The Complainant is Rigoni di Asiago SpA of Asiago (VI), Italy, represented by Mod Law pllc, United States of America.
The Respondents are Domain Discreet of Madeira, Portugal and Claudio Mucci of Oxford, United States of America, (the “Respondent”). 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 March 2, 2011. On March 2, 2011, the Center transmitted by email to R a request for registrar verification in connection with the disputed domain name. On March 3, 2011, R transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 4, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint March 9, 2011.
The Center verified that the Complaint together with the amended 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 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 31, 2011.
The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on April 5, 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 leading manufacturer of specialty organic foods among which it manufactures an organic spread consisting of chocolate cream and hazelnut, sold in Italy and in other countries outside Europe, including the United States of America, under the trademark NOCCIOLATA.
The Complainant owns a United States of America registration for NOCCIOLATA & Design, Reg. No. 3,460,477, granted on July 8, 2008 and with a declared first use in commerce on January 31, 2003.
The disputed domain name was registered on February 1, 2005. 5. Parties’ Contentions A. Complainant
The Complainant contends the following:
The Complainant contends that it is an Italian leading manufacturer of specialty organic foods among which it manufactures an organic spread consisting of chocolate cream and hazelnut, sold in Italy and in other countries outside Europe, including the United States of America, under the trademark NOCCIOLATA.
Moreover, the Complainant contends that long prior to the time the disputed domain name was registered on February 1, 2005, the Complainant has continuously marketed and sold its organic chocolate cream and hazelnut spread under its trademark NOCCIOLATA throughout Italy, Europe, and the United States. In that connection, the Complainant also contends that in the United States it has sold Nocciolata goods on its own and through its distributors Rigoni USA, Inc. and Rigoni di Asiago USA LLC, established in 2000 and 2006, respectively.
Furthermore, the Complainant contends that is has spent considerable amounts of money in the advertising and promotion of its Nocciolata products, including a recent high-profile rugby match in Italy hosting the Iran National Women’s rugby team.
The Complainant also contends that it owns trademark registrations for NOCCIOLATA. Particularly, it contends that it owns a United States of America registration for NOCCIOLATA & Design, Reg. No. 3,460,477, granted on July 8, 2008 and with a declared first use in commerce on January 31, 2003. In that connection, it contends that the disputed domain name is identical to a trademark in which the Complainant has rights.
Furthermore, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the Complainant has not licensed or given any authorization to the Respondent to use the trademark NOCCIOLATA.
Moreover, the Complainant contends that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, is not commonly known by the disputed domain name , and is not making a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or tarnish the Complainant’s trademark.
In this connection, the Complainant contends that the Respondent is using the disputed domain name to resolve to a website that contains sponsored links that redirects users to other websites offering competing products to those offered by the Complainant.
Additionally, the Complainant contends that the Respondent is not commonly known as or identified by “Nocciolata”, nor does it have any rights in it.
The Complainant also contends that the Respondent has registered the disputed domain name in bad faith as it was or should have been aware of the Complainant and its trademark NOCCIOLATA at the time of registering the disputed domain name .
In that connection, the Complainant contends that the disputed domain name resolves to a website containing pay-per-click links, which means that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website and other online locations, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
In light of the foregoing, the Complainant requests that the disputed domain name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
For the Complainant to succeed in a UDRP proceeding, under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The Complainant owns a United States of America registration for NOCCIOLATA & Design, as noted under Section 4, “Factual Background” above.
The disputed domain name incorporates the trademark NOCCIOLATA in its entirety.
In view of the foregoing, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, and therefore, the Complainant has succeeded on this first element under the Policy. B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in paragraph 4(c) sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.
Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the burden of submitting evidence therefore shifts to the respondent. The respondent must then by concrete evidence demonstrate its rights or legitimate interests in the domain name in order to refute the prima facie case.
The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and so the burden of production has effectively been shifted to the Respondent, who did not reply to the Complainant’s contentions and, therefore, has not made such showing.
In that connection, the Complainant has submitted relevant evidence showing that the Respondent has not made a bona fide offering of goods or services. The website to which the disputed domain name resolves contains pay-per-click links that redirect Internet users to other online locations offering related goods or services to those offered by the Complainant.
In the terms of the Policy, such use in the present circumstances does not appear to be a noncommercial or fair use of the disputed domain name and, therefore, the Panel finds that the Respondent is trying to misleadingly divert consumers to the website to which the disputed domain name resolves. Moreover, the Panel finds that the Respondent is attracting Internet users to its website for commercial gain. Such use cannot be considered a bona fide use, or fair or noncommercial use.
Additionally, there is no evidence that the Respondent is commonly known as or identified by “nocciolata” or that it has any right in it. Furthermore, there is no evidence showing that the Respondent operates a business or any other organization under the disputed domain name.
For these reasons, and in the absence of a plausible explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the domain name has been registered and is being used in bad faith.
The Policy in paragraph 4(b) sets out various circumstances, which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.
The Complainant has identified itself as an Italian leading manufacturer of specialty organic foods.
Moreover, the Complainant has filed relevant evidence to the Panel’s satisfaction showing that it owns a trademark registration for NOCCIOLATA, which has been used in commerce before the disputed domain name was registered on February 1, 2005. The relevant evidence included a United States of America registration No. 3,460,477, granted on July 8, 2008 and with a declared first use in commerce on January 31, 2003, where the Respondent is apparently domiciled.
In view of the foregoing, and in the absence of a rebuttal from the Respondent, the Panel finds that the Respondent was aware or must have been aware of the trademark NOCCIOLATA before registering the disputed domain name , which evidences bad faith registration.
Moreover, as stated by the Complainant and on the basis of the printouts of the website to which the disputed domain name resolves, and in the absence of a rebuttal by the Respondent, the Panel finds that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line locations, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement.
For these reasons, the Panel finds that the Respondent both registered and is using the disputed domain name in bad faith and that the Complainant has therefore made out the third element of its case. 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 the Complainant.
Miguel B. O'Farrell
Sole Panelist
Dated: April 15, 2011
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