The Complainant is Segafredo-Zanetti S.p.A. of Pianoro, Bologna, Italy, represented by Studio Legale Caneva & Associati, Italy.
The Respondent is Dimitris Grigori of Nicosia, Cyprus. 2. The domain name and Registrar
The disputed domain name is registered with Go Canada Domains, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2015. On April 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 2015, 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 April 16, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 7, 2015.
The Center appointed James McNeish Innes as the sole panelist in this matter on May 18, 2015. 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 complaint is based upon the Complainant’s international and widely known trademark SEGAFREDO which is registered for coffee and related products in a number of countries. The trademark has been used by the Complainant since the beginning of the twentieth century and has developed considerable goodwill in this period. The Complainant is part of a group with a turnover of around USD 1.2 billion per year. The trademark has been developed by means of the Complainant’s sponsorship activity in sporting events, music and the arts in general. The Respondent registered the disputed domain name on April 6, 2014. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions include the following:
(a) The disputed domain name is completely identical to the name of the Complainant and its trademark.
(b) The addition of the word ‘coffee’ strongly underlines the confusing similarity to the Complainant’s trademark and its business.
(c) The disputed domain name recalls totally the Complainant’s trademark and also evokes ‘coffee’, the business field in which the Complainant works: consequently the Internet user is convinced that there is an economic relationship between the Complainant and the Respondent.
(d) By using the trademark as the dominant sole part of the disputed domain name, the Respondent exploits the goodwill and the image of the trademark which may result in dilution and other damage for the Complainant’s trademark. Persons seeing the disputed domain name, even without being aware of the content, are likely to think that the disputed domain name is in some way connected to the Complainant.
(e) The Complainant is the owner of the well-known trademark SEGAFREDO and its Company name.
(f) The Respondent has no rights nor can claim any rights in respect to the disputed domain name as no private rights is granted to the Respondent either in Cyprus or in the European or International Community. The Respondent does not have any business interest in the coffee field or related products.
(g) The website related to the disputed domain name is a so called “parking page” and is an attempt to use for gain the Complainant’s trademarks and business international reputation and attract Internet users who are searching for the Complainant’s products.
(h) The absence of any right on the disputed domain name is confirmed by the Respondent itself, because the disputed domain name is a typical pay-per-click selling space for, among others, advertising for coffee machines. It is uncontestable that the Respondent has no rights and any legitimate interests in respect of the disputed domain name.
(i) Segafredo brands owned by the Complainant in relation to coffee and related products are well-known brands, enjoying a substantial and global dissemination. The Complainant owns several registered trademarks in Cyprus, the place of residence of the Respondent. The Respondent registered the disputed domain name in 2014, many years later than the origin of the Complainant’s trademark rights. Consequently, having regard to the Complainant’s massive sponsorship actions, advertising, collaborations and mostly to the Segafredo Zanetti Espresso Cafe opening in Larnaca International airport of Cyprus in 2010, it is possible to conclude that the Respondent has knowledge of the Complainant’s brand at the moment of the disputed domain name creation. Only someone who was familiar with the Complainant’s mark and its activity would have registered the disputed domain name inclusive of such trademark.
(j) The domain name resolves to a courtesy page of ‘GoDaddy’. On that page the Respondent offers pay-per-click advertisements and links to sites selling coffee related products including the Complainant’s competitors’ products. Through the disputed domain name, the Respondent earns a small commission each time a link is clicked on by a web user. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(a) That the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
(b) That the respondent has no rights or legitimate interests in respect of the domain name.
(c) That the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Two separate issues fall for consideration. Does the Complainant have rights in the mark and is the disputed domain name identical or confusingly similar to the mark. On the record the Complainant has established rights in its mark and registrations. They have also demonstrated continued commercial usage since 1904.
The Complainant argues that the disputed domain name is identical or confusingly similar to its mark for the following reasons:
(a) The disputed domain name is confusingly similar to the dominant name in the Complainant’s trademarks.
(b) The disputed domain name is identical to the name of the Complainant and its trademarks.
(c) The addition of the word coffee increases the confusing similarity to the Complainant’s name and trademark.
The Panel accepts the Complainant’s contentions. The disputed domain name is confusingly similar to the Complainant’s mark. The Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that any of the following circumstances in particular but without limitation if found by the Panel to be proved based upon its evaluation of the evidence presented shall demonstrate a respondent’s rights or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)(ii):
(a) before any notice to you [respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(b) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(c) you [respondent] are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a Response and has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests. There is no independent evidence of any circumstances which could have demonstrated any rights or legitimate interests on the part of the Respondent. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Policy, paragraph 4(a)(ii) has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy contains the following provisions under the heading “Evidence of Registration and Use in Bad Faith”. For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Respondent has made no Response in this connection. The Complainant has made contentions that would lead to situations mentioned in paragraph 4(b). The Panel accepts the Complainant’s assertion that the Respondent has attempted to attract users to its web sites by creating confusion with the Complainant’s mark. The Panel finds that the Policy, paragraph 4(a)(iii) has been satisfied. 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.
James McNeish Innes
Sole Panelist
Date: May, 29 2015
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