The Complainant is Casa Natura srl, Italy, represented by Avv. Marco Meneghello, Italy.
The Respondent is IDEAL GMBH, Italy, internally represented.
2. The Domain Name, Registry and RegistrarThe Registry of the disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2021. On November 4, 2021, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On November 5, 2021, the Registry 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 .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 25, 2021. In accordance with the ADR Rules, Paragraph B(3)(a), the due date for Response was January 7, 2022. The Response was filed with the Center on January 7, 2022.
The Center verified that the Response satisfied the formal requirements of the ADR Rules and the Supplemental Rules.
The Center appointed Edoardo Fano as the sole panelist in this matter on January 24, 2022. 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 ADR Rules, Paragraph B(5).
The language of the proceeding is English, being the language of the Registration Agreement, as per Paragraph A(3)(a) of the ADR Rules.
4. Factual BackgroundThe Complainant is Casa Natura srl, an Italian company operating in the field of building construction and using the unregistered trademark CASA NATURA since the incorporation of the company in April 2010.
The Respondent is IDEAL GMBH, an Italian company operating in the field of marketing and communication services.
The disputed domain name
On October 26, 2018, the Complainant and the Respondent stipulated an agreement by means of which the Respondent was in charge of refreshing the marketing and communication strategy of the Complainant.
On August 25, 2021, the Complainant’s legal representatives sent a warning letter to the Respondent asking for the transfer of the disputed domain name to the Complainant.
On September 14, 2021, the Respondent filed the following trademark application:
- Italian Trademark Application No. 302021000154436 for CASA NATURA and design.
On November 26, 2021, the Respondent’s legal representatives, answering to the above warning letter, refused the requested transfer stating that the Respondent is the exclusive owner of the disputed domain name.
5. Parties’ Contentions A. ComplainantThe Complainant states that the disputed domain name
Moreover, the Complainant asserts that the Respondent, a company providing marketing and communication services, was hired in 2018 to refresh the visual image of the Complainant’s website at the disputed domain name and in 2019 put the disputed domain name under its name, as it is today.
The Complainant submits that in 2021 the relation with the Respondent deteriorated and the latter blocked the functions of the Complainant’s website at the disputed domain name, causing a significant financial damage to the Complainant. Following a warning letter sent by the Complainant’s legal representatives, the Complainant asserts that the Respondent restored the website to complete functionality but removed from it all references and contact information of the Complainant and did not transfer the Complainant’s website at the disputed domain name to the new Complainant’s communication firm.
Therefore, the Complainant states that the Respondent has no right to maintain the disputed domain name in its own name and is using it in bad faith by preventing the legitimate owner from making use of it, erasing all references to the Complaint’s contact information.
B. RespondentThe Respondent objects the material incompetence and lack of jurisdiction of the Center, since in the contract stipulated between the Respondent and the Complainant the competent court is exclusively the Court of Merano / Bolzano.
Moreover, the Respondent states that the language of the proceedings is wrong, since there is no registration agreement in English, all communication between the parties has been in Italian and the language specified in the WhoIs is German.1
The Respondent submits to be the official and legal holder of the disputed domain name, since it has always been the owner of the trademark CASA NATURA and the contract signed with the Complainant on October 26, 2018 clearly states that all property rights have been transferred to the Respondent, being the Complainant the sole and exclusive user of the rights.
Finally, the Respondent asserts that, as the Complainant violated the above contract and is in default, all ideas, projects and concepts developed and the products, tools and systems supplied remain the exclusive property of the Respondent, and therefore neither speculative nor abusive registration of the disputed domain name has occurred.
6. Discussion and Findings 6.1 Language of ProceedingsAccording to paragraph A(3) of the ADR Rules, the Panel notes that the language of the Registration Agreement is English, therefore, the language of the proceeding will be English. In addition, the Panel also considers appropriate to mention that both parties demonstrated in the Complaint and in the Response to be familiar with English. Therefore, the Respondent’s objections regarding the language of the proceeding have to be considered as not applicable to the present case.
6.2 CompetenceThe Respondent is objecting the competence of the Center as an ADR Provider in the present case.
As stated in paragraph A(1) of the ADR Rules “[the] ADR Rules are applicable to domain name disputes where the domain name has been registered under the .eu Top Level Domain”. Article 22(2) of the Commission Regulation (EC) No 874/2004 of April 28, 2004 laying down public policy rules concerning the implementation and functions of the .eu Top Level Domain and the principles governing registration states that “[p]articipation in the ADR procedure shall be compulsory for the holder of a domain name”. In addition, section 15 of the Domain Name Registration Terms and Conditions for “.eu” domain names states that: “[t]he Registrant must participate in ADR Procedures if a third party (a ‘Complainant’), in compliance with the Dispute Resolution Rules, assents to an ADR Provider and initiates a complaint against the Registrant on the basis of speculative or abusive registration.”
According to the above, the Panel deems that the Respondent’s objections about the competence of the Center in the present case have to be rejected.
6.3 Substantive IssuesIn order to succeed in its Complaint, the Complainant is required under Paragraph B(11)(d)(1) of the ADR Rules to demonstrate the following:
(i) that the disputed domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by national law of a Member State and/or European Union law; and either
(ii) that the disputed domain name has been registered by the Respondent without rights or legitimate interests in the name; or
(iii) that the disputed domain name has been registered or is being used in bad faith.
(i) Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or European Union law
The Panel finds that the Complainant has rights recognized or established by the national law of a Member State and/or European Union Law on CASA NATURA since its incorporation in 2010 as an Italian company name and unregistered trademark for the purpose of this proceeding, and that the disputed domain name
It is well established in decisions under the ADR Rules that the country-code Top-Level Domain (“ccTLD”) “.eu” is typically ignored when assessing the similarity between a trademark and a domain name.
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to Paragraph B(11)(d)(1)(i) of the ADR Rules.
(ii) Rights or Legitimate Interests
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that when in 2021 their professional relationship deteriorated, the Respondent blocked the functions of the Complainant’s website at the disputed domain name and refused to transfer the latter back to the Complainant.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
Before dealing with the Respondent’s reasons, the Panel could not find any evidence by referring to the examples listed in Paragraph B(11)(e) of the ADR Rules that:
(i) prior to commencing this proceeding the Respondent has used the disputed domain name in connection with the offering of goods or services or has made demonstrable preparations to do so; or that
(ii) the Respondent as an undertaking, organization or natural person has been commonly known by the disputed domain name; or that
(iii) the Respondent is making a legitimate and noncommercial or fair use of the disputed domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or European Union law.
The Panel notes that control over the disputed domain name was transferred from the Complainant to the Respondent so that the latter could carry out the Complainant’s website refreshing, but the Panel finds reasonable to infer that such transfer of control happened for the limited purpose of carrying out the Complainant’s website refreshing as agreed between the Parties. Therefore, the Panel notes that the Respondent became the registrant of the disputed domain name, but the Panel finds it probable that the purpose behind such transfer was the fulfillment of the Respondent’s obligations under the Parties’ agreement.
Later on, the Complainant asked the Respondent to give back the disputed domain name ownership to the Complainant, that is to the original registrant of the disputed domain name as well as the holder of the company name and unregistered trademark rights on the wording CASA NATURA, and, by doing so, putting an end to the Respondent’s management of both the disputed domain name and the Complainant’s website.
As stated in Elders Limited v. Private Company,WIPO Case No. D2007-1099, and the cases cited therein, the relevant time for the assessment of whether a Respondent has rights or legitimate interests in a domain name is the date of the Complaint. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.11. 2
At the time of the Complaint, the original purpose by virtue of which the Respondent managed the Complainant’s domain name and relevant website ceased to exist, and any potential consent by the Complainant was withdrawn. Therefore, the Respondent cannot claim any rights or legitimate interests in the disputed domain name.
However, the Respondent submits to be the official and legal holder of the disputed domain name, since it claims to have always been the owner of the trademark CASA NATURA and asserts that the contract signed with the Complainant on October 26, 2018 clearly states that all property rights have been transferred to the Respondent, being the Complainant the sole and exclusive user of the rights.
As regards the trademark, the Respondent filed a trademark application in Italy for CASA NATURA and design on September 14, 2021, just after the Complainant’s request to the Respondent to give back the ownership of the disputed domain name. The Panel also notes that the above trademark application was filed in respect of products and services corresponding to the Complainant’s field of activity, namely building construction, while the Respondent is operating in a rather different field, namely marketing and communication services.
The Panel, in accordance with its powers to consult matters of public record (see “WIPO Overview 3.0”, section 4.8), has checked the Wayback Machine (“www.archive.org”) and found some pages to which the disputed domain name has resolved from 2012 to 2019, showing the Complainant’s use of CASA NATURA as unregistered trademark for the offer of building construction in a website prior to the restyling carried out by the Respondent from 2020.
As regards the contract stipulated between the Complainant and the Respondent, in which the Respondent is engaged to refresh the Complainant’s corporate identity, including the brand and the website, it is clear that the object of the contract is the restyling, among other things, of the Complainant’s, and not the Respondent’s, brand and website, and the Panel could not find any reference to the transfer of ownership of the disputed domain name from the Complainant to the Respondent.
The Panel therefore finds that Paragraph B(11)(d)(1)(ii) of the ADR Rules has been satisfied.
(iii) Registered or Used in Bad Faith
According to Article 21(1) of the Regulation and Paragraph B(11)(d)(1) of the ADR Rules (ii) lack of rights or legitimate interests and (iii) registration or use in bad faith are alternative requirements. The Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name and therefore there is no need to consider also the bad faith element.
In any case, the Panel finds that the actual use of the disputed domain name by the Respondent, preventing the Complainant from reflecting its company name and unregistered trademark in the corresponding disputed domain name, is an evidence of use in bad faith, pursuant to Paragraph B(11)(d)(1)(iii) of the ADR Rules.
7. DecisionFor the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name
Edoardo Fano
Sole Panelist
Date: February 6, 2022
1 The Panel notes that the WhoIs information provided by the Respondent corresponds to the domain name
2 Considering the substantive similarities between the ADR Rules and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel also refers to UDRP cases, where appropriate.
3 As the Complainant Casa Natura srl is located in Italy, a Member State of the European Union, it satisfies the general eligibility criteria for registration of the disputed domain name set out in Article 4(2)(b) of Regulation (EC) No. 733/2002 as amended by Regulation (EU) 2019/517. Therefore, the Complainant is entitled to request the transfer of the disputed domain name.