WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Riso Principe S.p.A. v. Touch Play Corp. Case No. D2009-1011 1. The Parties
The Complainant is Riso Principe S.p.A. of Belgioioso, Italy, represented by Modiano & Partners, Italy.
The Respondent is Touch Play Corp. of Majuro, Marshall Islands. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2009. On July 29, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On July 29, 2009, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 August 5, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 25, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 26, 2009.
The Center appointed Hariram Jayaram as the sole panelist in this matter on September 4, 2009. 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
The Complainant is a joint stock company in Italy producing rice, breakfast cereals and cereal foods. RISO PRINCIPE is a trade mark used in connection with its products and services and is registered in Italy for goods and services falling under Classes 29 and 30. Its other marks are RISO MARCA PRINCIPE, Riso Marca Principe, Principe and Il Principe dei risi. It has also registered the domain names and .
The Respondent is the registrant of the disputed domain name registered on September 9, 2008. 5. Parties' Contentions A. Complainant
This Complaint is based on the following grounds:
The Complainant, Riso Principe S.p.A. is a company existing under Italian law and has its principal place of business in Belgioioso (Pavia). It is one of the leading firms in Italy for the production of rice, breakfast cereals and cereal foods. The Complainant's average turnover related to goods trade marked with the name RISO PRINCIPE for the past three years (2006-2008) was approximately 12 million Euro, while the average volume for the same period was approximately 7 million kilograms per year. The knowledge of the Complainant's activity and trade mark is widespread. As a consequence, the trade mark RISO PRINCIPE is well known in Italy and abroad. It has been extensively used by the Complainant for decades. This use has continually developed the goodwill and reputation of the Complainant and is a valuable and important asset of the Complainant. The application for the trade mark RISO PRINCIPE was first filed in Italy on December 1, 2005 and the application for the trade mark RISO MARCA PRINCIPE was first filed in Italy on February 2, 1994. The Complainant is also the owner of other registered trade marks i.e. Riso Marca Principe, Principe and Il Principe dei risi.
The domain name can be considered identical and/or confusingly similar to the trade mark RISO PRINCIPE registered by Riso Principe S.p.A. The disputed domain name is also identical to the Complainant's company name, Riso Principe S.p.A. The Complainant was incorporated in 1983 as Riso Principe S.p.A. and the Complainant has been known by the name RISO PRINCIPE at least since 1983.
As far as the Complainant knows, and from the information collected from the Internet, there is no evidence that the Respondent has trade marks or company activities registered under this brand. No agreements, authorizations or licenses have been granted to the Respondent to use the RISO PRINCIPE trade mark and or any variant of the same. The Respondent appears not to have registered the trade mark “” and has never been known under this name. It has no rights or legitimate interests in respect of the disputed domain name. The Complainant started publishing its company information via Internet through its official website www. in 2001. The Complainant discovered that the domain name had been taken by the Respondent and registered on September 9, 2008. Upon information and belief, the Respondent uses the disputed domain name to promote on the corresponding website “www.”, an image which, owing to its explicit sexual content, is detrimental to the Complainant's interests and its registered RISO PRINCIPE trade mark. All the above shows a lack of legitimate use of the disputed domain name and an inference that the Respondent has no legitimate interests in the disputed domain name. The Respondent's use of the disputed domain name is not a bona fide use.
There are reasons to believe that the Respondent knew of the Complainant's activity and the RISO PRINCIPE trade mark when registering the disputed domain name. This belief is supported by the fact that the RISO PRINCIPE trade mark is a renowned mark in the field of production and commercialisation of rice and the main contents published on the web site “www.” are in the Italian language, which is the Complainant's national language. Indeed the only sentence appearing i.e. “DALLA NATURA...SOLO I CHICCHI MIGLIORI LI RACCOGLIAMO PER TE!!!” is in Italian and can be translated into the English language as “from nature… We harvest only the best grains (of rice) for you”. The Respondent chose to use in the Italian language a sentence relating to harvesting rice and the disputed domain name corresponds to a renowned trade mark in the rice sector. These facts cannot be considered as coincidences but on the contrary can easily be seen as inferences that the Respondent knew of the Complainant's RISO PRINCIPE trade mark and its field of activity. The Respondent on the above indicated website shows an image which has an explicit sexual content. This image is flanked by another one which replaces the trade mark NOKIA with the word “Nerkia”, which is placed above the words “connecting people”, a slogan and registered trade mark of NOKIA. The word “Nerkia” is an Italian vulgar and dialectal expression meaning penis. It appears that the disputed domain name is merely used by the Respondent to direct Internet users to a web page where an image for adults is displayed. It appears that the Respondent is using a combination of images and sentences with a double meaning in tasteless mockery of the renowned trade marks i.e. NOKIA and RISO PRINCIPE. It appears that the Respondent had specific knowledge of the two renowned trade marks i.e. RISO PRINCIPE and NOKIA which are in the contents of the corresponding website. By fully incorporating the RISO PRINCIPE mark into the disputed domain name, the Respondent is in all likelihood trying to divert Internet users looking for the Complainant's website and particularly for RISO PRINCIPE's products to a website detrimental to the Complainant's interests. The Internet users who have a legitimate interest in these products are exposed to the pornographic contents on the website corresponding to the disputed domain name. The Complainant has published its company information via Internet through its official website “www.” for years. It is highly unlikely that the Respondent registered the disputed domain name without knowledge of the RISO PRINCIPE trade mark. The contents placed on the website “www.” show without any doubt that the Respondent registered and used the domain name in bad faith, apparently with the purpose of disrupting the business of the Complainant. The Complainant is being hindered and penalised by the use of this disputed domain name which is misleading the Internet users, creating a likelihood of confusion with the Complainant's RISO PRINCIPE trade mark and diluting the same. The Complainant contends that the Respondent registered the domain name with knowledge of the Complainant's registered RISO PRINCIPE trade mark and has used the disputed domain name in bad faith either for the purpose of disrupting the business of the Complainant; or in an attempt to attract, for commercial gain, Internet users to its website 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 its website or location. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name is . The Complainant is the owner of the trade marks, RISO PRINCIPE, RISO MARCA PRINCIPE, Riso Marca Principe, Principe and Il Principe dei risi. The disputed domain name has the generic “.com” domain suffix and the words “riso” and “principe” appear as one word in the disputed domain name. Such differences are immaterial and insufficient to distinguish the disputed domain name from the Complainant's trade marks particularly RISO PRINCIPE. The disputed domain name is identical to the Complainant's trade mark RISO PRINCIPE and confusingly similar to the Complainant's other trade marks RISO MARCA PRINCIPE, Riso Marca Principe, Principe and Il Principe dei risi.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The unrebutted evidence before the Panel is that the Respondent has no trade marks bearing the words “riso principe” or company activities utilizing such words; the Complainant has not given any authorization or license to the Respondent to use its trade marks; and the Respondent is not known by the name “riso principe”.
In view of the above it is not possible to infer that the Respondent has a right or legitimate interest in the disputed domain name.
The Panel finds, also in view of the Panel's findings below, that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Further unrebutted evidence of the Complainant is to the effect that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of its website which showcases explicit sexual content detrimental to the Complainant's interests.
The Panels in Caledonia Motor Group Limited v. Amizon,WIPO Case No. D2001-0860 and in Ferrero S.p.A. v. Alexander Albert W. Gore,WIPO Case No. D2003-0513 have taken a serious view on websites corresponding to disputed domain names, meant to divert Internet users to pornographic sites.
In the case before the Panel, the website corresponding to the disputed domain name itself has explicit pornographic material damaging to the trade mark owner i.e. the Complainant. The Panel finds that the registration and use of the disputed domain name by the Respondent is in bad faith.
The Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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.
Hariram Jayaram
Sole Panelist
Dated: September 18, 2009
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