WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Gruppo Buffetti S.p.A. v. Marco Ferro dba c/o BUFFETTI.COM

Case No. D2008-1994

1. The Parties

The Complainant is Gruppo Buffetti S.p.A. of Roma, Italy, represented by Interpatent Studio Tecnico Brevettuale, Italy.

The Respondent is Marco Ferro of Fribourg, Switzerland, dba c/o BUFFETTI.COM, Vancouver, Washington, United States of America.

2. The Domain Name and Registrar

The disputed domain name <buffetti.com> is registered with Dotster, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2008 by email and on January 9, 2009 by hardcopy. On December 31, 2008, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the disputed domain name. On January 2, 2009, Dotster, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 13, 2009. In accordance with paragraph 5(a) of the Rules, the due date for Response was February 2, 2009. The Response was filed with the Center on January 25, 2009.

The Center appointed Brigitte Joppich as the sole panelist in this matter on February 12, 2009. 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant was founded in 1852 and is the leader in distributing office products in Italy. The Complainant's franchising distribution network includes about 900 franchising points located all over the country, providing services to more than 4 million clients. The Complainant markets products including office furniture, office automation, stationery, publishing, gift and leather, print and software.

The Complainant owns trademark registrations in respect of BUFFETTI covering Italy, Switzerland and Spain, namely Italian trademark registration No. 856331 BUFFETTI registered on November 25, 1970 and International Registration No. 463006 BUFFETTI registered on September 4, 1981, both in international class16 (the “BUFFETTI Marks”). Furthermore, the Complainant is the registrant of various domain names including the mark BUFFETTI.

The disputed domain name was first registered on September 3, 2003, and was used in connection with a parking website.

The person acting on behalf of the Respondent in this proceeding, Marco Ferro, has previously been involved in three domain name disputes where the transfer of the domain name to the respective complainant was ordered in each case (Sidestep, Inc. v. Anna Valdieri/Marco Ferro, WIPO Case No. D2007-0212; American International Group, Inc. v. Dr. Marco Ferro, NAF Case No. FA 786930; International Olympic Committee and Comitato Organizzatore XX Giochi Olimpici v. Dr. Marco Ferro, NAF Case No. FA 604980).

5. Parties' Contentions

A. Complainant

The Complainant contends that the BUFFETTI Marks are well known in Italy. The Complainant further contends that the real owner of the disputed domain name is Marco Ferro, providing evidence that it was registered in the name of Marco Ferro on September 29, 2008 and that the WhoIs data was updated only on November 12, 2008 to the benefit of “c/o BUFFETTI.COM” as registrant of the disputed domain name. The Complainant states that on or about this same date registered ownership of many other domain names previously held by Marco Ferro changed as well (i.e. <sharon-stone.com> and <creditcardcitibank.com>).

With regard to the three elements specified in paragraph 4(a) of the Policy the Complainant contends that each is given in the present case:

(1) The domain name <buffetti.com> is identical to the BUFFETTI Marks.

(2) Marco Ferro has no relationship to the Complainant and is not allowed to use the BUFFETTI Marks in the disputed domain name.

(3) The Complainant finally contends that the disputed domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant states that it is well known in Italy. With regard to bad faith use, the Complainant contends that the Respondent is making a commercial and unfair use of the disputed domain name, with an obvious intent to gain commercial advantages and to divert consumers as he uses the domain name in connection with a website showing headings such as “Products”, “Buffetti Shop”, “Printed Lanyards”, “Software program” and “Office furniture”, which all recall the Complainant's business activities.

B. Respondent

The Response was filed by Marco Ferro on behalf of the Respondent. He contends that the Respondent is doing its best to avoid possible trademark violations, that it acquires generic surnames and that there are 536 families bearing the name BUFFETTI in Italy alone. Marco Ferro further contends that he found the Complainant on the Internet only after using a search engine after the present proceedings were initiated. Marco Ferro finally states that the Respondent owns more than 100 domain names corresponding to surnames and that all of these domain names are participating in legal parking programs without infringing third parties' rights or creating confusion with trademark holders or third parties.

6. Discussion and Findings

The first point to be dealt with is the identity of the Respondent.

The Complainant contends that the beneficial owner of the disputed domain name is Marco Ferro, who was the registrant of the domain name until November 12, 2008. The Response was filed by Marco Ferro on behalf of the Respondent. Marco Ferro did not deny the Complainant's contentions with regard to his identity. Therefore, the Panel is convinced that Marco Ferro is the beneficial owner of the domain name behind the entity “c/o BUFFETTI.COM”, which is the actual registrant of the domain name, and will treat Marco Ferro as sole Respondent (d/b/a “c/o BUFFETTI:COM”).

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

(i) the domain name is identical or confusingly similar to the Complainant's trademark; 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

The disputed domain name fully incorporates the Complainant's distinctive BUFFETTI Marks in which the Complainant has rights and is therefore identical to the Complainant's BUFFETTI Marks.

It is well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant's trademark and the disputed domain name (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).

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

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, 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 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 non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trade mark or service mark at issue.

Even though paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name, it is consensus view among panelists that where a complainant makes a prima facie case to address the requirements of paragraph 4(a)(ii) of the Policy, the burden of proving that the respondent has rights or legitimate interests in the disputed domain name will shift to the respondent.

The Complainant has asserted to the Panel's satisfaction that the Respondent has no rights or legitimate interests in the disputed domain name and has therefore fulfilled its obligations under paragraph 4(c) of the Policy. The Respondent did not deny these assertions but merely stated that the name BUFFETTI was a generic surname. However, even if the name BUFFETTI was a common surname, this would not automatically make it a generic (descriptive) name, such as “meadows” or “castle”. It is consensus view that, in principle, truly generic domain names can be registered without limitation and that the generic nature of a domain name in itself may constitute a legitimate interest in that domain name, based on its commercial value (see Peter Voigt v. Niels Korte, WIPO Case No. D2006-1460 with further references). Still, the Respondent does not claim that the name BUFFETTI is generic in this sense. And the Respondent's contention that BUFFETTI is a common family name in Italy is, in the Panel's view in the instant case, not sufficient to establish rights or a legitimate interest.

Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:

(i) circumstances indicating that the respondent has registered or 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 respondent's documented out-of-pocket costs directly related to the domain name; or

(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 the respondent has engaged in a pattern of such conduct; or

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

The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered and is being used in bad faith.

Evidence of bad faith registration and use is shown when registration of a domain name occurs in order to utilize another's trademark by attracting Internet users to a website for commercial gain (cf. America Online, Inc. v. Tencent Communications Corporation, NAF Case No. 93668; Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694; Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101).

The Complainant is well-known in Italy and has been active in business under its name for many decades. Given the high distinctiveness of the BUFFETTI Marks in connection with the Complainant's products and given the Complainant's trademark registration in Switzerland, the Panel finds it inconceivable that the Respondent (who is domiciled in Switzerland, a neighbouring country to Italy) registered the disputed domain name without knowledge of the Complainant's rights in the BUFFETTI Marks. The Panel is therefore satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant's marks and in bad faith under paragraph 4(a)(iii) of the Policy.

As to bad faith use, by fully incorporating the BUFFETTI Marks into the disputed domain name and by using the website under such domain name as a parking website, providing links to direct competitors of the Complainant, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for the purpose of earning click-through revenues from Internet users searching for the Complainant's website. The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy (see L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623, with further references). The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy.

This finding of bad faith use is further supported by the fact that the Respondent was ordered to transfer domain names to the respective complainant in earlier proceedings where registration and use in bad faith were established. The Respondent therefore acted in a pattern of preventing owners of a trademark or service mark from reflecting their marks in a corresponding domain name as required under paragraph 4(b)(ii) of the Policy.

Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 <buffetti.com> be transferred to the Complainant.

Brigitte Joppich
Sole Panelist

Dated: February 20, 2009