castelgarden.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Global Garden Products Italy S.p.A. v. Michael Day

Case No. D2007-0518

1. The Parties

The Complainant is Global Garden Products Italy S.p.A., of Castelfranco Veneto, Italy, represented by Mittler & C. S.r.L., Italy.

The Respondent is Michael Day, of Hagerstown, Maryland, United States of America, self-represented.

2. The Domain Name and Registrar

The disputed domain name <castelgarden.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2007. On April 5, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On the same date, Go Daddy Software 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 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 April 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2007. The Response was filed with the Center on May 3, 2007.

The Center appointed Clive L. Elliott as the sole panelist in this matter on May 14, 2007. 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

Complainant in this administrative proceeding is Global Garden Products Italy S.p.A., a joint stock company incorporated under Italian law.

Complainant is owner of certain trademark registrations consisting of or including the word CASTELGARDEN, which have been registered in connection with the following goods:

- Lawn mowers; small motorized machine tools for agriculture and gardening, namely motor saws, grass trimmers, brush cutters, hedge cutters;

- Hand tools and instruments for gardening, horticulture and agriculture, namely saws, grass trimmers, hedge cutters and brush cutters, all hand-operated;

- Lawn tractors for gardening and agriculture.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it is a leader in the production and marketing of lawn mowers and lawn tractors as well as of hand-held powered garden equipment and tools. CASTELGARDEN was acquired by Complainant as a consequence of the merger by the incorporated of the Italian company Castelgarden S.p.A., dealing with the production and sale of lawn mowers and lawn tractors.

Castelgarden S.p.A. registered the ANGELS BY CASTELGARDEN and TWIN-CUT BY CASTELGARDEN trademarks in 1992. Complainant states that the CASTELGARDEN trademark has been constantly used by this company and afterwards by the Complainant.

It is asserted that Respondent’s affiliates goods are identical or very similar to those distributed by Complainant under the mark CASTELGARDENand the other main brands managed by Complainant or its associated companies.

Complainant asserts that the contested domain name is identical to its trademark registrations and is confusingly similar to its trademarks ANGELS BY CASTEL GARDEN and TWIN-CUT BY CASTELGARDEN. Moreover it is submitted that the contested domain name is used for the online sale of goods that are identical or similar to those covered by Complainant’s trademark registrations.

Complainant states that by using the domain name <castelgarden.com> Respondent has intentionally attempted to attract internet users that are looking for CASTELGARDEN original products, by offering, instead of CASTELGARDEN products, goods of competitors identical or similar to them in nature, features and final destination, in many cases at a price lower than the official list price.

Complainant further states that the choice of the contested domain name could not be casual, although the suffix “garden” clearly refers to the destination of the goods now sold under <castelgarden.com>, the combination “castel” + “garden” is original, being that the suffix “castel” is void of any connection to gardening and horticulture and being not of common use in the field of reference.

B. Respondent

Respondent concedes the Complainant owns a legitimate trademark CASTELGARDEN and that this trademark has been validly registered since 2004 in certain countries.

However Respondent submits that Complainant’s trademark is not now, nor has it ever been registered in the United States of America. Respondent asserts that he first placed the trade name, “Castelgarden” in commerce when he registered the domain name on May 18, 2001.

Respondent contends that Complainant’s subsequent registration of a trademark is ineffective against Respondent’s prior use of the trade name “Castelgarden”.

Respondent states that he has used the trade name “Castelgarden” as an affiliate of Amazon.com. As an affiliate, Respondent is effectively limited to making sales within the United States of America only. Any potential customers outside the United States of America are subject to international shipping charges from the United States of America. On this basis it is submitted that this would make the delivered cost of riding mowers in Europe, for example, prohibitively expensive. Respondent advises that he has never sold any law mowers, mower parts, trimmers or chain saws in any country covered by any of the Complainant’s trademarks.

Respondent contends that Complainant’s targeted customers of its trademarks are completely different from Respondent’s targeted customers in his use of <castelgarden.com>. That is because Complainant targets European customers; Respondent targets customers in the United States of America.

Respondent further asserts that before Respondent received any notice of this dispute, there is evidence of the Respondent’s use of the domain name in connection with a bona fide offering of goods or services. Such offering was as an Amazon.com associate, and included goods not covered by Complainant’s trademarks, specifically, seeds, plants and flowers. These offerings, including offerings of lawn mowers, mower parts, trimmers and chain saws, were legitimate offerings in commerce at prices set by Amazon.com, and were not prices set by the Respondent. Respondent indicates that these prices may well have been below list prices, but they were commercially competitive and not predatory.

It is noted that the domain name <castelgarden.com> was registered by Respondent on May 18, 2001, and since then he has never contacted Complainant in any manner, and he has never attempted to sell the domain name to Complainant.

Finally, Respondent states that as an act of good faith, he has stopped offering lawn mowers, mower parts, trimmers and chain saws pending the outcome of this administrative proceeding.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following:

- The Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and

- The Respondent has no rights or legitimate interest in respect of the Domain Name; and

- The Domain Name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above.

Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.

A. Identical or Confusingly Similar

It is clear from the evidence that the CASTELGARDEN mark is a trademark in which Complainant has rights. Complainant has traded extensively and has registered or applied for registration of the CASTELGARDEN mark in numerous countries. There is clear support for the assertion that the CASTELGARDEN mark has substantial recognition and reputation.

However, issues of timing and the territorial reach of any trademarks are put in issue by Respondent. Respondent acknowledges that Complainant has validly registered trademarks for CASTELGARDEN but argues that none of these trademarks are registered in the USA and furthermore asserts that none of them are dated any earlier than 2004. Respondent argues that the disputed domain name was registered in 2001 and accordingly that it has priority over Complainant’s trademark registrations.

While the timing of acquiring rights to a trademark is generally more relevant under the second and third element of the Policy (see for example cases cited under paragraph 1.4 of the WIPO Overview ofWIPO Panel Views on Selected UDRP Questions), the Panel notes that Respondent’s argument does not take into account the two earlier trade mark registrations obtained by Complainant’s predecessor in business, namely for ANGELS BY CASTELGARDEN and TWN-CUT BY CASTELGARDEN. These registrations date back to 1992 and relevantly it appears that the distinctive part of both marks is the word CASTELGARDEN.

Furthermore, the Panel is of the view that registration of a domain name before a complainant acquires trademark rights does not necessarily prevent a finding of identity or confusing similarity. That is, because the UDRP makes no specific reference to the date on which the owner of the trade or service mark acquired rights. It is accepted that a respondent is unlikely to suffer prejudice under this principle if the complainant had no trademark rights upon which to rely. However, that does not appear to be the case here. It is found that Complainant is able to rely on a business and to establish a trademark associated with its goods and services, which predated the registration of the disputed domain name.

Further, the Panel finds that there is sufficient evidence to establish a common law right in the CASTELGARDEN trademark, quite apart from any subsequent trademark registrations. Finally, the Panel concludes that Complainant is entitled to rely on its 1992 trademark registrations, which contain as a material part the CASTELGARDEN element.

On this basis it is found that Complainant has rights in the trademark CASTELGARDEN to which the disputed domain name is confusingly similar.

Accordingly, this ground is made out.

B. Rights or Legitimate Interests

Given the above finding, it is necessary to consider why Respondent chose the disputed domain name, other than as a reference to Complainant’s products or services or general business reputation. That is, as a significant player in the lawnmowing products and services area. This is especially so given that CASTELGARDEN has, on the face of it, no obvious meaning other than as an indication of origin of Complainant’s products and services.

In this regard there is merit in Complainant’s point that the choice of the contested domain name could not be casual, because, although the suffix “garden” may refer to the destination of the goods, the combination “Castel” and “Garden” is original and that the word Castel has no connection to gardening and horticulture.

Complainant is not required to prove that Respondent lacks rights or legitimate interests in the disputed domain name. The Panel concludes that on the basis of the record that a prima facie case is established under this ground. Given this, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name.

Respondent does not explain why he has chosen this particular name. Instead his answer is that Complainant’s targeted customers are completely different from Respondent’s targeted customers, namely Europe in the case of Complainant and United States of America in the case of Respondent. However, as Respondent himself points out, as an affiliate of Amazon.com, he is effectively limited to making sales within the United States only. That does not mean that consumers from outside the United States of America are not accessing Respondent’s website and Respondent’s own evidence indicates that for example his website is receiving approximately 211 hits per month from Italy and 390 hits per month from other countries of the European Union. While certainly not of the magnitude of the hits from the United States of America the total number of hits from outside the United States of America is not insignificant and this suggests that the interest, reputation and goodwill in the CASTELGARDEN trade mark is not restricted to the United States of America.

Moreover, given the substantial exposure, registration and use of the trademark CASTELGARDEN both before and after registration of the disputed domain name the Panel considers it more probable than not that Respondent was motivated by a desire to benefit from the goodwill of Complainant’s marks to sell products identical or similar to Complainant’s products. That being the case, Respondent cannot in the circumstances be using the domain name in connection with a bona fide offering of goods or services (see for example Barnes & Noble College Bookstores, Inc. v. Leasure Interactive, WIPO Case No. D2001-1216). See also, Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847, “use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or service. . . . to conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy.”

As such it is found that this ground is made out.

C. Registered and Used in Bad Faith

Given the reputation and goodwill in the trademark CASTELGARDEN and for the reasons given above it is difficult to see how Respondent can claim to have registered and used the disputed domain name in good faith. The failure to provide an adequate explanation as to why the disputed domain name was chosen in the first place supports this view. Accordingly, it is not necessary to repeat what has been said above.

It is thus found that this ground is made out.

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, <castelgarden.com> be transferred to the Complainant.

Clive L. Elliott
Sole Panelist

Dated: May 28, 2007