Granarolo S.p.A v. MultiMessanger S. Corp
Claim Number: FA0905001261759
Complainant is Granarolo
S.p.A (“Complainant”), represented by
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <granarolo.com>, registered with Domainmarketplace.ca.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 8, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 8, 2009.
On May 11, 2009, Domainmarketplace.ca confirmed by e-mail to the National Arbitration Forum that the <granarolo.com> domain name is registered with Domainmarketplace.ca and that Respondent is the current registrant of the name. Domainmarketplace.ca has verified that Respondent is bound by the Domainmarketplace.ca registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 14, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 3, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@granarolo.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 9, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <granarolo.com> domain name is identical to Complainant’s GRANAROLO mark.
2. Respondent does not have any rights or legitimate interests in the <granarolo.com> domain name.
3. Respondent registered and used the <granarolo.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Granarolo S.p.A. is the owner of the GRANAROLO mark, registered with the Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 002392512 issued July 7, 2003) and other governmental trademark authorities worldwide. Complainant uses the GRANAROLO mark in connection with the marketing and retail sales of its food and milk products throughout the world.
Respondent registered the <granarolo.com> domain name on October 1, 2008. Respondent is using the disputed domain name as a parked site containing click-through links, which further resolve to various third-party websites, including those of Complainant. Respondent contacted Complainant on October 3, 2008, offering to sell the <granarolo.com> domain name to Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel concludes that Complainant’s registration of the GRANAROLO mark with OHIM and other international governmental trademark authorities is sufficient to satisfy Policy ¶ 4(a)(i). The Policy does not require Complainant to have registered the GRANAROLO mark in the country of Respondent’s residence. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant alleges that Respondent’s disputed domain name is identical to Complainant’s GRANAROLO mark. The <granarolo.com> domain name contains Complainant’s mark in its entirety with the addition of the generic top-level domain “.com.” The Panel finds that the mere addition of a generic top-level domain is insufficient to differentiate Respondent’s <granarolo.com> domain name from Complainant’s GRANAROLO mark. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that the respondent’s <treeforms.com> domain name is identical to the complainant’s TREEFORMS mark); see also W. Union Holdings, Inc. v. XYZ, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance). Therefore, the Panel concludes that Respondent’s <granarolo.com> domain name is identical to Complainant’s GRANAROLO mark under Policy ¶ 4(a)(ii).
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks all rights and
legitimate interests in the <granarolo.com> domain name. For the purposes of a Policy ¶ 4(a)(ii) analysis, Complainant must present a prima facie case in support of its
allegations. The burden then shifts to
Respondent to show that they have rights or legitimate interests in the disputed
domain name, bringing themselves within the purview of Policy ¶ 4(c). Intel Corp. v. Macare,
FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must
first make a prima facie case that [the] respondent lacks rights and
legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and
then the burden shifts to [the] respondent to show it does have rights or
legitimate interests.”). In these
proceedings Complainant has presented a sufficient prima facie case. However,
Respondent has failed to respond to the allegations against it. From this failure, the Panel may infer that
Respondent lacks any rights or legitimate interests in the disputed domain
name. Additionally, the Panel may
presume that Complainant’s allegations are true; however, the Panel will
examine the record to determine if Respondent has met any of the Policy ¶ 4(c)
factors. See Broadcom Corp. v. Ibecom PLC,
FA 361190 (Nat. Arb. Forum Dec. 22, 2004)
(“Respondent’s failure to respond to the Complaint functions as an implicit
admission that [Respondent] lacks rights and legitimate interests in the
disputed domain name. It also
allows the Panel to accept all reasonable allegations set forth…as true.”); see also Bank
of Am. Corp. v. McCall, FA 135012 (Nat.
Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in
its failure to meet its burden, but also will be viewed as evidence itself that
Respondent lacks rights and legitimate interests in the disputed domain
name.”). The Panel now chooses to review
the record to determine whether Respondent has any rights or legitimate
interests in the disputed domain under Policy ¶ 4(c).
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶4(c)(ii) because Respondent is not commonly known by the <granarolo.com> domain name. The WHOIS information provided lists registrant as “MultiMessanger S. Corp,” which suggests that Respondent is not commonly known by the <granarolo.com> domain name. There is no evidence in the record to the contrary and Respondent has failed to respond to the allegations against it. The Panel concludes that Respondent is not commonly known by the <granarolo.com> domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii), respectively. Two days after Respondent registered the disputed domain name Respondent contacted Complainant offering the <granarolo.com> domain name for sale. Respondent’s intent to sell the disputed domain name to Complainant is evidence that Respondent lacks rights and legitimate interests in the <granarolo.com> domain name under Policy ¶ 4(a)(ii). The Panel finds that such use does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights).
Complainant also contends the disputed domain name resolves to a parked website featuring sponsored click-through links, which further resolve to various third-party websites including those of Complainant. The Panel presumes that Respondent is profiting from such use. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Thus, the Panel concludes that Respondent’s use of the <granarolo.com> domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).
Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent has engaged in bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i) based on Respondent’s offer to sell the disputed domain name to Complainant almost immediately after registration for an amount in excess of Respondent’s registration costs. The Panel agrees and finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Deutsche Bank AG v. Bruckner, D2000-0277 (WIPO May 30, 2000) (finding that the name was registered in bad faith because of the short time frame between the respondent’s registration and the unsolicited offer of sale to the complainant); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding bad faith based on the apparent willingness of the respondent to sell the domain name in issue from the outset).
Complainant alleges that Respondent is using a domain name,
which is identical to Complainant’s GRANAROLO mark, to attract Internet users
to a website containing commercial links resolving to various third-party
commercial websites. The Panel finds
that appropriating Complainant’s GRANAROLO mark to divert Internet users
seeking Complainant’s website to Respondent’s <granarolo.com>
domain name is likely disrupting Complainant’s business and constitutes bad
faith under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb.
Forum July 24, 2006) (finding that the respondent engaged in bad faith
registration and use pursuant to Policy ¶ 4(b)(iii) by
using the disputed domain names to operate a commercial search engine with
links to the products of the complainant and to complainant’s competitors, as
well as by diverting Internet users to several other domain names); see also Am. Airlines, Inc. v.
Complainant further alleges that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv) because Respondent is intentionally attempting to attract Internet users, for financial gain, to its domain name by creating a likelihood of confusion with Complainant and its GRANAROLO mark. Additionally, the domain name and resolving websites contain click-through links which further resolve to third-party websites. The Panel presumes that Respondent is profiting from such use. See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Therefore, the Panel concludes that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <granarolo.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 23, 2009
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