The Complainant is Consorzio per la Tutela del Formaggio Gorgonzola, Italy, represented by Jacobacci & Associati Law Firm, Italy.
The Respondent is WhoisGuard, Inc., Panama / John Tattersall, United States of America. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2019. On November 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 20, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 26, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 27, 2019. The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on December 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2019. The Center appointed Assen Alexiev as the sole panelist in this matter on January 15, 2019. 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 was created in 1968 to control the use of the denomination of origin GORGONZOLA for a specific cheese. The Complainant is the registered owner of the following trademarks for the sign GORGONZOLA (the “GORGONZOLA trademark”): - the European Union trademark GORGONZOLA with registration No. 010595015, registered on July 4, 2012, for goods in International Classes 29 and 30; and - the European Union trademark GORGONZOLA with registration No. 016315202, registered on September 11, 2017, for goods and services in International Classes 29, 30, and 35. The disputed domain name was registered on September 27, 2019. It resolves to a webpage that contains pay-per-click (PPC) links related to different types of cheese and cooking recipes. 5. Parties’ Contentions A. Complainant The Complainant submits that the disputed domain name is identical or confusingly similar to the GORGONZOLA trademark owned by the Complainant. According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name, as it is not known by it and does not use it in connection with a bona fide offering of goods or services, and there is no noncommercial or fair use of the disputed domain name. The Complainant contends that the disputed domain name was registered and is being used in bad faith. It maintains that the Respondent must have been aware of the goodwill of the GORGONZOLA trademark, as a cursory Google search would easily reveal that the name “Gorgonzola” evokes the Complainant’s trademark as used for a cheese. According to the Complainant, the Respondent’s conduct is an example of opportunistic bad faith. The Complainant contends the disputed domain name is not currently in active use, but it is reasonable to expect that it is intended to be used in the future in a way that would be commercial and detrimental to the Complainant’s interests, because it is identical to the famous GORGONZOLA trademark and denomination of origin. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the Respondent has registered and is using the disputed domain name in bad faith. In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case. By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]” A. Identical or Confusingly Similar The Complainant has provided evidence and has thus established its rights in the GORGONZOLA trademark. The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.best” gTLD section of the disputed domain name. The relevant part of the disputed domain name is therefore the element “gorgonzola”, which is identical to the word element of the GORGONZOLA trademark. Therefore, the Panel finds that the disputed domain name is confusingly similar to the GORGONZOLA trademark in which the Complainant has rights. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, as it is not known by it and does not use it in connection with a bona fide offering of goods or services, and there is no noncommercial or fair use of the disputed domain name. The Complainant points out that there is no active website at the disputed domain name (beyond PPC links) and that the Respondent’s conduct is an example of opportunistic bad faith, as it is reasonable to expect that the disputed domain name is intended to be used in the future in a way that would be detrimental to the Complainant’s interests. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. As discussed in section 6.A above, the disputed domain name is confusingly similar to the GORGONZOLA trademark. The Respondent has not given any plausible explanation as to why it has chosen to register the disputed domain name and how it intends to use it; it has not disputed the statements of the Complainant and the evidence submitted by it. The disputed domain name resolves to a webpage that contains PPC links related to various types of cheese and cooking recipes. In view of the above, the Panel accepts that it is more likely than not that the Respondent has chosen and registered the disputed domain name in view of the popularity of the GORGONZOLA trademark and of the Italian cheese by the same name in an attempt to capitalize on their reputation and goodwill. The links featured on the webpage to which the disputed domain name resolves are PPC links leading to products competing with the Complainant’s product protected by the GORGONZOLA trademark and denomination of origin. This supports the prima facie case made by the Complainant. Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely: “(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 website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” The disputed domain name is identical (in the Second-Level Domain) to the GORGONZOLA trademark. As the Respondent has not denied the contentions of the Complainant or given any plausible arguments in its support, the Panel accepts that it is more likely than not that the Respondent must have been aware of the goodwill of the GORGONZOLA trademark when it registered the disputed domain name, and that, as contended by the Complainant, the disputed domain name is intended to be used in a way that would be commercial and detrimental to the Complainant’s interests. Indeed, the links featured on the webpage to which the disputed domain name resolves are PPC links to products competing with the products protected by the Complainant’s GORGONZOLA trademark. In the lack of evidence to the contrary, the Panel accepts as more likely than not that these links are pay-per-click links and that they have been posted for commercial gain on the webpage to which the disputed domain name resolves. In addition, the Panel notes that the Respondent did not advance any preparations or intentions to use the disputed domain name for bona fide purposes. Taking the above into account, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith. 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 Assen Alexiev
Sole Panelist
Date: January 31, 2020
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