PERFETTI VAN MELLE v. PI-EFFE S.a.s.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Perfetti Van Melle S.p.A. v. Pi-Effe S.a.s.

Case No. D2003-0067

1. The Parties

Complainant is Perfetti Van Melle S.p.A, having registered offices in Via XXV

Aprile, 7, Lainate (MI), Italy. The Complainant’s authorized representative

in this administrative proceeding is Mr. Alessandro Biraghi.

Respondent is Pi-Effe S.a.s., Via dei Monti Parioli 25, Roma, Italy. The Respondent’s

authorized representative in this administrative proceeding is Mr. Gianluca

Pellegrini of Tuonome.it srl, Italy.

2. The Domain Name and Registrar

The domain name at issue is <perfetti.net>, hereinafter referred to also

as the "Domain Name". The registrar is CORE Internet Council of Registrars.

3. Procedural History

The WIPO Arbitration and Mediation Center (the Center) received a complaint

(hereinafter the Complaint) by email on January 30, 2003, and in hardcopy and

exhibits on January 31, 2003. On January 30, 2003, the Center transmitted via

email to CORE Internet Council of Registrars, a request for Registrar Verification

in connection with this case. On February 12, 2003, CORE Internet Council of

Registrars transmitted via email Verification Response to the Center, confirming

that the registrant is Pi-Effe S.a.s. and that the Domain Name registration

is in "active" status.

The Complaint satisfied the formal requirements of the ICANN Uniform Domain

Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name

Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform

Domain Name Dispute Resolution Policy (the Supplemental Rules), as confirmed

by the Center’s Formal Requirements Compliance Checklist completed on February 13, 2003.

The Center transmitted on February 13, 2003, to Pi-Effe S.a.s. the Notification

of Complaint and Commencement of the Administrative Proceeding by post (with

attachment), and by fax and email without enclosures.

On March 4, 2003, the Center received the Online Response from the Respondent

and acknowledged receipt on March 7, 2003.

On March 14, 2003, in view of the Complainant’s designation of a single member

panel, the Center invited Mr. Luca Barbero to serve as a panelist and transmitted

to him the Request for Declaration of Impartiality and Independence and a Statement

of Acceptance.

Having received Mr. Luca Barbero's Statement of Acceptance and Declaration

of Impartiality and Independence on March 17, 2003, the Center transmitted on

March 18, 2003, to the parties a Notification of Appointment of Administrative

Panel and Projected Decision Date, in which Mr. Luca Barbero was formally appointed

as the Sole Panelist.

The Sole Panelist finds that the Administrative Panel (hereinafter referred

to also as the Panel) was properly constituted and appointed in accordance with

the Rules and Supplemental Rules.

4. Factual Background

The Complaint is based on the trademark registration n. 330 212 of April 5,

1979, in Italy; a number of other registration for PERFETTI have been enclosed

to the Complaint.

The Respondent registered the domain name <perfetti.net> on May 6, 2002.

5. Parties’ Contentions

A. Complainant

The Complainant is the owner of many trademark registrations for PERFETTI,

covering products of different international classes but mainly of the class

30, used in particular for confectionery products. The first Italian trademark

PERFETTI was filed in 1979 and registered in 1982. Copies of the Italian, International

and Community registration certificates are provided as Annexes to the present

Complaint. It is noted that said registration certificates are in the name of

PERFETTI S.p.A., the Complainant’s former company name and it is acknowledged

the copy of the certificate of the Chamber of Commerce of Milan attesting to

the change of the company name is provided.

The Complainant’s trademark PERFETTI has been used on the confectionery products

produced by the Complainant, which is a global company successfully selling

its products all around the world. The Complainant is the world’s sixth and

Europe’s second largest confectionery group, and

the market leader in Italy, where it enjoys high reputation and goodwill.

The Complainant is also the registrant of the domain name <perfetti.com>;

the relating website contains information on the Complainant’s products and

business.

The Complainant indicates that the Respondent has no rights or legitimate interests

in respect of the domain name that is the subject of the Complaint because it

has not been commonly known by the domain name nor it has acquired commercial

gain and/or notoriety among the public following the use of the domain name.

The word PERFETTI, in fact, is not part of or comprehended in any way in the

Respondent’s company name (Pi-Effe S.a.s.), the name under which it normally

operates and is known to the public.

Moreover, the Respondent has never had any connection or affiliation with the

Complainant who has never consented to the Respondent’s use of the domain name

that is the subject of the Complaint and the Complainant has never received

any information about the existence of the Respondent, neither has the former

ever had any commercial or other kind of relationship with the latter. The Respondent

has never approached the Complainant to inform it of the intention to register

the challenged domain name nor to ask for its consent to the registration.

The Complainant states that the only interest of the Respondent in the Domain

Name is to attempt to exploit the fame, especially in Italy, of the Complainant’s

trade name and trademark PERFETTI and convey Internet users’ attention and Internet

contacts to its website, without any need to bear advertising or promotional

costs. According to the Complainant, this interest is all but legitimate, having

the Complainant invested high sums of money in its business and reputation for

quality products.

The Complainant informs the Panel that on the website corresponding to the

disputed domain name there is no reference to the person that seems to be behind

the Respondent, its administrative contact Mr. Fabrizio Perfetti. Any Internet

user opening this website gets no information about the fact that this is a

personal website speaking only and particularly of this person, his origin and

family.

On the website, on which it appears the word PERFETTI in big characters, there

is a general claim of origin of the PERFETTI family name from an Italian region

called Marche, from where the Internet users are informed that all the people

named PERFETTI originate. This affirmation in general terms is not true and

not legitimate. The Complainant and the family that owns the Perfetti Van Melle

Group originate, in fact, from another Italian region called Lombardia and have

never had any kind of relation, family, commercial or of any other kind with

the Respondent, its administrative contact Mr. Perfetti or any other people

related to him.

Moreover, the Complainant notes that except for the initial page that is displayed

when the website is opened, hardly any other section of it is active. The Respondent

is not using, and there is no apparent preparation to use, the domain name in

connection with a bona fide offering of goods or services, nor is it making

a fair use of it. In the end, the website displayed under the domain name subject

of the Complaint consists of only one page and

contains only general fake information, which does not correspond to any legitimate

interest. If the Respondent or its administrative contact wished to have a website

dedicated to them, their family and history, they should have registered at

least the domain name <fabrizioperfetti.it> or should have given in the

website corresponding to the disputed domain name some exact information for

Internet users to understand who and what the website is about.

A copy of the printout of the website page displayed under the domain name

subject of the Complaint was provided to the Panel.

With reference to the bad faith registration and use, the Complainant states

that since Respondent is located in Italy it would be strange if only the Respondent

remained unaware of the existence of the trade name/mark PERFETTI in light of

the fact that the Complainant is the market leader for confectionery products

in this country and its products are very famous in Italy and have been widely

advertised on the whole Italian territory.

Moreover, the Complainant points out that it should have been the responsibility

of the Respondent to make searches, at least among the Italian trademark registrations,

to be sure that its chosen domain name did not infringe someone else’s rights.

The search would have revealed the existence of the Complainant’s registrations

for the trademark PERFETTI and even if the Respondent hadn’t performed a trademark

search, a simpler and easier search with a search engine would have shown to

the Respondent the existence of the Complainant’s Company and its trade name

PERFETTI.

The Panel was provided with copy of the printouts of the search results from

some of the most common search engines, Google, Virgilio and Yahoo. The Complainant

commented that the Respondent proved to be familiar with the use of Internet

since it has registered a domain name, and therefore a search in the above mentioned

search engines or any other similar search engine would have been absolutely

in the Respondent’s power.

Furthermore, by registering the domain name subject of this Complaint, the

Respondent makes the Complainant unable to use its trademark and business name

as a ".net" domain name.

The Complainant, as an additional circumstance evidencing bad faith, asserts

that the Respondent’s domain name can mislead the consumers attracting them

while they are searching the web for news and information on the Complainant’s

Company and products. Consumers may think there is a link between the Complainant

and the Respondent especially because in the Respondent’s website there is nothing

about the Respondent itself or its administrative contact or his family. There

is simply the false affirmation that the PERFETTI people originate from Marche

and that only these are "the original PERFETTI". Moreover, considering

that after more than seven months only the initial page containing this false

information is active, there is no real and effective use of the website and

no guarantee that the corresponding domain name won’t be sold to any third party

(also competing with the Complainant) in the future.

B. Respondent

The Respondent is an Italian limited partnership, incorporated and regularly

registered at the Chamber of Commerce in Rome, Italy by the name "Pi-Effe

S.a.s. di Perfetti Fabrizio & C." abbreviated as Pi-Effe S.a.s.

The Respondent indicates that it is operational in the dental sector which

is a completely different sector than the sector in which the Complainant states

to do business. Since the Respondent and the Complainant do business in two

completely different sectors of the consumer market, the Respondent is convinced

that no confusion can be created through the use of the domain name <perfetti.net>

by the Respondent.

The Respondent has been doing business as a limited partnership Pi-Effe S.a.s.

since February 26, 2002, and is considered by its patients/customers as a trustworthy

partner in the dental sector. The respondent asserts that the domain name <perfetti.net>

was not registered by Respondent in an intentional attempt to attract for commercial

gain, Internet users to the Respondent’s website or other on-line location,

by creating a likelihood of confusion with the Complainant’s mark as to the

source, sponsorship, affiliation, or endorsement of the Respondent’s website

or location or of a product or service on the Respondent’s website or location.

The Respondent informs the Panel that it is currently doing business as Pi-Effe

S.a.s. di Perfetti Fabrizio & C. also abbreviated as Pi-Effe S.a.s. and

both the full name of the company and the abbreviation are being mentioned on

the copy of the Registration at the Chamber of Commerce. The general partner

of the limited partnership Pi-Effe S.a.s. is Mr. Fabrizio Perfetti. The textual

element "perfetti" is part of the name under which the Respondent

operates, under which the Respondent does professional activities, and is known

to the public.

The Respondent indicates that has acquired commercial gain and notoriety among

the public through Pi-Effe S.a.s. di Perfetti Fabrizio & C., abbreviated

as Pi-Effe S.a.s., and the use of the domain name <perfetti.net>. The

Respondent as an Italian limited partnership is commonly known by the domain

name in issue, even if Respondent has acquired no trademark or service mark

rights. The Respondent is as a consequence convinced that it has legitimate

rights to the domain name <perfetti.net>, the domain name that is the

subject of the Complaint.

The Respondent furthermore notes that some e-mail addresses were activated

for the domain name<perfetti.net>and these e-mail addresses are known

and regularly used by the Respondent and its customers/patients. As the "www"

part is concerned, the Respondent has activated a file-sharing mechanism through

which its patients, among others, can consult, after authentication by means

of username and password, certain dossiers of the Respondent’s patients, dental

radiography-files, diagnostic files, pathologic information and treatments,

etc. The website linked to the domain name <perfetti.net> is being used

for professional reasons and not for private or personal reasons.

Even though the Respondent is not in the possession of a trademark registration

or application containing "perfetti", Mr. Fabrizio Perfetti as the

representative of Pi-Effe S.a.s. indicates to the Panel that the use of his

surname as a domain name (i.e. <perfetti.net>) is not intended for the

purpose of selling, renting, or otherwise transferring the domain name registration

to Complainant or to a competitor of Complainant, for valuable consideration

in excess of Respondent’s out-of-pocket costs directly related to the domain

name. On the contrary, Mr. Perfetti has registered the domain name <perfetti.net>

for the professional reasons described above.

Furthermore, the Respondent underlines that he is not a competitor and the

domain name was not registered primarily to disrupt the Complainant’s business.

The Complainant does business in the sector of confectionery products, whereas

the Respondent’s business activities are in the dental sector. Therefore, any

likelihood of confusion can be excluded, even though both the Complainant and

the Respondent are located in Italy. The domain name was not registered in order

to prevent the Complainant from reflecting the mark in a corresponding domain

name and, in connection therewith, the Respondent has not engaged in a pattern

of such conduct. The Respondent furthermore indicates that the Complainant even

states that he already is in the possession of the ".com" equivalent

of <perfetti.net> and therefore has already had the possibility to reflect

its mark in a corresponding domain name.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: "A Panel shall decide a Complaint

on the basis of the statements and documents submitted in accordance with the

Policy, the Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy directs that 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 a service in which the Complainant has rights;

(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.

6.1. Domain name identical or confusingly similar

The Complainant has provided ample and detailed evidence of ownership of a

number of trademark registration for trademark consisting in and comprising

of the sign "PERFETTI" in Italy and in many other countries including

the Italian registration n. 330 212 filed on April 5, 1979, and duly renewed

thereafter.

In view of the above, the Panel finds that the Complainant has proved that

the Domain Name is identical, obviously but for the suffix ".net"

which is instrumental for the use in Internet, to the trademark of the Complainant

according to paragraph 4(a)(i) of the ICANN Policy.

6.2. Rights and legitimate interest

The Complainant must show that the Respondent has no rights or legitimate interests

in respect of the dispute domain name. The Respondent does not assume the burden

of proof, but may establish a right or legitimate interest in a disputed domain

name by demonstrating in accordance with paragraph 4(c) of the Policy:

(a) He has made 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 prior to the dispute;

(b) He is commonly known by the domain name, even if he has not acquired any

trademark rights; or

(c) He intends to make a legitimate, non-commercial or fair use of the domain

name without intent for commercial gain to misleadingly divert consumers or

to tarnish the trademark.

As indicated above, the Complainant in order to show that the Respondent has

no rights or legitimate interests in respect of the domain name asserts that

the Respondent has not been commonly known by the domain name and claims that

the word PERFETTI is not part of or comprehended in any way in the Respondent’s

company name.

Conversely, the Respondent has submitted to the Panel documents attesting the

ownership of an Italian limited partnership, duly incorporated since February

26, 2002, and regularly registered at the Chamber of Commerce in Rome, by the

company full name "Pi-Effe S.a.s. di PERFETTI Fabrizio & C." and

in the abbreviated form "Pi-Effe S.a.s." (as indicated in page 1 of

the Statute and in page 1of the Chamber of Commerce Certificate in Italian enclosed

to the Response).

One of the two partners of the limited partnership Pi-Effe S.a.s. is Mr. Fabrizio

Perfetti who is the owner, according to the documents enclosed, of 80% of the

company. According to Article 2314 of the Italian Civil Code, the company name

of this kind of limited partnership should include the name of at least one

of the partners. The Respondent informed the Panel that it has been using both

the full name of the company and the abbreviated version since February 26,

2002, and is considered by its patients/customers as a trustworthy partner in

the dental sector.

It is also asserted by the Respondent that some e-mail addresses were activated

with the domain name <perfetti.net> and, on a website linked to the Domain

Name, a file-sharing mechanism was activated through which patients can consult,

after authentication by means of username and password, certain dossiers of

the Respondent’s patients, dental radiography-files, diagnostic files, pathologic

information and treatments, etc.. It is noted though, that no evidence of the

use of the company name was enclosed to the Response (but a copy of a fax cover

addressed to the legal representative of the Respondent where the full name

of the company is shown) nor a clearer indication of the time when such an use

on Internet via a linked website took place.

Conversely, the printout of the web page published on the domain name until

January 22, 2003, annexed to the Complaint, showed a web page indicating

at the top "If you are a ‘Perfetti’ welcome in your website".

The page showed also two pictures of a little village, Serravalle di Carda,

respectively taken in 1960 and at the present time. Between the pictures a wording

reciting "Perfetti (which in Italian also means ‘perfect’) …

challenging, we know, but this is it and therefore we should hold on to this

name in the best possible way. The pictures herein are of one little village,

‘Serravalle di Carda’ positioned in the Marche in the Province of Pesaro. Here

are our roots subsequently spread around the entire world". Beneath

the pictures and the quoted wording it was displayed a disclaimer reciting "The

purpose of the present web page is to gather together all of us, the progress

has torn us apart, and we should let to it now the task to get us together again".

And further below, four buttons apparently to enroll in the website, enjoy

the services to the users, have access to a chat line and to get to know the

"Story".

No additional printout was provided by the Complainant but the indication that,

except for the initial page, hardly any other section of it was active.

The Complainant further comments that the affirmation of the origin of the

name are "in general terms is not true and not legitimate", but the

Panel notes that reference was made to the family that owns the Perfetti Van

Melle Group and possibly not considering that in the Marche the name Perfetti

is also rather common.

On the basis of this interpretation and the absence of any prior relations

with Mr. Fabrizio Perfetti or other people related to him, the Complainant

concludes that "the website displayed under the domain name subject of

the Complaint consists of only one page and contains

only general fake information, which does not correspond to any legitimate interest.

If the Respondent or its administrative contact wished to have a website dedicated

to them, their family and history, they should have registered at least the

domain name <fabrizioperfetti.it> or should have given in the website

corresponding to the disputed domain name some exact information for Internet

users to understand who and what the website is about".

The panel does not concur with the interpretation and the reasoning about the

not legitimate use of the Domain Name based on the above arguments nor with

the hypothetical obligations of the Respondent as to the registration of a national

domain name identical to the full name and surname to provide information related

to a given surname.

The name PERFETTI is part of the registered name of the Respondent, is identical

to the surname of the majority owner of Pi-Effe S.a.s., is the surname of the

Administrative Contact of the Domain Name and the Respondent is commonly known

by this name pursuant to paragraph 4(c)(ii) of the Policy. Therefore, the

Panel finds that the Respondent should be entitled to register and use the domain

name <perfetti.net> (see also GA Modafine S.A. v. Mani.Com, WIPO

Case No. D2001-0388 finding that "the Respondent’s surname is Mani

and he is commonly known as such. He is entitled to use it on the Internet").

As rightly held in prior decisions, the use of one's own surname in a domain

name corresponds to a legitimate customary practice and is, as a rule, sufficient

evidence of a legitimate right or interest in the domain name.

The Panel notes that it has to be taken in due consideration that the scope

of the Uniform Domain Name Dispute Resolution Policy is limited to cases of

abusive registration of a domain name. As it was held i.a. in G.A.

Modefine S.A. v. A. R. Mani, WIPO Case

No. D2001-0537, trademark owners shall not be allowed to use the Policy

to dispossess summarily a third party of a domain name reflecting his or her

surname.

Furthermore, from the examination of the content of the web page published

until January 22, 2003, and the "work in progress" web page published

on February 13, 2003, (provided in the documentation transmitted to

the Panel by the Center), no indication whatsoever can be inferred that "the

only interest of the Respondent in the domain name is to attempt to exploit

the fame, especially in Italy, of the Complainant’s trade name and trademark

PERFETTI and convey Internet users’ attention and Internet contacts to its website",

as declared by the Complainant to prove that the Respondent has no rights or

legitimate interests in respect of the disputed domain name.

The Panel finds that the Complainant has therefore not met the required burden

of proof in respect of paragraph 4(a)(ii) and the Respondent has succeeded

in proving that he has legitimate rights and interests in the domain name.

6.3. Registration and Use in Bad Faith

Given that the Complainant has failed to succeed in its burden of proof in

respect of paragraph 4(a)(ii), it is not required for the Panel to consider

whether or not the Respondent has registered or is using the domain name in

bad faith.

However, the Panel observes that none of the circumstances evidencing bad faith

listed in the Policy apply to the instant case, nor has the Complainant indicated

the existence of other convincing evidence of bad faith.

The Respondent did not offer to sell the domain name to the Complainant for

valuable consideration in excess of the holder’s documented out-of-pocket costs

directly related to the domain name. The Respondent has not engaged in a pattern

of registering domain names "in order to prevent the owner of the trademark

or service mark from reflecting the mark in a corresponding domain name". It

should also be noted that the Complainant has successfully registered i.a.

<perfetti.com>.

No evidence was provided that the Respondent has used the domain name for commercial

gain by attempting to create a likelihood of confusion with Complainant’s trademark.

Accordingly, this Panel finds that Respondent has not registered the Domain

Name in bad faith.

7. Decision

In light of the foregoing, the Panel decides that the domain name <perfetti.net>

registered by the Respondent is identical to the trademark "PERFETTI" owned

by the Complainant. However, the Panel finds that the Complainant has failed

to show that the Respondent has no rights or legitimate interests in the disputed

domain name <perfetti.net>, as per section 4(a)(ii) of the Policy. Furthermore,

the Panel finds that the domain name has not been registered in bad faith.

Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the

Panel denies that the domain name <perfetti.net> be transferred from the

Respondent to the Complainant.

Luca Barbero

Sole Panelist

Dated: April 1, 2003