WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Felsina S.p.A. v. Hannah’s Recipes Inc.
Case No. D2006-1444
1. The Parties
The Complainant is Felsina S.p.A., Siena, of Italy, represented by Dr. Modiano & Associati S.p.A., Italy.
The Respondent is Hannah’s Recipes Inc., Chilliwack, British Columbia, of Canada, represented by Mike Johnson, Canada.
2. The Domain Names and Registrar
The disputed domain names <felsina.biz>, <felsina.com>, and <felsina.info> are registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2006. On November 14, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On November 23, 2006, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 November 24, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 14, 2006. The Response was filed with the Center on December 8, 2006.
The Center appointed James A. Barker as the sole panelist in this matter on January 18, 2007. 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.
In the course of this procedure, on November 18, 2006, the Respondent emailed the Center, stating that (among other things) “we contend that the complaint does not meet the formal requirements of the Policy, the Rules…and the Center’s Supplemental Rules”. The Respondent did not identify which of those formal requirements had not been met. The “formal” requirements of the Policy, the Rules and the Supplemental Rules are essentially administrative requirements to ensure that due and fair process has been observed: including that the Complaint was properly initiated, identified certain matters necessary for the Complaint to proceed, and was properly notified to the Respondent. The Panel has examined the case file, and finds that the Complaint as filed did meet the formal requirements of the Policy, the Rules and the Supplemental Rules. To the extent that the Complainant’s statement regarding “formal requirements” was intended to refer to the substantive requirements for a complaint to succeed, those matters are dealt with below.
4. Factual Background
The Complainant is an incorporated business with its principal place of business in Tuscany, Italy.
The trademarks on which the Complaint is based are FELSINA and FATTORIA DI FELSINA mainly used in relation to wines (particularly “Chianti”). The Complainant’s trademark FELSINA is registered in Italy, as filed on July 3, 1995. The Complainant’s trademark FATTORIA DI FELSINA is registered on the principal register of the US Patent and Trademark Office, and first filed on January 26, 1996. (The Complainant provided documentary evidence of both those registered marks.)
In addition, the Complainant uses FELSINA as its trade name. The Complainant uses its trademark and trade name, FELSINA, on the labels of the bottles containing its wines, and markets its wines under those marks. Its wines and its associated names and marks, have been commonly referred to in industry publications, papers and magazines.
Felsina is the name of an ancient city, now the location of Bologna, Italy.
At the date of this decision, the disputed domain names all reverted to essentially the same website. That website contains a picture of a potato, and has the domain name appearing as a heading to the page. All other information on the website relates to the sale of domain names, although there are some links to other websites relating to potatoes. In October 2006, the domain name <felsina.com> reverted to a portal website. The portal website included links described in Italian and also reverted to another site, with a link to “outstanding wines from Italy”.
In 2005, beginning on July 19, 2005, there were some email communications between the parties, following an inquiry from the Complainant about the sale of the domain name <felsina.com>.
The disputed domain name <felsina.com> was first registered by the Respondent on July 6, 1997.
The disputed domain names <felsina.info> and <felsina.biz> were first registered by the Respondent on August 11, 2005.
The registration details for the disputed domain names include both the name of H. Brunia, as an individual, and “Hannah’s Recipes Inc.” as an apparent organization. However, and importantly in this case, the Registrar has confirmed that the registration of the disputed domain names is held by the named Respondent – Hannah’s Recipes Inc.
5. Parties’ Contentions
A. Complainant
The following is a summary of the Complaint.
The Complainant claims that the disputed domain names are identical to its registered marks.
The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain names. This is claimed on the basis that:
- the Respondent has no authorization from the Complainant to use the mark;
- the Complainant’s mark is incorporated entirely in the disputed domain names, and so no plausible use can be conceived;
- there is no evidence that the Respondent has trademarks or company activities registered under the FELSINA brand;
- the Respondent placed on the home page “www.felsina.com” the ads: “‘www.felsina.com’ web page is For Sale” and “We have all kind of domains available, please click here for details”.
- the Respondent has never made any bona fide use of the disputed domain names and is not known by the domain names.
The Complainant claims that that Respondent has registered and used the disputed domain names in bad faith. When contacted by the Complainant on July 19, 2005, the Respondent offered to sell the disputed domain name <felsina.com> for €30,000. Subsequently, the Respondent registered the other two disputed domain names <felsina.biz> and <felsina.info>. The Complaint attaches a copy of email correspondence from the Respondent. Through that email, the Complainant claims that the Respondent indicated that the price of €30,000 would be increased to €59,000 if Complainant did not buy the disputed domain name <felsina.com> immediately. The Complainant notes that, after its first approach to the Respondent in relation to the disputed domain name <felsina.com>, the Respondent shortly after registered the disputed domain names <felsina.info> and <felsina.biz>. The Complainant states that this demonstrates that the Respondent had actual knowledge of the Complainant and its rights, which therefore indicates bad faith registration and use.
The Complainant also states that the Respondent has previously been an unsuccessful respondent in cases under the Policy, thereby demonstrating a pattern of cybersquatting conduct.
B. Respondent
The following is a summary of the Response.
The Respondent does not contest that the disputed domain names are identical to the Complainant’s name and Italian registered marks. However, the Respondent states that the Complainant does not have a registered word mark for FELSINA in Canada, where the Respondent resides. There are a number of trademarks held by various parties in both Canada and the United States that contain the word “felsina”.
The Respondent claims that, with regard to the issue of causing confusion by the use of identical or similar domain names, the Complainant and the Respondent operate in completely different industries. The Complainant is in the wine business and the Respondent is in the potato business.
The Respondent claims that it does have a legitimate interest in the disputed domain names. It claims that the owner of the Respondent company is Huite (Bert) Brunia. Huite Brunia’s father, Simon Brunia, is the registered breeder of a potato variety “Felsina”, so named for the excellence of soil and growing conditions in Bologna, Italy for this potato variety. The Respondent provides documentation of the registration of the “Felsina” potato in the Netherlands. The application was made in 1988, granted in 1991, and lists H. Brunia, Chilliwack, British Columbia, Canada, among others (although in what capacity the Panel is not able to judge, as the document is entirely in Dutch, and no translation was provided). The Respondent also provides evidence that HZPC Holland B.V, Leeuwarden, Netherlands HZPC Holland is the registered holder of the Canadian Trade-Mark for FELSINA which was filed on October 8, 1992.
The Respondent claims to have considerable business interests in the Felsina potato.
For somewhat similar reasons, the Respondent denies that it has registered and used the disputed domain names in bad faith. In relation to the Complainant’s claims that it offered to sell the dispute domain names, the Respondent states that it was the Complainant who initiated contact, and that it entered into a process to sell the disputed domain name, with consideration of the value of that domain name to its own business. The Respondent states that the fact that the Respondent was willing to sell a domain name for a fee does not in itself demonstrate bad faith.
The Respondent claims that the content of its website is intended to attract legitimate businesses related to the use and marketing of potatoes. Selling the disputed domain names to, for example, a major food producer that would use the website to promote the sale of French fries made with Felsina potatoes would advance the Respondent’s business interests.
The Respondent claims that the URLs corresponding to the domain names <felsina.biz> and <felsina.info> could not be retrieved, and attached copies of its searches on September 25, 2006 to that effect.
In relation to its registration of the domain names <felsina.info> and <felsina.biz>, the Respondent notes that the Complainant had the opportunity to register those domain names but failed to do so.
In relation to its previous involvement in a number of disputes under the Policy, identified by the Complainant, the Respondent claims that it “was unaware of the need for trademarks for [the relevant] terms” and so did not contest the complaints. In relation to one case (Sharp Electronics Corporation v. Golden Potatoes Inc. f/k/a Easy Flo Vacuums, Claim Number: FA0107000098055), the Respondent claims that he was unaware of the then complainant’s interest in the relevant domain name, but that “this case was subsequently brought before the Canadian Courts and an amicable settlement negotiated”.
The Respondent seeks a finding of reverse domain name hijacking.
6. Discussion and Findings
For the Complaint to succeed, under paragraph 4(a) of the Policy the Complainant must prove that:
(i) the disputed domain names are 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 names: and
(iii) the disputed domain names were registered in bad faith and are being used in bad faith.
The Complainant must provide each of these 3 elements, which are discussed in turn as follows.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain names are identical to the Complainant’s registered trademark FELSINA. The Respondent also does not dispute that the domain names are identical to the Complainant’s mark.
The Respondent raises some other objections to a finding under this element of the Policy, as summarized above. However, those objections do not matter to this element of the Policy. The Complainant has demonstrated that it “has rights” in a registered mark. It is obvious that the disputed domain names are relevantly identical.
B. Rights or Legitimate Interests
The Complainant has made a strong prima facie case against the Respondent. Having established that case, the burden shifts to the Respondent to demonstrate that it has such rights or legitimate interests. (See item 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions.) The burden on the Respondent in this respect is to provide evidence that is credible, on the balance of probabilities. (See this Panel’s discussion in ARAG Allgemeine Rechtsschutz-Versicherungs-AG v. Seung Nam Kim, Case No. D2006-1001, and other cases cited therein.)
The Respondent puts forward a number of arguments in support of having rights or legitimate interests in the disputed domain names, which are addressed as follows.
Paragraph 4(c)(i)
Paragraph 4(c) of the Policy, sets out circumstances by which a Respondent may demonstrate a relevant right or legitimate interest. Paragraph 4(c)(i) of the Policy provides that a Respondent may demonstrate a right or legitimate interest in a domain name if the Respondent, before notice of the dispute, used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. (The Respondent does not argue that it has a right or legitimate interest within the two other circumstances described in paragraph 4(c).)
The Respondent essentially makes two arguments in support of its legitimate interests for the purpose of paragraph 4(c)(i) of the Policy.
Firstly, the Respondent claims that it has substantial business interests in the Felsina potato. The Respondent claims to be in the “potato business”. It claims that the disputed domain names revert to a website that “promotes the Felsina potato”. Being in business is synonymous with “offering goods or services” for the purpose of paragraph 4(c)(i).
The Respondent’s argument essentially appears to be that it is making a bona fide offering, because the disputed domain names are descriptive of its business. A domain name which is descriptive of a respondent’s business may establish a right or legitimate interest. (In this respect, see item 2.2, WIPO Overview of WIPO Panel Views on Selected UDRP Questions.)
However, the Respondent provides no evidence of genuinely being “in the potato business”. At the date of this decision, all three disputed domain names revert to substantially the same website. The primary purpose of the Respondent’s website is self-evidently to sell domain names. That fact is not altered by the fact that an image of a potato appears on the website – an image which appears otherwise unrelated to the substance of the website. That website indicates that “We have all kinds of domain names available, please click here for details”. The Complainant also provides evidence that the disputed domain name <felsina.com>, in October 2006, reverted to a portal site. The portal site included links in Italian and also reverted to a site with a link describing “outstanding wines from Italy”. All this evidence indicates that this is not a case where the domain names are descriptive of the Respondent’s business.
For these reasons, the Panel does not find that the disputed domain names are descriptive of its business. The Respondent has not, therefore, established that it is making a bona fide use of the disputed domain names for the purpose of paragraph 4(c)(i) of the Policy.
Secondly, the Respondent (although it makes this point in relation to the bad faith element of the Policy) argues that it has a legitimate interest because it intends to sell domain names and has the right to carry out this business in any legal manner, including offering property of value for sale to others. In other words, the Respondent also appears to argue that its ‘speculation’ in domain names is legitimate. ‘Speculation’, in this context, means the acquisition of a domain name with no intent to use the domain name itself, other than to profit from on-selling it.
Speculation in domain names does not itself establish a legitimate interest under the Policy. Neither does speculation itself demonstrate a lack of a right or legitimate interest. However, there are differing panel views on this point. See, for example, the discussion of this issue in Macmillan Publishers Limited, Macmillan Magazines Limited and HM Publishers Holdings Limited v. Telepathy, Inc., WIPO Case No. D2002-0658. The panel in the MacMillan case took the view that, where the trademark is a generic word, speculation is not per se evidence of a lack of rights or legitimate interests. In other cases, panels have gone further, and found that speculation may, in appropriate circumstances, constitute a right or legitimate interest where there is no evidence of bad faith registration and where the domain name is generic in character: see, eStructure A/S v. Hagop Doumanian, WIPO Case No. D2001-1321.
But even the prior panel decisions most favorable to the Respondent (i.e. that speculation may, in appropriate circumstances, constitute a legitimate interest) do not support the Respondent in this case. There is evidence that the Respondent registered at least two of the disputed domain names in bad faith. Neither do the domain names incorporate generic terms. In this respect, both the Complainant and Respondent give evidence of various trademark and other rights existing in relation to “felsina” as a mark, both in relation to wine and potatoes. There was no evidence that the use of that term had become so widespread that it had become generic.
Because the disputed domain names are not generic, the onus remains on the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain names. It does not demonstrate such rights or legitimate interests by showing that it intended to sell the disputed domain names. Otherwise, any respondent could show a legitimate interest in a domain name simply by stating an intention to sell it.
Other circumstances
Paragraph 4(c) of the Policy indicates that it is “without limitation” – that is, a respondent may demonstrate a right or legitimate interest other than in the circumstances of paragraph 4(c). The remaining arguments by the Respondent relate to whether there are such other circumstances.
Plant variety rights
The Respondent claims that it has an interest in the Felsina potato variety. It attaches a copy of documentation, in Dutch, from the Plant Breeder’s Rights Office of the Netherlands, relating to registration of plant breeder’s rights concerning that variety.
The document identifies “H.Brunia” of Chilliwack, Canada, as one of a number of other individuals, all with “Brunia” as part of their surname. The Respondent claims that the document identifies H. Brunia as a registrant of the “Felsina” plant variety, and that this variety was registered in 1991. The Respondent states that H. Brunia is the owner of the Respondent company (Hannah’s Recipes Inc.), and that his father is the registered breeder of that plant variety. The Respondent also states that the registration documentation “notes the association of HZPC Holland B.V. to the Felsina potato”. The Respondent also provides evidence that HZPC Holland B.V. is the owner of the “Felsina” plant variety in Canada.
The question in the present proceeding is whether this evidence is sufficient, on its own, to give the Respondent a right or legitimate interest in the disputed domain names for the purpose of the Policy (there being no other credible evidence that the Respondent has such a right or legitimate interest, as discussed above and below).
The Panel does not accept that this evidence is sufficient, for the following reasons.
Firstly, paragraph 4(c) of the Policy provides that circumstances demonstrating rights or legitimate interests should be based on the Panel’s “evaluation of all evidence presented”(emphasis added). The obvious effect of that requirement is that the Panel may not have regard to only one piece of evidence. In this case, the totality of the evidence is that the Respondent does not have such a right or legitimate interest, for the reasons discussed further below. The language of the Policy in this respect has been echoed in previous panel decisions. For example, in Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679, the panel stated that:
“the registration of a trademark which is identical with or similar to the domain name in dispute does not always or automatically provide the registrant with rights and legitimate interests in respect of the domain name, although it can be strong evidence of the existence of such rights or legitimate interests. The existence of any right or legitimate interest on the domain name in dispute should be determined by taking in consideration all relevant factors…”
Secondly, the clear bad faith registration and use of at least two of the disputed domain names (<felsina.biz> and <felsina.info>) reinforces the conclusion (at least in relation to those domains) that the Respondent lacks rights and legitimate interests in them. As noted in First American Funds Inc v. Ult.Search, Inc.:
“Although the Policy draws a clear distinction between the requirement of showing absence of legitimate right or interest in paragraph 4(a)(ii), and the showing of bad faith registration and use in paragraph 4(a)(iii), in reality it is difficult to separate the consideration of the one from the other. Absence of any right or interest on the part of Respondent may be of assistance in determining bad faith registration and use, and bad faith registration and use may be of assistance in determining the legitimacy of the claimed right or interest.”
Thirdly, the evidence does not directly establish that the Respondent has a right or legitimate interest. The Respondent in this case is “Hannah’s Recipes Inc.” H. Brunia claims to be the owner of the Respondent. However, no evidence is provided of that ownership. Assuming that “Hannah’s Recipes Inc.” exists as a legal entity (the Respondent provides no evidence that it does), it is fundamental to the establishment of companies that they are legally separate to the individuals that comprise or have a financial interest in them. For this reason, for example, an individual does not obtain any rights in the intellectual property of a company, merely because that individual owns shares or equity in the company. A company is a separate legal entity. Any interest of H. Brunia, as an individual, does not automatically transfer to the Respondent, Hannah’s Recipes, Inc. (The Panel emphasizes that this is one factor against the Respondent but, given the close and somewhat unclear relationship between the Respondent and H. Brunia, is not determinative on its own.)
Fourthly, the evidence of the Respondent’s right in the plant variety “Felsina” is equivocal. A registered plant variety right does not by itself give rights in the nature of a trademark right. Plant variety rights give the registered owner a right to exploit the variety. However, the Respondent provides no evidence that it does so. There is no evidence before the Panel of the business of the Respondent (Hannah’s Recipes, Inc.) other than copies of the website to which the disputed domain names revert. There is no evidence that the Respondent conducts business in relation to the “Felsina” potato. There is no evidence that the Respondent is in the “potato business”. Rather, as indicated above, the evidence is that the Respondent operates a website for the purpose of trading in domain names, and earlier operated a ‘portal site’.
Fifthly, an interest in one kind of intellectual property right does not necessarily establish a right in a disputed domain name. (See e.g. Madonna Ciccone, p/k/a Madonna v. Dan Parisi and <madonna.com>, WIPO Case No. D2000-0847: Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679 cited above; Jenna IP Holding Company LLC v. Mobile Alive Pty Limited, WIPO Case No. DAU2006-0013.) Circumstances of the Respondent’s bad faith registration and use of a domain name may outweigh such interests, in determining whether a Complainant is successful under paragraph 4(a)(ii) of the Policy. In this case, such bad faith registration and use has been established, for the reasons set out below under that heading. A competing trademark right, or a right that does not illegitimately interfere with a complainant’s rights, may establish a respondent’s right in a domain name. However, the Respondent’s interest in the plant variety right “Felsina” is not of that kind.
Sixthly, paragraph 4(a)(ii) of the Policy requires the identification of an objective or relatively objective link between the Respondent and the domain names in question. For a statement to this effect, see Koninklijke Philips Electronics N.V. v. Manageware, WIPO Case No. D2001-0796. In that case, the Panel stated that:
“These connections might arise either at the outset through a natural or visible connection of the Respondent’s business name, trademark, bona fide offering of goods and services, or bona fide non-commercial use to the domain name. These connections might also develop over time through the nature of the Respondent’s bona fide activities as they relate to the domain name. These connections might be obvious given current uses or practices in the instances just mentioned, or they might be demonstrable, as in the case of planned connections to a domain name for these various bona fide activities in the future.”
That interpretation is supported by the terms of the Policy. In particular, the illustrative circumstances set out in paragraph 4(c)(i) – (iii) either require that a respondent is making a bona fide or fair use of a disputed domain name (4(c)(i) and (iii)) or is known by the domain name. Although (as noted above) those circumstances are not exhaustive, to promote a consistent application of the Policy, the scope and character of those circumstances may be relevant in considering the scope of other circumstances.
In this case, there is no evidence of any real and active connection between the Respondent and the disputed domain names. Rather, the disputed domain names <felsina.info> and <felsina.biz> appear to have been opportunisticly registered, after the Respondent was approached by the Complainant in relation to the sale of <felsina.com>. Although the latter domain was registered in 1997, the only evidence of its use is for a portal site and for a website directed at the speculative sale of domain names.
Geographical identifier
The Respondent also notes that the term “Felsina” is the name of an ancient city. The implication the Respondent appears to draw, is that it may more easily establish its own rights or legitimate interests by that fact.
The use of a domain name as a geographic identifier may make it easier for a respondent to demonstrate a right or legitimate interest, or good faith in a disputed domain name, for the purposes of paragraph 4(a)(ii) or (iii). This is simply because a wide range of uses may have a relationship to a particular geographical location or geographical locations more generally. But the use of a geographical identifier in a domain name does not of itself establish a Respondent’s right or legitimate interest.
Accordingly, the fact that “Felsina” is the name of an ancient city does not of itself establish the Respondent’s rights or legitimate interests in the disputed domain names. This fact may explain the derivation of the name for the plant variety “Felsina”. But there is no evidence that the Respondent has any connection with the ancient town of “Felsina” or has used the disputed domain names in that connection.
For all these reasons, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
The Complainant argues that that the Respondent has registered and used the disputed domain name in bad faith under paragraph 4(b) of the Policy.
Paragraph 4(b) of the Policy provides that there is evidence of registration and use in bad faith in circumstances including where the Respondent has:
(i) registered the domain name, primarily to sell it to the Complainant, in excess of the Respondent’s out of pocket costs relating to the domain name;
(ii) 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 [the Respondent] have engaged in a pattern of such conduct.
(iii) by using the domain name, intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website by creating confusion as to the source, sponsorship, affiliation or endorsement of the respondent’s website.
In this case, the ground under paragraph 4(b)(i) is relevant to all of the disputed domain names. The ground under paragraph 4(b)(ii) is relevant to the registration of <felsina.info> and <felsina.biz>. 4(b)(iv) of the Policy is relevant to the registration of the <felsina.com> domain name.
Paragraph 4(b)(i)
The Respondent has clearly made an offer to sell the disputed domain name <felsina.com>, in the first instance for €30,000, in response to an approach by the Complainant. The amount of that offer appears clearly in excess of the Respondent’s out of pocket costs, given the lack of any evidence that the Respondent has a direct and quantifiable business interest in that domain.
There was no evidence before the Panel that the Respondent offered to sell the other two disputed domain names. As at October 2006, the Complainant gives evidence that the Respondent’s website reverted to a ‘portal’ website, which did not directly offer the disputed domain names for sale. The Complainant provides evidence that, as of January 2007, the disputed domain names reverted to a website that generally offered domain names for sale.
Although the majority of cases in relation to this element of the Policy are ones in which the respondent first offers to sell to a complainant, this Panel does not consider that a first approach by a complainant (as in this case) necessarily defeats an argument under paragraph 4(b)(i). Paragraph 4(b)(i) does not require that an offer to sell comes from any particular party, or even that there is any offer to sell at all. (Although obviously such an offer would be strong evidence of intention.) Paragraph 4(b)(i) only requires that the Panel finds that a respondent registers a domain primary to sell it to a complainant (that is, that this was the primary intention), in excess of its costs.
In this case the evidence is equivocal as to whether the possible sale of the disputed domain names to the Complainant was the Respondent’s primary intention at the time the domains were registered. The <felsina.com> domain name was held for some time by the Respondent, before the Complainant approached it. And, as noted above, the Respondent has made no explicit offer to sell either <felsina.info> or <felsina.biz> which, on the Complainant’s own evidence, initially did not revert to a website at all.
For these reasons, and because of the Panel’s findings below, the Panel does not make a finding under paragraph 4(b)(i).
Paragraph 4(b)(ii)
Both the domain names <felsina.biz> and <felsina.info> were registered on August 11, 2005, shortly after the Complainant approached the Respondent in relation to the sale of <felsina.com>.
The terms “in order to prevent” in paragraph 4(b)(ii) indicate that the registration of the disputed domain names must (to meet the requirements of that paragraph) be done intentionally to prevent the Complainant from reflecting its mark in the disputed domain name. Having been approached by the Complainant, it is obvious that the Respondent was actually aware of the Complainant and its mark. The Respondent would have known that registering those additional domains would prevent the Complainant from reflecting that mark in those domain names.
While the Respondent has shown that it registered those two additional domain names intentionally, was there also a “pattern of conduct” for the purpose of paragraph 4(b)(ii)?
A pattern of conduct “may involve multiple domain names directed against a single Complainant”, as well as multiple registrations against multiple Complainants. (See Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046.). However, panels have also found that the registration of two domain names against a single complainant is not sufficient in this respect. (See Home Interiors & Gifts, Inc. v. Home Interiors, WIPO Case No. D2000-0010).
The Complainant in this case does not have a history of registering an obviously large number of domain names. The Complainant provides evidence that the Respondent was an unsuccessful respondent in at least one previous case under the Policy (Sharp Electronics Corporation v. Golden Potatoes Inc. F/k/a Easy Flo Vacuums, NAF Case FA 98055, involving three domain names), and in two cases involving domain names registered in the ‘sunrise’ period in the .info domain (not under the Policy, but under the .info Sunrise Challenge Policy).
However, in the Panel’s view, this evidence establishes a “pattern of conduct”. The Respondent’s registrations of the “felsina” domain names alone would be sufficient for this purpose. The ordinary meaning of “pattern of conduct” suggests a series of similar acts, rather than something arising from a single act. The time between the registrations of <felsina.com> domains (in 1997) and <felsina.biz> and <felsina.info> (in 2005) indicate two separate acts which are sufficient, in this Panel’s view, to establish such a pattern.
The Respondent’s unsuccessful registrations against other complainants reinforces this view. Despite the Respondent’s apparent argument to the contrary, the fact that two of these cases were under the Sunrise Challenge Policy does not detract from that conclusion. Paragraph 4(b)(ii) is not limited in its terms to registrations challenged under the Policy. The pattern of conduct required is merely that of relevantly registering domain names.
Paragraph 4(b)(iv)
Paragraph 4(b)(iv) requires, among other things, that the Respondent knew or ought to have known of the Complainant, to establish that the Respondent intentionally attempted to attract Internet users by creating confusion with the Complainant’s mark.
The general consensus of panels regarding the requisite level of intention under paragraph 4(b)(iv) is that the Respondent actually knew of the Complainant when it registered the domain name or as some panels have found in certain cases, ought to have known (‘constructive knowledge’) of the Complainant. (See, e.g., The Sportsman’s Guide, Inc. v. Modern Limited, Cayman Islands, WIPO Case No. D2003-0305; ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425; Ticketmaster Corp. v. Spider Web Design, Inc., WIPO Case No. D2000-1551. See also paragraph 3.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.)
Did the Respondent have actual knowledge?
The evidence does not clearly establish that the Respondent had actual knowledge of the Complainant when it registered <felsina.com>. That disputed domain name was registered by the Respondent in 1997, before the date of registration of the Complainant’s marks. There is no evidence of use of that disputed domain name, before October 2006, at which time the Respondent provides evidence that the disputed domain name reverted to a portal site.
Did the Respondent have constructive knowledge?
The Panel however finds that the Respondent ought in this case to have known of the Complainant’s rights.
The Complainant’s registered trademark rights were first filed in 1995. The Complainant also gives evidence of trading in the United States of America and Canada under at least the name “Fattoria di Felsina”, and in wines that variously incorporated the term “Felsina”, as far back as the early 1980’s.
Usually, if a domain name “is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right”. (See item 3.1, WIPO Overview of Panel Views on Selected UDRP Questions.)
However, the Complainant has provided evidence that it traded using the name “Felsina” and “Fattoria di Felsina”, in both Canada where the Respondent is based, and in the contiguous and larger market in the United States of America, well before registration of the disputed domain name <felsina.com>, including by copies of marketing materials, sales receipts, magazine articles and awards for its wines.
The Complainant also provides evidence that, in October 2006, the website to which the disputed domain name referred, included a link, under the heading of “Felsina” to “outstanding wines from Italy”. Those links indicate that the Respondent was aware of the Italian market, including the market for wine in which the Complainant is involved.
The Respondent provided no evidence of its use of <felsina.com> before that date for any other purpose. As such, the inference drawn by the Panel is that this disputed domain name had been used at least as a portal site before that date, and was in all likelihood registered primarily for this purpose. The Panel also notes, on the basis of limited independent research, that according to information available on “www.archive.org”, the domain name appears to have been used to post websites (as described above in the Factual Background) essentially containing a picture of a potato and information related to the sale of domain names since 2001.
On the basis of this evidence, the Panel finds that the Respondent knew or ought to have known of the Complainant. The other elements of paragraph 4(b)(iv) are otherwise made out on the facts set out above.
For these reasons, on the grounds set out under paragraph 4(b)(ii) (in relation to <felsina.biz> and <felsina.info>) and 4(b)(iv) (in relation to <felsina.com>), the Panel finds that the Complainant has established the third element of the Policy.
7. Reverse domain name hijacking
The Respondent seeks a finding of reverse domain name hijacking but, because of the Panel’s findings above, it is not necessary to make a decision in this respect.
8. 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 names, <felsina.com>, <felsina.biz> and <felsina.info> be transferred to the Complainant.
James A. Barker
Sole Panelist
Dated: February 1, 2007