Complainant is Consorzio per la Tutela del Franciacorta of Erbusco, Province of Brescia, Italy, represented by Studio Legale Jacobacci, Sterpi, Francetti, Regoli, de Haas & Associati, Italy.
Respondent is Vittorio Salamone of Vizzini, Province of Catania, Italy, internally represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2011. On February 21, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On February 22, 2011, Tucows Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on February 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2011. The Response was filed with the Center on February 25, 2011.
The Center appointed Roberto Bianchi as the sole panelist in this matter on March 22, 2011. 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
Complainant Consorzio per la Tutela del Franciacorta is a public body created by Italian law to regulate and control the use of the name and trademark FRANCIACORTA, which is the denomination of origin of a well-known sparkling wine.
Complainant owns FRANCIACORTA and other FRANCIACORTA-related trademark registrations in numerous countries, inter alia, an Italian registration for FRANCIACORTA DOCG (stylized), filed on September 22, 2006, registered on September 22, 2009 under Reg. No. 000121239, covering wines, sparkling wines, grappa and liquors of International Class 33. This trademark registration cites as priority a first filing on October 11, registered on December 23, 1996 under Reg. No. 697791.
The disputed domain name was registered on January 15, 2009.
On February 10, 2011 the disputed domain name resolved to a web site whose first page was entitled “FRANCIACORTA DOCG Portale di Promozione del Franciacorta e delle Aziende Produttrici” (“Franciacorta DOCG, a portal promoting the Franciacorta and its producers”). The portal contained, apart from some texts referring to FRANCIACORTA sparkling wines, a number of references and links to food products and their manufacturers, apparently unrelated to Complainant. 5. Parties’ Contentions A. Complainant
In its Complaint, Complainant contends as follows:
- Complainant is and has been the owner of the trademark FRANCIACORTA for many years. FRANCIACORTA is a famous trademark, particularly in Italy, where it is primarily known in connection with a sparkling wine. The disputed domain name includes the trademark and trade name FRANCIACORTA.
- Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, Respondent is not associated in any way to Complainant or its distribution network. Respondent has never been commonly known by the name “Franciacorta”. There is no evidence of a bona fide, noncommercial or other legitimate fair use by Respondent; in fact, the only use of the disputed domain name is to promote certain products, creating the false impression that Complainant and Regione Lombardia certify them. This use of the disputed domain name is neither noncommercial nor legitimate.
- There is no way that Respondent may not have been aware of the name and trademark FRANCIACORTA, and registration can only have occurred in bad faith. Respondent’s use of the disputed domain name is further evidence of bad faith, excluding any defense that the “Franciacorta” term is used in a geographical sense rather than in the original sense of indicating Complainant’s trademark. In fact, Respondent’s web site claims to be the “portale” (i.e., gateway, or general web site) of “FRANCIACORTA DOCG”. “DOCG” stands in Italian for “denominazione controllata e garantita” (“denomination of origin controlled and guaranteed”) and refers to wine and other products whose name may only be used under certain controls which guarantee to the consumers the origin and quality of the product. Under Italian law, Complainant performs these controls under the aegis of Regione Lombardia, one of Italy’s regions. The web site of Respondent also uses, quite prominently and without authorization, the name and logo of Regione Lombardia. Clearly, Respondent tries to give the impression that its web site is the official site of Complainant and is under the supervision of Regione Lombardia. Upon information and belief, Respondent has no connection whatsoever with Regione Lombardia or Complainant. Respondent is a photographer located in Sicily. Through its use of the disputed domain name, Respondent tries to “certify” as approved by Complainant and Regione Lombardia products and services, including shoes, olive oil, ham and spa services not connected in any way with the use of the trademark FRANCIACORTA regulated by the Italian law and administered by Complainant and Regione Lombardia.
- Respondent uses the disputed domain name in bad faith. The disputed domain name resolves in a web site promoting certain products. Panels have consistently held that the use of a domain name confusingly similar to a well-known trademark in order to sell or advertise products not connected with the trademark’s legitimate use is a typical case of use in bad faith. B. Respondent
Respondent sent three communications in this proceeding. On February 19, 2011, Respondent stated in an e-mail, “Domain dispute ". RESPONSE. I do not contest the arguments of the Complainant, and remain open to any decision the Panel may take. Art Advertising di Vittorio Salamone[…]”. In an e-mail of February 21, 2011, Respondent stated, “I confirm that I will accept a decision of the Panel. I do not dispute that FRANCIACORTA is a trademark designating a wine and owned by Complainant. I confirm that in view of several circumstances a Panel decision may be preferable to a settlement. Best regards Art Advertising di Vittorio Salamone[...]”. Finally, in its informal response of February 25, 2011, Respondent stated that it “agree(s) that FRANCIACORTA is the name of a DOCG wine and is a trademark which should be used only with the consent and under the supervision of the Consortium.” 6. Discussion and Findings
Under Policy, paragraph 4(a), a complainant must make out its case that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
By submitting printouts of, inter alia, Italian trademark registrations, Complainant has shown that it owns the FRANCIACORTA DOCG trademark covering wines and sparkling wines, a fact that Respondent not only does not dispute but also expressly accepts (see Respondent’s emails, discussed supra)
Since the disputed domain name incorporates Complainant’s mark, although suppressing the “DOCG” suffix and adding the “.org” gTLD, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name, that it is not associated in any way to Complainant or its distribution network, and that it has never been commonly known by the name “Franciacorta”. Complainant adds that there is no evidence of a bona fide, noncommercial or other legitimate fair use of the disputed domain name by Respondent. Complainant also submits printouts showing that the only use of the disputed domain name at the time the Complaint was filed was a web site promoting certain products, creating the false impression that Complainant and Regione Lombardia endorse or certify these products, a use that is neither noncommercial nor legitimate.
Taken together, Complainant’s contentions and supporting evidence amount to a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. It is the consensus view of UDRP panels that once a prima facie case is made by a complainant, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)”.
Since Respondent has not submitted any comments or evidence in its favor, and instead expressly states that it does not contest Complainant’s arguments, the Panel agrees with Complainant that Respondent lacks any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the policy. C. Registered and Used in Bad Faith
Respondent is a photographer residing in Italy, Complainant’s country of incorporation and business. Also, as seen above, Respondent has expressly stated that it does not dispute that FRANCIACORTA is a trademark designating a wine and owned by Complainant, and Respondent does not contest the arguments of Complainant. Therefore, the Panel agrees with Complainant’s allegations and supporting evidence that Respondent registered the disputed domain name with clear knowledge of Complainant’s well-known trademark.
From the evidence, it is clear that in Respondent’s web site at the disputed domain name, Respondent aimed at creating confusion among Internet users who visited the web site presumably looking for Complainant or Complainant’s FRANCIACORTA mark and products, and instead were offered links to products and services unrelated to and unauthorized by Complainant. In other words, Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site. This is a circumstance of bad faith registration and use of the disputed domain name pursuant to Policy, paragraph 4(b)(iv).
Accordingly, the Panel finds that Complainant has satisfied 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 disputed domain name be transferred to Complainant.
Roberto Bianchi
Sole Panelist
Dated: April 4, 2011
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