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De Luca Giuliano
Si è conclusa con l’accoglimento
della domanda di trasferimento la controversia tra
Vesevo S.p.A., l'azienda che dal 1997 utilizza il
marchio Rossopomodoro, ed una società informatica con
sede in Napoli, che aveva registrato il dominio
“rossopomodoro.com” nel 2000.
La decisione emanata dal collegio
composto da tre saggi nominati dalla WIPO (World
Intellectual Property Organization) presenta alcuni
punti di particolare interesse. Innanzitutto, il
collegio ha dovuto prendere in considerazione una
eccezione della Resistente, la quale, nella propria
replica, sosteneva che il fatto che la Ricorrente avesse
atteso circa sette anni prima di attivare una procedura
di riassegnazione, costituisse una implicita rinuncia
all’utilizzo del nome a dominio. Il Collegio sul punto,
tuttavia, si è espresso in maniera contraria, ritenendo
che l'inerzia della ricorrente nel rivendicare il
dominio non poteva essere considerata né come una
rinuncia ai propri diritti, né come dimostrazione che
l’utilizzo del dominio da parte della resistente fosse
avvenuto in buona fede, richiamando, tra l’altro,
precedenti casi per i quali era stata proposta la
medesima eccezione1.
In secondo luogo, il Collegio è
stato chiamato a valutare la capacità distintiva del
marchio Rossopomodoro: la Ricorrente aveva, infatti,
messo in discussione la validità di tale marchio in
quanto composto da due parole di uso comune. In merito,
il Collegio di Saggi chiamato a pronunciarsi sulla
vicenda, ha ritenuto sussistente la capacità distintiva
del marchio, sottolineando che l'espressione “rosso
pomodoro” non può essere considerata di uso comune nella
lingua italiana. Inoltre, l'intenso utilizzo del marchio
Rossopomodoro da parte della ricorrente - in ambito
nazionale ed internazionale - ha consentito comunque
l'acquisizione del cd. secondary meaning.
1. The Parties
Complainant is
Vesevo S.p.A. of Milano, Italy, represented by Studio
Legale Ambrosino - Pecora, Italy.
Respondent is
Nicolas Bouris of Napoli, Italy, represented by
Strasburger & Price, LLP, United States of America.
2. The Domain
Name and Registrar
The disputed
domain name <rossopomodoro.com> is registered with
OnlineNic, Inc. d/b/a China-Channel.com.
3. Procedural
History
The Complaint
was filed with the WIPO Arbitration and Mediation Center
(the “Center”) on March 8, 2011. On March 8, 2011, the
Center transmitted by email to OnlineNic, Inc. d/b/a
China-Channel.com a request for registrar verification
in connection with the disputed domain name. On March 9,
2011, OnlineNic, Inc. d/b/a China-Channel.com
transmitted by email to the Center its verification
response confirming that the Respondent is listed as the
registrant and providing the contact details. In
response to a notification by the Center that the
Complaint was administratively deficient, Complainant
filed an Amended Complaint on March 16, 2011. On March
16, 2011, the Center transmitted an email communication
to the parties in both Italian and English regarding the
language of the proceeding. On the same day, Complainant
requested that Italian be the language of the
proceeding. On March 18, 2011, Respondent objected that
the proceeding will be conducted in Italian. 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(a) and 4(a), the Center
formally notified Respondent of the Complaint, and the
proceedings commenced on March 22, 2011. In accordance
with the Rules, paragraph 5(a), the due date for
Response was April 11, 2011. The Response was filed with
the Center on April 11, 2011.
The Center
appointed Nicoletta Colombo, Massimo Introvigne and
Jeffrey M. Samuels as panelists in this matter on May
20, 2011. The Panel finds that it was properly
constituted. Each member of 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.
Language of the
proceeding
The Panel notes
that Complainant requested Italian to be the language of
the proceeding which has been contested by Respondent.
According to
paragraph 11(a) of the Rules, which provides that
“unless otherwise agreed by the parties, or specified
otherwise in the registration agreement, the language of
the proceeding shall be the language of the registration
agreement” and taking into consideration that Registrar
has confirmed that the language of the registration
agreement is English and given the circumstances of this
case, the Panel has decided that the language of the
proceeding should be English.
Under these
circumstances, according to paragraph 11(b) of the
Rules, which gives the Panel the power to order
documents submitted in languages others than the
language of the administrative proceeding to be
accompanied by a translation into the language of the
administrative proceeding and according to previous UDRP
decisions (see Advance Magazine Publishers Inc. v. Cenk
Babaeren, WIPO Case No. D2010-2238) the Panel issued on
June 8, 2011 an administrative panel order requesting
the parties to provide translations into English of
their respective documents and briefs including the
Complaint.
The Parties have
complied with the order.
4. Factual
Background
Complainant is
the owner of a well-known trademark ROSSOPOMODORO, which
is registered around the world for restaurants services
in particular for pizza restaurants.
The restaurants
chain was launched in Italy in 1997 and the trademark
was recently sold for a figure in excess of Euro 50
million.
Respondent has
registered the disputed domain name on March 20, 2000.
5. Parties’
Contentions
A. Complainant
Complainant
claims that it is the owner of the trademark
ROSSOPOMODORO with rights dating back to the year 1997,
and with a particular recognition in Italy in the field
of restaurants, pizza restaurants and cafeterias. At the
moment the trademark is used in 65 restaurants in Italy
and 8 stores abroad (United Kingdom of Great Britain and
Northern Ireland, United States of America, Japan,
Argentina).
Complainant
further contends that Respondent has no rights or
legitimate interests in the disputed domain name.
In support of
its contention that the disputed domain name was
registered and is being used in bad faith, Complainant
indicates that:
- when
Respondent registered the disputed domain name the
trademark had already been registered for years and was
largely known;
- Respondent has
promised many times to transfer free of charge the
disputed domain name to Complainant without doing it.
B. Respondent
Respondent
states that the term “rossopomodoro” is an Italian term
that, when translated into English, means “red tomato”
and therefore is merely descriptive of Complainant’s
services. As evidenced by the records of the U.S. Patent
and Trademark Office, no one has rights to the term
“Pomodoro” for restaurant services and the adding of the
term “rosso” (translated into English as Red), does not
make the term “Rossopomodoro” distinctive for restaurant
services since “red tomatoes” are known types of
tomatoes and are used in various restaurants, including
Complainant’s restaurants.
Respondent notes
that none of Complainant’s registrations was for the
sole wording “rossopomodoro” or “rosso pomodoro”, but it
is always included a distinctive design element.
Respondent
states that at the time of the registration of the
disputed domain name (March 20, 2000) Complainant had
not previous right because the only asserted trademark
registration No. 00805931 that predated the disputed
domain name registration has been cancelled by the
Italian Trademark Office. The remaining registrations
issued after the year 2000 and are thus irrelevant to
this proceeding. Consequently, Complainant has failed to
prove it has trademark rights to the term
“rossopomodoro.”
In support of
its contention that the disputed domain name was
registered and is being used in good faith, Respondent
indicates that:
- in the 1970s
Respondent was employed in the food industries,
especially the tomato concentrate business and was
selling tomato paste under the name “Andrea’s”;
- Respondent
registered the disputed domain name because he liked the
red tomato name and thought he would use it for his food
business;
- he is the
owner of an Italian Company Klik S.p.A. that provides
worldwide telecommunications, information technology
(IT) and Internet access (ADSL) services in particular
telephone and Internet access services;
- it is only in
2007, and therefore after 7 years the registration of
the disputed domain name, Complainant tried to register
<rossopomodoro.com> and found out that Respondent owned
it; the parties exchanged various emails and Respondent
allowed Complainant to use the disputed domain name on a
trial basis, so long as Complainant would purchase
services from Respondent’s related company, Klik S.p.A..
6. Discussion
and Findings
A. Laches
Respondent
points out that he registered the disputed domain name
in 2000, i.e. seven (7) years before Complainant first
complained of such registration, and that another period
of almost four (4) years elapsed before the initiation
of the Complaint. In this way Respondent appears to
argue that, with such delay, he has not used and
registered the disputed domain name in bad faith and to
invoke the defense of laches.
UDRP panels have
generally declined to apply as such the doctrine of
laches (see, e.g., Mile, Inc. v. Michael Burg, WIPO Case
No. D2010-2011; Progman Consulting Oy v. Whois Watchdog,
WIPO Case No. D2010-1393). This Panel agrees with these
decisions and holds that the defense of laches as such
has no application under the Policy.
B. Identical or
Confusingly Similar
Before examining
if the disputed domain name is identical or confusingly
similar, the Panel finds important to verify if
Complainant is the owner of a valid trademark.
First of all it
is important to underline that “rosso pomodoro” is not a
common and generic expression for “red tomato”. The
Panel takes notice that a native Italian speaker would
say “È un pomodoro rosso” (“It’s a red tomato”) rather
than “È un rosso pomodoro”, just as an English speaker
would say “It’s a red tomato” rather than “It’s a tomato
red”. Therefore, “rosso pomodoro” is a quite uncommon
expression for Italian speakers and it is commonly known
as Complainant's service mark in Italy.
Moreover, the
Panel takes notice that Complainant has been using the
trademark since 1997 for restaurants which are spread
out in all the Italian territory and with such extensive
use the trademark ROSSOPOMODORO has acquired a very
significant secondary meaning.
Complainant has
a valid registration since 1997, which has been renewed
on 2007 with No. 0001272730, and, therefore, at the time
of the registration of the disputed domain name, the
latter had a registered trademark. Consequently, the
Panel is satisfied that Complainant is the owner of a
trademark ROSSOPOMODORO; that Complainant’s rights
predate Respondent’s registration of the disputed domain
name; and that the latter is identical to Complainant’s
trademark.
Accordingly, the
Panel finds that the first element under paragraph
4(a)(i) of the Policy is satisfied.
C. Rights or
Legitimate Interests
There is no
evidence that Respondent has any rights or legitimate
interests in the disputed domain name, and no right is
granted to Respondent in the Italian, nor in the
international, community. There is no evidence that
Respondent is commonly known by the name “rossopomodoro”
pursuant to Policy, paragraph 4(c)(ii), or that
Respondent is making a legitimate noncommercial or fair
use of the disputed domain name, or that Complainant
authorized Respondent to use Complainant’s marks as part
of Respondent’s domain name.
Accordingly, the
Panel finds that the second element under paragraph
4(a)(ii) of the Policy is satisfied.
D. Registered
and Used in Bad Faith
As stated by
Complainant and confirmed by Respondent, the latter has
absolutely no trademark, service mark or other
intellectual property rights in or to the disputed
domain name, or any similar marks or names. Therefore,
the lack of any intellectual property rights in the
disputed domain name supports a finding of bad faith in
adopting and using <rossopomodoro.com>.
Moreover,
Respondent is a resident of Italy and owns and manages
an Italian Company named Klik S.p.A. The Panel is of the
opinion that Respondent must have been aware of the
existence of ROSSOPOMODORO mark owned and used by
Complainant at the time of the registration of the
disputed domain name. Respondent, upon information and
belief, registered the disputed domain name three (3)
years after the registration by Complainant of its
ROSSOPOMODORO trademark in 1997, and also well after
Complainant’s services began to be well-known in Italy.
The circumstance
that Respondent, in the 1970s, was employed in the food
industries, especially the tomato concentrate business,
and registered the disputed domain name because he liked
the red tomato name and thought he would use it for his
food business are completely groundless and no evidence
has been adduced.
On the other
hand, the conduct of Respondent demonstrates that the
willingness of the latter is purely speculative. In
fact, the registration of the disputed domain name was
apparently intended to force Complainant into a business
relationship with Respondent. As declared by Respondent,
the latter allowed Complainant to use the disputed
domain name, as long as Complainant would purchase
services from Respondent’s related company, Klik S.p.A..
Accordingly, the
Panel finds that the third element under paragraph
4(a)(iii) of the Policy is satisfied.
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 disputed domain name <rossopomodoro.com> be
transferred to Complainant.
Nicoletta Colombo
Presiding Panelist
Massimo Introvigne
Panelist
Jeffrey M. Samuels
Panelist
Dated: July 10,
2011
1Mile, Inc. v.
Michael Burg, WIPO Case No. D2010-2011; Progman
Consulting Oy v. Whois Watchdog, WIPO Case No.
D2010-1393
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