The Complainant is Consorzio per la Tutela del Formaggio Gorgonzola, Italy, represented by Jacobacci & Associati, Italy.
The Respondent is Gilberto Ramponi Rivelli, Publinord s.r.l., Italy, represented by Nunziante Magrone Studio legale Associato, Italy. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2021. On March 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 8, 2021, 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 March 10, 2021 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 March 10, 2021. 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 March 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2021. The Response was filed with the Center on April 12, 2021. The Center appointed Eva Fiammenghi as the sole panelist in this matter on May 6, 2021. 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 entity created in order to control the use of the protected denomination of origin and trademark GORGONZOLA for a specific cheese. “Gorgonzola” is the name of an Italian City in the hinterland of Milan. The Complainant was created in 1968 and it is the sole authority to authorize the use of the name and the trademark GORGONZOLA (as per decree of the Italian Government). The Complainant is the owner of several trademark registrations for GORGONZOLA, which have been registered in numerous countries all over the world since 2010, amongst them the European Union trademark no. 010595015, registered in July 4, 2012. The Respondent is a Registrar recognized by Italian Naming Authority that operates in the past 40 years in the world of communication and networks. The disputed domain name was registered on November 19, 2020 and it resolves to a site that appears to be under construction. 5. Parties’ Contentions A. Complainant The Complainant argues that the disputed domain name is identical and/or confusingly similar to its GORGONZOLA trademarks. The Respondent is not affiliated with the Complainant and there is no evidence to suggest that the Respondent has registered the disputed domain name to advance legitimate interests. The Complainant has never licensed or otherwise permitted the Respondent to use its trademark or to register any domain name including its trademark. The Complainant deems that the Respondent registered and used the disputed domain name in bad faith - it seems reasonable to think 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 the dispute domain name resolves in a page under construction and the language used in the content on the page is in Italian. - the Respondent repeatedly engaged in such activity because in the past he also registered the domain names The Complainant requests that the disputed domain name be transferred to it. B. Respondent The Respondent replying to the Complaint argues that the owner of the disputed domain name is a Registrar recognized by Italian Naming Authority that operates in the past 40 years in the world of communication and networks. Furthermore, the Respondent emphasizes how in two previous proceedings, also cited by the Complainant (see above), the Panel stated that the Respondent had an interest in holding the domains because he registered the disputed domain name to be reached from a portal to describe Italian cities and locations. The Respondent replies to Complainant’s statement by showing that among the 250 registered domains there are not only registered city names identical to trademarks, but other domain names. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. A. Identical or Confusingly Similar In the present case, the disputed domain name incorporates the term “gorgonzola”, which is identical to the Complainant’s registered trademark GORGONZOLA. It is clear that the disputed domain name incorporates in its entirety the GORGONZOLA trademark. The Panel therefore concludes that the disputed domain name The Panel finds the first element of the Policy has, therefore, been met. B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of both of the Disputed Domain Names. The Complainant’s main argument on this point is that the Respondent has no rights or legitimate interests because he registered the Disputed Domain Name with the intention to be used in the future in a way that would be commercial and detrimental to the Complainant’s interests. The Respondent asserts that the Disputed Domain Name is part of the project to promote and provide information on Italian cities through the portal owned by Respondent, and “Gorgonzola” is the name of an Italian city in the hinterland of Milan. Moreover, the Respondent is the owner of about 250 domains bearing the names of Italian cities and falling within the same project. The Panel visited a few of these domain names and found that they resolve to websites concerning their geographic meaning. Such business activity can be legitimate and is not in itself a breach of the Policy, so long as it does not unfairly take advantage of the owner’s trademark rights (Consorzio per la Tutela del Formaggio Gorgonzola v. Rob Monster / DigitalTown, Inc.,WIPO Case No. D2017-0253). The website is still under development. However, the information architecture and layout have been already defined and are clearly consistent with the other Respondent’ websites and are visibly part of the same project. The Panel finds on this basis that the second element of the Policy has not been met. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith. The Panel notes that the Complainant provided evidence that the disputed domain name is part of Respondent’s project and there is no evidence that the Respondent may in the future use the Disputed Domain Name to attract users by exploiting the reputation of the GORGONZOLA trademark; should that happen, of course the Complainant would be free to file a case under the Policy or in court. Taking all of the above into account, and based on the records before, the Panel concludes that the Complainant has failed to satisfy paragraph 4(a)(iii) of the Policy. 7. Decision For the foregoing reasons, the Complaint is denied. Eva Fiammenghi
because:
According to the evidence provided by both Parties, the disputed domain name will be developed within the web portal “piazze.it” for the sole purpose of providing information about the City of Gorgonzola.
Sole Panelist
Date: May 20, 2021
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