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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Urbani Tartufi s.n.c. v. Rosario's Epicureo Ltd.

Case No. D2003-0081

 

1. The Parties

The Complainant is Urbani Tartufi s.n.c. of Perugia, Italy, represented by Eva Fiammenghi of Rome, Italy.

The Respondent is Rosario’s Epicureo Ltd. d/b/a Urbani Truffles U.S.A. of Long Island City, New York, United States of America, represented by Carl R. Soller, of Hodgson Russ LLP, New York, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <urbaniusa.com> is registered with Network Solutions, Inc., Registrar.

 

3. Procedural History

3.1. The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 5, 2003. On February 6, 2003, the Center transmitted by email to Network Solutions, Inc., Registrar, a request for registrar verification in connection with the Domain Name at issue. On February 7, 2003, Network Solutions, Inc., Registrar transmitted by email to the Center its verification response stating that Rosario's Epicure Ltd is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On February 17, 2003, 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").

3.2. 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 17, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2003.

3.3. The Response was filed with the Center on March 7, 2003, by email and on March 10, 2003, in hard copy. Errors of Case No. in the Response and in Annex 5 thereof were deemed to refer to WIPO Case No. D2003-0081.

3.4. The Center appointed Dr Clive N. A. Trotman as the sole panelist in this matter on March 18, 2003. 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.

3.5. On March 19, 2003, the Center received an email from Complainant's representative with an attached Supplemental Filing comprising a draft affidavit, which was forwarded to the Panel. Respondent objected. The Administrative Panel agreed to allow Respondent to file a reply but reserved its decision on whether to take the Supplemental Filings into consideration. The Parties were so informed by email from the Center on March 21, 2003. A Supplemental filing was received from Respondent on April 2, 2003. In response to enquiry from the Panel through the Center, both Parties then confirmed that their submissions were complete.

 

4. Factual Background

4.1. On the basis of information supplied by Complainant, the Complainant's company is derived from the Urbani family concern that has harvested and sold truffles in Italy for more than a century. Thus its name has long been well known. Complainant sells truffles around the world and maintains high standards of quality. Urbani is a world leader in truffle production.

4.2. Complainant registered the trademark word Urbani in Italy with an application dated September 29, 1989, the trademark being issued on December 2, 1992, and renewed on September 10, 1999. Complainant has other relevant trademarks or applications.

4.3. Also according to Complainant, the Respondent company Rosario’s Epicureo Ltd., doing business as Urbani Truffles U.S.A. Inc., signed a distributorship agreement with the Urbani concern in respect of the U.S.A. and Canada market in 1989, part of the agreement being in effect to promote the Urbani product and not to compete with it. Respondent was to be allowed to use Complainant's trademark as necessary for this purpose.

4.4. Respondent registered the disputed Domain Name <urbaniusa.com> on February 16, 2000.

4.5. Respondent signed a Deed of Assignment on September 6, 2002, which in part confirmed ownership by Complainant of U.S.A. trademark 1644515 filed on February 9, 1990 and registered on May 14, 1991.

4.6. Complainant revoked the distributorship agreement with Respondent by a deed dated November 25, 2002.

 

5. Parties’ Contentions

A. Complainant

5.1. Complainant contends among other things that the disputed Domain Name is identical to the trademark in which it has rights. Complainant claims ownership of seven Italian and four U.S.A. trademark registrations or applications (most but not all containing the word Urbani). Of the seven Italian trademark registrations or applications, two were issued in 1992 and renewed in 1999; five are applications filed between August 9, 2001 and January 17, 2003. Of the U.S.A. trademark registrations or applications, one bearing Registration No. 1644515 is a depiction of truffle gathering emblazoned MARCA DI FABBRICA not including the word Urbani, issued on May 14, 1991, evidently assigned to Complainant by Respondent on September 6, 2002, and stated to be identical to an Italian trademark filed on September 29, 1989, issued on February 12, 1992, and renewal applied for on September 10, 1999. The other three are applications filed between October 10, 2002 and January 22, 2003.

5.2. Respondent has no rights or legitimate interests in respect of the Domain Name. A Decision is requested that would halt the alleged dilution of Complainant's trademark and damage to Complainant's image.

5.3. Respondent has acted in bad faith by using Complainant's name in the form of the disputed Domain Name for purposes of trade in competition with Complainant. Respondent uses the Domain Name and corresponding website to misrepresent its present relationship with Complainant. Respondent is trading on the goodwill value of Complainant's name without authority. Cease and desist communications from Complainant have not been acted upon by Respondent. Respondent has attempted to attract Internet users to its website for commercial gain, causing a likelihood of confusion with the Complainant’s trademarks, contrary to Paragraph 4(b) of the Policy.

5.4. Complainant requests that the disputed Domain Name be transferred to Complainant.

B. Respondent

5.5. Respondent denies the Complaint and its contentions.

5.6. Respondent has operated as Rosario’s Epicureo Ltd., d/b/a Urbani Truffles substantially and continuously since 1983 and has continuously used the corresponding mark since that time.

5.7. The Domain Name is not in conflict with a trademark in which Complainant has rights because Respondent, as the exclusive distributor, rather than Complainant, is the rightful owner of the Urbani trademark in the U.S.A.

5.8. Respondent does have rights or legitimate interests in the Domain Name. According to relevant trademark law and precedent, Respondent has a strong claim to ownership of the trademark because Respondent has among other things maintained the quality and uniformity of the product, become identified with the product by the public, handled complaints and comments, and in effect given the product the stamp of Respondent's good name.

5.9. Questions of ownership of a Domain Name or the interpretation of a contract are in any case outside the scope of the UDRP.

5.10. Respondent has used the Complainant's trademark with consent since 1983. The relationship was for a time beneficial and profitable to the Parties. Respondent registered the disputed Domain Name with Complainant's consent in 2000 and used it for bona fide purposes for nearly two years before being notified of the present dispute.

5.11. Respondent has been commonly known by a name corresponding to the Domain Name since 1983 when it obtained the New Jersey corporation, Urbani U.S.A., from Paul Urbani, and thenceforth operated as Urbani Truffles U.S.A. Complainant’s invoices to Respondent identified Respondent as Urbani U.S.A.

5.12. The Domain Name was not registered in bad faith because Respondent registered it as Complainant's authorized distributor and Complainant raised no objection. Respondent specifically did not intend to sell the Domain Name to Complainant or a competitor or preclude Complainant from registering a similar mark. The claimed scope of Complainant's trademark is contested. In any case the breakdown in relations between Respondent and Complainant is a contractual matter outside the scope of the UDRP.

 

6. Discussion and Findings

Jurisdiction of the Administrative Panel

6.1. Paragraph 4(a) of the Policy states:

"You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that:

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

(ii) you have no rights or legitimate interests in respect of the domain name; and

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

6.2. Complainant has made the relevant assertions as in 6.1 above. This dispute is properly within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute.

Procedural

6.3. After the case file had been transmitted to the Panel, the Center received a draft affidavit from Complainant asking that it be accepted as a Supplemental Filing. Respondent, by email to the Center, objected to the Supplemental Filing.

6.4. Item 12 of the Rules is clear: "In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties." Complainant's Supplemental Filing had not been requested by the Panel.

6.5. In the interests of fairness and equal treatment of the Parties, since the case was strenuously argued and the Panel had seen the Complainant's draft affidavit, the Respondent was given the opportunity to reply and the Parties were asked to confirm they had nothing further to add. In the event the Supplemental Filings added nothing relevant that was not included or could not have been included in the original Complaint and Response and served only to delay the proceedings. It was not necessary for the Supplemental Filings to be taken into account.

6.6. The slight difference of name in the Registrar's verification (Epicure) is treated as an error. References to Rosario's Epicureo Ltd. or to Urbani Truffles U.S.A. are treated as equivalent.

Whether the Domain Name is Identical or Confusingly Similar to a Trademark

6.7. The Domain Name subject to this Complaint is <urbaniusa.com>. The Complainant Urbani Tartufi s.n.c. provides evidence of a trademark including the word Urbani having been applied for in Italy in 1989 and issued in 1992. In any case it is not necessary in the present context for a trademark to have registered status (SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs, WIPO Case No. D2000-0131). The gTLD suffix <.com>, or equivalent, is inevitable and of no consequence for the determination of confusing similarity. The Panel finds the disputed domain name <urbaniusa.com> to be confusingly similar to Complainant's trademark in terms of Paragraph 4(a)(i) of the Policy.

Whether Respondent Has Rights or Legitimate Interests in Respect of the Domain Name

6.8. Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed Domain Name. The onus of proof is on Complainant. The Policy in Paragraph 4(c) lists specific circumstances, without limitation, whereby Respondent may establish legitimate rights or interests in a Domain Name. Paragraph 4(c)(i) of these recognizes:

"before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;"

6.9. Complainant and Respondent had a long-standing business arrangement. For instance, according to the Complainant, "On the year 1989 URBANI Tartufi s.n.c. in the person of Paolo URBANI signed a Distributionship Agreement with Urbani Truffle U.S.A. Inc." Complainant furthermore states, "The Distributor, that is now traced back to Rosario’s Epicureo Ltd., is allowed to use the trade mark "URBANI" in marketing the product, he is allowed to deal with the manufacturers and with the customers in his quality of a sole merchant. The Agreement has been concluded for an indeterminate period of time." Again the Complainant says, "The domain name <urbaniusa.com> has been registered by Rosario’s Epicureo Ltd. on February 16, 2000, only to advertise the goods of URBANI Tartufi s.n.c. and with the aim of being the only distributor in the U.S.A. for URBANI Tartufi s.n.c."

6.10. More formal confirmation of these circumstances is provided within the Complaint in the following excerpt from a Deed of Assignment signed by Respondent in favour of Complainant dated September 6, 2002:

"that to better represent URBANI’s Company, Rosario asked and obtained the LOGO’S Registration to designated Truffles- Mushrooms and similar, preserved, dried, canned and frozen, indicating as first utilization date 1983 [and] that Rosario recognize that any right’s on URBANI’s name and LOGO lodged in the U.S.A. Registration No. 1644515 belong exclusively to the ITALIAN URBANI Company as being the LOGO registered in the U.S.A part of the LOGO registered in Italy by URBANI and as he has always and exclusively used it for URBANI’s items."

6.11. The Panel infers from the above quotation that Respondent had at some unspecified date sought and obtained consent to use Complainant's trademark to promote Complainant's products. Respondent recognized by way of the Deed of Assignment that Complainant retained exclusive ownership of the trademark, however the disputed Domain Name is an entity distinct from the trademark.

6.12. Complainant states the disputed Domain Name was registered on February 16, 2000, but goes on to say the Distributionship Agreement was revoked by a deed dated November 25, 2002, and also says "Thus, from November 25, 2002, the respondent has not anymore legitimate right on the use of the domain name <urbaniusa.com>". The inescapable deduction is that at the time of registration of the disputed Domain Name on February 16, 2000, and for at least part of the time between then and November 25, 2002, Complainant and Respondent were in a business relationship, and Respondent, as Complainant's bona fide distributor, had a legitimate right to use the Domain Name.

6.13. Respondent therefore has established a legitimate right or interest in respect of the disputed Domain Name within the meaning of Paragraph 4(c)(i) of the Policy by satisfying the requirement: "before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services".

6.14. Complainant's citation of Christian Dior Couture SA v. Liage International Inc., WIPO Case No D2000-0098, was unhelpful since that case concerned abusive registration in bad faith of the most blatant kind.

Whether Domain Name Has Been Registered and Is Being Used in Bad Faith

6.15. Paragraph 4(a)(iii) of the Policy requires Complainant to prove that the Domain Name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) lists four circumstances (without limitation) that shall be evidence of the registration and use of a Domain Name in bad faith.

6.16. Registration of the disputed Domain Name was done with the evident consent of Complainant at a time when Complainant and Respondent were in a business relationship. Complainant says, for instance, "Lately and after several years of good business relationship..." (then describes recent problems). No evidence has been produced that could satisfy Paragraphs 4(b)(i), (ii) or (iii) of the Policy to the effect that Respondent registered the Domain Name to sell for a profit, or had intended to block Complainant from reflecting its mark in a Domain Name (and had engaged in a pattern of doing so), or had the primary intention of disrupting Complainant's business. In the terms of Paragraph 4(b)(iv), which is governed by Paragraph 4(a)(iii), there has to be both registration of the Domain Name in bad faith and use in bad faith, and whilst Complainant may now want to make complaints about the recent use of the website, for reasons stated previously there is no evidence its registration was made in bad faith. Complainant has failed to prove that the Domain Name was registered and used in bad faith within the meaning of Paragraph 4(a)(iii) of the Policy.

Summary

6.17. On February 16, 2000, when the Domain Name was registered, the Parties evidently were in a business relationship and Complainant constructively approved or at least acquiesced in the registration. There is no evidence or assertion from Complainant that the registration was other than authorized, bona fide and in good faith.

6.18. This dispute is not about abusive registration of a Domain Name within the ambit of the UDRP. It is about a business relationship gone wrong. Some time prior to November 25, 2002, when the deed to revoke the distributorship was executed, clearly the business relationship fell apart. Complainant understandably regrets parting with its long-established name in the form of a Domain Name and now wants it back. The UDRP is not the basis on which the Parties may argue the ownership or usage rights of a business asset. The Panel's Decision has not required determination of the numerous non-relevant allegations and counter-allegations placed before it.

 

7. Decision

The Decision of the Administrative Panel is that the disputed domain name <urbaniusa.com> is confusingly similar to the trademark URBANI in which Complainant has rights. Complainant has not proven that Respondent has no rights or legitimate interests in the disputed Domain Name and has not proven that Respondent registered the disputed Domain Name in bad faith. Complainant's application for transfer of the Domain Name is denied.

 

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Dr. Clive N. A. Trotman
Sole Panelist

Dated: April 7, 2003