The Complainant is La Galvanina SPA of Rimini, Italy, represented by Studio Legale Caneva & Associati, Italy.
The Respondent is Valter Vergnano of San Carlos California, United States of America (“USA”) and Italy. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2013. On October 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 2013, 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 October 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 30, 2013.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on November 7, 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.
As of November 13, 2013, the Respondent sent several informal emails to the Center, basically alleging not to have received the Complaint1 and requesting from the Center to be “educated” about the proceeding regarding the present matter. On November 14, 2013, also the Complainant sent an email to the Center requesting the Panel not to consider the Respondent’s filings.
This Panel agrees with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) regarding the fact that panels have discretion whether to accept unsolicited Supplemental Filings under the Rules.
Under the Policy and the Rules, no express provision is made for the submission of additional arguments or evidence. However, the Panel may, in its sole discretion, request further statements or documents from the parties under paragraph 10 of the Rules; and a party's request may be regarded as an invitation to the Panel to exercise this discretion (see Lloyds TSB Bank PLC v. Daniel Carmel-Brown,WIPO Case No. D2008-1889).
This Panel finds it appropriate for a panel to consider the circumstances of each case before deciding whether to admit unsolicited additional submissions or not. This Panel does not consider that, in the present case, the Respondent’s Supplemental Filings are justified since no proper reason and/or exceptional circumstance was advanced. However, the Panel has noted the several informal email communications from the Respondent, and even if the Supplemental Filings would have been accepted, this would not have altered the outcome of this case. 4. Factual Background
The Complainant, La Galvanina SPA, is a company organized under the laws of Italy operating in the collection and marketing of mineral water and in the manufacture and sale of soft drinks since the beginning of the last century.
The Complainant has proved to be the registered owner of numerous registrations for the GALVANINA trademark in many countries, Italy (where the first trademark was filed on February 6, 1970) and USA (where the trademark was filed on March 30, 1990) included.
The disputed domain name was registered on May 28, 2010. The website at the disputed domain name solely displays an “Under Construction” message.
The Complainant’s trademark registrations long predate the registration of the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant claims that the disputed domain name is confusingly similar to the Complainant’s GALVANINA registered trademark; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. The Respondent submitted several informal emails stating that he had the intention of using the disputed domain name for a line of pasta without providing evidence. 6. Discussion and Findings
Preliminary Issue:
Respondent Identity:
The Respondent seems to be related to Torino Distillati S.r.l. However, noting that Torino Distillati S.r.l. does not appear in the publicly available WhoIs and claims “to have nothing to do with: ‘’”, the Panel considers Valter Vergnano as the only Respondent.
In order for the Complainant to obtain a transfer of the disputed domain name, paragraph 4(a) of the Policy requires that the Complainant must demonstrate to the Panel 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. A. Identical or Confusingly Similar
The Complainant has established that it has rights to the GALVANINA trademark.
The disputed domain name contains entirely the Complainant’s GALVANINA trademark which is combined with the Italian article “la” (corresponding to the English article “the”).
It is this Panel’s opinion that the addition of the article “la” to the Complainant’s trademark GALVANINA is not sufficient to avoid a likelihood of confusion.
Therefore, the Panel finds the disputed domain name to be confusingly similar to the trademark GALVANINA in which the Complainant has rights. B. Rights or Legitimate Interests
This Panel finds that the Complainant has made out a prima facie case and, thus, that the Respondent has no connection or affiliation with the Complainant that has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services for the reasons described in section 6.C below. In addition, the Respondent does not appear to be commonly known by the name “lagalvanina” or by a similar name. Finally, the Respondent has not replied to the Complainant’s contentions, proving any rights or legitimate interests in the disputed domain name. Furthermore, the Panel notes that the website at the disputed domain name does not resolve to an active page which could justify rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Respondent appears to be a partner of Torino Distillati S.r.l., an Italian company that manufactures soft drinks, liqueurs, beverages etc., which operates in the same field of the Complainant. As well the Respondent seems to be an Agent for Service of Process for the Vinnedge Distributing Inc., apparently, a Californian company also dealing in the same field of the Complainant. The Respondent, according to the disputed domain name WhoIs, is also based in California. It is therefore here relevant that the Complainant was awarded the American Taste Award of Excellence for Natural Mineral and Sparkling Water by the National Board of the American Tasting Institute which is based in California too.
Due to the above the Panel is of the opinion that, the Respondent, who seems to be offering the same services as the Complainant, being moreover of Italian origin and apparently residing in California, could have not been unaware of the Complainant’s trademark registrations and rights to the name “Galvanina” when registering the disputed domain name, and that the Respondent registered the disputed domain name in bad faith.
In addition, the Panel considers the combination of the following facts:
- that the Respondent offered to sell the disputed domain name to the Complainant’s US distributor;
- that the Respondent did not respond to the Complainant’s cease and desist letter;
- that the Respondent, after the present proceeding was started, tried to transfer the disputed domain name to a third party;
- that the Respondent’s address (as well as the telephone number) indicated on the disputed domain name WhoIs results to be incorrect or not updated and the Respondent refused to accept the delivery of the Written Notice of the Complaint.
- that the disputed domain name has apparently not been used since its registration.
In the absence of contrary evidence, the Panel finds on the basis of the evidence presented, that the Respondent has registered and is using the disputed domain name in bad faith.
Therefore, the Complainant has satisfied paragraph 4(a)(iii) of the Policy. 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.
Fabrizio Bedarida
Sole Panelist
Date: November 21, 2013
1 The Panel notes that the Center has employed all the reasonably available means calculated to achieve actual notice to the Respondent according to paragraph 2(a) of the Rules.
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