mastrofornaio.com

Cameo S.p.A. v. Mr. Stanley Filoramo

Case No. D2003-0857

The Complainant is Cameo S.p.A., of Italy, represented by Studio Legale Jacobacci & Associati, Italy.

The Respondent is Mr. Stanley Filoramo, of Canada.

The disputed domain name <mastrofornaio.com> (the "Domain Name") is registered with Wild West Domains, Inc.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 29, 2003. On October 30, 2003, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the Domain Name. On October 30, 2003, Wild West Domains, Inc. 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 November 4, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 27, 2003, in accordance with Rules, paragraph 5(e).

The Center appointed Brigitte Joppich as the sole panelist in this matter on December 8, 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.

The Complainant is a well-known Italian food company. The term MASTRO FORNAIO is used for a line of food products. The Complainant is the owner of two trademarks including the word MASTRO FORNAIO in Italy, i.e.

The Complainant contends that each of the three elements specified in the Policy, paragraph 4(a), are given in the present case, i.e.

(i) the Domain Name is confusingly similar to the trademarks in which the Complainant has rights;

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

- the Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name MASTRO FORNAIO;

- the Respondent is not making a legitimate non-commercial or fair use of the Domain Name.

(iii) the Domain Name was registered and is being used by the Respondent in bad faith:

- the Respondent must have been aware of the trademark MASTRO FORNAIO owned by the Complainant and therefore the registration may only have occurred in bad faith as he registered several other domain names corresponding to well-known Italian products and therefore has shown that he is familiar with the Italian industry and its most reputed trademarks;

- the Respondent has specialized in registering domain names corresponding to well-known Italian trademarks, for example <salumicitterio.com>, <bellentani.net>, <diegodellavalle.info>, <anticocaffegreco.info> and <nigacalze.net>, this is additional evidence of bad faith registration as well as bad faith use;

- the default page of <mastrofornaio.com> resolves in a pornographic page, which can be further navigated only by paying a fee. The Respondent attracts, for commercial gain, customers to his website, who were originally not looking for an adult sex site;

- the Respondent’s use of the Domain Name tarnishes the reputation of the Complainant’s products and trademarks;

- the Respondent uses mouse-trapping effects to prevent internet users from leaving his website.

The Respondent did not reply to the Complainant’s contentions.

Under the Policy, paragraph 4(a) the Complainant must prove that each of the following three elements are present:

(i) the Domain Name is identical or confusingly similar to a trademark 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.

The domain name <mastrofornaio.com> is identical to the trademark MASTRO FORNAIO owned by the Complainant as the global top level domain name identification <.com> has no distinctive function and spaces cannot appear in domain names.

The Complainant has therefore satisfied the requirements of the Policy, paragraph 4(a)(i).

The Policy, paragraph 4(c) sets out three illustrative circumstances as examples, which, if proved by the Respondent, shall demonstrate his rights to or legitimate interests in the Domain Name for purposes under the Policy, paragraph 4(a)(ii), i.e.

(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name was in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business or other organization) has been commonly known by the Domain Name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the service marks at issue.

The Respondent has not proved any of the above-mentioned circumstances. To the Panel’s knowledge, the Domain Name can neither be derived from the Respondent’s personal name nor the name or the nature of a business operated by him, nor is the Respondent commonly known by the Domain Name, which was not used in connection with a bona fide offering of goods and services nor in any legitimate non-commercial or fair content. The Panel therefore sees no rights of the Respondent to or legitimate interests in the Domain Name and finds that the Complainant has satisfied the requirements of the Policy, paragraph 4(a)(ii).

The Policy, paragraph 4(b) sets out four illustrative circumstances, which for purposes of the Policy, paragraph 4(a)(iii) shall be evidence of the registration and use of the Domain Name in bad faith, including:

(ii) 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 he engaged in a pattern of such conduct; or

(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location.

As the Respondent has registered numerous domain names identical to, or confusingly similar with, well-known Italian trademarks the Panel finds this to be evidence that the Respondent must have been aware of the Complainant’s trademarks when he registered the Domain Name. Therefore, the Panel finds that the Domain Name was registered in bad faith.

For the same reason (i.e. registration of numerous domain names identical to, or confusingly similar with, well-known Italian trademarks) the Respondent prevents the owners of the corresponding trademarks from reflecting their marks in these domain names. This, in the Panel’s view, is evidence that the Respondent engages in a pattern of such conduct under the Policy, paragraph 4(b)(ii) and therefore uses the Domain Name in bad faith.

The Domain Name is also used to divert traffic intended for the Complainant’s website, using a domain name that is the same as the trademark of the Complainant to link to a pornographic website. Thereby the Respondent attempts to attract Internet users to his website by creating a likelihood of confusion with Complainant’s trademarks. As some services under the Domain Name are offered against remuneration only, the Panel assumes that this attempt was made for commercial gain, as set out in the Policy, paragraph 4(b)(iv). Additionally, such use of the Domain Name associated with products from a prestigious food company tarnishes the distinctiveness and reputation of Complainant’s trademarks. These circumstances reveal bad faith usage of the Domain Name by the Respondent.

The Respondent is using "mouse-trapping" techniques to prevent customers from leaving the website under the Domain Name. In connection with pornographic content this has already been found to reinforce bad faith use in former decisions.

Therefore the Panel finds that the Complainant has satisfied the requirements of the Policy, paragraph 4(a)(iii).

For all the foregoing reasons, in accordance with the Policy, paragraph 4(i) and the Rules, paragraph 15, the Panel orders that the Domain Name <mastrofornaio.com> be transferred to the Complainant.