The Complainant is Barilla G. e R. Fratelli S.p.A. of Parma, Italy, represented by Studio Barbero, Italy.
The Respondent is EAC International Co., Limited of Sydney, New South Wales, Australia.
The disputed domain name <barillagroup.biz> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2013. On November 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 9, 2013, 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 November 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 3, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2013.
The Center appointed Andrew Mansfield as the sole panelist in this matter on December 20, 2013. 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.
According the information provided by the Registrar, the Respondent registered the disputed domain name <barillagroup.biz> on January 12, 2013.
The Complainant has been doing business since 1877 and has invested globally in its BARILLA mark which has been registered for decades prior to the Respondent’s registration of the disputed domain name.
The Complainant owns trademark registrations for BARILLA in various classes including in relation to food products as provided in Annexes 3.1, 3.2, 3.3, 3.4, 3.5, 3.6, 3.7, 3.8 and 3.9 to the Complaint.
The Complainant has registered multiple generic Top-Level Domains and country code Top-Level Domains for the word “barilla” and also registered several domain names incorporating the word “barilla” as listed in Annex 5 to the Complaint. Twenty-eight of those domain names include both the trademark “barilla” and the word “group.” The Complainant has operated a website at “www.barillagroup.com” as a primary web portal for global promotion of its products since August 2, 2002.
The Complainant contends that the disputed domain name <barillagroup.biz>, by virtue of containing “barilla” in its entirety, is confusingly similar to the Complainant’s BARILLA mark. The Complainant asserts that the mere addition of the generic word “group” does not make the disputed domain name distinctive. Further, the Complainant argues that the addition of the word “group” may actually increase the degree of confusing similarity because the Complainant operates a website at “www.barillagroup.com”. Accordingly, the Complainant asserts that it has satisfied the identity or confusing similarity requirement in paragraph 4(a)(i) of the Policy.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy. The Complainant states that the Respondent is not a licensee. The Complainant contends that “Barilla” is not descriptive, and further contends that through its use has become a highly distinctive and well-known mark. The Complainant contends that Internet screenshots of the sponsored link website to which the <barillagroup.biz> leads shows that the Respondent’s use is not legitimate noncommercial use nor is it fair use. The website operated by the Respondent at “www.barillagroup.biz” contains what appear to be paid or commercial advertisements for diverse services and demonstrates, according to the Complainant, the Respondent’s intent to commercially profit from misleading consumers searching for the Complainant’s business.
The Complainant further contends that the Respondent registered and is using the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy. The Complainant asserts that the Respondent knew of the Complainant’s trademark, company name and business prior to registering the disputed domain name. The Complainant asserts that the Respondent’s links to third-party goods and services and the parties’ exchange of correspondence seeking payment of EUR 1,690 for the sale of the disputed domain name is compelling evidence of bad faith use.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a 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.
According to the Policy, paragraph 4(a)(i), the Complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Based on the extensive evidence of trademark registrations, use of its BARILLA mark in the dozens of domain names registered by the Complainant and on several websites in multiple languages, and the Complainant’s evidence of extensive sales around the world, the Panel finds that the Complainant has demonstrated that it has rights in its BARILLA trademark.
The Panel further finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark since it incorporates the entirety of the BARILLA trademark. The only difference between the Complainant’s trademark and the disputed domain name is the addition of the generic term “group” and the Top-Level Domain (“TLD”) extension “.biz.” The Panel finds that the TLD extension has no relevance to the disputed domain name beyond functional necessity. Further, the addition of the word “group” is likely to lead to further confusion. The word “group” implies that the dispute domain name is part of a corporate web portal. See, e.g., AXA SA v. Domains by Proxy, LLC/ Axagruop, WIPO Case No. D2012-2523. The Panel adheres to the well-established principle that TLD extensions are irrelevant distinctions which do not change the likelihood for confusion and typically are excluded from consideration as being a generic or functional component of a domain name. Belo Corp. v. George Latimer, WIPO Case No. D2002-0329. When the TLD is ignored as an irrelevant distinction and the word “group” is added to the trademark BARILLA, the disputed domain name is confusingly similar to the trademark BARILLA and the Complainant’s web portal at <barillagroup.com>.
Accordingly, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.
According to the Policy, paragraph 4(a)(ii), the Complainant must demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant asserts the Respondent is not a licensee or an authorized agent of the Complainant or in any other way authorized to use the Complainant’s trademark BARILLA. Screenshots of the Respondent’s website at the disputed domain name (Annexes 7.1, 7.2, 7.3 and 7.4 to the Complaint) show sponsored links to third-party websites and an offer to sell the disputed domain name.
“[M]ere use of the disputed domain names to attract customers, for commercial gain, to Respondent’s website by creating consumer confusion with Complainant’s trademarks would not […] establish rights or legitimate interests in the domain names on the part of Respondent.” Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057.
While the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the Respondent did not provide any information to the Panel asserting any rights or legitimate interests it may have in the disputed domain name.
Paragraph 4(c) of the Policy lists a number of circumstances which can be taken into consideration to demonstrate a respondent’s rights or legitimate interests in a domain name. However, there is no evidence before the Panel that any of the situations described in paragraph 4(c) of the Policy apply to the present case.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.
According to paragraph 4(a)(iii) of the Policy, for a complaint to succeed, the panel must be satisfied that the disputed domain name was registered and is being used in bad faith.
There is no evidence that the Respondent conducts any legitimate commercial or noncommercial business activity under the name “Barilla,” nor is there evidence that the Respondent is commonly known under such name. The Complainant, on the other hand, has been doing business under the “Barilla” name for over a century and uses the trademark on food products, employing “more than 14,000 people and in 2010 had net sales of more than EUR 4 billion. It owns 43 production sites (13 in Italy and 30 outside Italy) and exports to more than 100 countries.” The Complainant even has a subsidiary in Australia, the alleged home country of the Respondent. The Complainant operates websites under the “Barilla” name that have tens of thousands of online visitors every month. In this Panel’s view, it is impossible to conclude that the Respondent was not aware of the Complainant's trademark when registering the disputed domain name.
The disputed domain name directed Internet users to a website featuring sponsored listings and advertising links related to a wide variety of goods and services. The Complainant points out that such a link, at the time of its investigation, lead to adult content that disparages its trademark. The Respondent’s website also stated that the disputed domain name was available for purchase. The Complaint Annex 9.2 presents emails exchanged in English wherein the Respondent demanded EUR 1,690 for the disputed domain name.
The Respondent has provided no evidence of any actual or contemplated good faith use by it of the disputed domain name, nor did the Respondent reply to the Complainant’s contentions.
The Respondent apparently acquired the disputed domain name to profit from selling that domain name to the Complainant, the owner of the trademark BARILLA, or to capture click-through revenues based on web traffic from consumers seeking information on the Complainant and its products. Either of these purposes is sufficient for the Panel to find that the disputed domain name was registered and is being used in bad faith. The Panel does find that the disputed domain name was registered and is being used in bad faith.
Accordingly, the Panel considers paragraph 4(a)(iii) of the Policy to be fulfilled.
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 <barillagroup.biz> be transferred to the Complainant.
Andrew Mansfield
Sole Panelist
Date: January 6, 2014