The Complainant is Granarolo S.p.A., Italy, represented by Perani Pozzi Associati, Italy.
The Respondent is Christian Pradal, Vip Yacht, Spain. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2019. On September 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 23, 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 September 27, 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 September 30, 2019. The Center sent an email communication to the parties on September 27, 2019 regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain name is Spanish. The Complainant submitted a request for English to be the language of the proceeding on September 30, 2019. The Respondent did not submit any communication regarding the language of the proceeding. 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 October 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 30, 2019. The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on November 8, 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 states that represents the most important Italian milk production chain, being a well known food company established in 1957 and based in Bologna which operates in the fresh milk and dairy-cheese sector (milk, yoghurt, desserts, ice cream, fresh cream and long-life cream, fresh and aged cheeses, and milk-based baby food), and also in relation with dry pasta, deli meats and vegetable foods. In 1957, the Bologna Consortium of Milk Producers is created (CBPL), soon known as “Granarolo”. The Bologna Consortium of Milk Producers is one of the first experiences of producers not only engaged in collection, but also in processing and commercialization of milk. Lately, Granarolo and cooperative Felsinea Latte join to launch a bigger reality: the CERPL (Consorzio Emiliano - Romagnolo Produttori Latte), the first unitary consortium set up in Italy. Growth in the 70s is consolidated in the next decade by a series of acquisitions throughout Italy: in Modena (Dilat), Foggia (Daunia Nature), Anzio (Sogecla), Novara (Milk Verbano) and in Versilia (Centrale del Latte in Camaiore). The Consortium, which is given the name Granlatte, creates a limited company (Granarolo S.p.A.) to which it transfers all its industrial and commercial assets retaining full control. In these years, moreover, the shareholders assembly of Granarolo S.p.A. approves an increase in corporate capital which allows it to enter the public merchant bank Itainvest S.p.A. (which then becomes Development Italy and subsequently Invitalia). In 2013 Granarolo announces acquisition of the French group CIPF Codipal, head of the holding Compagnie du Forum SAS, an established French producer and distributor of mature and cured cheeses through the three brands Casa Azzurra, Les Fromagers de Ste Colombe and Les Fromagers de St. Omer. The acquisition of CIPF Codipal is very important as part of the Granarolo strategy aimed at internationalizing the company and exporting its Italian products, already highly appreciated across the border. This operation launched Granarolo International, the company that is to become a benchmark for all international activity by the group. In December, Granarolo UK is created, a company controlled by Granarolo International for the export of cheeses to the United Kingdom and Ireland. The same year also sees signing of the partnership with Amalattea S.p.A., one of the major Italian operators in the production and marketing of goat's milk and dairy products. At the beginning of 2016, Granarolo International S.r.l. acquired Vinaio OÜ, which is now called Granarolo Baltics OÜ, an Estonian law company, based in Tallinn and operating in the milk and cheese product marketing sector and in imports of quality Italian products onto the Estonian market. On February 22, 2016, Granarolo S.p.A. and Cooperare S.p.A. partners increased capital by EUR 14 million, allowing the funding of new acquisitions on foreign markets. Between April and July new acquisitions are announced: 60% of CONBIO, an important Italian company specialized in the production of a wide range of vegetable and organic gastronomic products; 50% of Matric Italgross AB, a Swedish company that distributes leading Italian brands in the category; 60% of Comarsa SA, a company that distributes Made in Italy food products in Switzerland - the fourth export market for Italian dairy products in Europe; 66% of Fattorie Giacobazzi, an Italian company specialized in the production of a huge range of balsamic vinegars, with 400 references and an annual production of 6 million bottles, the fifth largest player in the Italian Balsamic Vinegar of Modena PGI market. At the end of 2016, the Group acquired, through a competitive auction, the Pandea Dietetica S.r.l. – a company based in Parma since 1946 and specialized in the production of baked goods with or without gluten, and announced the acquisition of 30% (which in 2017 increased to 60%) of San Lucio S.r.l. – the company that owns GROKSÌ!, – a brand linked with an innovative oven-baked cheese snack. The Complainant asserts that currently has over 3.000 employees in productive plants in Italy and seven abroad, with an export in 35 European countries and 40 overseas countries. The Complainant is the owner, among others, of the following registrations for the trademarks “GRANAROLO” and “GRANAROLO GROUP” (enclosed with the Complaint as Annex E): - International trademark registration No. 565851 “GRANAROLO”, granted on February 26, 1991 and duly renewed, in classes 29 and 30, covering among others Spain, the country of the Respondent; - European Union trademark registration No. 4942711 “GRANAROLO”, applied for on March 6, 2006 and granted on April 20, 2009, in classes 5, 16, 29, 30, and 32; - European Union trademark registration No. 15893977 “GRANAROLO GROUP & device”, applied on October 5, 2016 and granted on March 7, 2017, in classes 5, 29, 30, 31, and 32. Moreover, the Complainant is also the owner, among others, of the following domain names The Respondent registered the disputed domain name The Complainant argues that it is more than obvious that the disputed domain name is almost identical to the Complainant’s trademarks GRANAROLO. Further, the disputed domain name Therefore, the Respondent has no legitimate rights on the disputed domain name, since it has nothing to do with Granarolo, S.p.A. and they have no relationship whatsoever. The use of “GRANAROLO” has to be authorized by the Complainant, and nobody has been authorized or licensed by the above-mentioned company to use the domain name at issue. The domain name under discussion does not correspond to the name of the Respondent and, to the best of the Complainant’s knowledge, the underlying registrant is not commonly known as “granarologroup”. The Complainant argues that the Disputed Domain Name was registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceedings The Complainant is an Italian company, while the Respondent likely understands Spanish in view of the Respondent’s address. However, the Respondent did not reply to the Complainant’s contentions regarding the language of the proceedings, and no arguments against the use of English have been made. The Panel notes that there is no evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English. The Registrar has indicated that the language of the Registration Agreement is Spanish. Notwithstanding, the present Complaint was submitted in English by the Italian Complainant with the argument that it is an international language that is comprehensible to a wide range of Internet users worldwide. Paragraph 11 of the Rules directs the Panel to ensure fairness in the selection of language by giving full considerations to the parties’ level of comfort with each language. The Complainant stated that a fair solution would be to: 1) accept the Complaint as filed in English; The Center has appointed a Panel familiar with both languages, subsequent to the Complainant’s request to maintain English as the language of the proceeding. In view of all the above, and noting that the Respondent has not objected to English being the language of the proceeding, the Panel accepts such request and considers that English is a reasonable and fair language in the present proceeding. B. Identical or Confusingly Similar The Panel considers that all the information provided by the Complainant clearly attests that the disputed domain name The Panel furthermore agrees with the Complainant´s contentions that the addition of the descriptive word “group” should be disregarded as it does not distinguish the disputed domain name from the Complainant’s trademark. Therefore, this first requirement has been satisfied. C. Rights or Legitimate Interests The Respondent has not responded to the Complaint, and the record is void of any possible rights or legitimate interests he may have in the disputed domain name. Neither has the Respondent refuted the allegations made by the Complainant. Therefore, having been duly notified of the Complaint, the Panel considers the silence of the Respondent as a tacit acceptance of the claims made by the Complainant. Moreover, the Panel has not found the occurrence of any of the circumstances mentioned by paragraph 4(c) of the Policy. Quite the contrary, the Complainant has effectively demonstrated the following: to be the owner of registered trademarks and associated domain names, including the trademarks GRANAROLO which are prior to the Respondent’s registration of the disputed domain name, and that it has not licensed the use or exploitation of its GRANAROLO trademarks to the Respondent. Accordingly, and considering the unrebutted prima facie case made out by the Complainant, the Panel considers that the Complainant has also fulfilled the second element required by the Policy. D. Registered and Used in Bad Faith This third element requires the Complainant to prove that the disputed domain name (1) was registered in bad faith and (2) is being used in bad faith. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that evidence registration and use of a domain name in bad faith. The disputed domain name incorporates the Complainant’s trademark GRANAROLO entirely. The addition of the descriptive word “group” does not modify the overall impression of the disputed domain name which is confusingly similar to the Complainant’s trademark. On the contrary, considering that the Complainant also owns the domain name The Panel finds the Respondent must have had knowledge of the Complainant’s mark GRANAROLO and its rights therein at the time the Respondent registered the disputed domain name. These findings are based on: (i) the Complainant’s trademark having a strong reputation and being known in Europe; (ii) the disputed domain name is confusingly similar to the Complainant’s trademark; (iii) the above finding of the Respondent having no rights or legitimate interests in the disputed domain name, and (iv) the Respondent is not using the Domain Name for any purpose at this time, as it is currently connected to an inactive webpage. Further, given the confusing similarity of the disputed domain name with the Complainant’s GRANAROLO trademark and in light of the use given to the disputed domain name, the Panel agrees that the Respondent’s motive to register the disputed domain name can only have been to create a likelihood of confusion with the Complainant’s trademarks within the meaning of paragraph 4(b)(iv) of the Policy. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at section 3.3, describes the circumstances under which the passive holding of a domain will be considered to be a bad faith registration: “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” See Andrey Ternovskiy dba Chatroulette v. WhoisGuard Protected, WhoisGuard, Inc. / Armando Machado (WIPO Case No. D2018-0082). Finally, the consensus view of UDRP Panels is that passive holding of a disputed domain name may, in appropriate circumstances, be consistent with a finding of bad faith. Panels have tended to make such findings in circumstances in which, for example, a complainant’s trademark is well known, and there is no conceivable use that could be made of the domain name that would not amount to an infringement of the complainant’s trade mark rights. Consequently, for all these reasons, the Panel finds that the Complainant has met the third element required of paragraph 4(a)(iii) of the Policy. 7. Decision For the foregoing reasons, and in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name Rodrigo Velasco Santelices
2) accept a Response in either English or Spanish;
3) appoint a Panel familiar with both languages.
Sole Panelist
Date: November 19, 2019
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