Consorzio per la Tutela dell’Asti v. Mr. Gianmaria Liquore

WIPO Arbitration and

Mediation Center

ADMINISTRATIVE PANEL

DECISION

Consorzio per la Tutela dell’Asti v. Mr. Gianmaria Liquore

Case No. D2004-0345

1. The Parties

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

The Respondent is Mr. Gianmaria Liquore, Arezzo, of

Italy.

2. The Domain Name and Registrar

The disputed domain name <spumanteasti.com>

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 May 28, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2004.

The Center appointed Edoardo Fano as the sole panelist in this matter on July

6, 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 Consorzio per la Tutela dell’Asti, an Italian entity created in order to control the use of the denomination of origin ASTI for sparkling wines.

The Consorzio was created in 1932, and recognized by the Italian government in 1934.

Its functions changed with the new Italian law on denominations of origin of 1963, and are now regulated by the Ministerial Decree dated November 29, 1993, which confers on the Consorzio the sole authority to authorize the use of the names ASTI, SPUMANTE ASTI and ASTI SPUMANTE (“spumante” meaning “sparkling wine” in Italian) in the field of beverages.

In addition to the rights directly arising from the above Decree, the Complainant is the owner of several trademark registrations and applications, among which:

- Canadian registration for ASTI No. TMA341,488;

- Paraguayan registration for ASTI No. 257.987;

- Peruvian registration for ASTI No. 00000073.

The Respondent’s domain name <spumanteasti.com>

was registered on June 11, 2003. It pointed to a pornographic website offering

images for a fee and it resolves now in a parking page offering several Internet

services.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar with

if not identical to the Complainant’s trademark and denomination of origin

ASTI SPUMANTE.

Respondent has no right or legitimate interests in respect of the disputed domain name. In fact there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with bona fide offering of goods or services and the Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name ASTI or ASTI SPUMANTE.

Moreover, the disputed domain name pointed to a pornographic website, through which the Respondent offered pornographic images for a fee and therefore its use is indeed commercial and any possibility of a non-commercial fair use is very remote.

The Respondent registered the domain name in bad faith since there is no way that the Respondent may not have been aware of the association of “SPUMANTE ASTI” with the Complainant.

When it may be presumed that “the Respondent

(…) knew of the renown of the Complainant’s trademarks”,

a finding of “opportunistic bad faith” is in order (Banca Sella

S.p.A. v. Mr. Paolo Parente, WIPO Case

No. D2000-1157: here, the Panel found that Respondent could not have ignored

that BANCA SELLA is a famous trademark in Italy for banking services). In Veuve

Cliquot Ponsardin v. The Polygenix Group Ltd., WIPO

Case No. D2000-0163, the Panel noted that “‘VEUVECLIQUOT.ORG’

is so obviously connected with such a well-known product [VEUVE CLIQUOT champagne]

that its very use by someone with no connection with the product suggests opportunistic

bad faith.” In Parfums Christian Dior v. Javier Garcia Quintas and

Christiandior.net, WIPO Case No. D2000-0226,

it was also suggested that “the Domain Names are so obviously connected

with such a well-known name and products that its very use by someone with no

connection with the products suggests opportunistic bad faith [quoting Veuve

Cliquot]. In the absence of contrary evidence, the Panel finds that Respondents

knew of or should have known of the Complainant’s trademark and services

at the time Respondents registered the Domain Names given the widespread use

and fame of the Complainant’s CHRISTIAN DIOR mark.”

Even in a case where the trademark involved (EXPEDIA

for online travel services) was somewhat less famous than VEUVE CLIQUOT or CHRISTIAN

DIOR, it was decided that “the Respondent knew of or should have known

of the Complainant’s trademark and services at the time it registered

the domain name <xpediatravel.com>, given the widespread use of the Complainant’s

EXPEDIA website” (Expedia, Inc. v. European Travel Network, WIPO

Case No. D2000-0137.)

The domain name is used in bad faith. When first visited by Complainant and its attorneys in August 2003, the page at “www.spumanteasti.com” resolved to a page offering pornographic services for a fee. Unfortunately, a printout of the resulting pornographic page has not been kept.

As the Panel stated in the case Motorola, Inc. v. NewGate Internet, Inc.

(WIPO Case No. D2000-0079), “while

many adult sex sites are perfectly legal and constitute bona fide offerings

of goods or services, the use of somebody else’s trademark as a domain

name (or even as a meta-tag) clearly does not constitute a ‘bona fide’

offering of goods or services when the web site owner has no registered or common

law rights to the mark, since the only reason to use the trademark as a domain

name or meta-tag is to attract customers who were not looking for an adult sex

site, but were instead looking for the products or services associated with

the trademark. Such use of a trademark can create customer confusion or dilution

of the mark, which is precisely what trademark laws are meant to prevent. And

actions that create, or tend to create, violations of the law can hardly be

considered to be ‘bona fide’“. That redirection to pornographic

sites from a domain name incorporating the trademark of another company is,

per se, evidence of bad faith has been confirmed by several Panel decisions

(see e.g.: Ty, Inc. v. O.Z. Names, WIPO

Case No. D2000-0370; Youtv v Alemdar, Nat. Arb. Forum Case No. FA

94243; Oxygen Media, LLC v. Primary Source, WIPO

Case No. D2000-0362; Simple Shoes, Inc. v. Creative Multimedia Interactive,

Nat Arb. Forum Case No. 0008000095343; Dell Computer Corporation v. RaveClub

Berlin, WIPO Case No. D2002-0601;

Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO

Case No. D2003-0022; Cattlemen v. Menterprises – Web Development,

CPR Case No. CPR0304).

As the present case, all the above are cases concerning the so-called “pornosquatting”, where a cybersquatter tries to take advantage of a well-known trademark and/or trade name to attract Internet users to a pornographic website.

Of course, the fact that the domain name was used in the past in association with pornography is significant enough, and what was done in the past may be done again in the future.

Even if we should ignore this past behaviour and focus

on the present parking page offering several Internet services, the Respondent

is at least in a situation of “passive holding” and therefore

would still be in a situation of use in bad faith. In fact not only should his

“passive holding” of the domain name be regarded as sufficient in

light of the decision Telstra Corporation Ltd. v. Nuclear Marshmallows, (WIPO

Case No. D2000-0003) and of many subsequent decisions, but certainly such

passive holding (although a parking page selling some services is more than

“passive holding”) would be coloured by his past (mis)behavior.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward.

A Respondent is not obliged to participate in a proceeding

under the Policy but if it fails to do so, asserted facts may be taken as true

and reasonable inferences may be drawn from the information provided by the

Complainant, in accordance with paragraph 14(b) of the Rules (see also Reuters

Limited v. Global Net 2000, Inc., WIPO

Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO

Case No. D2003-0109; SSL International plc v. Mark Freeman,

WIPO Case No. D2000-1080; Alta Vista Company v. Grandtotal Finances Limited

et al., WIPO Case No. D2000-0848).

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three tests which a Complainant must satisfy in order to succeed:

i. the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

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

iii. the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

As far as the first of these tests is concerned, the Panel finds that the Complainant is the owner of the trademark and denomination of origin ASTI SPUMANTE both by registration and acquired reputation.

The disputed domain name <spumanteasti.com> is confusingly similar to the trademark and denomination of origin ASTI SPUMANTE.

The Complainant has therefore met its burden of proving that the domain name at issue is confusingly similar to Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Respondent has failed to file a Response in accordance with the Rules, Paragraph 5 and has no obvious connection with the disputed domain name.

This and the fact that the Complainant asserts that the Respondent has no right or legitimate interest in the name is enough to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest exists.

However, the Respondent has not presented any evidence of rights or legitimate interests in using the disputed domain name and the Panel therefore finds that also test (ii) of the Policy’s paragraph 4(a) has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that for the purposes 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 a domain name in bad faith:

(i) circumstances indicating that the Respondent 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 its documented out-of-pocket costs directly related to the domain name; or

(ii) that the Respondent 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 Respondent has engaged in a pattern of such conduct; or

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

(iv) that by using the domain name, the Respondent had intentionally attempted 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.”

As regards the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark has been already established and the Panel finds that the Respondent, especially because located in Italy where the Complainant is also located and its trademark is especially well-known, knew or should have known that the disputed domain name <spumanteasti.com> was confusingly similar to a well-known trademark of a third party.

As regards the use in bad faith of the disputed domain name, apart from the

valid Complainant’s allegation of “passive holding” as set

forth in the landmark decision Telstra Corporation Limited v. Nuclear Marshmallows

(WIPO Case No. D2000-0003) for the occasions

in which the disputed domain name resolved in a “not active” web

page, anyway quite irrelevant in the present case due to the commercial use

still going on in the web site corresponding to the disputed domain name, on

the basis of the previous behaviour of the Respondent the Panel considers the

present case a clear case of “pornosquatting” where linking the

domain name at issue to pornographic adult-oriented websites is a widely accepted

evidence of use in bad faith (MatchNet plc. v. MAC Trading, WIPO

Case No. D2000-0205; America Online, Inc. v. East Coast Exotics, WIPO

Case No. D2000-1198; Motorola, Inc. Limited v. NewGate Internet, Inc.,

WIPO Case No. D2000-0079; Ty, Inc.

v. O.Z. Names, WIPO Case No. D2000-0370;

La Union Alcoyana S.A. de Seguros y Reaseguros v. Cosmar Hard-Soft, WIPO

Case No. D2003-0570; Youtv v. Alemdar, Nat. Arb. Forum Case No. FA

94243; Oxygen Media, LLC v. Primary Source, WIPO

Case No. D2000-0362; Simple Shoes, Inc. v. Creative Multimedia Interactive,

Nat. Arb. Forum Case No. FA 95343; Six Continents Hotels, Inc. v. Seweryn

Nowak, WIPO Case No. D2003-0022; Cattlemen

v. Menterprises – Web Development, CPR Case No. CPR0304), also reinforced

by the use of “mouse-trapping” techniques (Sparco S.p.A. v. Mr.

Oleg Filipov-Guevreyan, WIPO Case No.

DLA2003-0001; Dell Computer Corporation v. RaveClub Berlin, WIPO

Case No. D2002-0601; Miroglio S.p.A. v. Mr. Alexander Albert W. Gore,

WIPO Case No. D2003-0557; Star Stabilimento

Alimentare S.p.A. v. Ms. Efisia Cuccuredda, WIPO

Case No. D2003-0825).

The use of the disputed domain name by the Respondent to redirect the Internet users to a pornographic website is considered by the Panel as an evidence of the Respondent’s bad faith behavior aimed to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, in accordance with Paragraph 4(b)(iv), as well as diluting and tarnishing the trademark.

Moreover, the Respondent is preventing the Complainant from reflecting its well-known trademark in the corresponding most popular .com domain, which constitutes bad faith, in accordance with Paragraph 4(b)(ii).

Considering the above, the Panel finds that the Complainant

has presented sufficient evidence to satisfy its burden of proof with respect

to the issue of whether the Respondent has registered and used the disputed

domain name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy

and 15 of the Rules, the Panel orders that the domain name <spumanteasti.com>

be transferred to the Complainant.

Edoardo Fano

Sole Panelist

Dated: July 14, 2004

More cases by this complainant

• Consorzio per la Tutela dell’Asti v. Mr. Alexander Albert W. Gore — D2004-0358 · astispumante.net · Transfer · 14 Jun 2004
• Consorzio per la Tutela dell’Asti v. Ms. Stefanella Campo — D2004-0355 · astispumante.info · Transfer · 27 Jul 2004
• Consorzio per la Tutela dell’Asti v. Mr. Giulio Bennatto — D2004-0350 · spumanteasti.net · Transfer · 29 Jul 2004
• Consorzio per la Tutela dell’Asti v. Mr. Stanley Filoramo — D2004-0347 · astidocg.net · Transfer · 30 Jun 2004
• Consorzio per la Tutela dell’Asti — D2004-0208 · Terminated