The Complainant is CIM Alimentari SpA, Italy, represented by Notarbartolo & Gervasi S.p.A., Italy.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Mick James Hunder, Onehop, United States.
The disputed domain name <cimalimentarispa.com> is registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2020. On September 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 7, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 11, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 17, 2020.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 23, 2020. On September 23, 2020, the Center received an informal email from “[...]@cimalimentarispa.com”. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2020. The Respondent did not submit any formal response. Accordingly, the Center informed the Parties that it would proceed to Panel appointment on October 14, 2020.
The Center appointed Alexandre Nappey as the sole panelist in this matter on October 21, 2020. 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 Italian company Cim Alimentari SpA, an Italian food production company, founded in the year 1981 and operating in the field of slaughtering of pigs and cattle, the processing, and the seasoning of the meat.
The Complainant owns trademarks containing the term “cim”, in particular:
- International trademark registration no. 634185 CIM in class 29, registered on March 31, 1995, with date of priority of January 19, 1995 and designating in particular the following countries: Austria, France, Benelux, Spain, Switzerland, Germany, Hungary, Monaco, Russian Federation and Slovakia.
The disputed domain name <cimalimentarispa.com> was registered on February 17, 2020.
At the time of the drafting of the decision, the disputed domain name resolves to an active website:
At the time the Complaint was filed the disputed domain name was resolving to the website “wwwcimalimentarispa.com” displaying information and details about the Complainant: “WELCOME TO CIM ALIMENTARI SPA “We offer high quality meat cuts with professional and courteous service. Just like the butcher shops of the past, we cut our meat fresh and package it the way you request.2””
The Complainant first alleges that the disputed domain name is confusingly similar to its trademark CIM and to its unregistered trademark CIM ALIMENTARI used by the Complainant as its company name.
Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant has granted no rights, permissions, or licenses to the Respondent to use the Complainant’s trademarks and company details on its website or in the disputed domain name.
The Respondent is not making a legitimate commercial or fair use of the disputed domain name
Finally, the Complainant claims that the disputed domain name was registered and is being used in bad faith.
Registered in bad faith:
The Complainant alleges that, it is obvious that the Respondent was aware of the Complainant’s trademark and of the Complainant’s company name when registering a domain name that is strictly identical with the Complainant’s company name.
Use in bad faith:
The disputed domain name redirects to the Respondent’s website, displaying the Complainant’s company details and address.
It is clear that the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s sign and company name.
The Respondent did not formally reply to the Complainant’s contentions.
Notwithstanding the lack of a response from the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate 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 has been registered and is being used in bad faith.
However, under paragraph 14(b) of the Rules, where a Party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.
Having consideration to the Parties’ contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel’s findings on each of the above-mentioned elements are the following:
The information provided by the Complainant with respect to its trademark registrations for CIM, full details of these marks having been annexed to the Complaint, establish that it has rights in the CIM trademark.
The Complainant asserts that it also has unregistered trademark rights in CIM ALIMENTARI. In support of this contention the Complainant provides an extract of Business Registration Certificate confirming that the company is dully registered under that business name since 1982.
Section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains that: “To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services”.
The section outlines the nature of the evidence that should typically be provided by a complainant to support an assertion of unregistered trademark rights and comments that “conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning”.
Having regard to the standard expected under the Policy and in the light of the very limited information provided by the Complainant in support of its contention, the Panel has insufficient information to conclude that it has unregistered rights in “cim alimentari” for the purpose of the first element of the Policy.
When determining whether the disputed domain name is identical or confusingly similar to the Complainant’s CIM trademark, the generic Top-Level-Domain (“gTLD”) “.com” is disregarded as this is a technical requirement of registration.
The disputed domain name incorporates the entirety of the Complainant’s CIM trademark with the mere addition of:
- the dictionary term “alimentari” (italian word for “grocery shop”), which likely refers to the Complainant’s activity;
- the abbreviation “spa” which directly refers to the expression “Societa per azioni” (italian words for “Joint stock company”).
These additions do not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.
As explained at section 1.8 of the WIPO Overview 3.0: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”
The Complainant’s CIM trademark is clearly recognizable within the disputed domain name and the Panel accordingly finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
See also: Mercer Limited, Mercer Alternatives (Luxembourg) S.a.r.l. v. WhoisGuard Protected, WhoisGuard, Inc. / Scott Warren, WIPO Case No. D2020-2083.
Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s marks under paragraph 4(a)(i) of the Policy.
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [disputed] 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 [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Considering the difficulty to demonstrate a negative, UDRP panels generally find that if the complainant raises a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the policy, then the burden of production shifts to the respondent to demonstrate its rights or legitimate interests. (See De Beers Intangibles Limited v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-1465).
Here, the Complainant has stated that it has not authorized, licensed or consented to the Respondent any use of its CIM trademark.
It results from the circumstances of this case that the Respondent (named “Mike James Hunder, Onehop”) is not commonly known by the disputed domain name.
In light of what is stated above, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
As the Respondent has not provided otherwise, the Panel finds from the available record that the second element of paragraph 4(a) of the Policy is fulfilled.
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name.
It provides that:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related 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 web site 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 web site or location or of a product or service on your web site or location.”
Since the disputed domain name is a combination of the trademark CIM and the Italian words “alimentari” and “spa” which directly refer to the Complainant’s activity and to the Complainant’s company name (CIM ALIMENTARI SPA), it may be assumed that the Respondent was aware of the Complainant’s trademark at the time it registered the disputed domain name.
Moreover, the Complainant submitted evidence showing that the website operated under the disputed domain name contains the Complainant’s company address and details.
It appears therefore that the Respondent, by making reference to the CIM trademark, has been trying to create a likelihood of confusion in order to attract, for commercial gain, Internet users to its website.
The Panel finds that the Respondent’s use of the disputed domain name constitutes evidence of bad faith.
The Panel finds that the Respondent registered the disputed domain name with the Complainant in mind and with the intention of capitalizing on the reputation of the Complainant within the meaning of paragraph 4(b)(iv) of the Policy. See Seagate Technology LLC v. Domains By Proxy, LLC / Sumit Pandey, WIPO Case No. D2020-2208
The Panel finds that the above constitutes registration and use in bad faith pursuant to the third requirement of paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <cimalimentarispa.com> be transferred to the Complainant.
Date: October 26, 2020
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