Complainant is Société Nouvelle del Arte of Rennes, France, represented by AARPI Clairmont Avocats, France.
Respondent is DataUpper Software of Canoas, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2016. On September 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 13, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 9, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 11, 2016.
The Center appointed Roberto Bianchi as the sole panelist in this matter on October 19, 2016. 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 Del Arte chain of Italian-style restaurants was founded in 1985, and is based in Rennes, France. In 1995, the Le Duff group acquired the chain.
Complainant owns several trademark registrations for PIZZA DEL ARTE, inter alia,
- European Union Reg. No. 001123256, Registration date June 13, 2000, in International Classes 29, 30 and 42;
- European Union Reg. No. 003001088, Registration date February 23, 2004, in International Class 38;
- International registration No.483478, Registration date March 15, 1984 in International Classes 29, 30 and 42;
- Brazilian word trademark, Reg. No. 822145294, Registration date August 17, 2004 in International class 43;
- Brazilian word trademark, Reg. No. 822145286, Registration date August 17, 2004 in International class 30.
According to the WhoIs database, the disputed domain name was registered on April 23, 2015. 5. Parties’ Contentions A. Complainant
Complainant claims that the disputed domain name is confusingly similar to its prior PIZZA DEL ARTE and DEL ARTE trademarks, since it incorporates these trademarks in their entirety. The disputed domain name only differs from Complainant’s trademarks by (i) the inversion of the terms “pizza” and “Del Arte” regarding the prior PIZZA DEL ARTE trademarks, (ii) the addition of the non-distinctive term “pizza” regarding the prior DEL ARTE trademarks, and (iii) for technical reasons, the “.com” Top-Level Domain at the end and the absence of space between the terms “del”, “arte” and “pizza”.
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name. To Complainant’s best knowledge, Respondent is not currently and has never been known under the name “Del Arte Pizza”. Complainant did not know Respondent before the domain name was registered. Complainant states that Respondent is not in any way related to its business, and does not carry out any activity for or has any business with it. In particular, Respondent has not been licensed, contracted or otherwise permitted by Complainant in any way to use the prior PIZZA DEL ARTE and DEL ARTE trademarks or to register any domain name incorporating these prior trademarks, nor has Complainant acquiesced in any way to such use or registration of its trademarks by Respondent. Therefore, Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant claims that Respondent registered the disputed domain name in bad faith. Complainant has previously demonstrated the strong reputation and leading position of its PIZZA DEL ARTE and DEL ARTE trademarks in France and abroad as an Italian-style restaurant chain. Furthermore, a simple search via Google or any other search engine using the keywords “Pizza Del Arte” and “Del Arte” demonstrates that nearly all results relate to Complainant’s websites or business. In this regard, the first result of the Brazilian version of Google for these keywords corresponds to Complainant’s website (Annex H). Thus, Respondent, who is located in Brazil, should be clearly aware of Complainant’s activity under the denominations “Pizza Del Arte” and “Del Arte” when it registered the disputed domain name. As a consequence, the notoriety of Complainant’s trademarks, especially in the field of Italian-style restaurants, is such that a prima facie presumption is raised that Respondent registered the disputed domain name for the purpose of selling it to Complainant or one of its competitors (see for example Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, WIPO Case No. D2001-0020). Moreover, the denominations “Pizza Del Arte” and “Del Arte” are arbitrary and fanciful so that they exclusively refer to the prior trademarks and domain names of Complainant, especially since in Portuguese, i.e., the language spoken in Brazil, Respondent’s country, the expression “Del Arte” has no meaning. It is therefore highly unlikely that Respondent was unaware of the existence of Complainant and its well-known reputation and trademarks in the field of Italian-style restaurants, when it registered the disputed domain name. Therefore, registering a domain name that includes the PIZZA DEL ARTE and DEL ARTE trademarks cannot be considered accidental. Complainant concludes that Respondent has registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to Complainant or to a competitor, for valuable consideration in excess of registration costs, which is a proof of bad faith.
Furthermore, the disputed domain name reproduces entirely Complainant’s prior trademarks and domain names. In this regard, the mere filing of a domain name corresponding to well-known trademarks is an indication of bad faith, especially when this domain name is not used. The disputed domain name used to resolve to a sole standard page from the hosting service provider indicating, “The content of this website has not yet been published. If you are its administrator, please visit the Customer Panel to publish it.”
There was also (i) a link entitled “Painel do cliente” to a page of the hosting service provider giving access to the customer area of the hosting service provider’s website and (ii) a link entitled “Acesse o UOL HOST” to the homepage of the hosting service provider’s website, which was accessible via a mirror website,“www.”. Therefore, the disputed domain name, which used to consist of a standard page from the hosting service provider, was not used by Respondent, who is not making a legitimate noncommercial use of it. This shows that the disputed domain name has been acquired for the sole purpose of profitable sale to either Complainant or one of its competitors. In this regard, previous UDRP panels have decided that the fact that a domain name composed of a well-known trademark owned by a complainant resolves to a standard page or a holding page or is inactive, proves that respondent is acting in bad faith. Indeed, the “passive holding” of a domain name could constitute bad faith notably if (i) complainant’s trademark is well-known and (ii) it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by respondent “that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law”. See Real Madrid Club de Futbol v. Wei Ding,WIPO Case No. D2016-0191; see also Boehringer Ingelheim Pharma GmbH & Co. KG v. Mojtaba Alimardani,WIPO Case No. DIR2015-0017).
On March 21, 2016, Complainant sent a formal notice to Respondent asking for the transfer of the disputed domain name. Respondent never answered or explained to Complainant the legitimate interest it could have in the registration and use of the disputed domain name. To the contrary, Respondent changed the content of the website under the disputed domain name, which now displays only a list of ingredients for an Italian menu. When an Internet user clicks on the ingredients on the list (as they seem to be hyperlinks), they lead to no other Internet pages. This also constitutes a pattern of bad faith registration and use. In this regard, UDRP panels have already stated that the modification of a respondent’s website after receiving a cease and desist letter does not exclude bad faith (Ciba Specialty Chemicals Holding, Inc. v. G,WIPO Case No. D2003-0717).
Therefore, such passive holding of the disputed domain name without any other use or intended use has been made (i) for the purpose of disrupting Complainant’s business and (ii) in order to prevent Complainant from reflecting its trademarks in a corresponding domain name. Consequently, the disputed domain name was registered in bad faith, and all possible exploitation of it could only be done in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
By submitting printouts taken from the corresponding trademark databases, Complainant has shown that it owns registered trademark rights in the PIZZA DEL ARTE trademark. The Panel notes that Complainant has also claimed rights in the DEL ARTE trademark but the additional trademark registration printouts annexed to the Complaint refer to the trademark RISTORANTE DEL ARTE. See section 4 above.
The Panel notes that the difference between Complainant’s mark and the disputed domain name is that in the latter the terms “pizza” and “del arte” are inverted, the spaces between those terms are omitted, and the Top-Level Domain “.com” is added. In the Panel’s opinion, these differences are minor, and inapt to distinguish the disputed domain name from Complainant’s mark. See Istanbul Menkul Kiymetler Borsasi-IMKB (Istanbul Stock Exchange-ISE) v. Emir Ulu,WIPO Case No. D2013-0238, finding that the domain names in issue were confusingly similar to the complainant’s mark (“The only difference between the Complainant’s trademark BORSA İSTANBUL and the disputed domain names is that the terms have been inverted and a gTLD identifier has been added”).
The Panel concludes that the disputed domain name is confusingly similar to Complainant’s mark. The first requirement of the Policy is met. B. Rights or Legitimate Interests
Complainant contends Respondent is not currently and has never been known under the name “Del Arte Pizza”. The Panel notes that the Registrar has confirmed that the registrant of the disputed domain name, i.e., Respondent, is “DataUpper Software”. In absence of any contrary evidence, this excludes the application of Policy paragraph 4(c)(ii).
Complainant also alleges that it did not know Respondent before the disputed domain name was registered, and states that Respondent is not in any way related to its business, and does not carry out any activity for, or has any business with Complainant. In particular, says Complainant, it has not licensed or otherwise permitted Respondent to use its PIZZA DEL ARTE and DEL ARTE trademarks, or to register any domain name incorporating these trademarks. Nor has Complainant acquiesced to any use or registration of its trademarks by Respondent. The Panel again notes that there is no evidence on the casefile indicating the opposite, and that Complainant’s cease and desist letter to Respondent received no answer.
Complainant has shown that the only content on the website at the disputed domain name was a standard page from the hosting service provider indicating, “The content of this website has not yet been published. If you are its administrator, please visit the Customer Panel to publish it.” Also, after receiving Complainant’s cease and desist letter of March 21, 2016 Respondent did not send any reply, and simply changed the content of the website at the disputed domain name by listing ingredients or toppings for pizzas. The Panel considers that this is not consistent with a use or a preparation for use in connection with a bona fide offering of goods or services pursuant to Policy, paragraph 4(c)(i), or with a fair or legitimate noncommercial use without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue pursuant to Policy, paragraph 4(c)(iii).
Lastly, Respondent failed to present any argument or evidence in its own favor in this proceeding.
In view of the above, the Panel concludes that Complainant has made out its prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1 (“[...] A complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP ...)”.
The second requirement of the Policy is also met. C. Registered and Used in Bad Faith
Complainant has shown that it had registered the PIZZA DEL ARTE trademark in various jurisdictions, including Brazil, the country of domicile of Respondent, over a decade before the disputed domain name was registered. See section 4 above. Complainant asserted that “del arte” does not have any meaning in Portuguese, yet Respondent specifically chose a domain name combining “del arte” and “pizza”. This suggests Respondent’s intent to target Complainant’s chain of Italian-style restaurants and trademark at the time of registering the disputed domain name. In the circumstances of this case, this means that the registration of the disputed domain name was in bad faith.
The Panel notes that, as shown by Complainant, the use of disputed domain name appears to have been minimal, or simply nonexistent. Even on November 2, 2016, when the Panel tried to connect its browser to the “www.” website, the website returned an error message, “[browser] can’t find the server at www.”.
In the Panel’s opinion, this inaction does not mean that the disputed domain name is not been used in bad faith. As stated in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, “[T]he concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.” The Panel believes that the following circumstances indicate bad faith:
a) Complainant’s mark predates the registration of the disputed domain name by over a decade;
b) Respondent’s choice of registering a domain name reversing the order of the terms that comprise Complainant’s mark;
c) Immediately after receiving Complainant’s cease and desist letter, Respondent proceeded to change the content of the website at the disputed domain name;
d) This content never reflected a use of the disputed domain name in connection with an actual business;
d) Respondent has removed all contents on the website after the commencement of this proceeding;
e) Respondent failed to reply to Complainant’s cease and desist letter; and
f) Respondent failed to reply to any of Complainant’s contentions in this proceeding.
In conclusion, the Panel finds that the disputed domain name was registered and is being used in bad faith.
The third requirement of the Policy is also met. 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 Complainant.
Roberto Bianchi
Sole Panelist
Date: November 2, 2016
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