ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Julius Blum GmbH v. Galimberti Ferramenta Snc Case No. D2024-0943 1. The Parties The Complainant is Julius Blum GmbH, Austria, represented by Torggler & Hofmann Patentanwälte GmbH & Co KG, Austria. The Respondent is Galimberti Ferramenta Snc, Italy, represented by NPA Studio Legale, Italy. 2. The Domain Name and Registrar The disputed domain name
is registered with Tucows Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2024. On March 5, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 5, 2024, 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 (Name not available) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 6, 2024 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 11, 2024. 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 12, 2024. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2024. The Response was filed with the Center on April 5, 2024. The Center appointed Marina Perraki as the sole panelist in this matter on April 26, 2024. 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.
page 2 4. Factual Background Per Complaint, Complainant is active in furniture fittings and was founded more than 70 years ago. It currently employs almost 9,500 people, supplies more than 120 countries worldwide, has production facilities in Austria, Poland, United States of America, Brazil and China as well as 33 subsidiaries and representative offices around the world. Complainant owns several trademark registrations for BLUM around the world, including the European Union trademark registration no. 35 568 BLUM (word), filed on April 1, 1996 and registered on June 2, 1998 for goods in international classes 6, 7, 9, and 20. Furthermore, Complainant has registered the domain name and maintains an active website under it. The disputed domain name was registered on January 23, 2014 and redirects to a website at “eshop.galimbertiferramenta.com/puntoblumcom” which sells different items of several brands, including furniture fittings and furniture accessories of Complainant under Complainant’s trademark BLUM, as well as of Complainant alleged competitors. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. In particular, Complainant contends that it has never licensed or in any way authorized the Respondent to register or use its trademark BLUM as a domain name and that Respondent is improperly confusing consumers into believing that they have reached the Complainant’s online webshop for Italy or creating a false impression that the Respondent is associated or affiliated with the Complainant. Furthermore, it contends that the disputed domain name has been designed to imply that there is an affiliation between Respondent and Complainant or that the Complainant endorses the Respondent’s activities even though per Complainant no affiliation between Respondent and Complainant or endorsement by Complainant exists. B. Respondent Per the Response, Respondent has been active in the distribution of hardware, small parts and technical articles for over 80 years. Respondent acknowledges that Complainant is a world-wide leader in the business of furniture fittings, doing business also in Italy through a network of designated resellers. Amongst Complainant Resellers, per Respondent, those who enjoy a long-term business relationship are each identified as “Punto Blum”. Per Response, the Respondent was also endorsed with the Punto Blum Reseller status, as it had been doing business with Complainant for more than twenty years. Respondent claims to have been doing business with Complainant’s Italian distributor. Respondent has submitted a letter of Complainant’s Italian distributor, dated January 28, 2014, whereby Complainant’s Italian Distributor expressly authorized Respondent to make use of Complainant’s trademark for its website and its catalogues, in accordance with the terms of use of Complainant’s mark. These terms were not provided to the Panel. Respondent further submitted email correspondence of April 2014, with the Italian distributor and Complainant concerning marketing material of Respondent, and email correspondence of September 2021 with Complainant. Respondent further submitted an email of April 23, 2014, they sent to a manager of Complainant at the email address “[…]@blum.com” mentioning “I am sending you the provisional link for access to the beta version of
page 3 our web shop dedicated to the marketing of Blum products www.puntoblum.com: 1499” discussing also changes that were requested for the use of Complainant’s mark on the site. In this email a disclaimer purportedly to appear in the website of Respondent was included which read: “Copyright © 2014 PuntoBlum.com by Galimberti Ferramenta s.n.c.” namely revealed again the domain name and accompanied it with the wording “by Galimberti Ferramenta s.n.c.”, the Respondent. It also included a wording in the same disclaimer whereby Respondent acknowledged Complainant’s BLUM marks and rights, namely stating that the trademark BLUM is the property of Complainant. Respondent contends that Complainant never challenged the above use. Respondent however produced an email dated October 16, 2017 of Complainant’s Italian distributor to Respondent discussing a request not to reproduce “the Blum website”: “We talked about the future modification of the Blum website with the request not to reproduce it, but we also resumed the discussion of Json files that would allow for a “customized” configuration within a Galimberti Ferramenta e-shop environment”. As Respondent demonstrated, on March 23, 2023 Complainant and its Italian Distributor awarded Respondent with a celebration plate, whereby the former acknowledged their collaboration throughout twenty years. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the 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. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms here, “punto”, which means “point” in Italian, denoting a point where Complainant’s BLUM goods are sold, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests It is unnecessary for the Panel to consider this element in view of its conclusion under the third element below.
page 4 C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Under this third element of the Policy, the Panel’s only role is to assess whether, on balance, the Respondent acted in bad faith, i.e., that they possessed the relevant negative intent vis-à-vis the Complainant’s trademarks when registering and using the disputed domain name. Ιt is not the role of the Panel to assess whether the Respondent has infringed the Complainant’s trademarks or violated any agreement between the two. The Respondent believes they were entitled to register and use the disputed domain name and demonstrated that such purported use was communicated to Complainant (through a person under an email address “@blum.com”, identified by the Respondent as the Complainant’s “market contact for the resale segment in Italy”) and its Italian distributor who thereafter even awarded Respondent with a recognition award of their long collaboration. On the other hand, Complainant stated that the use was unauthorised however they did not seek to rebut any of the arguments and documents submitted by Respondent, while there was no explanation in the Complaint about the collaboration with Respondent. The Respondent may be right or wrong about their belief from the point of view of trademark infringement – as to which the Panel expresses no view. But the Panel does not consider that the circumstances are sufficiently clear to enable it to make a finding that the Respondent registered and used the disputed domain name in bad faith for the purposes of the Policy. Moreover, the Panel is concerned that this situation may be one in which there is a dispute between the Complainant and the Respondent that falls outside the scope of the Policy. Panels have tended to deny complaints not on the merits but on the narrow grounds that the dispute between the parties exceeds the relatively limited “cybersquatting” scope of the Policy and would be more appropriately addressed by a court of competent jurisdiction or perhaps in mediation. WIPO Overview 3.0, section 4.14.6. The Panel finds the third element of the Policy has not been established. 7. Decision For the foregoing reasons, the Complaint is denied. /Marina Perraki/ Marina Perraki Sole Panelist Date: May 10, 2024
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