BELLENTANI MODENA 1821.
There is no way that Respondent, an individual located in Italy, where Bellentani has its most significant market for food products and where the Bellentani group was originally founded, may not have been aware of the famous trademark BELLENTANI, and registration may only have occurred in bad faith; when it may be presumed that "the Respondent (�) knew of the renown of the Complainant�s trademarks".
The fact that Respondent has registered domain names corresponding to other well-known Italian trademarks including , , , and is further evidence that the registration of the disputed domain name occurred in bad faith.
Upon information and belief, Respondent has no rights or legitimate interests in respect of the domain name. In particular 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.
Respondent only offered pornographic images for a fee through her Web site, which is presently "non attivo" (not active).
Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name BELLENTANI or BELLENTANI 1821.
The use which Respondent made of the domain name in the past was commercial, and the possibility of a non-commercial fair use is difficult to conceive.
When first visited by Complainant and its attorneys in August 2003, the page at "www." resolved to an offer of pornographic services for a fee.
When last visited "www." indicated "Servizio non attivo" (The service is not active). Of course, the fact that the domain name was used in the past in association with pornography is significant enough, and what was done in the past may be done again in the future.
On the question of "use" of a domain name in bad faith when there is no actual Web page by Respondent, there is now an entire body of significant UDRP precedents.
If we look at Respondent�s past behaviour she is in a situation of "pornosquatting";
If we ignore this past behaviour and focus on the present "non-active service", she is in a situation of "passive holding, coloured by her past (mis)behaviour".
B. Respondent
The Respondent did not reply to the Complainant�s contentions. Thus Respondent has failed to submit any statement. She has not contested the allegations made in the Complaint and the Panel shall decide on the basis of Complainant�s submissions, and shall draw such inferences from the Respondent�s default as it considers appropriate without the benefit of any Response from Respondent (paragraph 14(b) of the Rules).
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name registered by the Respondent be transferred to the Complainant:
(1) the domain name is identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name;
(3) the domain name has been registered and is being used in bad faith.
A: Identical or Confusingly Similar
Complainant has demonstrated rights in the BELLENTANI and BELLENTANI MODENA 1821 trademarks, including registrations in Italy, where Respondent is located.
It is unquestionable that Complainant�s trademark registrations pre-date Respondent�s domain name registration.
The fact that Respondent has chosen to combine for her domain name two elements, the trademark "BELLENTANI" and the date "1821" (which is both the year of the establishment of Complainant�s company and a part of a Complainant�s trademark), is not only inference of bad faith, but it is also a combination that can hardly be considered sufficient to distinguish the domain name from Complainant�s trademark and trade name.
It this sense the Panel notes that it has already been found by a number of previous panelists, that a domain name which includes as a whole or partially, a third parties� registered trademark is to be considered confusingly similar to it, see A.P. Møller v. Web Society, WIPO Case No. D2000-0135, where the Panel found that: "The disputed domain names are not identical to the registered trademarks. However, it is clear that they are both confusingly similar since each incorporates the primary, distinctive elements of both of the relevant trademarks of the complainant" and Société des Produits Nestlé SA v. Stuart Cook, WIPO Case No. D2002-0118, where the Panel affirmed that: "Although the combination of the two signs is not registered or used as a trademark, the contested domain names must nevertheless be considered confusingly similar to the marks in which the Complainant has rights. This is in particular true as far as the mark NESTLE is concerned since this mark is included in its entirety as the first and dominant part of the domain names".
In view of all the above, the Panel finds that the disputed domain name is confusingly similar to Complainant�s trademarks BELLENTANI and BELLENTANI MODENA 1821.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) that before any notice to the respondent of the dispute, he or she used or made 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;
(b) that the respondent is commonly known by the domain name, even if he or she has not acquired any trademark rights; or
(c) that the respondent intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Respondent does not appear to have any connection or affiliation with the Complainant, which has not licensed or otherwise authorised Respondent to use or apply for any domain name incorporating Complainant�s trademarks. Respondent does not appear to make any legitimate use of the domain name for her own commercial or non-commercial activities. Respondent has not been known under this domain name. Respondent has not filed any Response to the Complaint and has not alleged any facts or elements to justify prior rights and/or legitimate interests in the disputed domain name. Therefore, the Panel concludes that the above constitutes prima facie evidence of a lack of rights to or legitimate interests in the domain name.
Accordingly, the Panel finds that the Complainant has satisfied the burden of proof with respect to paragraph 4(a)(ii) of the Policy.
C: Registered and Used in Bad Faith
For the purpose 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 the domain name in bad faith:
(i) circumstances indicating that the holder 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 the holder�s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder�s website or other online location, by creating a likelihood of confusion with the Complainant�s mark as to the source, sponsorship, affiliation, or endorsement of the holder�s website or location or of a product or service on the holder�s website or location.
Accordingly, for a Complainant to succeed, the Panel must be satisfied that the domain name has been registered and is being used in bad faith.
In the absence of contrary evidence, the Panel finds that:
a) the fact that Respondent has chosen to combine for her domain name two elements, the trademark "BELLENTANI" and the date "1821" (which is both the year of the establishment of Complainant�s company and a part of a Complainant�s trademark);
b) the fact that Respondent is located in Italy, where the Complainant has a primary market;
c) the fact that Respondent has registered other domain names corresponding to well-known Italian trademarks such as , , , and may constitute an inference that Respondent is engaged in an activity of trafficking in domain names, implying also a "pattern of conduct" from which it is presumed that Respondent�s only purpose was to register domain names corresponding to well-known trademarks either to sell them for valuable consideration or to attract, for commercial gain, Internet users to the holder�s website or other online location, by creating a likelihood of confusion with the Complainant�s mark as to the source, sponsorship, affiliation, or endorsement of the holder�s website or location or of a product or service on the holder�s website or location; and
d) the fact that Respondent chose for her domain names the above said well-known Italian trademarks, reinforces the inference that she had actual knowledge of Complainant�s trademarks when she registered the disputed domain name ; is sufficient evidence of bad faith registration and use of the disputed domain name.
Regarding whether Complainant�s statement that Respondent has used the domain name to offer "pornographic services for a fee" should be taken into account considering the lack of documents evidencing it, the Panel notes that the allegation above is indeed not documented by Complainant, who himself affirms that: "When first visited by Complainant and its attorneys in August 2003, the page at � www." resolved in the offer of pornographic services for a fee. Unfortunately, a printout of the resulting pornographic page has not been kept. However, affidavits can be executed if necessary and we doubt that Respondent would deny that the domain name resolved for several weeks in a pornographic page".
Nevertheless, the Panel deems that, while assessing if the allegation above is to be accepted or not, further elements should be considered, namely:
a) Paragraph 15(a) of the Rules which instructs the Panel as to the principles the Panel is to use in determining the dispute, states: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable; and
b) Paragraph 14(b) of the Rules where is written that: "If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate"; and considered that
c) Respondent has not denied Complainant�s submission and has not asserted, proven or provided the Panel with any elements to consider a different version of the facts; and that:
d) in line with the Policy rules, Complainant, having signed the Complaint, "certifies that the information contained in this Complaint is, to the best of Complainant�s knowledge, complete and accurate, that this Complaint has not been presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument" (Complaint - Paragraph 14).
The Panel finds it appropriate to take into consideration Complainant�s submission that Respondent used the disputed domain name to offer "pornographic services for a fee".
As asserted by the Complainant, that redirection to pornographic sites from a domain name incorporating the trademark of another company is, per se, evidence of bad faith has been confirmed by several Panel decisions; see e.g. Ty, Inc. v. O.Z. Names (WIPO Case No. D2000-0370), finding that absent contrary evidence, linking the domain names in question to pornographic, adult-oriented websites is evidence of bad faith; Youtv, Inc. v. Alemdar (Nat. Arb. Forum Case No. FA 94243), finding bad faith where Respondent attracted users through a domain name similar to a trademark it did not own and linked its website to pornographic websites; Oxygen Media, LLC v. Primary Source (WIPO Case No. D2000-0362), finding bad faith even where Respondent merely threatened to develop the domain name in question into a pornography site; Simple Shoes, Inc. v. Creative Multimedia Interactive (Nat. Arb. Forum Case No. 0008000095343), according to which "linking a domain name that is identical or confusingly similar to Complainant�s mark to a pornographic site is evidence of registration and use in bad faith"; Dell Computer Corporation v. RaveClub Berlin (WIPO Case No. D2002-0601); Six Continents Hotels, Inc. v. Seweryn Nowak (WIPO Case No. D2003-0022), noting that "the diversion of the domain names to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith"; Cattlemens v. Menterprises �Web Development (CPR Case No. CPR0304), concluding that "a pornographic site (�) is [inherently] antagonistic to the legitimate activities of Complainant"; and many others.
In view of all the above, Respondent�s registration and use of the disputed domain name constitutes use in bad faith within the meaning of the Policy.
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.
Fabrizio Bedarida
Sole Panelist
Dated: February 9, 2004
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