The Complainant is Barilla G. e R. FratelliS.p.A. of Parma, Italy, represented by Studio Barbero, Italy.
The Respondent is Nurinet of Gyeongju-si, Gyeongsangbuk-Do, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with N, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2012. On May 30, 2012, the Center transmitted by email to N. Inc. a request for registrar verification in connection with the disputed domain name. On June 1, 2012, N, Inc. 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”).
On June 4, 2012, the Center notified the parties in both English and Korean that the language of the Registration Agreement in this case was Korean. On June 4, 2012, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding within the specified due date.
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 June 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 2, 2012.
The Center appointed Hae-Chan Park as the sole panelist in this matter on July 6, 2012. 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.
The Panel determines that the language of this proceeding is English, as discussed herein. 4. Factual Background
According the information provided by the concerned Registrar N, Inc., the Respondent registered the disputed domain name on June 6, 2010.
The Complainant has been doing business since 1877 and has invested globally in its BARILLA mark which has been registered for decades prior to the Respondent’s registration of the disputed domain name.
The Complainant owns trademark registrations for BARILLA in various classes including in relation to food products as provided in Annexes 3.1, 3.2, 3.3, 3.4, and 3.5 to the Complaint.
The Complainant has registered multiple generic Top-Level Domains and country code Top-Level Domains for the word “barilla” and also registered several domain names incorporating the word “barilla” as listed in Annex 5 to the Complaint. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name , by virtue of containing “barilla” in its entirety, is confusingly similar to the Complainant’s BARILLA mark. Accordingly, the Complainant asserts that it has satisfied the identity or confusing similarity requirement in paragraph 4(a)(i) of the Policy.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy. The Complainant states that the Respondent is not a licensee. The Complainant contends that “Barilla” is not descriptive, and further contends that through its use has become a highly distinctive and well-known mark. The Complainant contends that Internet screenshots of linked advertisements in Italian relating to pasta and food products and offers to sell the disputed domain name demonstrate the Respondent’s intent to commercially profit from misleading consumers searching for the Complainant’s business.
The Complainant further contends that the Respondent registered and is using the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy. The Complainant asserts that the Respondent knew of the Complainant’s trademark, company name and business prior to registering the disputed domain name. The Complainant asserts that the Respondent’s links to competitors’ services and exchange of correspondence seeking payment of EUR 5,000 for the sale of the disputed domain name is compelling evidence of bad faith use. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, i.e., Korean, subject to the authority of the Panel to determine otherwise. The Complainant requested this dispute to proceed in English. In support of its request, the Complainant states that it is not able to communicate in Korean and translation would cause delay. The Complainant further asserts that the Respondent has “demonstrated that he or she understands English since the Respondent replied to the communication of a web agency in such a language (as per Annex 9.2), thus demonstrating familiarity with English. Furthermore, the Respondent’s Domain Name redirects users to a website where the disputed Domain name is offered for sale using an English language website to broker the sale, thus demonstrating that the Respondent comprehends English.” The Complainant cites several previous WIPO cases involving the Respondent where panels determined that, based upon prior communications, efficiency, or fairness, English would be the language of the proceeding despite Korean being the language of the registration agreement.
In adopting a language other than that of the Registration Agreement, the Panel has to exercise discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including the parties’ ability to understand and use the proposed language, time and costs. Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432. The Panel notes that, apart from the Complaint, the Center’s case-related communications have been made to the parties in both Korean and English. The Panel also notes that the Respondent has failed to participate in the proceeding, and has been notified of its default. In light of these circumstances, the Panel concludes that it will 1) proceed in line with the Center’s preliminary decision to accept the Complaint as filed in English; and 2) issue a decision in English. BancoItau S.A. v. Webmedia,WIPO Case No. D2008-0531.
Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a 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. A. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Based on presented evidence of trademark registrations, use of its BARILLA mark in the dozens of domain names registered by the Complainant and on several websites in multiple languages, and extensive sales around the world, the Panel finds that the Complainant has demonstrated that it has rights in its BARILLA trademark.
The Panel further finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark since it incorporates the entirety of the BARILLA trademark. The only difference between the Complainant’s trademark and the disputed domain name is the addition of the TLD extension “.net.” The Panel finds that the TLD extension has no relevance to the disputed domain name beyond functional necessity. Accordingly, the Panel adheres to the well-established principle that TLD extensions are irrelevant distinctions which do not change the likelihood for confusion and must be excluded from consideration as being a generic or functional component of a domain name. Belo Corp. v. George Latimer,WIPO Case No. D2002-0329; and Arthur Guinness Son & Co. (Dublin) Limited v. DejanMacesic,WIPO Case No. D2000-1698.
Accordingly, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied. B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant must demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant asserts the Respondent is not a licensee or an authorized agent of the Complainant or in any other way authorized to use the Complainant’s trademark BARILLA. Screenshots of the Respondent’s website (Annexes 7.1 and 7.5 to the Complaint) show sponsored links to the Complainant’s business competitors and an offer to sell the disputed domain name.
“[M]ere use of the disputed domain names to attract customers, for commercial gain, to Respondent’s website by creating consumer confusion with Complainant’s trademarks would not […] establish rights or legitimate interests in the domain names on the part of Respondent.” Adobe Systems Incorporated v. Domain OZ,WIPO Case No. D2000-0057.
While the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the Respondent did not provide any information to the Panel asserting any rights or legitimate interests it may have in the disputed domain name.
Paragraph 4(c) of the Policy lists a number of circumstances which can be taken into consideration to demonstrate a respondent’s rights or legitimate interests in a domain name. However, there is no evidence before the Panel that any of the situations described in paragraph 4(c) of the Policy apply to the present case.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled. C. Registered and Used in Bad Faith
According to the Policy, paragraph 4(a)(iii), for a complaint to succeed, the panel must be satisfied that the disputed domain name was registered and is being used in bad faith.
There is no evidence that the Respondent conducts any legitimate commercial or noncommercial business activity under the name “Barilla,” nor is there evidence that the Respondent is commonly known under such name.
The Complainant has been doing business under the “Barilla” name for over a century in relation to food products, employing “more than 14,000 people and in 2010 had net sales of more than euro 4 billion. It owns 43 production sites (13 in Italy and 30 outside Italy) and exports to more than 100 countries.” The Complainant operates websites under the “Barilla” name that have tens of thousands of online visitors every month. In this Panel’s view, it is unlikely that the Respondent was not aware of the Complainant's trademark when registering the disputed domain name.
The disputed domain name directed Internet users to a website featuring sponsored listings and advertising links related to food products competing with the Complainant’s well-known food products. The Respondent’s website also stated that the disputed domain name was available for purchase. The Complaint Annex 9.2 presents emails exchanged in English wherein the Respondent demanded EUR 5,000 for the disputed domain name.
The Respondent has provided no evidence of any actual or contemplated good faith use by it of the disputed domain name, nor did the Respondent reply to the Complainant’s contentions.
Whether the Respondent acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant, who is the owner of the trademark, or to a competitor of the Complainant, or capture and profit from click-through revenues based on web traffic seeking the Complainant’s website, the Panel finds that the disputed domain name was registered and used in bad faith.
Also, while the Panel notes that the Respondent’s website appears to have been subsequently deactivated after commencement of these proceedings, this does not in the circumstances preclude a finding of a bad faith registration and use of the disputed domain name.
Accordingly, the Panel considers paragraph 4(a)(iii) of the Policy to be fulfilled. 7. Decision
For 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.
Hae-Chan Park
Sole Panelist
Dated: July 19, 2012
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