The Complainant is A. Loacker S.p.A. of Renon, Italy, represented by Bacchini Mazzitelli Law Firm, Italy.
The Respondent is Marty Stein, Marcomm, Inc. of Fairfax, United States of America (“USA”), represented by Jon E. Trevathan, Esq., USA. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2015. On April 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 17, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 24, 2015.
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 28, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2015. The Center received email communications from the Respondent (as listed in the WhoIs and confirmed by the Registrar) on April 28, 2015 and May 3, 2015. The Response was filed with the Center on May 18, 2015.
The Center appointed Tony Willoughby as the sole panelist in this matter on May 22, 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 Complainant is an Italian-based confectionery company, which was founded in 1925. Since 1997 it has sold a range of confectionery items under the name, Loacker Quadratini, a product range, which has won several prestigious awards over the years. The Complainant is the registered proprietor of trade mark registrations of the word mark, LOACKER QUADRATINI, in many countries around the world including United States Trade Mark Registration No. 2073114 in class 30 for biscuits, wafers and cakes and a number of other confectionery items.
The unchallenged evidence of the Complainant is that the Complainant’s packaging design for its Loacker Quadratini product range is identical in every market . The exhibited pictures of the packaging show that the name “Loaker” is used at the top of the pack in the manner of a house mark while the name “Quadratini” features in larger script across the middle of the pack, more in the manner of a brand.
The Domain Name was registered on August 28, 2009. On March 7, 2011 it was connected to a PPC parking page, probably a default parking page of the Registrar.
Prior to the launching of this Complaint, the parties were in communication with each other, but the Panel is not in possession of the full extent of those communications. It appears that the Respondent initiated the exchange on September 2, 2014 by telephoning a Mr. Logan, Vice President of Sales Loacker USA, and then following the call up with an email making various suggestions as to how he might develop sales of the Complainant’s products (including online sales through the Domain Name). He asked Mr. Logan to send him certain retailing information. The email concluded: “We’ll talk when you get back.”
Evidently, the Respondent received no reply because on October 1, 2014 he followed up with a “chaser” reading “hello .. it’s been a month now and you’ve not responded to my email and thought i’d [sic] write again. still interested in marketing quadratini’s [sic] so wondering why you’ve not responded. let me know ..”
The same day Mr. Logan responded explaining that he had been away in Asia for 17 days and was busy with current customers. He said that he wasn’t sure what the Respondent wanted of him. He suggested that the Respondent “may want to contact a business consultant to help [him] set [his] company up.”
The Respondent in a further email on October 1, 2014 stated that he regarded Mr. Logan’s response to be rude. In this email he set out the information he was expecting to receive. He also stated that he had been in the food service business for a long time. He went on to say: “I’ll admit in all my years in business i’ve never had anyone tell me that they’re too busy to add new customers” and asked that he be put on to somebody else in the company who might be interested in assisting him.
Four hours later Mr. Logan replied explaining that he was on a freeway in Los Angeles and would continue to be so for the next 30 minutes and ended “Let me know if you want to talk”. Four minutes later the Respondent replied: “this can wait. just get back to me when you’re in your office.”
Garey did not call the Respondent and on October 20, 2014 the Respondent emailed Mr. Logan expressing frustration and disappointment at his apparent lack of interest in doing business with him.
At some stage (on a date unknown) the Respondent received an email from a Mr. Tribus, President Loacker USA. The email reads as follows:
“Dear Mr. Stein
Thank you very much for your emails and your interest in selling Loacker products. The success of our brand stems from the passion and believe [sic] in Loacker.
Nevertheless, Loacker has guidelines and policies as well as business procedures that allow us to offer the best service and an impeccable supply chain thruout the whole US-territory, including Alaska, Hawaii, Guam & Saipan, Puerto Rico and US Virgin Islands. In order to offer a solid sales service, Loacker USA has established a national brokerage network. This being said, we are more than happy to add to our distributor network additional customers. However, in order to become a new customer, we need to go through a predefined process.
We need to know your customer base, the number of stores you are serving, the type of stores you mainly provide with service, in order to choose the right items working for you and your customers. After, we will run a credit check as well as other background information and once we get the ok from our accounting department, our customer service will set you up as a new vendor. New vendors are subject to cash in advance only and the minimums of $5,000.
If this process is fine for you, I kindly ask you to provide me following information about your company and your business approach:
- coverage area / territory
- customer base and channel specialty
- # of stores served in territory
- other products in your portfolio
- years in business
After a positive evaluation from your [sic] sales staff, accounting will run background information on your company. Therefore we need:
- company name including full address
- fed tax ID
- president/owner full name including SSN
- phone number of the business
Based on this information, accounting will define a line of credit. Nevertheless, the first orders (minimum 3 - 5) are cash in advance only.
Please let me know if this works for you. If yes, I kindly ask you to provide to [Mr.] Logan, VP sales, all needed information in order to move on in the process of setting up your company as a new vendor.
Thank you very much for your cooperation”.
As indicated above, this email is undated, but the Panel believes it likely that it followed the Respondent’s communications with Mr. Logan, both parties having confirmed that the initial approach of the Respondent to the Complainant was in September 2014.
On October 22, 2014 the Respondent posted on his website connected to the Domain Name a message headed “Hello World” and reporting on his attempt to get the Complainant to supply him with the Complainant’s product. The message commenced “You would think that a company who sells such a great product wouldn’t be jerks about it.”
On April 7, 2015 the webpage was headed “For Sale” and the following text read “Q is for sale! Send offer to [email address redacted]. We would also consider partnerships to sell products through the domain. Everyone loves Quadratini cookies. Yum. Why not have this amazing product advertised on this equally amazing name!” 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to its “Quadratini Trademark”, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.
The Complainant contends that the Respondent must have been aware of the Complainant’s “Quadratini Trademark” when he registered the Domain Name, given the international fame of the trade mark, and that he must have registered it with the intention that, for commercial gain, it should create an impression of an association with the Complainant. As to bad faith use he cites the communications referred to in Section 4 above and states that this demonstrates that the Respondent was using the Domain Name to strengthen his business proposal to the Complainant, his aim being to sell the Domain Name to the Complainant. When the Complainant indicated that it was not interested in his proposal, the Respondent used the Domain Name to denigrate and tarnish the Complainant’s good name. In so doing the Respondent has used the Domain Name to disrupt the Complainant’s business. B. Respondent
As indicated in Section 3 above the Respondent has sent two emails to the Center and has filed a Response. The Respondent, Marty Stein, claims that he holds the Domain Name as nominee of the company Marcomm Inc. The Response was accompanied by 336 pages of annexes.
In his email to the Center dated April 28, 2015 the Respondent wrote:
“Hello..
This case is very simple. I spoke to [Mr.] Logan on several occaisions [sic] over a few month span last year. At that time, he told me he didn't care if i used the domain as long as i was selling the Loacker products. And in emails i even reference the domain, so he knew about it from the beginning, and he specifically told me he did not have an issue with my using the domain and only after they refused to do business with me they decided they wanted the domain.
Since Loacker refused to allow me to distribute their products, it was their choice to not allow me to benefit from using the domain, and as such have no grounds to try to steal it back after he specifically said he was ok with me using it. He did not reference anything in the emails about it probably because he is deceitful and likely a liar about this entire matter.
I've offered to sell the domain to them, which has been ignored.
Based on the more recent discussions, i have little doubt Mr Logan is fully capable of lying and even perjure himself if this were in a court of law. My guess is he has no problem lying and saying he had no knowledge of the domain, but in the emails it is mentioned. Yet nothing was mentioned after that, proving he knew about it and wasn't concerned about it. Perhaps those emails were not referenced or edited?
For further discussion […], please contact my lawyer […]”
In his email to the Center dated May 3, 2015 the Respondent wrote:
“Hello..
Something i should add to this complaint.
When I originally talked to Mr Logan about selling their product, i informed him at that time that i held the quadratini domain. I asked if it was a problem and his response was no, it would be ok if i'm selling their product.
Once they refused to sell product to me, then they went after the domain, after 5 years. I feel this is not a valid claim on their part simply because his statement to me when we talked was it was ok and not a problem.
Once he voiced his opinion, he lost the rights to claim the domain. I've offered to sell it to them at a reasonable price, but they ignored my email.
But during several calls, we discussed the product and he was well aware of my ownership. I am not sure he will tell the truth and likely he will not, as my feeling is he is unethical and will do whatever he needs to take the domain, including but not limited to lying or committing fraud.
I do not claim to have this in writing, as our substantive discussions were on the phone and as such I can not prove my claim. So, ultimately, it is based on his willingness to lie to claim the domain. If they feel this is an acceptable way to get the domain, perhaps I have no way to prevent them from stealing it from me.
Ask why it took over 5 years to demand it back, ask why they NEVER once asked ME to either release it to them or why they never made any offer to buy it from me. The only contact about the domain in question was to file claims with WIPO.
I bought it on the open market, i did not steal it and contacted them about using it to sell THEIR product. They knew I owned it, and never inquired about it. I suspected they were doing something as he accidentally sent me an email although it was vague and I was not sure what it was about.
But in fairness, I feel i bought it legally, they were not interested in the domain when I acquired it. I informed them I owned it and they still had no interest in the domain and I even made an offer to sell it to them.
Please dismiss this dispute as Logan and Loacker had ample opportunity to work this out with me and chose not to.
Thanks”
In Section III of the Response the Respondent conditionally objected to the jurisdiction of the World Intellectual Property Organization (WIPO) over this dispute. Section III of the Response concludes “The foregoing paragraphs of this Section III notwithstanding, Respondent agrees to waive its objections to WIPO’s jurisdiction over this matter in the event Complainant elects to cause this matter be resolved before a panel of three arbitrators at the Complainant’s sole cost and expense.”
The Respondent’s allegations are primarily based upon variances in decision outcome depending on whether the panel adjudicating the case is a single-member panel as opposed to a three-member panel. In the Response the Respondent’s other main contentions are as follows:
1. The Complainant’s trade mark rights are limited to the registered mark, LOACKER QUADRATINI;
2. The Complainant has made no trade mark claim for the word “quadratini” alone;
3. The word “quadratini” is an Italian word meaning “squares” and is simply descriptive of the Complainant’s products which are supplied in the form of small squares;
4. Being descriptive of the Complainant’s products the word “quadratini” does not qualify for trade mark protection;
5. The word “quadratini” is widely used in relation to a number of food products in class 30, the class covered by the Complainant’s LOACKER QUADRATINI registrations;
6. The word “quadratini” is also used in relation to other products;
7. The Respondent denies that he registered the Domain Name in order to sell it;
8. He admits that he approached the Complainant in September with a view to re-selling the Complainant’s goods, but denies that he has ever acted in any manner which could be said to be in bad faith;
9. He admits to having posted the webpage described in the last paragraph of Section 4 above and admits to having begun “to contact some of the multitude of vendors selling the Complainant’s products over the internet to form a partnership to sell the Complainant’s products through the subject domain.”
10. He denies having set out to tarnish the Complainant’s reputation and points to the complimentary description of the Complainant’s products appearing on his website (see Section 4 above);
11. The Respondent contends that he received express permission from the Complainant to use the Domain Name for the purpose of re-selling the Complainant’s products and cites in support his communications with Mr Logan as described in Section 4 above;
12. The Respondent contends that the PPC page which was connected to the Domain Name in 2011 was a default parking page posted by the Registrar and had nothing to do with him;
13. The nearly five year delay in taking action in respect of the Domain Name gives rise to a laches defence;
14. The Complainant is barred from pursuing this complaint by the doctrine of estoppel, the Complainant having “acquiesced and approved the Respondent’s use of the subject domain to sell the Complainant’s products until such time the Respondent began to contact internet marketers of the Complainant’s products, and this contact only occurred after Complainant made it obvious they had no intention of selling Respondent products for resale.”
15. In summary, the Complainant has no relevant trade mark right on which to base its complaint, the Respondent has relevant rights/legitimate interests in respect of the Domain Name as he had made demonstrable preparations to use the Domain Name for a legitimate purpose in advance of receiving notice of the dispute and there is no evidence to support any of the Complainant’s allegations of bad faith registration and use;
16. The Complaint should be dismissed and the Complainant found guilty of reverse domain name hijacking. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Moreover, in writing its decision, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
“If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding.”
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. B. The Respondent’s Challenge to the Jurisdiction
In Section III of the Response the Respondent conditionally objected to the jurisdiction of the World Intellectual Property Organization (WIPO) over this matter.
The Respondent nevertheless purports to agree to waive such objection “in the event Complainant elects to cause this matter be resolved before a panel of three arbitrators at the Complainant’s sole cost and expense.”
The Respondent’s objection is without merit and the basis for his ‘waiver’ is outwith the scope of the Policy and the Rules. It is however within the Respondent’s discretion to elect a three-member panel (Rules, paragraph 4(b)(iv) and (v)). Since the Respondent waived that opportunity, the case is decided by a single-member panel (Rules, paragraph 6(b)).
The Respondent agreed to the Policy when he registered the Domain Name. The Complainant invoked the Policy by filing with the Center a compliant complaint. The Center sought and obtained from the Panel a declaration of impartiality and independence prior to appointing the Panel to this case. The Panel’s task is to adjudicate the dispute fairly and impartially in accordance with the Policy and the Rules – no more, no less – and that is what the Panel proposes to do.
Finally, the parties are reminded that the mandatory nature of Policy proceedings does not prevent either the Respondent or the Complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded. C. Identical or Confusingly Similar
The Complainant has registered trade mark rights in the name LOACKER QUADRATINI, which the Complainant describes as the “Quadratini Trademark”. The Respondent objects to this description and the Panel sympathises. It should more accurately be described as the “Loacker Quadratini Trademark”. The Respondent contends that this is a significant point because the Complainant does not have (nor claims) any trade mark rights in respect of the word “quadratini” (solus). Moreover, because “quadratini” is a dictionary word meaning “little squares” and is descriptive of the Complainant’s product which is in the shape of little squares the word is incapable of trade mark protection.
The Panel disagrees. In the view of the Panel, the Complainant has made out a case for unregistered, common law trade mark rights in respect of “Quadratini” in relation to its confectionery products.
First, as described in section 4 above, the packaging displays the name “Quadratini” in a substantially more prominent form than the name “Loacker” and in a different format from the name “Loacker” and separated from the name “Loacker”. The word “Quadratini” features on the packaging in the form of a brand name. The Panel believes it to be most likely that the product will be referred to in common parlance as simply “Quadratini”. The Panel is reinforced in that view by the fact that that is how the Respondent refers to the product in his correspondence with the Complainant and on his website (see section 4 above).
Secondly, the Complainant contends for its brand the type of reputation and goodwill necessary to support a claim for unregistered or common law trade mark rights. It refers to the awards that the product has won over the years. It asserts that “By reason of long and extensive use of the Quadratini Trademark, the excellent and exclusive quality of the “Quadratini” branded products, extensive promotional campaigns and the resultant phenomenal market of there products, immense goodwill and reputation world-wide has accrued to the Quadratini Trademark, also in the United States”.
While it is the case that the Respondent denies these contentions of the Complainant, it is the fact that the Respondent refers to the product as “Quadratini” not “Loacker Quadratini”; he acknowledges in his Response that he registered the Domain Name for the purpose of selling the Complainant’s product; in his email exchanges with the Complainant he states: “clearly, the domain probably will get sales” and on his website indicates that the domain name is suitable for sales through the Domain Name. None of this would make sense if the Respondent did not believe that “Quadratini” is a recognizable brand in its own right. The Panel finds on the balance of probabilities for the purposes of this decision that prior to registration of the Domain Name, the word “Quadratini” acquired a secondary meaning in relation to the Complainant’s confectionery product. Indeed, the Respondent’s registration of the Domain Name and the attempt to engage in commercial activity with Complainant by reference to the Domain Name underscore this finding.
The Panel finds that the Domain Name is identical or confusingly similar to the name, “Quadratini”, which is a trade mark in which the Complainant has rights. D. Rights or Legitimate Interests
There is no dispute between the parties that the Respondent registered the Domain Name with the Complainant’s Quadratini product in mind and with a view to selling that product. There is no dispute that the Respondent registered the Domain Name without seeking the permission of the Complainant to do so. Indeed, the first approach that the Respondent made to the Complainant in respect of his aim to sell Quadratinis was made in September 2014 nearly five years after registration of the Domain Name.
The Complainant contends that in deliberately registering the Domain Name featuring the Complainant’s trade mark and without any permission to do so does not give the Respondent any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Complainant makes out a prima facie case, a case calling for an answer from the Respondent.
The Respondent asserts that in corresponding with the Complainant (see section 4 above) he has made demonstrable preparations to use the Domain Name in relation to a bona fide offering of goods and services. He also states that in his communications with the Complainant (albeit not reflected in the email exchanges annexed to either the Complaint or the Response) he has received express approval from the Complainant to his use of the Domain Name for the purpose of selling the Complainant’s Quadratini product.
The Respondent asserts in his correspondence with the Complainant and re-asserts in the Response (paragraph 6.35) that Respondent is “fully capable of handling semi-perishables”, as Respondent “had been in the food service business a long time”. Were that in fact the case, one could understand the underlying basis for the Respondent’s desire to sell the Complainant’s product. However, notwithstanding the very clear request for information on the Respondent’s business as set out in the email from the President of Loacker USA and quoted in section 4 above, there is no indication in the papers before the Panel that the Respondent ever provided that information. Which provokes the question: “Why would a brand owner wish to take on as an authorized vendor of its products an unknown individual who has provided no information on his business experience?”
That is one reason why the Panel doubts the bona fides of the Respondent’s story.
Moreover, the Respondent states that in registering the Domain Name he did it as nominee for his company, Marcomm, Inc. The Complainant contends that Marcomm, Inc. is or was (it may be defunct) a company selling audio equipment such as microphones and the like and annexes to the Complaint screenshots supporting that contention. The Respondent denies the allegations, but produces no evidence to show that either he or Marcomm, Inc. has ever had any association with a food business.
In the view of the Panel that is an extraordinary omission in the context of a claimed demonstrable preparation to use the Domain Name for a bona fide food business.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. E. Registered and Used in Bad Faith
The Complainant’s primary contention under this element of the Policy is that the Respondent registered the Domain Name for the purpose of bringing pressure to bear on the Complainant to agree to take on the Respondent as a vendor of its products. The Complainant states that it showed no interest in doing business with the Respondent because of the Respondent’s “apparent lack of experience and credibility in the food industry”.
There is no dispute that the Respondent registered the Domain Name for the claimed purpose of selling the Complainant’s Quadratini product, but for the reasons set out in 6C above, the Respondent’s chances of succeeding in persuading the Complainant to agree to appoint the Respondent as an authorized vendor of its products must have been known to the Respondent to have been remote. If the Respondent did indeed have experience in the food business, he would have produced evidence of it to the Complainant in response to Mr Tribus’ email (see section 4 above), but he did not do so. Nor did he explain why, as the claimed nominee of an audio supplies company, that company would have any genuine interest in selling the Complainant’s product.
The Panel finds that the Respondent’s assertions in relation to his past experience in the food business are not to be relied upon.
Thus, on the above findings of the Panel, the Respondent registered the Domain Name knowing it to be a brand name of the Complainant. The Respondent made contact with the Complainant drawing the Complainant’s attention to the existence of the Domain Name and citing its suitability for the sale of the Complainant’s product, yet declined to provide the Complainant with any information likely to lead the Complainant to do business with him; and then, when that became clear, used the Domain Name in what can only be described as a provocative manner (see section 4 above).
One cannot be certain as to what precisely was the Respondent’s intentions, but on the preponderance of the evidence before the Panel, the Panel finds that the Respondent registered the Domain Name knowing it to be a trade mark of the Complainant and intending to use it to extract money or money’s worth from the Complainant, whether it be by way a of commercial deal that the Complainant would not otherwise have been willing to conclude with the Respondent or by way of sale of the Domain Name.
The Panel finds that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
For completeness, in light of the Respondent’s claim to a “laches” defence, the Panel should add that in common with the majority of panelists the Panel declines to accept “laches” as a defence under the Policy and, in any event, in this case there is no evidence that the Complainant was aware of the Domain Name until the Respondent approached the Complainant in September 2014. Accordingly, the delay in taking action (such as it is) has been minimal. F. Reverse Domain Name Hijacking
The Panel sees no basis for making any finding of abusive conduct on the part of the Complainant. On the evidence before the Panel the Complainant has been doing no more than taking a responsible approach to the protection of its trade mark. 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 Domain Name, , be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Date: June 5, 2015
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