Complainant is Trebon S.r.l. of Trezzo sull'Adda, Italy, represented by Studio Legale Perani, Italy.
Respondent is Truong Internet Services of Heerhugowaard, the Netherlands.
2. The Domain Name and Registrar
The disputed domain name <vivalamamma.nl> (the “Domain Name”) is registered with Truong Internet Services.
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) by e-mail on February 19, 2009 and in hardcopy on February 23, 2009. On February 20, 2009, the Center transmitted by email to SIDN a request for registration verification in connection with the Domain Name. On February 25, 2009, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
On March 6, 2009, the Center notified the Parties that in principle, the language of the proceedings is Dutch and therefore requesting Complainant to provide at least one of the following:
1. Satisfactory evidence of an agreement between Complainant and Respondent to the effect that the proceedings should be in English; or
2. The Complaint translated in Dutch; or
3. A request for English to be the language of the administrative proceedings, including arguments and supporting material as to why the proceedings should be conducted in English.
Complainant on March 10, 2009, filed a request for English to be the language of proceedings. Respondent, although given the opportunity to do so by March 13, 2009, did not comment on this notification by the Center.
Respondent was formally notified of the Complaint by the Center on March 16, 2009, in accordance with Regulations, articles 5.5 and 15.5. In accordance with the Regulations, article 7.1, the due date for Response was April 5, 2009. No Response was submitted to the Center by Respondent. Respondent only referred to Mr. Sergio Politi of a shop Viva La Mamma (a one-man business incorporated under the laws of the Netherlands), stating that Truong Internet Services is just the webhoster and not the “owner”. On March 19, 2009, a third party, Mr. Eugenio (Gino) Politi, apparently Sergio Politi's father, submitted a document in response to the Complaint. On April 2, 2009 Complainant submitted a Supplemental Filing concerning the status of this document.
In accordance with article 8.1 of the Regulations, the Center appointed Paul L. Reeskamp as sole Panelist on April 7, 2009. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with article 8.2 of the Regulations.
4. Factual Background
Complainant is the owner of a Community Trademark Registration (CTM) for the word mark VIVA LA MAMMA, filed on April 15, 2003, registered on June 22, 2004 with registration number 3135241 for classes 29, 30 and 43.
According to the information provided by SIDN the date of registration of the Domain Name was June 18, 2008. The SIDN WhoIs database indicates Truong Internet Services as registrar, and as holder of the Domain Name. In accordance with this information Complainant designated Truong Internet Services as the Respondent. When the Complaint was filed the Domain Name re-directed Internet users to “www.hotandblond.com”, a website containing pornographic materials and pornographic pop-up ads and redirecting to other pornographic websites. At least since March 3, 2009, the website under the Domain Name shows a face together with the words “Viva La Mamma, Italiaanse Delicatesse”.
5. Parties' Contentions
A. Complainants summarized contentions:
Complainant contends that:
- The Italian company Salumificio Fratelli Beretta S.p.A. is a significant player in the food industry. Complainant is a company of the Beretta Group. Beretta Group offers a line of ready-to-eat products through the Complainant under the trademark VIVA LA MAMMA.
- Complainant argues that VIVA LA MAMMA is a well-known trademark in the world, due to an extensive use of the trademark in connection with a wide range of foodstuff products, and Complainant therefore has rights protected under Dutch law. The trademark is distinctive and the fact that Respondent has registered an identical Domain Name indicates that Respondent had knowledge of Complainant's trademark(s) at the time of registration of the Domain Name.
- The Domain Name is identical to Complainant's VIVA LA MAMMA mark, which is exactly reproduced in the Domain Name and the use of the Domain Name infringes Complainant's trademark rights. The Domain Name is also identical to the address for Complainant's official website at “www.vivalamamma.com”.
- Respondent has no rights on the Domain Name, since (i) the Domain Name does not correspond to a trademark registered in the name of Truong Internet Services; (ii) Truong Internet Services is not commonly known as VIVA LA MAMMA; and (iii) there is no apparent connection between the Domain Name and the pornographic business that was operated at the site to which the Domain Name resolved.
- Several circumstances indicate that, by using the Domain Name, Respondent intentionally registered it primarily for the purpose of attracting Internet users to a website for commercial gain by creating a likelihood of confusion with a trademark on which Complainant has rights.
- The Domain Name was used to direct visitors to other websites with pornographic materials, which websites also contain pornographic pop-up ads. Any possibility of a non commercial fair use is excluded, and there is a clear commercial gain for the owner of the Domain Name, who is trading on the reputation of Complainant's trademark VIVA LA MAMMA.
- Respondent knew of the renown of Complainant's trademark, finding an opportunistic bad faith in order to registering and using the domain name at issue. Respondent's pornographic activity tarnishes Complainant's trademark.
- The fact that the Domain Name is connected to a pornographic website is a clear indication that the Domain Name has been registered and used in bad faith. As concluded in several WIPO cases, the redirection to pornographic sites from a domain name incorporating a well-known trademark (“pornosquatting”) is, per se, evidence of bad faith.
B. Respondent
Instead of replying to Complainant's contentions the Respondent referred to Sergio Politi of Viva La Mamma (a one-man business incorporated under the laws of the Netherlands), stating that Truong Internet Services is “just the webhoster and not the ‘owner'”.
In the surroundings of Tilburg, Sergio Politi's father, Eugenio Politi, enjoys a reputation for his top 20 hit record “Viva la mamma”. Sergio Politi owns a shop in Tilburg for Italian delicacies that is named after his father's top 20 hit. Eugenio Politi claims that he is the registrant of the Domain Name and that he allowed his son Sergio to use the Domain Name. In the materials provided by Eugenio Politi, he recalled events regarding the Domain Name and he enclosed, among other things, an alleged purchase invoice of the Domain Name, dated March 1, 2006. He further stated that, beyond his power, he lost control over the Domain Name.
A connection between Truong Internet Services and Sergio Politi (Viva La Mamma) cannot be assumed on the basis of the information provided.
6. Discussion and Findings
Following the Center's notification concerning the language of proceedings of March 6, 2009, Complainant on March 10, 2009 requested English to be the language of the administrative proceedings. Complainant is neither residing nor registered in the Netherlands. The Complaint has been filed in English. The Panelist finds it plausible that Complainant does not have knowledge of the Dutch language. Further, Complainant argued, among other things, the information and advertising on the former website linked to the Domain Name were exclusively in English. Also taking into account that Respondent did not submit any reply to the Center's notification concerning the language of proceedings of March 6, 2009, the Panelist determines that the language of this procedure shall be English, in accordance with article 16 of the Regulations.
Respondent only referred to Sergio Politi of Viva La Mamma, stating that Truong Internet Services is “just the webhoster and not the ‘owner'”. However, Truong Internet Services did not provide any information that may lead to the conclusion that Eugenio Politi, Sergio Politi, or Viva La Mamma (the one-man business) can be seen as the actual or economical owner of the Domain Name. In fact, from the submission by Eugenio Politi it becomes clear that he would like to be seen as the holder of the Domain Name, however, he also put forward in his submission that neither he, nor his son, have actual control over the content of the website that is linked to the Domain Name.
A connection between Truong Internet Services and Eugenio (or Sergio) Politi or Viva La Mamma (the one-man business) cannot be established by the Panelist on the basis of the information provided to the Center. The Panelist understands that the circumstances of this case could be interpreted as potentially presenting some ambiguity in this regard, at least as presented by the Respondent. However the Panelist must base its Decision on the record. Therefore, and in accordance with article B(l) of the Regulations, the Panelist does not regard the submission by Eugenio Politi to the Center to constitute a Response which the Panelist can take into consideration.
Complainant submitted a Supplemental Filing on April 2, 2009. In the absence of a Response the Panelist has exercised its discretion and decided not to admit this Supplemental Filing.
Identical or confusingly similar
Based on the evidence provided in the Complaint, the Panelist finds that the Complainant has rights in the mark VIVA LA MAMMA, which are protected under Dutch law. The Domain Name is identical to Complainant's Community trademark registration for VIVA LA MAMMA.
The Panelist finds therefore that Complainant has complied with article 2.1(a) of the Regulations.
Rights or legitimate interests
The Respondent has not presented evidence to convince the Panelist that it has a legitimate interest in the Domain Name, for example by providing evidence in favour of one the conditions mentioned in article 3.1 of the Regulations:
- use or preparations to use the Domain Name in connection with bona fide offering of goods and services prior to the dispute arising;
- being commonly known by the Domain Name; or
- a legitimate non-commercial or fair use of the Domain Name.
The Panelist finds that the information provided by the Complainant shows that there have been no such rights or legitimate interests, nor do they presently exist.
Registered and used in bad faith
Under WIPO Uniform Domain Name Dispute Resolution Policy (“UDRP”) case law (e.g. Nike, Inc. v. B. B. de Boer,
WIPO Case No. D2000-1397 (December 21, 2000) and Carolina Herrera, Ltd. v. Alberto Rincon Garcia,
WIPO Case No. D2002-0806 (October 16, 2002)) a well-established principle is that when someone registers a domain name, he represents and warrants to the registrar that, to this knowledge, the registration of that domain name will not infringe the rights of any third party. In the case at issue, the Panelist reasonably finds that the Complainant provided evidence sufficient to convince the Panelist that Complainant's trademarks are well known so that it is unlikely that Respondent, at the time he registered the Domain Name, was not aware that he was infringing Complainant's trademarks.
As regards Respondent's use of the Domain Name to attract Internet users to an adult (pornographic) website, the Panelist's view is that it is commonly understood, under WIPO UDRP case law, that, whatever the motivation of Respondent, the diversion of domain names to pornographic sites is itself certainly consistent with a finding that those domain names are registered and are being used in bad faith (Caledonia Motor Group Limited v. Amizon,
WIPO Case No. D2001-0860 (August 29, 2001) and Bass Hotels & Resorts, Inc. v. Mike Rodgerall, WIPO Case No. D2000-0568 (August 7, 2000)).
As pointed out in National Association of Stock Car Auto Racing, Inc. v. RMG Inc - BUY or LEASE by E-MAIL,
WIPO Case No. D2001-1387 (January 23, 2002) “it is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques”.
In light of the above and given the fact that the Regulations are based upon the UDRP, the Panelist agrees with the Complainant that the fact that the Domain Name is connected to a pornographic website can be seen as an indication that the Domain Name has been registered and used in bad faith.
Another indication for unfair registration and use can be given by the fact that the Domain Name is registered and used for a business that does not correspond with the descriptive content of the Domain Name.
The Panelist is sufficiently convinced that Respondent, when registering the Domain Name, was well aware of Complainant's CTM for VIVA LA MAMMA and intentionally used it for the Domain Name, knowing that the use of the VIVA LA MAMMA trademark for his pornographic site would cause confusion among visitors to the website and tarnish the reputation of the trademark. The registration under such circumstances and the ensuing use of the Domain Name in its pornographic context is sufficient evidence of bad faith. Complainant sufficiently asserted that Respondent has chosen the Domain Name with a view to increasing traffic to his website and that this resulted in taking unfair advantage of the reputation of Complainant's CTM.
It does not matter for the aforementioned that once the Internet user reaches Respondent's website, it is abundantly clear that Respondent is unconnected with Complainant. It is the intentional diversion of traffic that is relevant, rather than any particular harm or confusion that may or may not occur once the Internet user gets to the Respondent's website.
7. Decision
For all the foregoing reasons, in accordance with articles 1 and 13 of the Regulations, the Panelist orders that the domain name <vivalamamma.nl> be transferred to the Complainant.
Paul L. Reeskamp Sole Panelist
Dated: April 28, 2009
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