The Complainant is Barilla G. e R. Fratelli S.p.A. of Parma, Italy, represented by Studio Barbero, Italy.
The Respondent is Sahand Consulting Inc. of Coquitlam, British Columbia, Canada, represented internally. 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on December 13, 2012. On December 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name(s). On December 14, 2012 the Registrar 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 December 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2013. The Response was filed with the Center on January 4, 2013.
The Center appointed Sir Ian Barker as the sole panelist in this matter on January 15, 2013. 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, established in Parma, Italy in 1877, has for many years manufactured and sold pasta products of all different sorts. It sells its pasta and other food products worldwide under the BARILLA brand. It has expended large amounts in advertising and in establishing a marketing and distribution network. It owns 43 production sites and exports to more than 100 countries. It employs more than 14,000 people and in 2010 had net sales of more than Euro 4 billion. Under the BARILLA and other brands it produces about 2.5 million tons of food products.
The Complainant owns numerous trademarks for the word “Barilla” registered in Canada and elsewhere and as international trademarks. The first Canadian registration was in 1970 and the first international registration was in 1965. The Complainant also owns Canadian trademark registrations for BARILLA PICCOLLINI and ACADEMIA BURILLA.
The Complainant has registered domain names in different languages including French and English – the official languages of Canada.
The disputed domain name was registered on April 21, 2008. When accessing it, the viewer is redirected to web pages which feature sponsored links to various websites. Some of these websites promote food products including pasta. An indication at the top of the home page states that the disputed domain name is for sale. There is a link to a web page where it is possible to contact the domain name holder to enquire.
The Complainant’s agent enquired about the sale of the disputed domain name. These enquiries culminated in an email from the Respondent to the Complainant’s agent on March 12, 2011 which stated, inter alia, “If the price is right, we are interested in selling our domain names”. The Respondent’s representative offered to make the Complainant’s agent the Respondent’s agent for selling the domain name in Italy.
The Complainant sent a ”cease and desist” letter to the Respondent on June 13, 2011, which did not receive a reply despite reminders.
The Complainant gave the Respondent no authority to reflect its trademarks in the disputed domain name. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant’s registered trademarks. The addition of the generic word “alimentare” does not render the disputed domain name distinctive.
The Respondent has not provided evidence of any right to use the disputed domain name and does not come within Paragraph 4(c) of the Policy.
The Complainant’s marks are highly distinctive for pasta and pasta sauces worldwide and the Respondent is unlawfully benefiting from the Complainant’s reputation in the trademarks.
The disputed domain name was registered and is being used in bad faith. The Respondent must have known of the Complainant’s trademark at the time of registration.
The fact that the disputed domain name is offered for sale on the accessed website is evidence of bad faith as is the advice to the Complainant’s agent that the Respondent was prepared to sell the disputed domain name for more than the reimbursement of registration fees. Accordingly, it must be inferred that the disputed domain name was registered for the purpose of selling it. The links to sponsored websites show that the Respondent is earning ”click through” commissions and therefore is using the disputed domain name for commercial gain.
Moreover, there is a likelihood of confusion caused to Internet users who may think that the Respondent’s website has some connection with or endorsement from the Complainant.
The Respondent’s failure to respond to the ”cease and desist” letter is further evidence of bad faith.
The Respondent has registered numerous domain names for an illegitimate purpose. B. Respondent
The Respondent is a company engaged in registering companies and domain names.
In 2008, the Respondent was approached by a Mr. and Mrs. Nourbakhsh to register a domain name. They had operated a café in Vancouver called ”Bambo” for 14 years. They were said to have consulted an Italian friend who suggested they convert their café business which was losing revenue to an Italian restaurant in the Italian area of Vancouver some 7 kilometres away. This friend suggested a new Italian name for their business – “Barilla”, which is a surname often encountered in North America including Vancouver. Mr. and Mrs. Nourbakhsh picked Barilla because of its similarity to the word ”brilliant”.
The friend recommended the addition of the word ”alimentare” which means food in Italian. The Respondent conducted a Canadian trademark search and found no registration for ”barillaalimentare”. The Respondent then registered the disputed domain name.
Mr. and Mrs. Nourbakhsh do not operate a restaurant because of Mrs. Nourbakhsh’s health problems but the idea of an Italian restaurant is still alive.
The Respondent’s clients are not in the pasta-marketing business but offer a bona fide offering of goods and services. They do not infringe the Complainant’s trademarks. They are working in a different area of business.
The disputed domain name was not registered in bad faith but with the intent of opening an Italian restaurant in the future. The Respondent did not list the disputed domain name with any agents for the purpose of sale at a profit. If anyone is interested in purchasing one of the names controlled by the Respondent, the client is advised. Mr. and Mrs. Nourbakhsah do not wish the disputed domain name to be sold. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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
The disputed domain name is confusingly similar to the Complainant’s registered trademarks. The addition of a generic word in Italian, “alimentare”, referring to food, does not detract from the confusing similarity.
It is established jurisprudence under the Policy that a domain name consisting of a trademark plus a generic term is confusingly similar to a complainant’s trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (Second Edition, para 1.9 (“WIPO Overview 2.0”).
The addition of the word ”alimentare” relating to food, strengthens the confusing similarity of the disputed domain name to a mark which relates to food products.
Paragraph 4(a)(i) of the Policy is established. B. Rights or Legitimate Interests
The Complainant gave the Respondent no rights to reflect its trademarks in a domain name. Accordingly, the onus shifts to the Respondent to show that it comes within one of the situations envisaged by Paragraph 4(c) of the Policy.
The only ones raised here (albeit faintly) are Paragraph 4(c)(i) and (iii) under which the Respondent has to show either use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain misleadingly to direct consumers or to tarnish the Complainant’s trademark.
Bearing in mind that the onus of proving either of these defenses under Paragraph 4(c) is on the Respondent, the evidence offered in the Response is quite underwhelming. The Respondent is merely an alleged agent for a Mr. and Mrs. Nourbakhsh. If this story were to have any credibility, then they should have made some statement themselves – preferably by a statutory declaration or affidavit.
The disputed domain name does not resolve to a running restaurant business, but is merely parked on a ”click through” website which has links to products of the Complainant’s competitors.
Therefore, it cannot be said that the use of the disputed domain name is a bona fide offering of goods or services. The use of parking pages does not, of itself, confer rights or legitimate interests arising from a ”bona fide offering of goods and services or a legitimate non-commercial or fair use” of a domain name. Such practices generally constitute unfair use resulting in misleading diversion. See WIPO Overview Paragraph 2.6.
Accordingly, Paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Although bad faith registration and bad faith use have to be proved separately, the Panel has no difficulty in this case in finding both established for the following reasons:
(a) In the absence of verification from Mr. and Mrs. Nourbakhsh, the Respondent’s version of events gives rise to considerable skepticism. If they had genuinely wanted to set up an Italian restaurant, it is hard to think why they would select the name of a globally-famous brand of pasta and pasta sauce which are essential items on the menu of any Italian restaurant. Moreover, most Italians, would know of the BARILLAa brand even if Mr. and Mrs. Nourbakhsh did not.
(b) Any proper search of the Canadian trademark register would have shown the Complainant’s several registrations for BARILLA. Anyone with elementary knowledge of trademark law would have known that the mere addition to a trademark of a generic word (particularly one which is complementary to the trademark) does not reduce the confusing similarity of a domain name.
(c) The approach of the Complainant’s agent on March 12, 2011 to the Respondent displayed the Respondent’s willingness to sell the disputed domain name which rather detracts from the Respondent’s subsequent statement about the disputed domain name not being for sale (see Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044).
(d) The “click-through” website gives links to competitors of the Complainant and their products. This is conduct described in Paragraph 4(b)(iv) of the Policy as evidence of bad faith registration and use. That is the creation of likely confusion by Internet users of some connection of the disputed domain name with the Complainant or some endorsement from the Complainant of the Respondent.
(e) The failure of the Respondent to reply to the Complainant’s ‘cease and desist’ communications in the circumstances of this case is evidence of bad faith. See Stanworth Development Limited v. Mike Morgan (290436),WIPO Case No. D2006-0230.
(f) Because of the fame of the Complainant’s brands extending for over a century and the Complainant’s worldwide marketing and advertising, the Respondent should have known of the Complainant’s trademarks at the time of registration of the disputed domain name.
Accordingly, Paragraph 4(c)(iii) of the Policy is established. 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.
Sir Ian Barker
Sole Panelist
Date: January 29, 2013
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