The Complainant is Rigoni di Asiago SpA of Asiago (VI), Italy represented by Mod Law pllc, United States of America.
The Respondent is Tim Fewster of Balwyn North, Victoria, Australia, internally represented. 2. The Domain Name and Registrar
The domain name is registered with Unitedkingdomdomains, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2011. On March 2, 2011, the Center transmitted by email to Unitedkingdomdomains, LLC a request for registrar verification in connection with the domain name. On March 7, 2011, Unitedkingdomdomains, 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 March 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2011. On March 1, 2011, the Respondent sent a communication to the Center.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on April 1, 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
The Complainant Rigoni di Asiago SpA is an Italian corporation which manufactures organic jam and related products sold in Italy, throughout Europe and in other countries outside of Europe including the United States under its trade names and marks:
RIGONI
RIGONI USA
RIGONI ASIAGO
RIGONI DI ASIAGO USA
Together referred to as the “RIGONI marks”.
In addition to branding products with the RIGONI marks, the Complainant also uses product marks in connection with different types of products, e.g., FIORDIFRUTTA for fruit spreads and NOCCIOLATA for hazelnut and chocolate spreads.
The Complainant began doing business in the 1930s as a Rigoni family business, producing and marketing honey and jams in Altopiano di Asiago, Italy. From 1979 to 1997, the company operated under the name Apicoltura Rigoni di Mario E Paolo Rigoni & Company, S.n.c. (“Apicoltura Rigoni”). On November 11, 1997, the Rigoni family established Rigoni di Asiago SpA. In the early 1990s, the company decided to focus exclusively on organic products made from organic fruit and sweetened with apple juices. Appendix D to the Complaint provides copies of marketing materials explaining the history of the Complainant and showing products offered under the RIGONI marks.
Since 1996, the Complainant has continuously marketed and sold its organic products under its RIGONI marks throughout the United States on its own and through three United States subsidiary distributors which also trade using the name Rigoni.
The Complainant has spent substantial sums in advertising and promoting its organic products under the RIGONI marks which has, in turn generated hundreds of millions of dollars in sales. The Complainant has advertised and marketed its products under the RIGONI marks in prestigious publications throughout the world including a recent advertisement in the New York Times. It has promoted its products at numerous trade shows in Italy, throughout Europe and in the United States as well as through sponsoring sporting teams and events. The Complainant’s products bearing the RIGONI marks have received critical acclaim and reviews by consumers, thousands of Facebook fans, and gourmet food experts.
Since 1996, worldwide total sales of its organic jam products have exceeded USD two-hundred million, and United States total sales of its organic jam products have exceeded USD eight million. The Complainant’s products bearing the RIGONI marks are marketed and sold by numerous specialty, gourmet, and organic food retailers, as well as specialty, gourmet, and organic food stores located online and in Italy, in Europe, and in the United States. Copies of printouts from websites offering the Complainant’s products are annexed at Appendix G to the Complaint.
The Complainant owns several trademark registrations and applications for the mark RIGONI DI ASIAGO. These include the following:
(1) Italian Registration No. 0001039699 for the mark RIGONI DI ASIAGO;
(2) International Registration No. 924640 for the mark RIGONI DI ASIAGO; and
(3) United States Application Serial No. 77175544 for the mark RIGONI DI ASIAGO.
Copies of the trademark registrations and application are annexed at Appendix H to the Complaint.
Since October 25, 2006, the Complainant has been the owner of the domain name which it uses to direct consumers to the English version of its website.
The Complainant has successfully enforced its trademark rights including its rights in the RIGONI marks. For example, the United States District Court for the Southern District of Florida found, after a full trial on the merits, that the Complainant was the exclusive owner of the RIGONI marks, based on its continuous use of the mark RIGONI in Italy since the 1930s and its continuous use of RIGONI designations in the United States since 1996. A copy of the Judgment in the U.S. District Court is annexed at Appendix J to the Complaint.
No evidence has been adduced by the Respondent in this Complaint. Instead, the Respondent, Mr. Tim Fewster sent a short without prejudice letter to the Center by email on March 1, 2011 in which he indicated, inter alia:
“I suggest your case will fail. However, I would consider a fair and reasonable offer for the domain if your client agrees. This would minimize costs and fuss on all sides. Please advise as soon as possible.”
In the absence of any evidence from the Respondent, the Panel accepts the truth of the Complainant’s evidence as set out above. 5. Parties’ Contentions A. Complainant
1. The Complainant has established rights in the RIGONI marks.
2. The Respondent’s domain name incorporates the distinctive marks RIGONI and RIGONI USA and is therefore confusingly similar or identical to the Complainant’s marks.
3. The Respondent has no rights or legitimate interests in the domain name . There is no evidence that the Respondent is using the domain name in connection with a bona fide offering of goods or services, is not commonly known by the domain name, is not making a legitimate, noncommercial or fair use of the domain name.
4. The Respondent registered and is using the domain name in bad faith.
5. The Respondent registered and uses the domain name:
(i) to intentionally attempt to attract, for commercial gain, Internet users by creating a likelihood of customer confusion;
(ii) primarily for the purpose of disrupting the business of a competitor;
(iii) without taking any action to implement or make legitimate use of the domain name; and
(iv) by incorporating the Complainant’s entire mark without any cause or reason for doing so. B. Respondent
There are no factual or legal contentions filed by the Respondent. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel accepts the evidence adduced by the Complainant that it has prior established rights in the RIGONI marks. Moreover, on the evidence it is clear that the Complainant has established registered and unregistered rights in the RIGONI marks including its trade names and marks RIGONI, RIGONI USA, RIGONI DI ASIAGO and RIGONI DI ASIAGO USA.
The Panel finds that the domain name is identical to the Complainant’s mark RIGONI USA. Moreover, it is also confusingly similar to the Complainant’s other RIGONI marks including the mark RIGONI which differs only in the addition of the geographic description “USA”. The use of a geographic designation such as “USA” cannot normally serve to save an identical or confusingly similar trademark from remaining so.
In these circumstances, the Panel finds for the Complainant with regard to this element. B. Rights or Legitimate Interests
There is no evidence that the domain name is being used in connection with a bona fide offering of goods or services. Moreover, there is no evidence that the Respondent is commonly known by the domain name. According to the Complainant, which has exhibited copies of sample printouts from the website associated with the Respondent’s domain name, the Respondent’s only use of the domain name is for a website containing sponsored links to other websites and businesses. Some of the sponsored links are to websites and businesses offering products which directly and indirectly compete with the Complainant’s Rigoni products such as organic foods and fruit spreads.
There is no evidence that the Respondent is commonly known by the domain name or that it does business under the names Rigoni or Rigoni USA. The Panel therefore finds that the Respondent has no rights or legitimate interests in the domain name. C. Registered and Used in Bad Faith
The Complainant submits that the website used by the Respondent in connection with the domain name evidences the Respondent’s bad faith attempt to attract for commercial gain Internet users by creating a likelihood of consumer confusion through the diversion of Internet users searching for the Complainant’s products bearing its RIGONI marks. On the evidence, it is clear that Internet users searching for the Complainant’s products sold under the RIGONI marks are diverted through the Respondent’s Rigoni USA website to links for competing food products sold by others.
In view of this the Panel, and taking into account that there is no evidence to the contrary, the Complainant has established that the domain name was registered and is being used 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.
Clive Duncan Thorne
Sole Panelist
Dated: April 8, 2011
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