Complainant is Consorzio Tutela Vini Emilia of Mantova, Italy, represented by Jacobacci & Associati, Italy.
Respondent is Dennis Leeuwerik, ByEmilia B.V. of Bilthoven, the Netherlands, internally represented. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Key-Systems GmbH dba (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2017. On August 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 28, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Respondent sent emails to the Center on August 22 and August 26, 2017.
The Complaint was submitted in the English language. The language of the Registration Agreement for the Disputed Domain Name is Dutch. On August 29, 2017, the Center sent a language of proceeding communication in both Dutch and English to the Parties. On August 30, 2017, Respondent requested Dutch to be the language of proceeding. On the same date, Complainant requested English to be the language of the proceeding.
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 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 25, 2017. The Response was filed with the Center on September 24, 2017.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on October 4, 2017. 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
Complainant, Consorzio Tutela Vini Emilia is an Italian not-for-profit, inter-professional association created in 2011 and tasked with the protection, enhancement and general care of interest relating to the protected geographical indication EMILIA and DELL’EMILIA, used for Lambrusco wine products.
Complainant is designated by the Italian government as the competent entity for the protection of the European protected geographical indication EMILIA and DELL’EMILIA registered under No. PGI-IT‑AD509 on February 19, 1999 in accordance with article 118s of Regulation (EC) No. 1234/2007. Complainant is also the holder of:
- the international appellation of origin EMILIA and DELL’EMILIA registered with WIPO under No. 1003 on July 2, 2015;
- the United States of America (United States) certification mark EMILIA registered under No. 4545990 in US class A (Wines) on June 10, 2014.
On January 24, 2017, Complainant sent a cease and desist letter to Respondent after Respondent had filed an application with the Benelux Office for Intellectual Property for the combined mark BY EMILIA WINE AND FOOD. Complainant requested the cessation of the use of the sign BY EMILIA or similar signs, the withdrawal of the trademark registration and the removal of the trade name “ByEmilia B.V.” from the register of the Chamber of Commerce. Respondent replied by proposing to rebrand its business to “ByEmi”. In a letter of March 20, 2017, Complainant refused this request and held that it maintained its demands stipulated in the above-mentioned cease and desist letter. In this second letter, Complainant also demanded the transfer of Respondent’s domain name to Complainant. Respondent subsequently withdrew its trademark application for BY EMILIA WINE AND FOOD before the Benelux Office of Intellectual Property.
On March 28, 2017, Respondent registered the Disputed Domain Name. The Disputed Domain Name refers to a website written in Dutch which is used to sell wines and related products under the name “By Emy”. On August 30, 2017, Respondent sent an email communication to the Center declaring to have changed its name to “ByEmy”. 5. Parties’ Contentions A. Complainant
Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. In this respect, Complainant asserts that Respondent was not authorised to register the Disputed Domain Name and that the website to which the Disputed Domain Name resolves does not communicate accurately that Respondent is not affiliated with Complainant. Complainant further claims that, pursuant to explicit provisions of Italian law, only Complainant can register domain names containing the sign EMILIA or similar signs. Finally, Complainant concludes that the Disputed Domain Name has been registered and used in bad faith. Complainant claims that Respondent knew, or at least should have known, of the existence of Complainant’s mark, especially taking into account the preceding interactions with Complainant, and that Respondent’s use of the Disputed Domain Name leads Internet users to believe that there is an affiliation with Complainant. B. Respondent
Respondent contests the arguments of Complainant, claiming that the Disputed Domain Name is not confusingly similar. Respondent further states that it does have a right and legitimate interest in the Disputed Domain Name by claiming that a woman’s name starting with the letter “E” was chosen as a tribute to a deceased friend and that all similarities with Complainant’s signs are coincidental. Respondent concludes by stating that it has not used or registered the Disputed Domain Name in bad faith. Respondent asserts that there was never an intention to make an association with or profit from the “Emilia” region or name, as it does not refer to nor sell wines from that region. Respondent also maintains that it voluntarily changed its name from “ByEmilia” to “ByEmy” pursuant to the cease and desist letters by Complainant. 6. Discussion and Findings 6.1. Language of the Proceedings
As the Complaint was not filed in the language of the Registration Agreement (Dutch) and the Parties did not agree on the language of the administrative proceeding, the Panel may decide on this matter, having regard to the circumstances of the case. Indeed, paragraph 11(a) of the Rules reads: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
In cases where the use of the English language in the proceedings would not be prejudicial to the interests of a respondent, whereas it would be a disadvantage for a complainant to be forced to translate the complaint, panels may decide for the English language to be accepted as the language of proceedings (see e.g., The Dow Chemical Company v. Hwang Yiyi,WIPO Case No. D2008-1276, decision according to which, where a respondent can clearly understand the language of the complaint, and the complainant would be disadvantaged by being forced to translate, the language of proceedings can remain the language of the complaint, even though it is different to the language of the Registration Agreement).
This can for instance be the case where a respondent understands English, but is not proficient in writing. In such cases and in order to procure for the parties a fair and reasonable opportunity to respond, exercise their rights and to present their arguments, and that both parties be equally treated the administrative proceedings, panels may agree to receive and consider all documents and written submissions filed in other languages than the language of the proceedings (see Red Nacional de Ferrocarriles Españoles v. Jesús Hidalgo Álvarez,WIPO Case No. D2000-1025).
In the present case, Respondent has shown in its communications with the Center on August 22 and August 26, 2017 that he is proficient in English. After registrar verification, all communications to the parties were transmitted in both English and Dutch. As Respondent had the opportunity to communicate and respond in Dutch, the rights of Respondent to defend itself and the right to equal treatment are guaranteed. In its response, Respondent has also shown to have understood the argumentation of Complainant. In such circumstances, the Panel finds that it would be a disadvantage for Complainant to be forced to translate the Complaint. In any event, the Panel is fluent in both English and Dutch and properly reviewed the contentions of both parties in the respective languages.
For these reasons, the Panel determines that the language of the proceedings is English. 6.2. Substantive Elements of the Policy
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. The standard of proof is the balance of probabilities.
Thus, for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
i. The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights
ii. Respondent has no rights or legitimate interests in respect of the Disputed Domain Name
iii. The Disputed Domain Name has been registered and is being used in bad faith.
The Panel will deal with each of these requirements in turn. A. Identical or Confusingly Similar
To meet this element Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant is tasked with protecting, promoting and developing the interests of the protected geographical indications EMILIA and DELL’EMILIA. However, such identifiers are not by themselves considered trademarks or service marks for purposes of paragraph 4(a)(i) of the Policy (See, Consorzio per la Tutela dell’Asti v. Mr. Giulio Bennatto,WIPO Case No. D2004-0350; Comité Interprofessionnel du vin de Champagne v. Steven Vickers,WIPO Case No. DCO2011-0026.) Geographical terms used only in their ordinary geographical sense, except where registered as a trademark, would not, as such, provide standing to file a UDRP case (see, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.6).
Complainant states to be the holder of the collective trademark EMILIA. While it has provided a copy of a regulation of use which forms part of the application for a collective mark, Complainant has not submitted documentation of the actual registration of this collective mark. In any event, Complainant has established that it holds the United States certification mark EMILIA, and this mark provides standing under paragraph 4(a)(i) of the Policy (see, Consorzio del Prosciutto di Parma v. Matthias Gasser, Hanslmeier Fleischwarenfabrik,WIPO Case No. D2003-0474; Consorzio del Prosciutto di Parma v. Domain Name Clearing Company, LLC,WIPO Case No. D2000-0629.)
The Disputed Domain Name does not incorporate the entirety of Complainant’s mark. Complainant’s EMILIA mark is not readily identifiable in the Disputed Domain Name. In the Panel’s view, any similarity between the Disputed Domain Name and the mark is insufficient to meet the test of the first UDRP element. This is a close call, noting also that Respondent’s attempted trademark registration, its further conduct, and its selection of the “.wine” generic Top-Level Domain suggest that Respondent itself did choose the Disputed Domain Name for a perceived association with the EMILIA mark. Respondent’s alternative explanation is not persuasive.
Against this background, it is well possible that Complainant would prevail in a case brought before a court of competent jurisdiction. However, its failure to establish the first element under the UDRP must lead to a denial of the case in the present forum. B. Rights or Legitimate Interests
Given the Panel’s finding on the issue of identical and confusing similarity, it is unnecessary to consider the issue of rights or legitimate interests. C. Registered and Used in Bad Faith
Given the Panel’s finding on the issue of identical and confusing similarity, it is unnecessary to consider the issue of bad faith registration or use. 7. Decision
For the foregoing reasons, the Complaint is denied.
Flip Jan Claude Petillion
Sole Panelist
Date: October 25, 2017
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