mozzarellasantalucia.com

S.p.A. Egidio Galbani v. Stanley Filoramo

Case No. D2003-0978

The Complainant is S.p.A. Egidio Galbani, Milan, Italy, represented by Studio Leagale Bird & Bird, Italy.

The Respondent is Stanley Filoramo, Montreal, Canada.

The disputed domain name <mozzarellasantalucia.com> is registered with Wild West Domains, Inc.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 11, 2003. On December 12, 2003, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On December 12, 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 December 18, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2004.

The Center appointed José Carlos Erdozain as the sole panelist in this matter on January 20, 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.

It must be stressed that the Complainant has sent a number of different emails to the Center in which the Complainant lets the Center know about the existence of other proceedings under the Policy where the Respondent has been involved.

The Complainant is one of the better known companies in the production, distribution and sale of dairy Italian foods, cheeses and cured meats in Italy and worldwide. The revenues of the Complainant are over 1,090 million € in 2002.

The Complainant distributes a mozzarella cheese called "Santa Lucia". In accordance with the figures given by the Complainant, it is proved that the sales of that specific cheese in Italy are high. Therefore, it can be assumed that the product "Mozzarella Santa Lucia" is a well-known product, not only in Italy, but also throughout the world, according to the list of links in search engines.

The Complainant is owner of a number of trademarks with the name "Santa Lucia". They were registered in 1957, 1962, 1993, 1998 and 2001.

The Complainant is also owner of different domain names under the name <mozzarellasantalucia.it>, <santaluciagalbani.it> and <santaluciagalbani.com>.

The disputed domain name readdresses to pornographic sites.

The Complainant states that:

The domain name is identical and/or confusingly similar to the numerous trademarks owned by the Complainant, being protected the words "Santa Lucia" and "Mozzarella Santa Lucia".

The trademarks "SANTA LUCIA" and "MOZZARELLA SANTA LUCIA" are well-known trademarks.

That the Complainant has registered domain names similar to the disputed domain name before the contested domain name.

That the Respondent does not have any rights or legitimate interest in respect of the disputed domain name. That the Respondent cannot intend not to know the existence of such a brand.

That the domain name was registered and is being used in bad faith, since the Respondent was aware of the fame of the trademark "SANTA LUCIA" for "mozzarella", and the fact that the word "Santa Lucia" does not have any meaning in English language.

The above is also proved, in Complainant’s opinion, by the fact that the domain name readdresses to pornographic websites. Also by the fact that the contact details are false, and by the fact that the Respondent has already registered various domain names which are identical or similar to well-known Italian trademarks.

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

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

The Complainant has produced complete evidence demonstrating that the Complainant is entitled to use the trademark "SANTA LUCIA". In fact, the Complainant is holder of said trademark rights (International TM, Community TM and Italian TM). Also the Complainant has proved to be holder of the domain name <mozzarellasantalucia.it>, which was registered on January 3, 2000, that is, before the registration of the disputed domain name takes place.

I consider that the Complainant has proved the use of the trademark "SANTA LUCIA" together with the word ‘mozzarella’ and that such a use is widely known amongst the consumers (given the figures of publicity and the percentage of distribution of the products of the Complainant in the world). Accordingly, although the trademark held by the Complainant is "SANTA LUCIA", the word ‘mozzarella’ is used with said trademark, and the whole sign is distinctive from the perspective of trademark law.

Since the trademarks of the Complainant are well-known, the likelihood of confusion becomes higher (Cine Colombia, S.A. v. Modern Limited – Cayman Web Development, WIPO Case No. D2003-0671).

The disputed domain name can be fundamentally associated with the words ‘mozzarella santa lucia’. Consequently, the domain name and the Complainant’s trademarks are confusingly similar (see National Association for Stock Car Auto Racing, Inc. v. Don Deaube, R & D Enterprises, WIPO Case No. D2002-0847, Wachovia Corporation v. Marcus Sims d/b/a Domains for Sale and d/b/a Key Option, WIPO Case No. D2002-0809, Parfumes Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022, Wachovia Corporation v. Organized Crime, Inc., WIPO Case No. D2002-0362 or Grundfos A/S v. Yilmaz Ozgur,WIPO Case No. D2002-0252, inter alia).

The Panel finds that the domain name is confusingly similar to the trademarks in which the Complainant has rights.

Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances, which demonstrate existence of the Respondent’s rights or legitimate interests in respect of the disputed domain name. However, the Panel has found none of these circumstances in this case.

The Complainant has not licensed the use of the trademarks "SANTA LUCIA" to Respondent. Also the Respondent has not given any evidence of having been known by the words ‘mozzarella santa lucia’, nor of having any right or legitimate interest in the disputed domain name. On the contrary, the Complainant has submitted evidence that it is widely known by consumers throughout the world. Therefore, the Respondent is likely to have had knowledge of the activities of the Complainant with the product "Mozzarella Santa Lucia".

The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Paragraph 4(a) of the Policy requires that the Respondent registered and used the disputed domain name in bad faith, and provides various circumstances as possible evidences of registration and use in bad faith. These are not exclusive circumstances, however, and the Panel may decide on any other basis of law or facts.

Regarding the registration of the domain name in bad faith, this Panel finds that the Respondent was likely to know the commercial activity of the Complainant due to its reputation. The registration of the word ‘Santa Lucia’, on the one hand, and ‘Mozzarella’, on the other hand, has not been carried out by chance, it lacks of independent meaning, and this shows that the Respondent was aware of the fact that both words together were Complainant’s trademarks or at least were related with Complainant’s activities.

Therefore, the Panel assumed that the disputed domain name was registered in order to prevent the Complainant from its use.

As to the use of the domain name in bad faith, it must be stressed that the contents of the site of the domain name are obviously pornographic. This fact has repeatedly been taken by the decisions of the Center as an evidence that the Respondent is using the domain name in bad faith (see National City Corporation v. Party Night Inc., Phayze Inc., WIPO Case No. D2003-0683, National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118, Bayerische Motoren Werke AG v. Peter Carrington also trading as Party Night Inc., WIPO Case No. D2003-0367inter alia).

Finally, the Respondent has been involved in prior UDRP proceedings (specifically, G. Bellentani 1821 S.p.A. v. Stanley Filoramo, WIPO Case No. D2003-0783, Cameo S.p.A. v. Mr. Stanley Filoramo, WIPO Case No. D2003-0857, Helmut Lang S.a.r.l. v. Mr. Stanley Filoramo, WIPO Case No. D2003-0822ad exemplum) which gives evidence of the fact that the Respondent usually registers domain names which are confusingly similar or identical to well-known trademarks.

As a result of all this, the Panel must come to the conclusion that the Respondent was aware of the fact that the registration of the domain name <mozzarellasantalucia.com> was deliberate and sought by the Respondent in order to cause a damage to and collide with the rights and legitimate interests of the Complainant (see Banco Español de Crédito, S.A. v. Miguel Duarte Perry Vidal Taveira, WIPO Case No. D2000-0018, Compagnie de Saint Gobain v. Com-Union Corp, WIPO Case No. D2000-0020, J. García Carrión, S.A. v. Mª José Catalán Frías, WIPO Case No. D2000-0239 and Deutsche Bank AG v. Diego-Arturo Bruckner, WIPO Case No. D2000-0277, inter alia).

Therefore, the domain name <mozzarellasantalucia.com> was registered and is being used in bad faith.

Complainant has proved that the disputed domain name is confusingly similar to its trademarks, that Respondent has no rights or legitimate interest regarding the domain name, and that Respondent registered and is using the domain name in bad faith. Therefore, according to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel requires the registration of the domain name <mozzarellasantalucia.com> to be transferred to Complainant.