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Consorzio del Prosciutto di Parma v. Hanslmeier Fleischwarenfabrik; Matthias Gasser

WIPO Case No. D2003-0474

Outcome
Transfer
Domain names
parma-schinken.com
Complainant
Consorzio del Prosciutto di Parma (Italy)
Complainant's counsel
Dr. Modiano & Associati S.p.A.
Respondent
Hanslmeier Fleischwarenfabrik; Matthias Gasser (Germany)
Panelist
Andrea Mondini
Decided
15 Aug 2003
Response
The respondent did not reply
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2003/d2003-0474.html

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Consorzio del Prosciutto di Parma v. Matthias Gasser, Hanslmeier Fleischwarenfabrik

Case No. D2003-0474

1. The Parties

The Complainant is Consorzio del Prosciutto di Parma, Italy represented by Dr. Modiano & Associati S.p.A., Italy.

The Respondent is Matthias Gasser, Hanslmeier Fleischwarenfabrik, Germany.

2. The Domain Name and Registrar

The domain name at issue is <parma-schinken.com> (hereinafter 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 June 19, 2003, and in hardcopy on June 23, 2003. On June 20, 2003, the Center transmitted via email to CORE, a request for registrar verification in connection with this case.

On June 24, 2003, CORE transmitted by email to the Center the Verification Response, confirming that the Domain Name is registered with CORE, that 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"). The Complainant made the required payment to the Center.

On June 24, 2003, the Respondent sent a fax in the German language to the Center stating in essence that the word "Parma-Schinken" cannot be monopolized and that since 1972 Respondent is in the business of importing and reselling genuine Parma ham. On June 25, 2003, the Center notified the Respondent that all submissions must be made in English.

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 25, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2003. The Respondent did not submit any formal response within this deadline. Accordingly, the Center notified the Respondent’s default on July 16, 2003.

The Center appointed Andrea Mondini as the sole Panelist in this matter on July 29, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

Having reviewed the communication records in the case file, the Panel finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."

In order to give Respondent an opportunity to be heard, the Panel acting on its authority determines that Respondent’s fax of July 24, 2003, to the Center shall be taken into consideration, however without giving it the status of a formal Response.

4. Factual Background

The Complainant is a consortium of certified producers of Parma ham. It is the owner of registrations of the certification marks "PARMA", "PROSCIUTTO DI PARMA" and "PARMA HAM" in several countries. In 1996, Parma ham was awarded the Denomination of Protected Origin status.

The Respondent registered the Domain Name <parma-schinken.com> on February 7, 2001. "Schinken" is the German word for ham.

The Domain Name resolves to a website on which the Respondent offers a multitude of different types and brands of meat products including, among others, products advertised as Parma ham.

5. Parties’ Contentions

A. Complainant

The Complainant contends:

• that the Domain Name is confusingly similar to the trademarks PROSCIUTTO DI PARMA and/or PARMA HAM because "Schinken" translates into "prosciutto" in Italian and "ham" in English. Complainant further asserts to have common law rights in the trademark "Parmaschinken" (without specifying under what legal system);

• that no authorizations or licenses have been granted to Respondent to use Complainant’s trademarks;

• that Respondent was aware of Complainant’s rights, and therefore acted in bad faith, because it placed on its website a reference to certain EU legal provisions regarding the Denomination of Protected Origin status of Parma ham and the PARMA (& crown device) trademark;

• that on May 2, 2003, Complainant sent to Respondent a cease and desist letter (Annex 22 to the Complaint) but that Respondent refused to transfer the Domain Name alleging to be authorized by an unidentified employee of the Complainant to register and use the Domain Name. Complainant denies this allegation;

• that Respondent advertises as "Parmaschinken" certain ham products, which do not appear to originate from producers allowed to sell original Parma Ham.

B. Respondent

In its letter of June 24, 2003, to the Center, Respondent contended that the word "Parma-Schinken" is generic and cannot be monopolized and that since 1972 Respondent is in the business of importing and reselling genuine Parma ham. After this letter, Respondent did not file a formal Response.

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 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.

6.1. Domain Name Identical or Confusingly Similar

The Complainant has provided evidence of ownership of registration of certification marks for "PARMA", "PROSCIUTTO DI PARMA" and "PARMA HAM" in several countries.

"PARMA", "PROSCIUTTO DI PARMA" and "PARMA HAM" are (also) geographical identifiers. The Panel notes that the abusive registration of geographical identifiers does not per se fall within the scope of the Policy. The Report of the Second WIPO Internet Domain Name Process concluded that the international framework in this area needs to be further advanced before an adequate solution is available to the misuse of geographical indications in the DNS and recommended that no modification be made to the Policy at this stage. The fact that Parma ham was awarded the Denomination of Protected Origin status is, therefore, not relevant under the limited scope of the Policy.

Where,

however,

the Complainant

owns a trademark

that includes,

as part

of the mark,

a geographic

term, such

trademark

can be invoked

in the sense

of paragraph

4(a)(i)

of the Policy

(see for

example

City

of Potsdam

v. Transglobal

Networx

Inc.,

WIPO Case No. D2002-0856,

<potsdam.com>).

Considering that Complainant owns the above certification marks and that "Schinken" is the literal German translation of the generic words "prosciutto" and "ham", the Panel finds that the Domain Name is confusingly similar to Complainant’s certification marks.

6.2. Rights and Legitimate Interest

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the 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) that he used or 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) that he is commonly known by the domain name, even if he has not acquired any trademark rights; or

(c) that 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.

The Domain Name resolves to a website stating that since 1972 Respondent is in the business of importing meat products and reselling them to German butcheries, food stores and wholesalers. Respondent’s homepage depicts the logo "Val Verde" without indicating whether this logo is the brand for genuine Parma ham. Respondent’s website advertises several types and brands of food products under the buttons "sausages" ("Wurstwaren"), "fresh poultry" (Frischgeflügel"), game ("Wild") and also vegetables and frozen products.

When clicking on the button "sausages", further buttons listing types of sausages from several countries such as France, Germany, Italy and Belgium appear. If the user further clicks on "raw salt meat" (Rohpökelware") and then "Italy", she or he reaches a list of Italian raw meat products including (among other) products advertised as Parma ham of the brands Val Verde, Levoni, Don Romeo etc.

Complainant contends that Respondent advertises as "Parmaschinken" ham products, which are not original Parma hams because they are not marked with the "crown" certification mark. However, the small photo of a ham on Respondent’s website does not enable the Panelist to assess how that ham is marked. Complainant has not submitted any further evidence for this allegation, so that the Panel does not have sufficient factual elements to determine whether the hams advertised as Parma ham on Respondent’s website are genuine or not.

In determining

whether

a reseller

or service

agent of

trademarked

goods can

use the

trademark

at issue

in its domain

names, previous

decisions

have held

that a respondent

must at

the minimum:

(i) actually

be offering

the goods

or services

at issue;

(ii) use

the site

to sell

only the

trademarked

goods; (iii)

accurately

disclose

the registrant’s

relationship

with the

trademark

owner; and

(iv) not

try to corner

the market

in all domain

names (Oki

Data Americas,

Inc. v.

ASD, Inc.,

WIPO

Case No. D2001-0903,

<okidataparts.com>).

In the

present

case, even

assuming

that the

Parma hams

advertised

on Respondent’s

website

were genuine,

it is established

that Respondent

uses the

site to

sell a multitude

of different

types and

brands of

competing

meat products,

and not

only Parma

ham. As

discussed

above, a

user must

navigate

through

Respondent’s

website

by clicking

several

buttons

before even

reaching

the products

offered

as Parma

ham. Such

a use is

not "bona

fide"

under the

standard

outlined

in WIPO

Case No. D2001-0903,

because

such use

enables

Respondent

to bait

Internet

users looking

for "Parmaschinken"

and then

switch them

to other

goods.

The Panel

is aware

of the decision

Consorzio

del Prosciutto

di Parma

v. Domain

Name Clearing

Company,

LLC,

WIPO

Case No.

D2000-0629

in which

the complaint

regarding

<parmaham.com>

had been

denied.

Although

the domain

names are

similar,

the factual

background

of the two

cases is

significantly

different.

In the <parmaham.com>

decision,

the panel

considered

that the

respondent

had not

yet actually

used that

domain name

and concluded

held that

it was possible

to conceive

of a legitimate

use of the

term "Parma

ham".

In the present

case, however,

the Respondent

actually

uses the

Domain Name

in a way

which, as

discussed

above, does

not qualify

as "bona

fide".

Therefore,

the present

case must

be distinguished

from WIPO

Case No. D2000-0629.

The Panel therefore finds that Complainant has shown that Respondent has no rights or legitimate interests in respect of the Domain Name, according to paragraph 4(a)(ii) of the Policy.

6.3. Registration and Use in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.

By using the Domain Name to sell a multitude of different competing meat products (and not only Parma ham), the Respondent attempts to attract, for commercial gain, Internet users looking for Parma ham to its website. Respondent’s use of Complainant’s certification marks creates a likelihood of confusion in that Internet users may assume that Respondent’s website is affiliated to or otherwise sponsored by the certified producers of Parma ham.

Therefore, the Panel finds that Complainant has shown that Respondent registered and used the Domain Name in bad faith in the sense of paragraph 4(b)(iv) of the Policy.

7. Decision

For all the foregoing reasons, the Administrative Panel orders that the registration of the Domain Name <parma-schinken.com> be transferred to the Complainant.

Andrea Mondini

Sole Panelist

Dated: August 15, 2003

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