WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

1. The Parties

The Complainant is Consorzio per la Tutela dell’Asti, Asti, of Italy, represented by Studio Legale Jacobacci e Associati, Italy.

The Respondent is Mr. Giulio Bennatto, Asti, of Italy.

2. The Domain Name and Registrar

The disputed domain name <spumanteasti.net> is registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2004. On May 12, 2004, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On May 12, 2004, Register.com 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 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 June 8, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June 28, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 30, 2004.

The Center appointed Alessandra Ferreri as the sole panelist in this matter on July 15, 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

The Complainant is a consortium created in order to control the use of the denomination of origin Asti for sparkling wines and to authorize in the fields of wines the use of the names Asti, Asti Spumante and Spumante Asti.

The Complainant explains that, on the ground of a Ministerial Decree dated November 29, 1993, it has the sole authority to certify what products may bear the denomination Asti: such products must originate from a specific region and meet certain quality requirements.

The Complainant is the owner of several registered trademarks including the word ASTI. The Complainant provides a printout listing all the registered trademarks owned by The Complainant in different countries.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- the domain name <spumanteasti.net> is confusingly similar with the denomination of origin Spumante Asti; it is in fact identical; The Complainant also owns a large number of trademarks incorporating the mark ASTI.

- the Respondent, whose address is in the same city as the Complainant’s, must have been aware of the association of “Spumante Asti” with the Complainant and registration may only have occurred in bad faith;

- the Respondent has no rights or legitimate interests in respect of the domain name;

- the domain name is used in bad faith for the following reasons.

The address information provided by Registrant in the relevant Whois records appears to be false.

For several weeks in August 2003, the page at “www.spumanteasti.net” had resolved to a web-site where pornographic services were offered for fee.

Presently “www.spumanteasti.net” resolves to a parking page offering several Internet services: representing a form of “passive holding” which, together with all the other circumstances of the case, amount to “use in bad faith”.

B. Respondent

The Respondent has not replied to the Complainant’s contentions.

6. Discussion and Findings

In accordance with paragraph 4 (a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove each of the following:

“(i) that 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

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

(iii) that the Domain Name has been registered and is being used in bad faith.”

A. Identical or Confusingly Similar

According to paragraph 4 (a)(i) of the Policy, the Complainant must prove the Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights. The Policy clearly states that this administrative proceeding applies to disputes involving trademarks or service marks only.

At the outset the Panel notes that under Italian Law, even if several provisions of Italian trademark law, in particular the laws related to collective trademarks, apply also to denominations of origin, the latter are not trademarks. Both Italian legal writing and several decisions of the Italian courts agree on this point.

Moreover Italian law, in particular the Decree of November 1993, does not confer on the Consorzio exclusive rights, comparable to trademark rights, in the denomination of origin Spumante Asti, but only provides certain functions of protection, promotion and development of such denomination of origin.

In any event, however, the Complainant based its claim also on the rights arising from the several trademarks including the word Asti. This was evidenced by, a printout listing all the trademark registrations including and/or consisting of the word “ASTI” owned by said Complainant all over the word.

Given also that the Public has become accustomed to seeing the ASTI trademark used in association with the Italian generic word “spumante” to indicate the sparkling wine originating from the Asti region, the dominant part of the domain name must be considered to be “asti”, therefore the Panel finds the domain name <spumanteasti.net> confusingly similar to the trademark ASTI.

Accordingly the Panel finds that the Complainant has met its burden of proof under Policy paragraph 4(a)(i) to show that the disputed domain name is confusingly similar to the trademark in which it has rights.

B. Rights or Legitimate Interests

Through its, the Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by the Complainant. In particular, the Respondent has failed to offer the panel any of the types of evidence set forth in Paragraph 4(c) of the Policy from which the panel might conclude that the Respondent has any rights or legitimate interests in the domain name, such as use or preparation to use the domain name prior to notice of the dispute, being commonly known by the domain name, or making legitimate non-commercial or fair use of the domain name.

There is no evidence in the record that the Respondent has any rights or legitimate interests in the domain name.

No response was filed in the case and the Panel, in accordance with Paragraph 14(b) of the Rules, draws the inference “that non-response is indicative of a lack of interest inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493).

Therefore the Panel is satisfied that the second condition is met.

C. Registered and Used in Bad Faith

The Panel finds that the domain name was registered and is being used in bad faith.

The first argument in support of the Complainant’s assertion of the Respondent’s bad faith in the registration of the domain name <spumanteasti.net> is based on the renown of the ASTI trademark and the Complainant’s activity. According to the Complainant, such renown is world-wide but, obviously, is even more marked, in Italy, where both the Complainant and the Respondent are located. Hence, the Respondent could not be unaware of the Complainant’s existence and renown when he registered the domain name <spumanteasti.net>.

The Panel shares the Complainant’s view. In the light of evidence filed by the Complainant, and in particular Annex 1 of the Complaint, and in the absence of any contrary argument by the Respondent, the Panel concludes that the Complainant’s trademarks and activities should be considered as well-known, at least in Italy, where the Respondent is located. Accordingly, in the Panel’s belief, the Respondent must have known about the Complainant’s existence and rights at the time of the registration of the domain name <spumanteasti.net>. In line with other prior decisions (Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin v. The Polygenix Group Ltd., WIPO Case No. D2000-0163; Parfums Christian Dior v Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; Ferrero S.p.A. v. Mario Pisano, WIPO Case No. D2000-1794; Ferrero S.p.A. v. Publinord S.r.l., WIPO Case No. D2002-0395) the Panel believes that, in the absence of any right or legitimate interest, and lacking any contrary evidence by the Respondent, the Respondent’s registration of a domain name confusingly similar to the Complainant’s well-known trademark suggests opportunistic bad faith.

Concerning use of the domain name in bad faith The Panel finds the Respondent’s bad faith is also demonstrated by the provision of false information about Respondent’s address provided to the Registrar. In many WIPO prior decisions it is established that the use of false contact information is evidence that the Respondent registered the domain name in bad faith (See Chanel v. 1,  WIPO Case No. D2003-0218; Action Instruments, Inc v. Technology Associates, WIPO Case No. D2003-0024; Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775; Royal Bank of Scotland Group v. Stealth Commerce, WIPO Case No. D2002-0155; Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362; Home Director, Inc. v. Home Director, WIPO Case No. D2000-0111);

It must also be noted that the Complainant stated that in August 2003 the domain name <spumanteasti.net> resolved to the offer of pornographic services for a fee. This circumstance is considered likely by this Panel in absence any contrary assertion made by the Respondent. In the Panel’s opinion the Respondent, by such use intentionally attempted to attract Internet users, expecting to reach the web-site corresponding to The Complainant’s trademark, to another on-line location by creating a likelihood of confusion with the Complainant’s trademarks. Moreover this behaviour is detrimental to the reputation of those trademarks.

Moreover the Panel also notes that its conclusion on the bad faith use of the domain name is reached even considering that now the “www.spumanteasti.net” resolves in a parking page offering domain name registration services.

In this case the Panel also notes that use in bad faith does not necessarily entail a positive action, but also inaction in the presence of particular circumstances. (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Compaq Computer Corporation v. Boris Beric, WIPO Case No. D2000-0042; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090).

In this regard issues to be taken into account include that the Complainant’s trademarks are well-known at least in Italy, where the Respondent is located; and that the Respondent provided the Registrar with false information about its address.

In conclusion the Panel finds that the domain name <spumanteasti.net> was registered and is being used in bad faith.

7. Decision

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

Alessandra Ferreri
Sole Panelist

Dated: July 29, 2004