The Complainant is Acqua Minerale San Benedetto S.p.A., Italy, represented by Studio Torta S.p.A., Italy.
The Respondent is Privacy Administrator, Anonymize, Inc., United States of America (“United States”) / MACROSTEN LTD., Cyprus, 1 represented by Studio Legale Regina & Partners, Italy.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2021. On July 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 29, 2021, 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.
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 the Respondent of the Complaint, and the proceedings commenced on August 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 12, 2021. The Response was filed with the Center on September 10, 2021.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on October 29, 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 BackgroundThe Complainant is an Italian multinational active since 1956 in the field of non-alcoholic beverages. The Complainant produces and sells mineral water, carbonated and non-carbonated beverages, having six production sites in Italy, two in Spain, one in Poland, and one in Hungary, and commercializing its products in 100 jurisdictions including various European countries, Unites States, Canada, Japan, Australia, Israel, and various Asian countries. Per the Complaint, the Complainant’s group produces 4.6 billion bottles per year, has consolidated sales of EUR 764 million, and 2.296 employees.
The Complainant is the owner of various registered trademarks that comprise the terms “San Benedetto” in combination with other figurative or word elements, including:
- Canada Trademark Registration No. TMA419280, SAN BENEDETTO, word, registered on November 5, 1993, in Class 32;
- United States Trademark Registration No. 2566368, SAN BENEDETTO, figurative, registered on May 7, 2002, in Class 32;
- United States Trademark Registration No. 1878265, SAN BENEDETTO, figurative, registered on February 7, 1995, in Class 32;
- International Registration No. 667249, SAN BENEDETTO, figurative, registered on January 31, 1997, in Class 32;
- Italian Trademark Registration No. 1607058, SAN BENEDETTO, figurative, registered on September 17, 2014, in Class 32; and
- Italian Trademark Registration No. 1401985, SAN BENEDETTO ICE TEA IN ACQUA MINERALE NATURALE, figurative, registered on January 12, 2011, in Classes 30 and 32, (collectively the “SAN BENEDETTO mark”).
The Complainant further owns the domain name
The disputed domain name was registered on June 30, 2001, and it is inactive.
5. Parties’ Contentions A. ComplainantKey contentions of the Complaint may be summarized as follows:
SAN BENEDETTO mark is currently one of the best-known brands worldwide. The Complainant’s first plant for bottling mineral water from the San Benedetto and Guizza springs in Scorzè (Italy) dates back to 1956. The company takes its name from the spring of the same name, which has been renowned as a source of health since the times of the Venetian Republic.
The disputed domain name is identical to the Complainant’s trademark, the heart of its company name and its domain name
The Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name is inactive, not being used for many years, which show no legitimate interests in connection to any bona fide offering of goods or services. As the disputed domain name has been dormant for such extended period, it is not conceivable that the Respondent has legitimate plans to use it in the future.
The disputed domain name was registered and is being used in bad faith. The Respondent has retained the disputed domain name for many years without any attempt to use it or develop any business, which proves the Respondent’s bad faith and its intention to block the registration and use of the disputed domain name by the Complainant. Passive holding of the disputed domain name is evidence of bad faith. The non-use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding, and its use for purposes other than to host a website may constitute bad faith. The Respondent’s bad faith is corroborated by the fact that the Complainant’s representatives made two purchase offers for USD 5,000 and USD 5,500, a value well above possible expenses incurred to register and keep registered the disputed domain name to date, which were rejected by telephone saying that the price of the disputed domain name is at least 10 times more. This shows that the only purpose for which the disputed domain name was registered is to profit from its sale to its rightful owner.
The Complainant has cited various decisions under the Policy that it considers supportive of its position, and requests the transfer of the disputed domain name.
B. RespondentKey contentions of the Response may be summarized as follows:
The disputed domain name was registered two years after the registration by the Complainant of the domain name
The Respondent has rights or legitimate interests in the disputed domain name. The Complainant has not validly proved the alleged reputation of the SAN BENEDETTO mark outside Italy. The disputed domain name was registered in the course and due to the Respondent’s e-business, which consists in the registration and use of “generic domain names”, aimed to exploit their intrinsic attractive value according to their thematic. The Respondent has registered about a hundred analogous domain names including the term “san”.2 This activity is considered legitimate by a number of national and international judicial guidelines (such as WIPO, NAF, NIC, ADNDRC etc.). Furthermore, the disputed domain name has been inactive only for a certain period while preparing a different project for it, to promote hotels in San Benedetto del Tronto (one of the other meanings of the term “sanbenedetto”); before it was redirected to the website “www.terredelcerrano.com” sponsoring vacation offers in Cerrano, a tourist resort located in the Italian region of Abruzzo, near Teramo (not interfering with the Complainant’s business or its products). The Respondent provides copies of its new project’s website.
The Complainant has not demonstrated any of the circumstances included in paragraph 4(b) of the Policy. Before notifying the Complaint, the Complainant tried to purchase the disputed domain name (offering USD 5,000 and subsequently USD 5,500), but it is not truth that the Respondent refused by phone these offers, claiming a value 10 times more than what was offered. The Respondent has never tried to resell the disputed domain name, as it was registered for its common generic meaning, for reasons and purposes different from the Complainant and its business. The Parties are not competitors, operating in different entrepreneurial sectors, and the registration of the disputed domain name has not prevented or disturbed the Complainant’s business. The Complainant has not alleged an intentional attempt to attract for commercial gain Internet users to the Respondent’s website or to any other on-line location, so the Complainant has not proved this aspect.
The Respondent requests the Panel to make a finding of Reverse Domain Name Hijacking (“RDNH”), since there is no effective evidence to support the Complaint. This is a speculative case brought by the Complainant due to its failure to acquire the disputed domain name from the Respondent.
The Respondent has cited various decisions under the Policy that it considers supportive of its position, and requests the Panel to deny the remedies requested by the Complainant.
6. Discussion and FindingsThe Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the case examining the three elements in paragraph 4(a) of the Policy,3 taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.
A. Identical or Confusingly SimilarThe Complainant has rights in the SAN BENEDETTO mark by virtue of its trademark registrations as well as its continuous use of this mark on the market, and this trademark is incorporated in its entirety in the disputed domain name.
The disputed domain name incorporates the SAN BENEDETTO mark in its entirety (inter alia Canada Trademark Registration No. TMA419280, registered in 1993, and United States Trademark Registration No. 1878265, registered in 1995), and the generic Top-Level Domain “gTLD “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. See sections 1.7, and 1.11, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition “WIPO Overview 3.0”.4
Accordingly, the Panel finds that the disputed domain name is identical to the Complainant’s trademark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate InterestsAlthough the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that demonstrating 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 primarily if not exclusively within the respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests.
The Respondent has alleged being in the business of acquiring and using generic domain names (consisting of dictionary words or common phrases) aimed to exploit their intrinsic attractive value according to their thematic, owning about a hundred other domain names with analogous denominations, having in common the term “san”.5 The Respondent has further alleged having acquired the disputed domain name as part of its business, in consideration of a claimed generic or descriptive value of the terms “San Benedetto”, without any knowledge of or intention to take advantage of the Complainant or its trademark. The Respondent alleges that the terms “San Benedetto” have different meanings unrelated to the Complainant or its trademark, referred to the Saint founder of the Benedictine Order or the Italian location where this Saint is venerated (San Benedetto del Tronto). The Respondent used during a certain period to redirect to a website promoting vocational offerings in a tourist resort located in the Italian region of Abruzzo, near Teramo, being inactive only for a certain period while preparing a different tourism promotional project for promoting hotels in San Benedetto del Tronto.
The Panel, under its general powers articulated, inter alia, in paragraph 10 of the Rules, has consulted each of the domain names cited by the Respondent as part of its business6 verifying that all of them are linked to parked pages displaying promotional Pay-Per-Click (“PPC”) links in various industries or sectors unrelated to the respective Catholic Saints included in these domain names. Additionally, the Panel notes that some of these domain names are offered for sale at the top of their respective parked pages.
The Panel, under its general powers, has further corroborated through the Internet archive WayBack Machine that, according to the Respondent’s allegations, at least between 2003 and 2016, the disputed domain name was redirected to the website “www.terredelcerrano.com”, which promoted vocational offers in a resort located near Teramo. The Panel notes that Teramo is an Italian location nearby San Benedetto del Tronto, located south to this city at the East coast of Italy. The Panel has further corroborated that, at least between 2017 and 2020, the disputed domain name was still redirected to the said website (“www.terredelcerrano.com”), however, during about at least one year (in 2018), this site displayed PPC advertising, and, during about at least two years (in 2019 and 2020), it displayed an offer for sale of the domain name
The Panel has further corroborated that, according to the evidence provided by the Respondent, the new projected website for the disputed domain name refers not only to the promotion of hotels in the area of San Benedetto del Tronto, but to various other activities and business unrelated to the alleged meaning of the terms “San Benedetto”. This website is projected to display, under a heading that includes the disputed domain name and the legend “the top HOTEL resources on the net”, various links, presumably PPC links to third parties’ websites, which may relate to tourism, under sections such as “seas”, “photo”, “accommodation”, “vacation”, “hotels”, “S Benedetto”, “trip”, “farm house”, etc. Additionally, this projected website displays at its right side a banner that includes other links, related to a broad spectrum of different sectors (such as “education”, “entertainment”, “insurance”, “Internet”, “legal”, “shopping”, “homes”, “health”, “cars”, etc.), and, at the bottom of the page, other various links under the sections “travel”, “shopping”, “finances”, “entertainment”, “health”, and “Internet”. The Panel notes that none of these links seems to refer directly to the Complainant or its products, but the spectrum of activities and business is so broad that some may indirectly interfere or compete with the Complainant’s products, for example restaurants and supermarkets (which may be included in some of the sections of this page) may commercialized the Complainant’s or competing products.
In this respect, the Panel considers that the disputed domain name and the Respondent’s core business seems to be connected to the registration and use of domain names consisting of Saints’ names to use them for promotional services through PPC parked pages or through their redirection to third parties’ websites unrelated to the respective Saints’ names.
The Panel finds that the use of the disputed domain name to redirect to a third party’s website unrelated to the meaning of the terms “San Benedetto”, either to promote this third party’s website (containing a business and subsequently PPC links), or to promote the offer for sale of a different domain name, may not be considered a legitimate bona fide offering of goods or services or legitimate fair use of the disputed domain name.
The Panel considers that the Respondent appears to mix up the concepts of a term being “generic” or “descriptive” and a term “being included in the dictionary”. The Respondent appears to allege that having the words “San” and “Benedetto” or the combination of both “San Bendetto” understandable meanings (unrelated to the Complainant and its trademark), these words (individually or combined), should be considered generic being possible to register any domain name including these words (that is to say not being possible to claim any exclusive rights over them). This is a common oversight addressed by section 2.10 of the WIPO Overview 3.0, which the Panel finds important to partially reproduce: “The fact that a particular term has a dictionary meaning is sometimes confused with the notion of a “generic” term. When used in a non-dictionary distinctive sense (i.e., in a manner that bears no relation to the goods or services being sold), such dictionary terms can function as “arbitrary” trademarks […].” Classic examples of such “dictionary” (sometimes misunderstood, as here, as “generic”) terms being in fact strong (in these cases, famous) trademarks are ORANGE for telecoms and APPLE for computers.
The Panel considers that the combination of words “San Bendetto” bears no direct relation or resemblance to the products produced and offered by the Complainant, apart from being the name corresponding to one of the first springs exploited by the Complainant (back in 1956). These terms are therefore a valid identifier of their origin, fulfilling all trademark’s functions, i.e., it is not “generic” or inherently descriptive of the Complainant’s products and which it is noted have been identified by the SAN BENEDETTO mark (and this trademark is registered) for many years now.
It is further to be noted that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the Complainant’s mark or otherwise mislead Internet users. The use of a domain name to host a page comprising PPC links would be permissible where the domain name consists of actual dictionary words or common phrases and is used to host PPC links genuinely related to the dictionary meaning of these words or phrases, and not to trade off the complainant’s (or its competitor’s) trademark. See section 2.9, WIPO Overview 3.0.
The Panel considers that, according to the evidence in this case, the disputed domain name has not been used and is not projected to be used in connection to a website genuinely related to the meaning of the terms “San Bendetto” (either as a Saint venerated in the Catholic Church, or as an Italian location). On the contrary, the disputed domain name was originally used in connection to promotional activities in the tourism sector related to a certain resort nearby but in a different location, has further been used in connection to various PPC links unrelated to the terms “San Benedetto”, and for the promotion of the sale of the domain name
All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not rebutted the Complainant’s prima facie case. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
C. Registered and Used in Bad FaithThe Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith.
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.
The Complainant alleges that its trademark SAN BENEDETTO is well known worldwide, providing, in support to this allegation, two publications issued by the Complainant in 2016 on its sixtieth anniversary, which contains the history of the company, various interviews to its personnel and senior managers, and detailed information about its various products.
After examining the evidence provided by the Complainant, the Panel considers that these publications may show the presence over 65 years and the reputation of the Complainant and its trademark SAN BENEDETTO in connection to mineral water, carbonated and non-carbonated beverages, in Italy. However, in the Panel’s view, these evidences cannot be considered sufficient in order to assess whether the Complainant and its SAN BENEDETTO mark were reputed or even known in other jurisdictions, like, for example, in Cyprus or the United States (where the Respondent is apparently located), at the relevant time, i.e. the time of the registration of the disputed domain name (in 2001).
The Panel notes that the publications issued and provided by the Complainant are dated 2016, and, in one of them, there is an interview regarding the expansion of the Complainant into other markets (outside Italy), where the Complainant’s Chairman indicates:
“[…] The internationalization process began in 1984 thanks to an agreement with Cadbury Schweppes, and continued in 1994 and 1995 with the launch of two new brands, Energade and Oasis, innovative and still today category leaders. In 1996, we began both industrial and commercial partnerships in France, Belgium, Mexico and the Dominican Republic. Precisely because of these international relationships, we managed over time to develop production systems in Spain, Hungary and Poland with global partners such as Ferrero, PepsiCo and Danone.[…]”.
The same publication, in a diagram referred to the history of the company between 1956 and 2016, alludes to the Complainant’s expansion to various countries, like Spain (in 1997), the Dominican Republic (in 1999), Poland and Hungary (in 2001-2002), Mexico (in 2002), but no reference is made to other jurisdictions, and, particularly, no reference is made to Cyprus or the United States.
The Panel further notes that, in another section, reference is made to the United States and other jurisdictions like Canada, Japan, Australia, Israel, and various Asian countries, as the Complainant’s main markets; however, this indication seems to be referred to the moment when this publication was issued (in 2016) and it is not specifically referred to the SAN BENEDETTO mark. As the Complainant produces and commercializes other various products under different trademarks, the Panel is not able to consider this indication as a relevant evidence of the reputation of the SAN BENEDETTO mark or even its use outside Italy in the relevant moment of the registration of the disputed domain name.
At the time of this decision the Panel, under its general powers, articulated, inter alia, in paragraph 10 of the Rules, has corroborated the extensive presence of the Complainant and its SAN BENEDETTO mark over the Internet. The Panel has conducted various searches over the Internet for the SAN BENEDETTO mark finding extensive presence of this trademark over the Internet. However, these current results do not allow the Panel to evaluate the actual presence over the Internet of the Complainant’s trademark at the time when the disputed domain was registered (in 2001).
The Panel further notes that with respect to the Complainant’s registered trademarks, although the use of the SAN BENEDETTO mark by the Complainant started long before the time of the registration of the disputed domain name in Italy (in 1956), there is no evidence in the file that indicates whether this mark was used in any other jurisdiction (apart from the above indicated references to Spain, Dominican Republic, Poland and Hungary), at the relevant moment of the registration of the disputed domain name (in 2001). There is also no evidence in the file when the Complainant started the use of the SAN BENEDETTO mark in the United States or in any other jurisdiction mentioned in the Complainant’s allegations and evidence (Canada, Japan, Australia, Israel, various Asian countries, etc.).
The Panel finds that there is no evidence in the file that suggests the Respondent would have had any particular knowledge of or any contact or connection to the Complainant. Furthermore, no evidence in the file suggests that the SAN BENEDETTO mark was well known or had diffusion generally or in Cyprus or in the United States at the time of the registration of the disputed domain name, or any other circumstance that may lead to consider that the Respondent acted in bad faith. In this regard, the Panel finds that nothing in this case suggests that the Respondent knew or should have known about the Complainant and its trademark and that the Respondent may had the intention to target the Complainant when it registered the disputed domain name. The Panel does note that the Complainant bears the burden of showing bad faith and that burden has not been met here.
Therefore, taking into consideration all the circumstances of this case, Panel considers that the Complainant has not sufficiently proved the alleged bad faith registration of the disputed domain name, considering that, in a balance of probabilities, it may have not been registered targeting the Complainant and its trademark. Accordingly, the Panel concludes that the Complainant has not met its burden under the third element.
The Panel wishes to clarify that this decision is limited to the scope of the Policy, relating only to cases of “cybersquatting”, where both the registration and use of the domain name in disputed is carried out in bad faith (with the knowledge and intention of taking advantage of or damaging the trademark of a third party). Therefore, this decision should not be understood as an approval of the Respondent conduct, not preventing the Complainant, in its discretion should it consider that appropriate, from going to a court of competent jurisdiction.
D. Reverse Domain Name Hijacking (“RDNH”)While the Complaint is this case is denied, the mere attempt to acquire the disputed domain name prior to the filing of the Complaint is not sufficient evidence of bad faith intent on the part of the Complainant. The Panel does note that the Complainant has been in business since 1956 and that the Internet renders the reach of businesses potentially global. At the same time, the Complainant has not shown that the Respondent was targeting the Complainant and its trademark. While this is fatal to its burden under the Policy, there is nothing in the file to indicate that the case was brought with bad faith intent.
7. DecisionFor the foregoing reasons, the Complaint is denied.
Reyes Campello Estebaranz
Sole Panelist
Date: November 12, 2021
1 Although the disputed domain name was registered using privacy services of Anonymize, Inc., in the Response the company MACROSTEN LTD, located in Cyprus, was indicated as owner of the disputed domain name and Respondent. This decision will refer to both of these companies as the “Respondent”.
2 The Respondent cites the following:
3 Paragraph 4(a) of the Policy lists the three elements, which a complainant must satisfy in order to divest a respondent of a domain name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) 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.
4 In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy, and the applicable generic Top-Level-Domain (“gTLD”) in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test.
5 See footnote No. 2, supra.
6 See footnote No. 3, supra.