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WIPO-UDRP Decision
D2013-1327

Case number
D2013-1327
Complainant
Barilla G. e R. Fratelli S.p.A.
Respondent
Papa Samuel
Panelist
Bernasconi, Michele A.R.
Affected Domains
Status
Closed
Decision
Transfer
Date of Decision
27.09.2013

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Barilla G. e R. Fratelli S.p.A. v. Papa Samuel

Case No. D2013-1327

1. The Parties

The Complainant is Barilla G. e R. Fratelli S.p.A. of Parma, Italy, represented by Studio Barbero, Italy.

The Respondent is Papa Samuel of Munich, Germany.

2. The Domain Name and Registrar

The Disputed Domain Name <piccolini.info> is registered with Vautron Rechenzentrum AG (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2013, in English. On July 23, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. The same day, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On July 31, 2013, the Center informed the parties that the language of the registration agreement for the Disputed Domain Name was German. Accordingly, the Complainant was requested to provide at least one of the following: a) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or b) submit the Complaint translated into German; or c) submit a request for English to be the language of the administrative proceedings. The same day, the Complainant requested by email to the Center that English should be the language of the administrative proceedings.

The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, in dual language English and German, and the proceedings commenced on August 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 27, 2013.

The Center appointed Michael A.R. Bernasconi as the sole panelist in this matter on September 3, 2013. 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. Language of the Proceedings

Paragraph 11(a) of the Rules provides:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

In the case at hand, the language of the Registration Agreement is German. Yet, the Complainant has submitted the Complaint in English, stating different reasons why English should be the language of the proceedings. The Complainant particularly argues (i) that leading the proceedings in German would cause delay due to the necessity of translating all documents in German, (ii) that the Respondent has demonstrated his proficiency in English in the exchange of correspondence with the authorized representative of the Complainant, and (iii) that the Complainant being based in Italy and the Respondent in Germany, English would appear to be the fairest neutral language for rendering the decision.

The Respondent did not object to the use of English as the language of the proceedings.

From the evidence presented, no explicit agreement appears to have been entered into between the Complainant and the Respondent concerning the language of the proceedings. The Panel notes that English is not the mother language of either party. Yet, the Panel notes that the Complainant and the Respondent used to communicate in English in their correspondence prior to the present proceedings. The Panel thus consider that there is an implicit agreement between the Complainant and the Respondent as to the use of English to resolve their dispute. Therefore, the Panel determines that English shall be the language of the proceedings; accordingly, the decision will be rendered in English.

5. Factual Background

The Complainant is a company domiciled in Parma, Italy and is the owner of the trademark BARILLA PICCOLINI (word mark and figurative mark) as well as the trademark PICCOLINI (word mark and figurative mark), registered both at the European and international levels. It is a leader in the global pasta business, the pasta sauces business in continental Europe, the bakery products in Italy and the crisp bread business in Scandinavia.

The Complainant commenced use of the BARILLA PICCOLINI and PICCOLINI trademarks in 2000-2010 decade, first in France and Germany and later in Italy, to identify a line of pasta produced in small size to satisfy the need of small children. BARILLA PICCOLINI and PICCOLINI trademarks have been registered by the Complainant between September 4, 2002 and July 20, 2009. The Complainant has further registered the word "piccolini" in multiple gTLDs and ccTLDs. It is also the owner of the domain name <piccolini.de> and <piccolini.com>.

The Respondent is the registered owner of the Disputed Domain Name <piccolini.info>. The Disputed Domain Name was registered on July 21, 2009.

6. Parties’ Contentions

A. Complainant

The Complainant contends that the Disputed Domain Name <piccolini.info> is identical or confusingly similar to the Complainant's trademark PICCOLINI. The Complainant notes that the generic top level domain (".info", in the present case) can be disregarded in assessing the similarity between the relevant trademark and the Disputed Domain Name, because the generic top level domain is a necessary component for registration and use of a domain name. The Disputed Domain Name <piccolini.info> should thus be considered identical to the Complainant's trademark PICCOLINI. Moreover, the Complainant notes that the Disputed Domain Name is very similar to the domain name <piccolini.com>, where PICCOLINI products are advertized.

Furthermore, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant notes that the Respondent has not provided any evidence of its use of, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. It further considers that the Respondent's intent to sell the Disputed Domain Name proves the absence of any project related to its possible use in good faith. It emphasizes that the Respondent has no license or authorization of any other kind that would allow it to use the trademarks PICCOLINI.

Finally, the Complainant contends that the Respondent registered and used the Disputed Domain Name in bad faith. The Complainant notes that considering the popularity of its PICCOLINI trademark, used since 2002 in connection with pasta and sauces, and also promoted at the web sites “www.piccolini.com” and “www.barilla.com”, the Respondent was or ought to have been aware of the Complainant's trademarks. It further considers that the non-use of the Disputed Domain Name since the date of its registration while being aware of the existence of the registered trademark PICCOLINI is evidence of the Respondent's bad faith. Furthermore, the Complainant brings forward that the Respondent active attempt to sell the Disputed Domain Name for the amount of EUR 25,000, which is well in excess of the out-of-pocket costs directly related to the domain name, is a further evidence of the Respondent's bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. Accordingly, and based on Paragraph 14(b) of the Rules, the Panel shall draw such inferences from this default of the Respondent as it considers appropriate.

7. Discussion and Findings

According to Paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and that

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and that

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The term "Piccolini" is the only identifying element of the Disputed Domain Name. There are virtually no difference between the PICCOLINI trademark and the Disputed Domain Name, being specified that the generic top level domain “.info” is typically ignored when assessing identity or similarity (see Accor v. Noldc Inc., WIPO Case No. D2005-0016; Crédit Industriel et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457; F. Hoffmann-La Roche AG v. Bobik Marley, WIPO Case No. D2007-0694). When a domain name incorporates the entirety of a complainant’s trademark, it has been found in previous decisions under the Policy to be confusingly similar to that trademark, regardless of the addition of any other non-distinctive elements (see Volvo Trademark Holding AG v. Peter Lambe, WIPO Case No. D2001-1292). As the Disputed Domain Name incorporates the entirety of the Complainant’s trademark without any distinctive element, Internet users would likely think that the Disputed Domain Name is owned by or related to the Complainant. The Disputed Domain Name is therefore confusingly similar to the trademark of the Complainant.

Consequently, the Panel has no difficulty in finding that the prerequisite of identity or confusing similarity as a first criterion, as per paragraph 4(a)(i) of the Policy, is established.

B. Rights or Legitimate Interests

From the evidence in the case record, the Respondent has not yet started any activity under the name “Piccolini” or “Piccolini.info”. There is no evidence that the Respondent was commonly known by the Disputed Domain Name prior to his registration or that after registration of the Disputed Domain Name, it has legitimately become known by the Disputed Domain Name for reasons beyond of its simple use. The Respondent also does not possess any apparent rights in or to the PICCOLINI trademark and the Disputed Domain Name was registered only after the Complainant had used its PICCOLINI trademark for almost seven years. The Complainant provided a prima facie case showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name, in particular that the Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods or services and that it is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Therefore, the burden of proof shifts to the Respondent to demonstrate its rights or legitimate interests in the Disputed Domain Name (see Swarovski Aktiengesellschaft v. blue crystal, WIPO Case No. D2012-0630). As in the present proceeding the Respondent failed to submit a Response – a fact that may speak for a nonexistence of any right or legitimate interest with respect to the Disputed Domain Name (see Spenco Medical Corporation v. Transure Enterprise Ltd, WIPO Case No. D2009-1765) – the Panel concludes that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

For the above mentioned reasons, the Panel concludes that paragraph 4(a)(ii) of the Policy is established.

C. Registered and Used in Bad Faith

Regarding the registration and the use of the Disputed Domain Name in bad faith according to paragraph 4(a)(iii) of the Policy, the Panel considers the following.

It is well evidenced that the Complainant's trademark was registered well in advance of the Disputed Domain Name. Since the Complainant's trademark is well-known in Europe, the Panel finds it unlikely that the Respondent was not aware of the Complainant's trademark and its domain names “www.piccolini.com” and “www.barilla.com”, where the trademark PICCOLINI is promoted. Indeed, at the time when the Respondent registered the Disputed Domain Name, the Complainant had registered and used its trademark for almost seven years. Moreover, the Complainant's trademark is valid in several countries and became well-known in the markets it has entered and for the goods it is protected for, also due to the Complainant's extensive advertising and use of its trademark (see Swarovski Aktiengesellschaft v. blue crystal, WIPO Case No. D2012-0630). Consequently, the Panel draws the conclusion that the Respondent knew of the Complainant, its products and its trademark prior to and after the registration of the Disputed Domain Name (see Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488; The Nasdaq Stock Market, Inc., v. Hamid Reza Mohammad Pouran, WIPO Case No. D2002-0770).

As regards the lack of active use of the Disputed Domain Name, the Panel emphasizes that it does not as such determine bad faith. Yet, the active steps taken by the Respondent to sell the Disputed Domain Name to the Complainant at a price of EUR 25,000, later reduced to EUR 2,500, are strong indications of the Respondent's bad faith (even the lower figure of EUR 2,500 is to be considered well in excess of the actual out-of-pocket costs directly related to the Disputed Domain Name) (see Benetto Group SpA v. Domain for Sale, WIPO Case No. D2001-1498, where an amount as low as USD 450 was also considered in excess of the documented out-of-pocket costs). Therefore, the Panel is of the view that the Respondent registered the Disputed Domain Name primarily with the purpose of selling it to the trademark owner for valuable consideration, in excess of his out-of-pocket costs.

Consequently, the Panel concludes that the Disputed Domain Name was registered and is being used in bad faith according to paragraph 4(a)(iii) of the Policy.

In view of the above and for the foregoing reasons, and of the Respondent’s default in submitting a Response, of the factual evidence and legal contentions that were submitted, of the confirmation of the presence of each of the elements contemplated in paragraph 4(a)(i), (ii) and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraphs 14(a) and (b) and 15(a) of the Rules, this Panel finds:

(1) that the Disputed Domain Name is confusingly similar to the Complainant’s trademark;

(2) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(3) that the Disputed Domain Name has been registered and is being used in bad faith by the Respondent.

8. Decision

For the foregoing reasons, in accordance with paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <piccolini.info> be transferred to the Complainant.

Michael A.R. Bernasconi
Sole Panelist
Date: September 27, 2013