Granarolo S.p.A. v. Michele Dinoia a/k/a
SZK.com
Claim Number: FA0602000649854
PARTIES
Complainant is Granarolo S.p.A. (“Complainant”), represented by Luca Sandri, P.zza. Castello, 26, Milano Italy. Respondent is Michele Dinoia a/k/a SZK.com (“Respondent”), represented by Valerio Donnini, 4, Via Venezia, Pescara, PE 65121, Italy.
The domain name at issue is <granarolo.com>,
registered with Onlinenic, Inc.
PANEL
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.
Honourable Sir Ian Barker, QC.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 24, 2006; the National Arbitration Forum received a
hard copy of the Complaint on February 28, 2006.
On February 27, 2006, Onlinenic, Inc. confirmed by e-mail to the
National Arbitration Forum that the <granarolo.com>
domain name is registered with Onlinenic, Inc. and that the Respondent is the
current registrant of the name. Onlinenic,
Inc. has verified that Respondent is bound by the Onlinenic, Inc. 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 March 3, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 23, 2006 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.
A timely Response was received and determined to be complete on March
23, 2006.
Timely Additional Submissions were received from Complainant on March
28, 2006 and from Respondent on April 4, 2006 according to the National
Arbitration Forum’s Supplemental Rule #7.
Apart from the Complainant providing information as to the current state
of the Respondent’s website, the Panel did not find either Additional
Submission of huge assistance. The information
provided by the Complainant included VHS tapes and a book in the Italian
language. The Additional Submissions of
the Complainant did little other than supplement the Complainant’s evidence of
the widespread fame of its business which had been demonstrated in the
Complaint. The Panel found it
unnecessary to review the tapes and book, but considered the Additional
Submissions of both parties.
On March 29, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Honourable Sir Ian Barker, QC as Panelist.
PARTIES’ CONTENTIONS
A. Complainant
i)
Facts
The Complainant is the owner of the following registered trademarks to
identify, amongst other things milk and milk products, jams and fruit sauces:
·
Italian Trademark
“G GRANAROLO”, n. BO97/000678,
application filed on 25.07.1997, registered on 25.02.2000, expiring on
25.07.2007, for international classed nos. 5, 16, 18, 25, 29, 30, 31, 32;
·
Italian Trademark
“GRANAROLO’”, n. BO2000C 000339, application filed on 27.03.2000,
registered on 05.06.2003, expiring on 27.03.2010, for international classed
nos. 5, 8, 14, 16, 18, 20, 21, 25, 29, 20, 32;
·
Community trademark
“GRANAROLO”, n. 2392512, application
filed on 28.09.2001, registered on 07.07.2003, expiring 28.09.2011, for
international classes nos. 5, 16, 29;
·
International trademark
“GRANAROLO”, no. 10974 D/2004, filed
on 30.03.2004 for international classes nos. 29, 30, 32, based on the Italian
trademark n. B02000C 000339, filed on 27.03.2000 and extended to the
territories of Bulgaria, China, Croatia,
Romania, USA, Japan and Singapore;
·
Community trademark
“GRANAROLO PIACERE LEGGERO”, n.
3557907, application filed on 17.12.2003, registered on 18.10.2005, expiring
17.12.2013, for international class n. 29;
·
Community trademark
“GRANAROLO”, n. 004312054,
application filed on 24.03.2005, for international classes nos. 5, 16, 29, 32;
·
Community trademark
“GRANAROLO ALTA QUALITA”, n.
4675161, application filed on 26.10.2005, for international classes nos. 29,
30, 32.
The Complainant has other registered trademarks, incorporating the word
“Granarolo”, as set out in its Additional Submission.
The mark “GRANAROLO” has
been used continuously and extensively by the Complainant since 1996 to market
its products throughout Italy. The
company name “GRANAROLO” has been
used continually since 1987.
The Complainant is also the registrant, since November 18, 1997, of the
domain name <granarolo.it>
which resolves to an active website through which the Complainant advertises
and carries on business.
The Complainant, is the fourth largest food group in Italy. It was set up in 1957 and produces and
markets milk and other dairy products.
The Complainant advertises its products extensively throughout Italy in
all sections of the media and on the internet under the Granarolo brand.
The Respondent registered the disputed domain name on July 18,
2001. He is an Italian resident and has
been a frequent litigant in UDRP decisions.
On October 20, 2005, the Complainant’s lawyers sent a “cease and
desist” letter to the Respondent protesting at his use of the disputed domain
name.
On November 2, 2005, the Respondent’s lawyer replied, claiming:
a)
there was no
risk of confusion from the Respondent’s use of the disputed domain name,
because his business was different from the Complainant’s;
b)
Granarolo was
chosen because it is the name of a “Borough of the same name”;
c)
there is no
creation of an association between the Respondent and “Granarolospa”.
Prior to that correspondence, the Respondent’s website at the disputed
domain name had shown the Complainant’s mark and provided several links under
various categories, including a link to GranaroloSpa. Clicking this link resolved to a new set of other links.
After receiving the “cease and desist” letter, the Respondent on
November 7, 2005, altered the website.
The new website depicted buildings in the municipality of Granarolo dell
‘Emilla, together with the announcement (in Italian):
“THIS WEB SITE IS UNDER CONSTRUCTION AND WILL CONTAIN INFORMATION
RELATED TO GRANAROLO, COMUNE OF THE PROVINCIA OF BOLOGNA”.
There was no further content at that stage.
On November 23, 2005, the website was again altered to include a brief
description of the community of Granarolo dell ‘Emilia with some related links.
ii)
Legal
The disputed domain name is identical to or confusingly similar to the
registered marks in which the Complainant has rights.
The Respondent was given no right or licence by the Complainant to use
its marks in the disputed domain name.
The Respondent, as an Italian, must have been well aware of the
nationwide reputation of the Complainant and its products. Yet in his initial website, he had a link
entitled GranaroloSpa, thus inferring that he had a connection with the
Complainant.
The Respondent does not come within para. 4(c) of the UDRP.
The notoriety throughout Italy of the Complainant and its marks
indicates bad faith registration of the disputed domain name which creates
confusion amongst internet users and gives the impression that the Complainant
had provided some endorsement to the Respondent.
Further proof of continuing bad faith can be found in:
(i)
the
Respondent’s passive holding of the website for four years;
(ii)
the images of
the town of Granarolo dell‘Emilia have come from that town’s website;
(iii)
the Respondent
must have been aware of the Complainant’s rights, especially after he received
the “cease and desist” letter.
(iv)
The Respondent
is engaged in the business of registering domain names, often those of famous
persons (e.g. <hilaryclinton.com>)
B. Respondent
i)
Facts
The registration of the Complainant’s marks, except the mark “G
Granarolo” (registered February 25, 2000) occurred after the registration of
the disputed domain name on July 17, 2001. G Granarolo is not identical to the disputed domain name.
The name Granarolo is the geographic indicator of a town. Such names are rarely protected by trademark
law, nor are they covered by the UDRP.
The conclusion is supported by various reports of the World Intellectual
Property Organisation (WIPO).
The Complainant has not shown that its mark had acquired the necessary
distinctiveness before the disputed domain name was registered. There is no secondary meaning in the mark or
name nor proof that the public identifies the source of the product rather than
the product itself. Consumers visiting
the Respondent’s sites are unlikely to believe that the site has any connection
with the Complainant.
The Respondent’s business strategy is to register numerous domain names
which are generic, descriptive or geographic and to develop business-oriented
websites using those domain names.
He has a legitimate interest in the disputed domain name:
“because it was registered to
provide informational services, free personalized email addresses in connection
with a consumer email service, as well as to be developed as part of a plan to
build a network of geographic based websites.”
Various WIPO decisions have established as a legitimate activity the
building of a network of websites providing information about diverse subjects
including cities, countries and general news.
See WIPO D2000‑0617<stmoritz.com>, D2002-1110
<madrid.com> and D2002-0620 <hechos.com>.
The Complainant does not have an exclusive right to a geographic domain
name. To hold otherwise would pre-empt
the nominative use necessary to refer to the location in question.
The Respondent’s website now resolves to one for bona fide
informational purposes (as in WIPO D2000-0617 (<stmoritz.com>) which is a
legitimate use. The Respondent is not
warehousing names and is a legitimate domain name owner. His numerous geographical domain names
provide a network of websites providing services. He has used the disputed domain name fairly to use it in a
geographically descriptive sense and not to tarnish the Complainant’s
marks. Under Italian trademark law, a
mark may be used as an indicator of the service’s distinctive feature and there
is no chance of confusion with a registered mark. There are no minimum standards of website development and no
intent to divert customers for commercial gain or to confuse internet users.
The disputed domain name was not registered primarily for the purposes
of sale, etc. to the Complainant. The
Respondent is not a ‘cybersquatter’.
The disputed domain name was registered five years before the
initiation of the dispute. It is harder
therefore to infer bad faith. (See WIPO
D2002-0056 <gloria.com>.) There
is no evidence of confusion nor of an intent by the Respondent to abuse the
Complainant’s mark.
The Complainant’s marks, except G Granarolo, were all registered after
the disputed domain name was created, thus undermining a finding of bad faith.
C. Additional Submission – Complainant
The Complainant was the owner of several marks at the time of
registration of the disputed domain name because trademark protection runs from
the date of the application – before the disputed domain name was
registered. Besides, its business has
traded under the name “Granarolo” for 40 years.
“Granarolo” is not a ‘protected geographical indication’ under various
international contentions and is not shown as such on the EU website. The Complainant’s marks have had such
widespread use and exposure that the word “Granarolo” is associated by Italian
consumers with the Complainant and its products. The mark has been advanced by advertising campaigns, endorsements
by sporting figures, prizes, special promotions, and sponsorships of sporting
events, including ‘Gran Premio Granarolo’ a cycling tournament. A book on the history of the Complainant,
enjoys a wide circulation,.
The Respondent has changed the website four times from that which was
live when the ‘cease and desist’ letter was written. The website fails to supply any information about the small municipality
of Granarolo dell’Emilia nor any link to websites associated with that town.
The Respondent’s website has a link to <granarolospa> (its legal
corporate name is Granarolo S.p.A.)
This gives further links to spas, hot-tubs and saunas.
Once the “cease and desist” letter was written, the Respondent,
well-versed in domain name proceedings, removed the site directly referencing
the Complainant and modified it to a website associated with the small
municipality. There have been two
further complete changes since then. In
any event, the town’s proper name is ‘Granarolo dell ‘Emilia’ as appears on its
official website under <commune-granarolo-dellemilia.bo.it>.
Given the above, and considering:
a)
the strong identifying and distinctive power of the mark <GRANAROLO>;
b)
the knowledge by the Respondent of the mark and the
trade name of the Complainant: (both the Complainant and the Respondent being
in Italy);
c)
the Respondent, by seeking to remove the references to
the Complainant’s mark, confirmed that registration had taken place in a state
of full awareness of the Complainant’s mark;
d)
the letter from the Respondent’s lawyer, which,
notwithstanding the fact that the webiste shown at doc. A9 was then still
on-line, contended that the domain name was, in respect of the town of the same
name;
e)
the presence on the website of a link to
<granarolospa>, indicates some form of connection or association between
the Respondent and the Complainant (where no such connection existed);
f)
the Respondent has on multiple occasions been involved
in UDRP proceedings linked with famous marks.
bad faith has been established.
D.
Additional Submissions: Respondent
The name Granarolo
indicates the town and must be considered a geographic indication (in a
non-technical meaning). Protection of
such terms is beyond the scope of the UDRP, unless the mark has acquired a
secondary meaning.
The Respondent’s
website accessed by the disputed domain name is part of a geographic websites
network and is continuously updated.
The current website, the fourth since registration, is evidence of the
active and legitimate use of the site.
The current version displaces various information and news not only
about the town. It provides a free
email service to internet users. Even
if the disputed domain name were used as a search engine, this is legitimate.
The fact that links
on a former version of the website were related to spas and saunas is not
evidence of bad faith but is part of the information provided. The word “Spa” is legitimate since it is the
Italian version of ‘Inc.’
There is minimal
risk of confusion between the respective products of the parties. The Respondent’s activities have been
regarded as legitimate by some WIPO and NAF panelists.
Bad faith findings
against the Respondent in other UDRP cases, do not mean that the Respondent is
acting in bad faith in this case. The
Respondent is running a professional activity based on registering and using
domain names for websites.
Complainant’s Additional Correspondence
By letter of April
4, 2006, the Complainant asserted that the Respondent was attempting to
legitimate his use of the disputed domain name by altering the graphics and
content of the website in order to make the case similar to the
<madrid.com> case.
The Panel has
ignored this letter since no leave to file further submission had been sought
or granted.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
FINDINGS
The Panel finds as proved the allegations
recorded above under the heading “Parties’ Contentions – A. Complainant (i) Facts”.
The Respondent has changed the website four
times since he received the ‘cease and desist’ letter.
The Complainant has given the Respondent no
rights to use its mark.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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 Complainant offered no explanation as to why it had taken it four
years to bring this proceeding after the disputed domain name had been
registered. Such a delay can be fatal
to a Complainant in some cases.
However, the evidence of the fame of the Complainant’s mark is
overwhelming. Accordingly, the
unexplained delay does not prevent relief in the circumstances of this case.
The disputed domain name is identical or
confusingly similar to the Complainant’s marks for the following reasons:
(a)
It is
confusingly similar to Complainant’s registered mark “G Granarolo”.
(b)
It is also
identical to the Complainant’s registered mark “Granarolo” where the relevant
trademark application was filed on March 27, 2000 – before the disputed domain
name was registered. Trademark
registration, once granted, relates back to the date of filing of the
application Planetary Society v Rosillo, D2001-1228 (WIPO Feb. 12, 2002).
(c)
The
Complainant’s mark is established as being very well-known for many years. Its extensive use establishes a common law
mark with which the disputed domain name is identical.
(d)
A Complainant’s
trademark rights are determined at the time a Complaint is field and not at the
time the disputed domain name is registered.
See Audiopoint INV v C Corp WIPO D2001‑0509 (WIPO June 20,
2001); R.E. Turner & Anor v. Fahmi
D2002-0251 (WIPO July 4, 2002); BAA plc
v. Larkin D2004-0555 (WIPO Nov. 11, 2004).
(e)
The fact that a
trademark has been registered after a disputed domain name is relevant on the
question of good faith, although the relevance is limited if, as here, there is
a clear case of a long-standing common-law mark.
The Policy refers to trademarks in which the
Complainant has rights. Normally,
registration is sufficient to establish such rights and the Panel cannot look
behind the registration. The
Complainant’s registered marks are sufficient to establish its rights in this
case, but, because the Respondent has made much of the alleged geographical
nature of the disputed domain name, the Panel offers the following
observations.
The cases on common law trademarks in
relation to the name of a place are apposite.
Port of Helsinki v. Paragon Int’l
Projects Ltd., D2001-0002
(WIPO Feb. 12, 2001) (<portofhelsinki.com>) and City of Hamina v. Paragon Int’l Projects Ltd., D2001-0001 (WIPO Mar. 16, 2001)
(<portofhamina.com>) were concerned with unregistered marks claimed for
the names of two ports in Finland.
The Panel in the Helsinki case considered that the Policy did not apply to conflicts
between domain names and geographical terms not supported by trademarks. A unique geographical name should not be
considered as belonging to the legal authority of the geographical area in
question.
“Protection for geographical names can be provided
through other means, such as the special protection for geographical
indications are not per se under trademark law.”
However, in certain circumstances, a
common-law mark for a geographical area might exist depending on the actual
facts. It was said in Brisbane City Council v. Warren Bolton
Consulting Pty Ltd, D2001-0047 (WIPO May 10, 2001):
“Thus, the
important issue in a case such as this one, concerning an unregistered mark
that is a geographical location, is whether the facts of the case show that the
unregistered mark is indeed performing the function of a trademark – that is to
say whether the unregistered mark is distinguishing the goods or services of
the Complainant in trade and the goods or services of any other person in trade.”
The Finnish
Ports cases show that market research or similar evidence could establish
distinctiveness and establishment as a service mark relating to services
originating from the city or port in question.
In the Hamina
case, the Panel found that there was such a mark on the evidence. In the Brisbane
case, the Panel found that the unregistered mark Brisbane City” had not
acquired such distinctiveness as to be able to perform the function of a
trademark in respect of the goods and services of the Brisbane City
Council. The Panelist in the Brisbane case took into account the
discussion relating to the geographical indications at source and other
geographical terms contained in “the recognition of rights and the use of names
in the Internet domain name system”. He
quoted the interim report of the Second WIPO Internet Domain Process of April
12, 2001. The report confirmed the view
that unless the name of a geographical location is in fact performing the
function of a trademark, such a name should not be considered a trademark for
the purposes of the UDRP.
In the present case, the Respondent’s
submission is that the name refers to the confined geographical district of
“Granarolo dell ‘Emilia”. The
Complainant, on the other hand, relies on the inference that the name
“Granarolo” must be known to the millions of people who use its products.
Following the Port of Hamina case, the Panel is prepared to hold on the evidence
that the unregistered mark “Granarolo” has the required distinctiveness, not
just in respect of a small geographical
location, but for an organisation which is the name of one of the biggest dairy
producers and distributors in Italy and its products. In other words, to the average user of the internet in Italy, the
word “granarolo” would bring to mind the Complainant and its products and not
the small community of Granarolo dell ‘Emilia. See too, the decision in BAA
plc v. Larkin (Supra).
The present case differs from Empresa Municipal Promocion Madrid SA v
Easylink Servs. Corp., D2002-1110 (WIPO Feb. 26, 2003). There, the Panel found that the disputed
domain name (<madrid.com>) was neither identical to nor confusingly
similar to the compound trademark registrations of the Complainant. Hence, the first element under the UDRP had
not been proved. Moreover, the
Respondent showed that it had some 28,000 registered users with email accounts
with the disputed domain name. The
Respondent had invested $60 million in a project called world.com which used
names of countries and internationally-known cities. The Panel found that the Respondent operated a legitimate
business.
The Complainant succeeds under the first
element of Para. 4(a) of the Policy.
The Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii).
The burden then shifts to the Respondent to show he does have rights or
legitimate interests. See
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(holding that, where the complainant has asserted that the respondent has no
rights or legitimate interests with respect to the domain name, it is incumbent
on the respondent to come forward with concrete evidence rebutting this
assertion because this information is “uniquely within the knowledge and
control of the respondent”).
There is no
evidence suggesting that Respondent is commonly known by the <granarolo.com>
domain name. The WHOIS information,
which lists “Michele Dinoia a/k/a SZK.com” as the registrant of the disputed
domain name. The Complainant also
asserts that it has neither authorized nor licensed the Respondent to register
or use a domain name incorporating Complainant’s GRANAROLO mark. Accordingly, the Respondent does not have
rights or legitimate interests in the domain name pursuant to Policy ¶
4(c)(ii).
The Complainant also argues that the Respondent has used the <granarolo.com> domain name to operate a generic search engine displaying links to advertisements and various third-party websites, and the Respondent is, therefore, diverting Internet users seeking information on the Complainant and its food products to other websites for commercial gain.
The Complainant also argues that, after it sent the Respondent a “cease-and-desist” letter, the Respondent changed the website content to a page containing photos of buildings in the town of Granarolo dell ‘Emilia. Therefore, the Respondent could not have had rights or legitimate interests in the disputed domain name if it had to alter the content of the website after the Complainant contacted the Respondent.
The state of the website at the
date of the “cease and desist” letter is relevant. The subsequent changes to the website by the Respondent are all
relevant to both his lack of good faith and the lack of a bona fide offering of services as at that date.
The Respondent’s use of the disputed domain name to divert Internet users to other websites does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names). There was no evidence of an operation of the scope associated with the Respondent in the <madrid.com> case described earlier.
The Complainant therefore succeeds under the second element of Clause 4(a) of the Policy.
The Complainant claims that the Respondent has used the disputed domain name to operate a generic search engine containing links to websites unrelated to the Complainant and its food products. The Complainant alleges that the Respondent is likely to receive click-through fees for diverting Internet users to third-party websites for its own commercial gain, and is, therefore, taking advantage of the confusing similarity between the Complainant’s GRANAROLO mark and the disputed domain name in order to profit from the goodwill associated with the mark.
The Complainant also argues that after it sent Respondent a “cease-and-desist” letter, Respondent changed the website content to a page containing photos of buildings in the town of Granarolo dell ‘Emilia, Italy. The Respondent could not have registered the domain name in good faith if it had to alter the content after the Complainant contacted the Respondent.
The Respondent’s use of the
disputed domain name for this purpose constitutes bad faith registration and
use under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to the
Complainant's competitors and the Respondent presumably commercially benefited
from the misleading domain name by receiving ‘click-through-fees.’”); see
also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003)
(“Registration and use of a domain name that incorporates another's mark with
the intent to deceive Internet users in regard to the source or affiliation of
the domain name is evidence of bad faith.”).
The Complainant also argues that the Respondent has registered and used the <granarolo.com> domain name in bad faith, because the Respondent is preventing the Complainant from registering a domain name incorporating the mark and has engaged in a pattern of registering domain names incorporating famous marks. The Complainant provides evidence of at least twenty Policy decisions ruling against the Respondent, all of which involved domain names that resolved to the same website as the <granarolo.com> domain name. See Circuit City Stores, Inc. v. Dinoia, FA 128792 (Nat. Arb. Forum Dec. 12, 2002) (transferring <wwwcircuitcity.com>); see also Twentieth Century Fox Film Corp. v. Dinoia, FA 135643 (Nat. Arb. Forum Feb. 3, 2003) (transferring <foxmoviechannel.com>); see also Am. Online, Inc. v. Dinoia, FA 137098 (Nat. Arb. Forum Jan. 20, 2003) (transferring <a0l.com>); see also Clinton v. Dinoia, FA 414641 (Nat. Arb. Forum Mar. 18, 2005) (transferring <hillaryclinton.com>).
The totality of the circumstances shows that the Respondent’s registration and use of the <granarolo.com> domain name is indicative of bad faith. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
The Respondent contends that he has not offered to sell the domain name, nor has he prevented the Complainant from reflecting its mark in the domain name, disrupted the Complainant’s business, nor deliberately attempted to divert Internet users for commercial gain. The Respondent claims that he registered the domain name in good faith as part of a comprehensive business strategy to provide information on different geographical areas, and that he has registered thousands of domain names containing predominantly generic or geographic terms without the intent to divert Internet users, even if such diversion results from its use of the <granarolo.com> domain name.
The Panel is unable to agree. The fame of the Complainant and its mark has been proved to be so well-known in Italy, that continued registration of a domain name the same as the Complainant’s mark in all the circumstances can only show ongoing bad faith. The Respondent’s attempts to change his website provide clear evidence of endeavours to get around the consequences of the bad faith registration of a famous mark. His reliance on the name of a small municipality (i.e. Granarolo not Granarolo dell ‘Emilia) is further proof of bad faith.
The UDRP precedents cited by the Respondent do not assist his case. Kur-und Verkehrsverein St. Moritz v. Domain Fin. Ltd, D2004-0158 (WIPO Apr. 14, 2004), <stmoritz.com> (a refiled complaint) was really a similar case to the Brisbane decision (Supra). Unlike in the present case, where the name of the Complainant and its mark is clearly better-known than that of a small town which incorporates Granarolo as part of its name, the geographical name of St Moritz is very well known internationally. In any event, the present Panelist tends to agree with the dissenting panelist in that case in his conclusions on the question of bad faith.
In Todito.com S.A. de C.V. v. Dinoia, D2002-0620 WIPO (Aug. 26, 2002) <hechos.com>, there was no proof that the Complainant’s generic mark in Mexico was damaged by the Respondent’s activities in Italy.
In Sferra Bros. Ltd v. Dinoia, D2006-0054 (WIPO Feb. 27, 2006) (<sferra.com>), the Complainant’s business was interstate ecommerce in the United States. The Respondent lived in Italy and the word <sferra> is an Italian surname and part of an Italian verb.
In Sallie Mae Inc. v. Dinoia, D2004-0648 (WIPO Oct. 18, 2004), the disputed domain name was sallie.com> and the Complainant’s US trademarks were for “Salliemae”. Not surprisingly, the Panelist concluded that the Complainant did not have rights in the mark ‘sallie’ which is a common female name. Once again, the Complainant’s business was largely in the United States.
These cases are all different from the present because:
a) the Complainant has a long-standing reputation and notoriety for its marks for its products throughout Italy and has acquired a secondary meaning for its marks;
b) the Respondent, an Italian resident, must have known of this reputation when he registered the disputed domain name;
c) this is not the case of a business operating in one country trying to claim that someone in another distant country should have known of its marks.
The Complainant therefore succeeds
under the third element of Para. 4(a) of the Policy.
DECISION
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.
Hon. Sir Ian Barker, QC Panelist
Dated: April 17, 2006
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