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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Parmalat S.p.A. v. Pascal Frischkopf

Case No. D2004-0300

 

1. The Parties

The Complainant is Parmalat S.p.A., Collecchio Parma, Italy, of Italy, represented by Societа Italiana Brevetti, Italy.

The Respondent is Pascal Frischkopf, C/O Network Solutions, of Herndon, Virginia, United States of America. No indication of the address or domicile of the Respondent is available, represented by Studio, Dott. Jur. Giovanni Gianola of Lugano, Switzerland.

 

2. The Domain Name and Registrar

The disputed domain name <parmalatte.com> is registered with Network Solutions, LLC. Registrar.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2004. On April 26, 2004, the Center transmitted by email to Network Solutions, Inc. Registrar a request for registrar verification in connection with the domain name at issue. On April 27, 2004, Network Solutions, LLC. Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact (the administrative and billing contact being the Respondent with an email address that is a temporary e-mail address provided by the Registrar). The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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, and the proceedings commenced on April 30, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 20, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2004.

The Center appointed Gerd F. Kunze as the Sole Panelist in this matter on May 27, 2004. 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. Factual Background

A. Complainant

The Complainant is a leading Italian food company with subsidiaries and factories in many countries, whereby many of theses subsidiaries, such as the “Parmalat France SA” in France, “Deutsche Parmalat GmbH” in Germany and “Parmalat USA corporation” in the United States, include the name Parmalat in their company name.

The Complainant is the registered owner of the trademark PARMALAT for products of international classes 5, 29, 30, and 32 in many countries of the world including the following registrations:

• Canadian trademark No. 242, registered on April 3, 1980

• Community Trade Mark No. 244319, registered on July 12, 1999

• International registration No. 378 105, dated Mai 6, 1971, extending to 26 countries, including, France, Germany, Spain and Switzerland

• Italian trademarks No. 204670, dated October 27, 1965 and No 251 337, dated February 11, 1971

• US trademarks No. 1141495, registered on November 18, 1980 and No. 2685542, registered on February 11, 2003.

These registrations are evidenced by copies of registration certificates and other documents.

The Complainant uses the trademark PARMALAT internationally for, amongst others, milk products, bakery products, water and other non alcoholic drinks, fruit and vegetable juices, tomato sauces. The Complainant submits that the trademark PARMALAT is an internationally well-known mark and that its fame has already been recognized in the Parmalat S.p.A. v. RVA Network Solutions Inc., WIPO Case No. D2003-0412. Whilst the Complainant submits no further evidence for its assumption, the Respondent has not contested it and the Panelist sees no reason not to agree with the conclusion of the panel in the before cited case, more so as this conclusion concurs with the Panels own knowledge, at least as concerns “milk and milk products” the core business of the Complainant.

B. Respondent

The Respondent registered on March 3, 2004, the domain name <parmalatte.com>.

The domain name leads to a website that shows the sentences “WELCOME – UNDER CONSTRUCTION” and (in several alternating languages) “this site is currently under construction. Please check back at a later time” (as evidenced by a printout dated April 15, 2004).

The Respondent has obtained the domain name as a “private registration,” which means that its contact information is kept outside the public WHOIS database. The e-mail address, the only contact indication, changes every couple of days. This is evidenced by two printouts of the WHOIS database and the Registrar’s verification response indicating again another (temporary) email address.

When the Respondent had received, through the intermediary of the Registrar, the Complaint, he wrote a fax-letter to the Center, asking it to send the official version of the Complaint and other communications in the administrative proceeding to its representative, a law office in Lugano, Switzerland.

 

5. Parties’ Contentions

A. Complainant

Complainant submits that (1) the domain name <parmalatte.com> 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; (3) the domain name was registered and is being used in bad faith.

B. Respondent

The Respondent has failed to submit any statement. He has therefore not contested the allegations of the Complaint. Since the Respondent is hiding behind a “private registration,” offered by the Registrar, it is not possible to establish the identity of the Respondent.

 

6. Discussion and findings

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant:

(1) The domain name is identical or confusingly similar to a trademark or service mark (“mark”) in which the Complainant has rights; and

(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.

A. Identical or Confusingly Similar

The domain name <parmalatte.com> is not identical to the trademark PARMALAT in which the Complainant has rights. However, this trademark is fully contained in the domain name (the gtld “.com” cannot be taken into consideration when considering confusing similarity). The only difference between the domain name and the Complainant’s trademark is that the name of the Italian city of Parma is combined in the case of the domain name with “latte,” the Italian word for “milk,” and in the case of the Complainant’s trademark with “lat,” a term that in view of the Complainant’s internationally leading position in the milk products business will be understood by a substantial part of the public as an abbreviation for the word “latte.” In that context it must also be taken into consideration that the Italian word “latte” is, in the combined term “caffe latte,” widely used as customary term for milk coffee, not only in Italy and the Italian speaking part of Switzerland (where the Respondent’s representative is residing), but also in countries where Italian is not the spoken language, such as the United States. This illustrates that the term “latte” is internationally understood as a word designating “milk.”

These facts alone would be sufficient to affirm confusing similarity between “parmalatte” and “PARMALAT.” Such confusing similarity is, however, even more evident in view of the fact that PARMALAT is a well-known mark. Even persons who would not automatically associate “latte” with milk will, faced with the domain name <parmalatte.com>, be reminded of the well-known trademark PARMALAT of the Complainant, to which only the two letters “te” are added (an addition that nearly disappears in oral communication). This is true also for Internet users who would be faced with a domain name <parmalatte.com> or a website “www.parmalatte.com.”

B. Rights or Legitimate Interests

In view of the fact that the Respondent is hiding its identity it must be assumed that he has no legitimate interest in using his domain name in connection with the city of Parma. This is the more true as his name is not an Italian sounding name and the city of Parma as such is, contrary to the Complainant, not particularly renowned for milk or milk products (in fact it is renowned for its famous Parma ham). The only interest which the Panelist can imagine for a person, not having an apparent particular connection to the city of Parma, in registering a domain name <parmalatte.com> is to somehow create a connection to the Complainant and its trademark PARMALAT.

The Complainant has not consented to the Respondent’s registration or use of the domain name. Registration of the domain name by the Respondent does not create any right or legitimate interest in the domain name.

Furthermore, none of the circumstances listed under 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are given. The Respondent does not use (commercially or non-commercially) the domain name and he has not submitted to have an intention to use it in the near future. Failing any submission of the Respondent, the simple reference “WELCOME - UNDER CONSTRUCTION” on the website that can be reached when typing the Respondent’s domain name, cannot be considered to be evidence of such intention. Clearly, the Respondent has not been commonly known by the domain name. Also, he did not submit any circumstances that might show a legitimate interest in the domain name.

In conclusion, the Panel is satisfied that the Respondent has no rights or legitimate interest in the domain name <parmalatte.com>

C. Registered and Used in Bad Faith

For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith. Even if the Respondent has not responded to the Complaint, the Complainant has to prove under the Policy that the Respondent has registered and is using the domain name in bad faith.

The Respondent has not attempted to sell the domain name to the Complainant and does not actively use it. The question is therefore, whether the passive holding of the domain name can be considered to be registration and use in bad faith, taking into account all circumstances of the present case.

In that context, it has been convincingly argued in Telstra Corporation Limited v. Nuclear Marshmallows (WIPO case No. D2000-0003), that inaction of the Respondent is within the concept of 4(a)(iii) of the Policy. Many Panel decisions have confirmed this finding.

(i) Registration in bad faith

As in the Telstra case, the Respondent has taken deliberate steps to ensure that its true identity cannot be determined and that communication is not possible for the Complainant. As a consequence the Complainant was unable to commence legal proceedings against the Respondent based on trademark infringement.

Also, the Respondent cannot have ignored the fact that PARMALAT is a registered and protected trademark of the Complainant. This can be deducted from the following facts:

PARMALAT is a well-known mark and it is difficult to imagine that the Respondent would not have been aware of that mark, when he registered the domain name <parmalatte.com>. Even if the Respondent hides his place of business or domicile, it can be assumed that he is located in a country where an affiliate company of the Complainant exists that is incorporating the trademark PARMALAT in its corporate name (such as this is the case in Italy, France, Germany, Great Britain, the United States, Canada as well as in other countries). Should the Respondent be located in Switzerland (an indication for this assumption could be that he asked the Center to send correspondence to a law Office in Lugano, Switzerland) he would, in view of the vicinity of that country to Italy, no doubt also have been aware of the Complainant.

As said before, the city of Parma is not particularly renowned for milk or milk products. However, the Complainant is well-known under its trademark PARMALAT for its core business milk and milk products. When somebody chooses to register the domain name <parmalatte.com> there is therefore a strong indication that he intends to create an association with the Complainant’s trademark. If that was the reason for the Respondent to register that domain name, and it is difficult to imagine any other reason, he must have known the trademark PARMALAT.

Failing any submission of the Respondent the Panelist is therefore satisfied that the domain name <parmalatte.com> has been registered in bad faith.

(ii) Use in bad faith

For the Complainant to succeed, it also has to prove that the Respondent is using the domain name in bad faith.

The Administrative Panel in the Telstra case (paragraphs 7.8 to 7.10) has convincingly argued that the provisions of the Policy in Paragraph 4(b) support the assumption that inaction is within the concept of a domain name being used in bad faith. It depends therefore on all circumstances of the case whether it can be said that the Respondent is acting in bad faith.

The question therefore arises in the present case, what circumstances of passive holding other than those identified in paragraphs 4(b)(I) - (iii) of the Policy can constitute that the domain name is being used by the Respondent in bad faith.

The Panelist considers that the following circumstances justify such conclusion:

- The Complainant’s trademark PARMALAT is an internationally well-known mark;

- Apart from the reference to a website “under construction,” the Respondent has made no use of its domain name and has submitted no evidence whatsoever of any good faith use of or intention to use the domain name <parmalatte.com>;

- The Respondent has taken active steps to hide his true identity by obtaining the domain name as a “private registration” which means that its contact information is kept outside the public WHO IS data base, and by having its email address change every couple of days;

- When the Respondent, through the intermediary of his Registrar, received the Complaint, he wrote a fax-letter to the Center. Even at that stage of the proceedings the Respondent used as sender’s address the Registrar’s address, indicating: Pascal Frischkopf c/o Network Solutions, in Herndorf, Virginia. He wrote the fax-letter in a manner that it bears no indication of the origin of the fax machine that was used at the printout of the fax in the hard copy file. These facts show that the Respondent continues to have no intention to make himself accessible.

- In the before mentioned fax-letter the Respondent asked the Center to send the official version of the Complaint and other communications in the administrative proceeding to a law Office in Lugano, Switzerland. The fact that the Respondent referred to a Law Office in the Italian speaking part of Switzerland is a further indication that the Respondent is knowledgeable of the Italian language and therefore was fully aware of the implications of registering the domain name <parmalatte.com>.

- Despite having involved a law firm in this administrative proceeding, the Respondent chose not to submit a Response. This is an additional reason for the Panelist to be satisfied that the submissions of the Complainant in this case can be accepted as not contested evidence.

- Taking into account all these considerations together, it is not possible to imagine any plausible future active use of the domain name by the Respondent that would not be illegitimate, such as being infringement of Complainant’s well-known mark or an act of unfair competition and infringement of consumer protection legislation.

- In light of these particular circumstances, the Panel concludes that the Respondent’s passive holding of the domain name <parmalatte.com> satisfies the requirement of paragraph 4(a) of the Policy that the domain name is being used in bad faith by the Respondent.

In conclusion the Administrative Panel is satisfied that the domain name <parmalatte.com> has been registered and is being used in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <parmalatte.com> be transferred to the Complainant.

 


 

Gerd F. Kunze
Sole Panelist

Dated: June 9, 2004

 

Источник информации: https://internet-law.ru/intlaw/udrp/2004/d2004-0300.html

 

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