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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Mastellone HNOS, S.A. v. Mr. Valentino Antonino Gargiulo

Case No. D2008-0187

 

1. The Parties

The Complainant is Mastellone HNOS, S.A., of Argentina, represented by Abril Abogados, Spain.

The Respondent is Mr. Valentino Antonino Gargiulo, of Italy.

 

2. The Domain Name and Registrar

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

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2008. On February 5, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On February 5, 2008, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 February 12, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2008. The Response was filed with the Center on February 29, 2008.

The Center appointed James A. Barker as the sole panelist in this matter on March 13, 2008. 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

The following facts are not contested by either the Complainant or the Respondent.

The Complainant is a large Argentinean company, operating in the food industry, in particular dairy products. The Complainant is the managing company of La Serenisima, SRL, which was founded in 1942 in connection with the La Serenisima dairy factory. Mr. Pascual Mastellone became a founding director of La Serenisima, SRL, in 1952.

The Complainant owns a portfolio of trademarks, registered from 1998, that include the term “Mastellone”. Those marks are registered in Argentina and a number of other jurisdictions in South America as well as Canada.

The Complainant also owns the domain name <mastellone.com.ar>, which it has operated in connection with its business since 1996.

The disputed domain name was registered on May 20, 1999.

At the date of this dispute, the disputed domain name did not revert to an active website. Rather, the domain name reverted to a webpage which contains only the statement “WELCOME TO MASTELLONE.COM”.

 

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name is identical to its registered marks, in which it has prior and exclusive rights.

The Complainant also claims that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant attached a print-out of a web search it conducted on February 4, 2008, which indicates that the disputed domain name then reverted to a webpage only displaying the words “WELCOME TO MASTELLONE.COM”. The Complainant claims that nothing in the identity of the Respondent suggests a right or legitimate interest. The Complainant has not licensed the domain name’s use to the Respondent by any means and does not keep any kind of relationship with the Respondent.

The Complainant argues that an ordinary Google search provides that, of the first one hundred results regarding the term “Mastellone”, more than its 90% referred to the Complainant.

The Complainant appears to suggest that a Google search for the Respondent’s email address reveals that it only “appears within the web page” at “www.showwhen.com”. The Complainant goes on to argue that the Whois data for “www.showwhen.com” shows that it is registered in the name of the Respondent, although providing address details for the Respondent in Orlando, Florida, United States of America. On this basis, the Complainant argues that the Respondent has provided false contact details in connection with the disputed domain name. The Complainant also notes that Florida has a particularly large Latin-origin population and, as such, suggests that it is not believable that the Respondent was not aware of the Complainant.

Finally, the Complainant argues that the disputed domain name was registered and has been used in bad faith. The Complainant’s domain name <mastellone.com.ar> was registered more than 3 years before the disputed domain name, and its trademarks were registered from 1998, both before the registration of the disputed domain name.

The Complainant’s corporate name (“Mastellone HNOS, S.A.”) is of notorious Italian origin, and the Complainant’s business relates to the provision of Italian diary products. As such, the Italian nationality of the Respondent, though not addressed in Argentina, may presume a prior knowledge of the worldwide reputation of “Mastellone” products.

The Complainant points to the inactive use of the disputed domain name, by reference to the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and other cases, to argue that it has been used in bad faith, when taken with additional facts of the Respondent’s behavior.

In that connection, the Complainant referred to an email to the Respondent from its Legal Counsel (referred to in the Complaint, but not however attached to the hard copy of the Complaint provided to the Panel). The Complainant stated that the Respondent then offered the disputed domain name for sale in September 2007, for 470,000 Euro. However, no evidence of any such communication was attached to the Complaint.

The Complainant refers to the Respondent’s statements that he manages servers and email traffic in connection with the disputed domain name. (Presumably, this was revealed in prior communications between the Complainant and Respondent – although no detail or explanation about any such communications was provided in the Complaint.) The Complainant notes that there is no evidence to this effect.

B. Respondent

The Respondent denies the allegations made against it in the Complaint.

The Respondent contends that the Complainant has failed to prove any registered trademark rights in Italy (the Respondent’s country of origin), any EU country, or the United States of America (where the registrar is based).

The Respondent states that, by not earlier registering its mark in the “.com”, “.net” or “.org” domains, the Complainant had no need for them, nor any interest in promoting its brand (“Mastellone HNOS, S.A.”) at the international level.

The Respondent points out that the Complainant trades under the name “Mastellone HNOS, S.A.”. The Complainant’s website at “wwww.mastellone.com.ar” redirects users to the Complainant’s website at “www.laserinisima.com”, and the only reference to “Mastellone HNOS, S.A.” is in the copyright notice on that website.

The Respondent also claims that he has a right or legitimate interest in the disputed domain name. The Respondent states, in effect, that the disputed domain name reflects a family surname, which has a significant history, particularly in the Sorrento area. He claims to be making a bona fide offering of goods or services, in that it is being used as a mail server for the Mastellone family. In particular, the Respondent claims to be acting on behalf of his Uncle in this respect (Ferdinando Mastellone). (The Respondent stated that, if necessary, details of the email accounts could be provided to the Panel, but that the Respondent did not do so to avoid breach of Italian privacy law. The Respondent also stated that he could provide further personal details, including evidence of his relationship to his uncle, “if requested” by the Panel.) On the basis of all these claims, the Respondent argues that he is making a legitimate non-commercial or fair use of the disputed domain name.

The Respondent also denies that he has registered or used the disputed domain name in bad faith. The Respondent denies that any of the circumstances set out in paragraph 4(b)(i)-(iv) are present in this case.

The Respondent also denies, as claimed by the Complainant, that an ordinary Google search for the term “Mastellone” gives 90 percent of its results as relating to the Complainant. The Respondent counters this by pointing out that the Complainant’s search was done in Spain (.es), and then that more like 70 percent of the results relate to the Complainant. The Respondent provided evidence that using Google ‘international’ (.com), such a search only returns six hits relating to the Complainant, the first of which is to the Complainant’s subsidiary, “La Serenisima”. The Respondent states that the Complainant has not been able to prove its International notoriety, nor provided any justification as to why the Respondent should have known about it when he registered the disputed domain name.

In relation to the Complainant’s claims that the Respondent has a connection with the “www.showwhen.com” website (in relation to which the Respondent has different contact details) the Respondent claims that this domain name was registered in August 2006. The registration of that domain name does not demonstrate that the Respondent knew about the Complainant when the disputed domain name was registered in 1999. The Respondent also claims that this other domain name was offered free with a subscription to Microsoft’s Office Live features. The Respondent claims to have been unaware that his contact details were different for that domain name.

The Respondent also refers to email correspondence between him and the Complainant prior to this dispute - as referred to, by not evidenced, by the Complainant. The Respondent provided evidence of these email communications, the first dated in September 2007. (In one, the Respondent indicates to the Complainant’s representative that he is receiving around 15 emails a day, apparently addressed to the Complainant’s company, and that “we pay by bandwidth usage so this is causing us a cost issue”. The Respondent also indicates that having “spoken with all the users of this domain”:

“1) We are willing to re-route all unsolicited emails to a mail server of your choice for €10000 (ten thousand euro) a year.

2) We are willing to transfer to domain to you for €470000...”.

After a response from the Complainant, asking if the offer for sale could be improved, the Respondent then indicated that:

“I understand that it would be better for you to buy the domain (for me as well as I wouldn’t have to filter the emails), let me know the figure that you could like to offer, please take into consideration that the domain is used by some for business reasons and others just for personal emails…”.

In a later email, the Respondent provides the Complainant with details of the email accounts apparently intended for the Complainant, and asks the Complainant to “inform all your staff to correct this as this is causing me excessive quantities of work.”

 

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) the disputed domain name was registered and is being used in bad faith.

These issues are discussed as follows.

A. Identical or Confusingly Similar

It is well-established that, under the Policy, the TLD extension is to be disregarded in determining whether a domain name is identical or confusingly similar to the trademark. Disregarding that extension, it is clear that the disputed domain name is relevantly identical to the Complainant’s registered MASTELLONE trademark.

The Respondent denies that the Complainant has established this ground for two reasons. One is that the Complainant has failed to provide evidence of having registered trademark rights in Italy, where the Respondent claims to reside. However, this is not relevant for the purpose of this ground. The Complainant must only prove that it “has rights” in a mark. It is not necessary for the Complainant to prove that it has registered rights in the jurisdiction in which the Respondent resides. (Although having such rights in a respondent’s jurisdiction may go towards proving either of the two grounds discussed further below.) In this connection see, for example Frank E. Rijkaard v. Marc Pйrez-Tejero, WIPO Case No. D2004-1044. As noted by the panel in that case, “the Policy does not require that the trademark of the Complainant be protected in the Respondent’s country.” To similar effect, other panels have noted that “It is thus sufficient that the Complainant establish that, at the time of filing the complaint, it has some rights in a trademark anywhere in the world”: Al Ghurair Group LLC v. Ghurair Group, WIPO Case No. D2004-0532.

The Respondent’s second basis of contention on this ground is that the Complainant trades under the name “Mastellone HNOS, S.A.”. However, that contention ignores the nature of the Complainant’s registered rights. The question in this case is whether the disputed domain name is identical or confusingly similar to the Complainant’s registered trademark. Making that determination is based on an objective comparison between the disputed domain name and the textual elements of a mark in which the Complainant establishes rights. (In this respect see, for example, Tax Analysts v. eCorp, WIPO Case No. D2007-0040.) Whether or not the Complainant may have other marks, or trade concurrently under other names, is irrelevant.

For these reasons, the Complainant has established this first element.

B. Rights or Legitimate Interests

The essence of the Respondent’s case is that it has a legitimate interest in the disputed domain name because it uses it in connection with a “family mail server”, and the Respondent’s family has some connection with the family name “Mastellone”.

The essence of the Complainant’s case is that the Respondent has no such right or legitimate interest, because the disputed domain name is not actively used; the Respondent must have been aware of the Complainant’s rights; and there is evidence of bad faith (in particular, the Complainant suggests that the Respondent has provided false contact details is some respect, and offered the disputed domain name for sale).

In relation to these claims, the Panel finds that the Complainant has not established its case, for the following reasons.

Firstly, on balance, the Respondent plausibly claims that he has used the disputed domain name in connection with a “family mail server”. The Panel has taken into account that the Respondent provided no direct evidence to this effect. (In various respects noted above, in the summary of the Respondent’s case, the Respondent notes that it can provide evidence “if requested”. However, in expedited proceedings such as these, it is up to the Respondent to provide evidence to support its case in the first instance. As a general point, a respondent that does not do so, exposes itself to a higher risk that the Panel will make a finding against it.) The Respondent did provide evidence of email correspondence between it and the Complainant. The content of that correspondence appears to the Panel to be consistent with the nature of the use which the Respondent says it makes of the disputed domain name.

Secondly, the Complainant’s claims that the Respondent must have been aware of the Complainant’s rights, and thus cannot have legitimately registered the disputed domain name. But the evidence to support this contention is not strong. It is evident that “Mastellone” is a not uncommon Italian surname. Indeed, this is the basis for its relationship with the Complainant, in that this was the surname of one of the Complainant’s founding directors. This alone would dilute the exclusive association of the term with the Complainant.

Further, and importantly, there is no strong evidence that the Respondent should have been aware of the Complainant when the disputed domain name was registered in 1999. The earliest registration of the Complainant’s marks appears to be 1996, with its Argentinian marks registered in 1998. (The evidence the Complainant provided in this respect was entirely in Spanish, with the exception of its Canadian registered mark in 1999.) The Complainant provided evidence (by copies of bills of lading) of having traded into the United States, particularly into the State of New York, since 1994. But this does little to set up an inference that the Respondent, based in Italy, should have known of the Complainant. Even if it were accepted, as the Complainant appears to suggest, that the Respondent is based Florida, evidence that the Complainant exported some of its goods to New York would also do little to establish that the Respondent knew of it.

The Complainant’s evidence of its notoriety in Google searches is similarly not persuasive. Many of the results of such a search do not appear to relate to the Complainant. Many relate to various people with the surname of “Mastellone”. The top result relates to the Complainant’s subsidiary – “La Serenisima” – rather than the Complainant itself.

Thirdly, the Complainant suggests there is evidence that the Respondent has acted in bad faith, and so cannot have a legitimate interest in the disputed domain name. But, again, the evidence in this connection is not strong. The Complainant makes some suggestion from the Respondent provided false contact details, either in connection with this case or with the website at “www.showwhen.com”. The Respondent’s response is that this was a simple error. Regardless, this evidence does not establish that the Respondent’s contact details in connection with this case are false or, more pertinently, that the Respondent has demonstrated some evasive conduct.

The Complainant also states that the Respondent offered the disputed domain name for sale. Evidence to this effect was, however, provided by the Respondent itself, by copies of email communications between the parties. Those communications give some context to the Respondent’s offer. It appears that that offer arose in the context of the Respondent seeking alternative solutions to emails (intended for the Complainant) mistakenly directed to the Respondent’s email server. The Respondent also appeared to be open to negotiating a different figure, and explained the value of the disputed domain name to it. The offer for sale did not appear to the Panel to be obviously opportunistic, or to demonstrate an attempt to trade on the value of the Complainant’s mark. Even if the initial price the Respondent put on the disputed domain name was inflated, in itself this is no evidence of bad faith or of a lack of a legitimate interest. Indeed, if the Respondent otherwise had a legitimate interest in the disputed domain name, it would be surprising if it were offered for sale merely to cover the cost of registering it.

The Panel also notes that the Respondent appears to have held the domain name registration for almost 8 years, and that the only direct evidence of confusion with the Complainant’s mark (the misdirection of emails to the Respondent’s server) appears to only have arisen late in 2007.

For these reasons, the Panel finds that the Complainant has not established this second ground.

C. Registered and Used in Bad Faith

Because of the Panel’s findings above, it is strictly unnecessary for it to make a finding under this ground.

For completeness however, the Panel notes that, to establish that the Respondent both registered and used the disputed domain name in bad faith, there must usually be some evidence that the Respondent had the Complainant in mind when he registered, and subsequently used, the disputed domain name. (See e.g. Builder’s Best, Inc. v. Yoshiki Okad, WIPO Case No. D2004-0748.)

For the reasons already set out above, there is insufficient evidence that the Respondent had that knowledge. In other words, even if the Respondent had not used the disputed domain name in connection with a “family mail server” (there being no direct evidence to this effect), and the Complainant had otherwise succeeded on the second ground, the Panel would very likely have found that the Complainant would not have succeeded on this third ground either.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.


James A. Barker
Sole Panelist

Dated: March 27, 2008

 

Источник информации: https://internet-law.ru/intlaw/udrp/2008/d2008-0187.html

 

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