The Petitioner is Societe Nouvelle del Arte,France, represented by SCAN Avocats, France. 2. Domain Holder
The Domain Holder is P.I., Bulgaria. 3. Domain Name and Procedural History
This Alternative Dispute Resolution proceeding relates to the domain name This Petition was filed under the Terms and Conditions of registration (the “.se Policy”) and the Instructions governing Alternative Dispute Resolution proceeding for domain names in the top-level domain .se (the “.se Rules”). The Petitioner elected to have the dispute decided by one arbitrator. The Petitioner also elected not to have the dispute decided as an Accelerated Proceeding if the Domain Holder did not respond to the Petition. The WIPO Arbitration and Mediation Center (“the Center”) verified that the Petition satisfied the formal requirements of the .se Policy and the .se Rules. In accordance with Section 13 of the .se Rules, the Center formally notified the Domain Holder of the Petition on January 3, 2020. The Domain Holder did not submit any response and, accordingly, the Center notified the Domain Holder's default on February 3, 2020. The Center appointed Jon Dal as the sole Arbitrator in this matter on February 6, 2020. The Arbitrator has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Section 1 of the .se Rules. 4. Claim The Petitioner claims that the Domain Name shall be transferred to the Petitioner. The Domain Holder did not submit any response. 5. Parties’ Contentions 5.1. Petitioner A. The Domain Name is identical or similar to a name which is legally recognized in Sweden and to which the Petitioner can prove its rights The Group Le Duff was established in 1976 and is specialized in restaurants and bakeries worldwide. It is currently the leader in the international bakery café market. It has over 1,658 restaurants and bakeries in 90 countries worldwide and serves 1,000,000 customers daily. The Group Le Duff’s total turnover is more than two billion EUR. One of its subsidiaries is Societe Nouvelle Del Arte, the Petitioner, which owns and runs the Del Arte chain created in 1984. The Group Le Duff purchased this restaurant chain in 1995, which has become the leader in the French Italian restaurant market. The Del Arte chain is known as the leading Italian-style restaurant chain acting under the trademarks PIZZA DEL ARTE and DEL ARTE with EUR 215 million in turnover and 3.500 employees in 154 restaurants in France and abroad. The Del Arte chain offers pizza, pasta and classic dishes that are largely inspired by Italian cuisine. This restaurant chain has over 150 restaurants, 90 per cent of which are franchises and its dishes have been served to 12 million customers in 2017. The Petitioner is currently developing its activity both in France and abroad. Thus, the Petitioner opens 10 to 15 new restaurants every year. In order to increase the recognition of the PIZZA DEL ARTE and DEL ARTE trademarks in the consumer mind, the Petitioner regularly launches promotional campaigns and undertakes sponsoring activities. Therefore, the signs PIZZA DEL ARTE and DEL ARTE are well known. The Domain Holder has no relationship with the Petitioner. The Petitioner is the owner of numerous trademark registrations for PIZZA DEL ARTE and DEL ARTE worldwide, including PIZZA DEL ARTE, European Union (“EU”) trademark registration No. 1123256 filed on March 30, 1999 (duly renewed) for goods and services in classes 29, 30 and 42. The trademark predates the Domain Name which was registered on August 25, 2019. The Petitioner is also the owner of several domain names related to the DEL ARTE restaurant activities, including The Domain Name is identical or similar to the Petitioner’s PIZZA DEL ARTE (word) trademark. The Domain Name incorporates the well-known trademark PIZZA DEL ARTE in its entirety. The fact that the word “pizza” is merely descriptive, if not generic, cannot overcome the claim of similarity, especially since the term “pizza” directly refers to the Petitioner’s activity. The disputed Domain Name only differs from the Petitioner’s trademark by the addition of the “.se” Top-Level Domain (“TLD”) at the end of the Domain Name. It is well established that the addition of a TLD are necessary for technical reasons. Therefore, such element is irrelevant in the comparison of the sign at stake and inapt to distinguish the Domain Name from the incorporated trademark. B. The Domain Name has been registered or used in bad faith The Domain Holder registered and is using the Domain Name in bad faith. The Petitioner has demonstrated the strong reputation and the leading position of its PIZZA DEL ARTE and DEL ARTE trademarks in France and abroad in the field of Italian-style restaurant chain. Its PIZZA DEL ARTE and DEL ARTE trademarks are used in commerce since 1999, many years before the Domain Name was registered. The domain name Furthermore, a simple search via Google or any other search engine using the keywords “PIZZA DEL ARTE” and “DEL ARTE” demonstrates that nearly all results relate to the Petitioner’s websites or business. Therefore, it is highly unlikely that the Domain Holder was unaware of the existence of the Petitioner and its well-known reputation and trademarks in the field of Italian-style restaurants, while it filed the application for the Domain Name, which is an evidence of bad faith. Moreover, the denomination “del arte” and the combination of the word “pizza” to the denomination “del arte” are arbitrary and fanciful so that they exclusively refer to the prior trademarks and domain names of the Petitioner. Consequently, registering a domain name reproducing, partly or in their entirety, the PIZZA DEL ARTE and DEL ARTE pre-dated well-known trademarks and trade names cannot be considered accidental. This suggests that the Domain Holder has intended to target the Petitioner’s chain of Italian-style restaurants and trademarks at the time of registering the Domain Name. Considering the above and, in particular, the notoriety of the Petitioner’s trademarks and trade names, the Domain Holder has registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring it to the Petitioner or to one of its competitor, for valuable consideration, which is a proof of bad faith. The Domain Name (a) is currently on sale and (b) resolves to a parking page displaying several links written in French (country of the Petitioner) which lead to third parties’ sponsored links related to various categories of interest including some Petitioner’s competitors websites such as “Pizzeria Saint-Thomas”. The hosting of a domain parking page leading to third parties’ sponsored links does not preclude a finding of bad faith by the Domain Holder. On the contrary, it reveals that the Domain Holder tends to attract, for commercial gain, Internet users, to its website by creating a likelihood of confusion with the Petitioner’s widely known prior rights, especially when the said sponsored links relate to activities which are identical or similar to the activity operated by the Petitioner. There is no justification for the Domain Holder to reserve the Domain Name which is substantially similar to the Petitioner's prior rights to the names PIZZA DEL ARTE and DEL ARTE. Last but not least, the fact that the Domain Name is on sale attests the Domain Holder’s bad faith who is likely to have registered or acquired the Domain Name for the sole purpose of profitable sale to either the Petitioner or one of its competitors for valuable consideration in excess of the Domain Holder’s documented out-of-pocket costs directly related to the Domain Name. The mere absence of right or legitimate interest in the Domain Name should point out that the Domain Name has not been used in good faith. Therefore, the aforegoing demonstrates bad faith in the use of the Domain Name by the Domain Holder. C. The Domain Holder has no rights or justified interest in the Domain Name The Domain Holder has no rights or justified interests in respect of the Domain Name. To the Petitioner’s best knowledge, the Domain Holder is not currently and has never been known under the names “Pizza Del Arte” or “Del Arte”. The Petitioner has never given any authorization to any third party to register or to use its PIZZA DEL ARTE and DEL ARTE trademarks. The Petitioner did not know the Domain Holder before the Domain Name was registered. The Petitioner ascertains that the Domain Holder is not in any way related to its business and does not carry out any activity for or has any business with it. In particular, the Domain Holder has not been licensed, contracted or otherwise permitted by the Petitioner in any way to use the prior PIZZA DEL ARTE and DEL ARTE trademarks or to register any domain name incorporating these prior trademarks, nor has the Petitioner acquiesced in any way to such use or registration of the PIZZA DEL ARTE and DEL ARTE trademarks by the Domain Holder. D. Evidence In support of its case the Petitioner presents, i.a., to the following documents: - Extracts from the websites “www.groupeleduff.com” and “www.delarte.fr” - Copy of EU trademark registration for PIZZADELARTE (word), Reg. No. 1123256 - Screen shots from the website - Google searches on PIZZA DEL ARTE and DEL ARTE 5.2 Domain Holder The Domain Holder did not submit any response. 6. Discussion and Findings A domain name may be transferred to the party requesting dispute resolution proceedings if the following three conditions are fulfilled: A. The domain name is identical or similar to a name which is legally recognized in Sweden and to which the party requesting dispute resolution can prove its rights, and B. The domain name has been registered or used in bad faith, and C. The domain holder has no rights or justified interest in the domain name. All three conditions must be met in order for the party requesting dispute resolution to succeed with a claim for transfer of the domain name. 6A. The Domain Name is identical or similar to a name which is legally recognized in Sweden and to which the Petitioner can prove its rights The Petitioner is the owner of EU trademark registration no 1123256, for PIZZA DEL ARTE (word). The Domain Name is similar to the Petitioner’s trademark and the first condition is met. 6B. The Domain Name has been registered or used in bad faith The Petitioner has used its trademark PIZZA DEL ARTE extensively and for a long time. The Petitioner is also the owner of several trademark registrations for PIZZA DEL ARTE and several domain name registrations which included the trademark PIZZA DEL ARTE, which predates the Domain Holder’s registration of the Domain Name. Furthermore, PIZZA DEL ARTE must be regarded as a fanciful trademark and not descriptive for the Petitioner’s business. According to extracts from the website “www.pizzadelarte.se” submitted by the Petitioner, the Domain Name is on sale and resolves to a parking page displaying several links written in French which lead to third parties’ sponsored links related to various categories of interest including some of Petitioner’s competitors websites. It is unlikely that the Domain Holder did not know of the Petitioner’s trademark PIZZA DEL ARTE when registering the Domain Name. The Domain Holder furthermore uses the Petitioner’s reputation and goodwill in its PIZZA DEL ARTE trademark to attract traffic to the “www.pizzadelarte.se” web page. Based on the above, the Arbitrator comes to the conclusion that the Domain Holder has registered and uses the Domain Name in bad faith. 6C. The Domain Holder has no rights or justified interest in the Domain Name. The Domain Holder has registered and uses the Domain Name in bad faith. Under these circumstances the Domain Holder cannot have a right or justified interest in the Domain Name. 7. Decision The Domain Name The Domain Name is similar to a trademark legally recognized in Sweden and owned by the Petitioner. The Domain Holder has registered and uses the Domain Name in bad faith and does not have a right or justified interest in the Domain Name. Jon Dal
Date: February 23, 2020
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