The Complainant is Barilla G. e R. Fratelli S.p.A., Italy, represented by Studio Barbero, Italy.
The Respondent is Super Privacy Service LTD c/o Dynadot / Ali Aslan, Turkey.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2021. On September 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 17, 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 September 20, 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 September 20, 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 September 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 14, 2021.
The Center appointed Torsten Bettinger as the sole panelist in this matter on October 18, 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 one of the leaders in the field of oven-baked products, of pasta and of ready-made sauces.
The Complainant owns a number of registrations for the BARILLA word and design marks throughout the world, including the following:
- International Registration Number 675652, registered on June 20, 1997, for BARILLA in connection with goods in international classes 29 and 30;
- International Registration Number 1077405, registered on April 7, 2011, for BARILLA in connection with goods and services in international classes 29, 30, 31, 32, 33, 35, 41, 42 and 43;
- International Registration Number 517379, registered on December 2, 1987, for the mark BARILLA and design in connection with goods in international classes 21, 25, 29, 30 and 31.
The Complainant is also the owner of several additional trademark registrations for the word and design marks MULINO BIANCO and MULINO BIANCO BARILLA, including the following:
- International Registration No. 489050, registered on October 20, 1984 for MULINO BIANCO BARILLA, in connection with goods in international class 30;
- International Registration No. 862461 for MULINO BIANCO BARILLA and design, registered on March 18, 2005 in connection with goods international class 30;
- International Registration No. 862464 for MULINO BIANCO BARILLA and design, registered on March 18, 2005 in connection with goods in international class 30;
- United States Trademark Registration No. 3159095 for MULINO BIANCO BARILLA and design, registered on October 17, 2006 in connection with goods in international class 30;
- European Union Trademark Registration No. 004222386 for MULINO BIANCO BARILLA and design, registered on March 27, 2006 in connection with goods in international classes 29, 30 and 43.
The disputed domain name was registered on November 6, 2019 and was redirected to web pages of brokerage platforms offering the disputed domain name for sale.
The Complainant’s representative sent a cease and desist letter by email to the Respondent on September 25, 2020, and reminders on October 19, 2020, December 3, 2020, July 6, 2021, and September 14, 2021, requesting to transfer the disputed domain name and to cease any use of it.
The Respondent did not respond to these letters.
5. Parties’ Contentions A. ComplainantThe Complainant states that it was established in 1877 by its founder Pietro Barilla, who ran a small shop selling pasta and bread with an adjoining bakery.
The Complainant states that in 2020 it employs around 8,600 employees and its annual net sales in 2020 was approximately EUR 3,890 billion and asserts that its brands are the leaders in the world pasta market, the European sauce market, the Italian and French bakery and bread markets, and the Scandinavian and Central European crispbread markets. The Complainant provided evidence that it operates websites at “www.barilla.com”, “www.barillagroup.com” and “www.mulinobianco.it” and “www.mulinobianco.com”.
The Complainant provided screenshots that show that at the time of the drafting of the present Complaint the disputed domain name was redirected to web pages of the domain name aftermarket provider SEDO offering for sale the registration initially at USD 990 and later at USD 988.
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case.
With regard to the requirement of identity or confusing similarity between the trademark and the disputed domain name pursuant to paragraph 4(a)(i) of the Policy, the Complainant asserts that:
- the disputed domain name is identical to or confusingly similar with the Complainant’s well-known BARILLA and MULINO BIANCO BARILLA trademarks as it incorporates the distinctive sign in its entirety, without any alteration which might distinguish the disputed domain name from the Complainant’s trademarks;
- the generic Top-Level Domain (“gTLD”) “.com” is merely instrumental to the use of the Internet and should therefore be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark.
With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the Complainant submitted that:
- the Respondent is not a licensee or authorized agent of the Complainant or in any other way authorized to use the Complainant’s trademarks;
- it is well-established that typically in the absence of any license or permission from a complainant to use the complainant’s trademarks, no bona fide or legitimate use of the domain name can reasonably be claimed;
- the Complainant is not in possession of nor is aware of the existence of any evidence demonstrating that the Respondent might be commonly known by a name corresponding to the disputed domain name as an individual, business, or other organization;
- because of the Respondent’s use of a privacy shield to conceal its identity, the Respondent cannot have been commonly known by the disputed domain name before any notice of the dispute;
- the Respondent has not provided the Complainant with any evidence of use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before or after any notice of the dispute herein;
- the fact that the disputed domain name is offered for sale for amounts exceeding the out-of-pocket costs indicates that the Respondent had no intention to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use.
Finally, with regard to the disputed domain name having been registered and being used in bad faith, the Complainant argues that:
- in light of the Complainant’s use of the BARILLA and MULINO BIANCO trademarks since as early as 1877 and 1975, the amount of advertising and sales of Complainant’s products in Europe and worldwide, the Respondent could not have possibly ignored the existence of the Complainant’s well-known brands at the time of the registration of the disputed domain name;
- the misappropriation of a well-known trademark as domain name by itself constitutes bad faith registration for the purposes of the Policy;
- in light of the distinctiveness and reputation of MULINO BIANCO and BARILLA trademarks the Respondent clearly acted in opportunistic bad faith, since it obviously registered the disputed domain name with full knowledge of the Complainant and its trademarks for the purpose of taking commercial advantage of the Complainant’s trademarks;
- the disputed domain name has always resolved to a brokerage platform where the domain name was offered for sale for “a valuable consideration in excess of […] documented out-of-pocket costs directly related to the domain name”;
- the fact that a domain broker has been engaged creates a strong presumption of the Respondent's intention of selling the disputed domain name to the Complainant or to a third party for an amount exceeding the out- of-pocket costs for registering the domain name;
- the Respondent registered the disputed domain name with the purpose of selling it, in all likelihood to the legitimate trademark owner, for valuable considerations in excess of the out-of-pocket costs;
- the fact that the Mail Exchange (“MX”) record is configured entails the possibility that the Respondent is using, or plans to use the disputed domain name for emails aimed at phishing activities;
- the Respondent failed to reply to the cease-and-desist letter sent by the Complainant’s representative and its use of a privacy protection service to conceal its data can be evidence of bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
(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 has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has demonstrated that it owns multiple trademark registrations for the marks BARILLA and MULINO BIANCO BARILLA prior to the registration of the disputed domain name on November 6, 2019.
It is well-established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the trademark is used or other marketing and use factors usually considered in trademark infringement cases. (See sections 1.1.2 and 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In this case, the disputed domain name contains the Complainant’s MULINO BIANCO BARILLA trademark in its entirety. As set forth in section 1.7 of WIPO Overview 3.0: “in cases where a domain name incorporates the entirety of a trademark […] the domain name will normally be considered identical or confusingly similar to that mark.” (See, e.g., Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy”)).
Further, it is well accepted under the UDRP case law that the specific gTLD designation such as “.com”, “.net”, “.org” is not to be taken into account when assessing the issue of identity and confusing similarity, except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark (WIPO Overview 3.0 section 1.11).
The Panel concludes that the disputed domain name is identical to the Complainant’s MULINO BIANCO BARILLA trademark in which the Complainant has exclusive rights.
B. Rights or Legitimate InterestsPursuant to paragraph 4(c) of the Policy a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [the Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Complainant has asserted and presented evidence that the disputed domain name resolves to web pages of the domain name aftermarket platform SEDO offering for sale the registration initially at USD 990 and later at USD 988.
The Complainant also stated that the Respondent is not a licensee, authorized agent of the Complainant or in any other way authorized to use the Complainant’s trademarks.
These assertions and evidence are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
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 disputed 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 3.0.
The Respondent chose not to contest the Complainant’s allegations and has failed to come forward with any evidence to refute the Complainant’s prima facie showing that the Respondent lacks rights or legitimate interests. The Panel therefore accepts these allegations as undisputed facts.
From the record in this case, the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that the Respondent has used the disputed domain name to resolve to a brokerage platform in order to sell the domain for a valuable consideration in excess of documented out-of-pocket costs directly related to the domain name.
The Panel therefore concludes that the Respondent’s use of the disputed domain name can convey no rights or legitimate interests in the disputed domain name and that, accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
i. circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or
ii. the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
iii. the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
iv. by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Complainant holds multiple trademark registrations for the MULINO BIANCO BARILLA trademark in various countries that predate the registration of the disputed domain name.
Given that the Complainant’s BARILLA and MULINO BIANCO BARILLA marks are very famous all over the world, it is inconceivable that the Respondent coincidentally registered the disputed domain name without any knowledge of the Complainant rights in its BARILLA and MULINO BIANCO BARILLA Mark.
Based on the record in this proceeding it is also undisputed that the disputed domain name resolves to web pages of the brokerage platform SEDO offering for sale the disputed domain name first at USD 990 USD and later at USD 988, both sums that are greater than the registration fees for the domain name.
The fact that the disputed domain name has simply been listed for sale to the general public via the aftermarket provider SEDO but that there was no direct offer to the Complainant or one of its competitors, does not preclude a finding of bad faith. Even if one assumes that the Respondent’s offer to sell the disputed domain name to the general public falls short of the specific requirements of paragraph 4(b)(i) of the Policy, and the other three stated examples of paragraph 4(b), the Panel is willing to make an inference of bad faith outside of the four stated examples of the Policy.
The instances of bad faith listed in Policy, paragraph 4(b) are expressly without limitation.
The Respondent’s conduct in attempting to sell the disputed domain name identical to the Complainant’s famous mark MULINO BIANCO BARILLA leaves no doubt that the Respondent selected the disputed domain name in order to capitalize on the Complainant’s MULINO BIANCO BARILLA trademark value.
The Panel agrees with the Complainant that the Respondent’s registration of a domain name incorporating a very famous mark of which he was clearly aware, without any evident right to do so, can itself be taken as evidence of bad faith. (See, e.g., Playboy Enterprises International, Inc. v. Federico Concas, a.k.a John Smith, a.k.a. Orf3vsa,WIPO Case No. D2001-0745).
Accordingly, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Torsten Bettinger
Sole Panelist
Date: November 2, 2021