The Complainant is Gamberoso Rosso Holding S.p.A. of Italy, represented by Studio Legale Caneva & Associati, Italy.
The Respondent is CDN Properties Incorporated of Panama, represented by WEBLEGAL, Italy.
The disputed domain name <gamberorosso.com> is registered with Internet.bs Corp. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2014. On August 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 14, 2014, the Registrar 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 15, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 4, 2014. The Response was filed with the Center on September 3, 2014.
The Center appointed James A. Barker as the sole panelist in this matter on September 9, 2014. 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 the owner of registered trademarks for GAMBERO ROSSO in a number of jurisdictions, including registrations in Italy and on the principal register of the United States Patent and Trademark Office (registered in 1997). The Complainant has registrations for that term standing alone, and in combination with other words or figurative elements. A number of the Complainant’s marks include figurative elements that identify the quality of food and beverages – such as ‘the Three Shrimps’ for restaurants, ‘the Three Forks’ for food, the ‘Three Glasses’ for wine, among others. (For the purpose of this dispute, the Panel considers it sufficient to have regard to the Complainant’s trademark for GAMBERO ROSSO. This is referred to as “the Complainant’s mark” in the remainder of this decision.)
The Complainant was established in 1986. The Complainant is a company that operates in the food and wine sector. The Complainant started as a traditional content company publishing magazines, guides concerning restaurants, food and wine, and also cookery and travel books. In recent years, the Complainant has operated professional and amateur cooking schools, a television channel, and websites. The Complainant operates websites at “gamberorosso.org”, “gamberorosso.net” and “gamberorosso.eu”.
The Respondent registered the disputed domain name in March 2002.
According to information in the Complaint, the disputed domain name reverted (at a date not identified in the Complaint) to a “pay-per-click” website. That website featured a number of links in Italian, including links apparently relating to restaurants. The site also included a list of “related categories” including ”spices”, “beverages”, “Gambero Rosso”, and “real estate”. The website also featured a search facility.
Although not indicated in the case file, the Panel notes that the Respondent has been a respondent to a number of prior proceedings under the Policy. Some of those cases were decided in the Respondent’s favor and others in favor of the then complainants.
The Complainant says that the disputed domain name is confusingly similar to its registered mark. The disputed domain name incorporates the core part of the Complainant’s trademark and company name. The Complainant notes that the “.com” extension has no impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant in determining confusing similarity. Anyone who sees the disputed domain name is bound to confuse it as a name related to the Complainant.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant’s mark is used exclusively and extensively by the Complainant and/or its authorized licensees. The Complainant says that the Respondent has no relationship with the Complainant and has no permission from the Complainant to use any of its marks. The disputed domain name is being used in connection with a pay-per-click website. The Complainant has not found that the Respondent is commonly identified by the disputed domain name, or has any registered trademarks or trade names which correspondent to the disputed domain name. The Complainant has not found that the Respondent has otherwise been using the disputed domain name in any other way that would give him any legitimate rights in it.
The Complainant also says that the disputed domain name has been registered and used in bad faith. The Complainant initially tried to send the Respondent a cease and desist letter in April 2014 and a second letter in May 2014. The Respondent answered the first communication stating that “we are an internet based company acting in the domain name industry and bought the domain name as it is a perfect name for restaurant as the popular bistro in the Pinocchio novel. This is a perfectly legitimate business as long as we didn’t use the domain name for any service of activity competing with those of the Gamero Rosso trademark”.
The Respondent did not answer the second letter from the Complainant.
The Complainant says that the Respondent had constructive notice of its mark because the disputed domain name was registered after the registration of the Complainant’s mark. Only someone who was familiar with the Complainant’s mark and its activities would have registered a domain name inclusive of that trademark and used it in connection with services that are the main activity of the Complainant. All the pay-per-click advertisements on the Respondent’s website focus on services offered by the Complainant. The Complainant says that it is reasonable to infer that the Respondent selected the disputed domain name because it is identical to the Complainant’s company name and trademark to maximize revenue from its pay-per-click advertising.
The Complainant notes that the Complaint has been filed some years after the Respondent registered the disputed domain name. The Complainant argues that the defense of “laches” (that is, unreasonable delay) does not generally apply under the Policy.
As a preliminary matter, the Respondent states that the Complainant is barred from the present dispute by the laches defense. The Complainant does not explain the reasons that it waited more than twelve years since the domain name was registered by the Respondent in 2002. Until the first letter sent by the Complainant in April 2014, the Respondent never received any claim or complaint relating to the disputed domain name. According to recent jurisprudence under the Policy, the laches doctrine has received recognition as an equitable defense. This is particularly the case where domain names are not intrinsically fanciful, arbitrary and original, as is the Complainant’s mark. The Respondent refers to a number of prior decisions under the Policy which it says supports this argument.
In relation to whether the disputed domain name is identical or confusingly similar to the Complainant’s mark, the Respondent denies that it was targeting the Complainant’s rights or goodwill. The words “Gambero Rosso” are the Italian translation for “Red Shrimp”, a very common seafood ingredient in international cooking. More importantly, “Gambero Rosso” is a famous venue in the novel “Pinocchio” of Carlo Collodi, dated 1883, one of the most famous novels of all time, especially in Italy.
The Respondent says that it has a legitimate interest in the disputed domain name. The Complainant says that, given the extent of the Complainant’s business, it is impossible to believe that the Complainant ignored the Respondent’s use of the disputed domain name. The only possible explanation is that the Complainant knowingly tolerated the Respondent’s use for more than 12 years. The Respondent says it was motivated by the intrinsic attractiveness of the words comprised in the disputed domain name. The Respondent says that these words are exploited in many undertakings world-wide in conjunction with legitimate business activities, as the large number of restaurants and inns named Gambero Rosso show. In response to the Complainant’s cease and desist letter, the Respondent mentioned that the disputed domain name had been registered for more than 12 years, was selected by reference to the Pinocchio novel, and the Respondent was available to cooperate with the Complainant, including by signing agreements, not to actively use the disputed domain name for any service or activity competing with those of the Complainant.
In relation to the “pay-per-click” website at the disputed domain name, the Respondent says that it is well-established under WIPO UDRP case law that a domain name holder does not have control over self-generated links. The links on the Respondent’s website are self-generated by the software platforms used by the internet parking service providers, on the basis of the semantic meaning of the relevant domain name. The Respondent refers to past decisions under the Policy for the proposition that use of a domain name for the promotion of products that are essentially descriptive could give rise to rights or legitimate interests. The Respondent says that it refused to sell the disputed domain name to third parties. (The Respondent attaches evidence of emails where it declined to sell the dispute domain name.)
In relation to bad faith, the Respondent repeats that it registered the disputed domain name with the famous novel “Pinocchio” in mind, not the Complainant’s rights. The Respondent says that there are also dozens of “Gambero Rosso” named inns and restaurants worldwide. As an example, the Respondent refers to the website <www.gambero-rosso.eu> which it says features a German restaurant. The Respondent also says there is nothing in common between the Respondent’s website and that of the Complainant. The only activity the Respondent has conducted was the trading on the generic and descriptive terms in the disputed domain name, without any reference to the Complainant’s trademarked services or activities.
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed 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 interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. These elements are discussed in turn below, immediately following a consideration of the preliminary issue of the delay in the period between the registration of the disputed domain name and the filing of the Complaint.
The disputed domain name was registered by the Respondent in 2002. This means that the disputed domain name was registered around 12 years before the Complainant filed the Complaint. As noted in the Response, the Complainant provides no explanation as to why it took so long to file the Complaint.
As this Panel has discussed in other cases, a delay in bringing a complaint does not provide a defense per se under the Policy: Chocolaterie Guylian, Naamloze Vennootschap (N.V.) v. Zeugma,WIPO Case No. D2010-2256. While a complainant’s delay may make it more difficult to prove its case, particularly under paragraphs 4(a)(ii) and (iii) of the Policy, delay itself is not a matter that relates directly to any of the issues which a complainant must prove under paragraph 4(a) of the Policy. In these circumstances, the Panel has not drawn adverse implications against the Complainant on this issue alone.
The non-applicability of the defense of laches (i.e. undue delay) in UDRP proceedings has long been recognized by UDRP panels, over many years and a large body of jurisprudence. See e.g., in addition to this panel’s earlier-mentioned decision in Chocolaterie Guylian, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.10, and cases cited therein. While this Panel is aware that a small number of UDRP panelists have, on occasion, sought to put this question in issue (see e.g.Laminex, Inc. v. Yan Smith, NAF Claim No. FA1470990), this Panel sees no compelling reason to disrupt or depart from years of well settled UDRP jurisprudence on this point.
This does not mean that a delay may not be relevant in this proceeding, to the extent that it may relate particularly to the matters the Complainant must provide under paragraph 4(a)(ii) or (iii) of the Policy. As the Respondent points out, paragraph 4.10 of the WIPO Overview also notes that delay may make it more difficult for a complainant to establish its case. To the extent the issue of delay is relevant in these respects, the Panel has addressed it below.
Under paragraph 4(a)(i) of the Policy, the first thing a complainant must show is that it “has rights” in a trademark. The Complainant has provided copies of registration certificates for its mark for GAMBERO ROSSO, including a mark registered on the principal register of the USPTO. By this means, the Complainant has established that it relevantly has rights for the purpose of paragraph 4(a)(i) of the Policy.
The next issue is whether the disputed domain name is identical or confusingly similar to that mark. It is well established that the “.com” extension is irrelevant for the purpose of comparison. Ignoring that extension, the disputed domain name is self-evidently identical to the textual element of the Complainant’s mark. For these reasons, the Panel finds that the disputed domain name is identical to the Complainant’s registered mark. As such, the Complainant has established this first element under paragraph 4(a)(i) of the Policy.
For the reasons set out below, it is not necessary for the Panel to address this element.
Paragraph 4(a)(iii) of the Policy next requires the Complainant to prove that the Respondent has registered and used the disputed domain name in bad faith. Paragraph 4(b) of the Policy sets out a number of illustrative circumstances which may be evidence of bad faith for the purpose of paragraph 4(a)(iii). These include:
“(i) circumstances indicating that you have registered or you have acquired the Domain Name primarily for the purposes 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 your documented out-of-pocket costs directly to the Domain Name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
In effect, the Complainant argues that the Respondent registered the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. The Complainant says that the Respondent had constructive notice of its mark, and registered that mark to maximize pay-per-click revenue from its website. There is otherwise little evidence or argument that would go towards demonstrating bad faith under paragraphs 4(a)(i)–(iii) of the Policy.
The Respondent denies that it registered or has used the disputed domain name in bad faith. The Respondent argues that it registered the disputed domain name because of its descriptive meaning and association with restaurants, arising from the book “Pinocchio”. The Respondent says that red shrimps are a very popular food in many cooking traditions word-wide and that “Gambero Rosso” is a very common name for a restaurant. The Respondent says that this is the only reason that it registered the disputed domain name. The Respondent also says that it is impossible to believe that the Complainant was not aware of the Respondent’s long-standing registration of the disputed domain name and knowingly tolerated that use for more than 12 years.
The Panel notes that neither party provided substantial evidence in support of its case. However, ultimately the burden is on the Complainant to prove each element under paragraph 4(a) of the Policy. On balance, the Panel considers that the Complainant has not established that the Respondent registered the disputed domain name in bad faith. The Panel makes this finding for the following reasons.
The Complainant argues that the Respondent had “constructive notice” of its mark. Some panels have found constructive bad faith, based on a Complainant’s registered mark with the USPTO and in cases where both are resident in the USA. However, as noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), panels have mostly declined to introduce the US concept of constructive (deemed) notice per se into the UDRP. Consistent with the majority of panel opinion, this Panel has also not previously applied a concept of constructive notice.
Absent constructive notice, the question is whether the Respondent had actual notice of the Complainant’s mark when it registered the disputed domain name. The Panel does not consider that the evidence is suggestive that the Respondent had actual notice of the Complainant’s mark and registered the disputed domain name to trade off the Complainant’s goodwill. Firstly, the Complainant provides evidence of its current reputation, and evidence of the print runs of its publications and internet traffic, particularly from 2009. This evidence does little to establish the reputation of the Complainant’s mark when the disputed domain name was registered in 2002 by the Respondent.
Secondly, it is also notable that the Respondent has maintained the registration of the disputed domain name for around 12 years. This is a substantial period. As noted above, delay is not, by itself, a defense in proceedings under the Policy. However, neither is it a matter that helps the Complainant’s case. The reason for this delay in the filing of the Complaint (at least as compared to the registration date of the disputed domain name) is not explained by the Complainant. This gap in explanation is made more noticeable because the disputed domain name replicates the Complainant’s mark exactly, and is in one (if not the) most popular gTLD. In the absence of such an explanation, the Panel can only guess at the reason which may include a range of factors such as enforcement budget, perceived reputational harm, monitored traffic, consumer complaints (or lack thereof), etc., all of which alone or in combination may cause brand owners to “delay” bringing enforcement actions. But it seems at least possible that the Respondent’s registration did not “stand out” because the term “Gambero Rosso” may have a number of associations, not exclusively connected with the Complainant.
Thirdly, and as evidenced in the Response, the term “Gambero Rosso” does appear to have a number of associations separate to the Complainant’s mark. The Respondent also points to examples of restaurants (in Italy) which also bear the name “Gambero Rosso” and the derivation of that name from the tavern featured in the novel “Pinocchio”. The Panel notes that a simple Google search for the term “Gambero Rosso” (done by the Panel at the date of this decision) gives a number of results unrelated to the Complainant’s mark, particularly to the websites of restaurants that bear that name.
Fourthly, the Complainant itself did not explain the origin of its mark. It also seems plausible that the Complainant’s mark may have been derived from similar associations identified by the Respondent. In this context, it is more difficult for the Panel to conclude that the Respondent was primarily motivated by the reputation of the Complainant’s mark per se. Even if the Respondent had been aware of the Complainant’s mark, the evidence in this case does not strongly suggest that the reputation of the Complainant’s mark was the motivation for the Respondent to register it. As noted above, the Complainant’s mark includes terms that have a common meaning and the apparent use of that term in contexts not connected with the Complainant.
Finally, while the Respondent has used the disputed domain name in connection with a “pay-per-click” website, there mere use of a domain name in connection with such a website does not, by itself, establish bad faith. (See e.g.Torus Insurance Holdings Limited v. Torus Computer Resources, WIPO Case No. D2009-1455 and Camon S.p.A. v. Intelli-Pet, LLC, WIPO Case No. D2009-1716.) The Complainant did not provide a translation of the Respondent’s website, although provided a screen shot of that website with links in Italian. As far as the Panel can gather, those links do not appear self-evidently to relate exclusively to the Complainant or its mark.
For these reasons, the Panel considers that, on balance, there is insufficient evidence for a finding that the disputed domain name was registered and used in bad faith under paragraph 4(a)(iv) of the Policy.
For the foregoing reasons, the Complaint is denied.
James A. Barker
Date: September 23, 2014
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