DECISION

Jens Schmidt v. Vieri Salvadori

Claim Number: FA0305000157328

PARTIES

Complainant is Jens Schmidt, New York, NY ("Complainant") represented by Mark Warren Moody. Respondent is Vieri Salvadori, Siena, Italy ("Respondent") represented by Lawrence A. Berglas.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <montecastellioliveoil.com>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Timothy D. O'Leary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 15, 2003; the Forum received a hard copy of the Complaint on May 19, 2003.

On May 20, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <montecastellioliveoil.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On May 30, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 19, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@montecastellioliveoil.com by e-mail.

A timely Response was received and determined to be complete on June 18, 2003.

Complainant's Additional Submission was received and determined to be timely on June 23, 2003.

Respondent's Additional Submission was received and determined to be timely on both June 28 and June 30, 2003.

Complainant filed a Second Additional Submission that did not comply with the Forum's Supplemental Rule #7 on June 30, 2003.

Respondent filed a Second Additional Submission that did not comply with the Forum's Supplemental Rule #7 on July 2, 2003.

On July 7, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Timothy D. O'Leary as Panelist.

PROCEDURAL MATTERS

Complainant filed a Second Additional Submission in this case that did not comply with the Forum's Supplement Rule #7.  Respondent submits a rebuttal to this Submission urging the Arbitrator to disregard it.

I have decided to consider all submissions filed by Complainant and Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A. Complainant

Complainant contends that:

1) The domain name <montecastellioliveoil.com> is confusingly similar to Complainant's MONTECASTELLI mark;

2) Respondent has no rights to or legitimate interest in this domain name; and

3) The domain name was registered and is being used in bad faith.

Contention No. 1

As to the Identical and Confusingly Similar Contention, Complainant states:

Complainant argues that Respondent's <montecastellioliveoil.com> domain name is confusingly similar to the MONTECASTELLI mark.

Complainant maintains that it has established rights in the MONTECASTELLI mark through registration of the mark with the U.S. Patent and Trademark Office, as well as through widespread and continuous use of the mark in commerce since 1993.

The mark is used in connection with the promotion and marketing of the sale of olive oil.

Complainant contends that MONTECASTELLI is the name of an 11^th Century monestary located in Tuscany, Italy.  She states that it was purchased from Respondent's mother in March 1993.  On October 28, 1999 Complainant registered the Internet domain name <montecastellioliveoil.com> as a home site for Montecastelli Selections, Ltd. ("MSL") which is in the business of producing and selling olive oil and wine.

Further, Complainant states that the mark MONTECASTELLI is an almost unique name mark, and that while the domain names are not identical there can be little dispute that they are confusingly similar.  Complainant contends that Respondent has sought to capitalize on Complaint's work in a calculated campaign to confuse the public.

Response of Respondent to Contention No. 1:

Respondent states that the MONTECASTELLI property has been in Respondent's family since 1843 and that Complainant purchased only a portion of it; that neither Complainant nor Respondent are the sole owners of the geographical location known as MONTECASTELLI.  Respondent contends that Complainant cannot establish rights in a geographic term under the UDRP.  There is no protection for geographic names.  Further, Respondent states that MONTECASTELLI is part of Respondent's present home.  Respondent argues that Complainant cannot be granted an exclusive right of a geographic term.  MONTECASTELLI is a geographic term and the rights of Respondent to his domain name should not be excluded.

Complainant's Additional Submission under Contention No. 1:

Complainant contends that the registered MONTECASTELLI mark is not a geographic term, and is therefore an enforceable mark under the UDRP ("Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning").

Complainant contends in response that the complex of buildings located in Monteriggioni, Siena, are composed of two urban buildings, formerly rural, named Costello and Monte-Castelli.  In addition, the deed of sale states that the buildings and not the land are called MONTECASTELLI.

In addition, MONTECASTELLI has never been used as a business name or a promotional tool until Complainant had her success.  Complainant states that a user of a mark may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it.

Respondent's Additional Response to Contention No. 1:

Respondent does not argue that MONTECASTELLI is a geographic place, only that MONTECASTELLI appears on bills, official land surveys, etc.  Respondent contends a Google search returns approximately 1,480 separate results that include MONTECASTELLI, so MONTECASTELLI cannot be considered to be unique.  Respondent argues that MONTECASTELLI is not a thing or a name invented by Complainant permitting Complainant to effectively lock up the geopgrahic domain/place name MONTECASTELLI for her own exclusive use under the guise of a trademark confusion.  Further, a reasonable person looking up a domain name through aserach engine requires sorting through some amount of similarity and normal sorting and fact finding are not "confusion" to the reasonable person.

Complainant's Additional Response's to Contention No. 1:

Complainant's answer to Respondent's response is that a Google search of Jeeves returns 80,000 results, of Vittel 40,000 results, and of Aying over 60,000 results.  All three are true geographic terms and all three have been granted valid enforceable trademarks.  These facts highlight Complainant's claim that MONTECASTELLI is unique.

Contention No. 2

As to the Rights and Legitimate Interest Contentions, Complainant states:

Complainant asserts that on December 27, 2001, Respondent registered <www.montecastellioliveoil.com>, for the sole purpose of promoting and selling a lower quality olive oil and utilizing the goodwill brand name recognition of MONTECASTELLI.  Complainant contends that Respondent is not making a bona fide use of the domain name <www.montecastellioliveoil.com> and Respondent has no rights or legitimate interests in the name MONTECASTELLI.

Complainant contends that Respondent's deliberate use of the MONTECASTELLI mark to market olive oil at the disputed domain name is not a bona fide offering of goods and services, and is evidence that Respondent lacks rights or legitimate interests in the disputed domain name. 

Complainant suggests that it alone has rights to the word MONTECASTELLI; that the property known as MONTECASTELLI is owned exclusively by Complainant and Complainant has trademarked the word MONTECASTELLI.

Complainant further states that Respondent has no such rights or legitimate interests in the name.  Prior to Complainant's success Respondent made no effort to utilize the name MONTECASTELLI in connection with the sale of olive oil.  On the other hand, Complainant sells olive oil throughout the world.

Respondent's Response to Contention No. 2:

Even if Complainant establishes some trademark rights in MONTECASTELLI, Complainant loses because Respondent has a "legitimate interest" in the MONTECASTELLI name and can properly use it to desribe both the product and the geographic original of the product.  Futher, Respondent argues  that Complainant seeks only to monopolize the use of  a general geographic term and this is not permitted under the law.  In addition, Respondent alleges that Complainant does not even market his olive oil as MONTECASTELLI oil.

Complainant's additional submission points out that Respondent never used the name MONTECASTELLI commercially until he realized that he could capitalizle on Complainant's efforts to build the brand name MONTECASTELLI.

Contention No. 3

As to the Registration and Use in Bad Faith Contention, Complainant states:

A cursory comparison of Complainant's and Respondent's websites reveals an evident attempt by Respondent to "cyber-plagiarize" from Complainant.  This is circumstantial evidence of bad faith.  Respondent is attempting to divert customers from Complainant's olive oil to Respondent.  Respondent's use of the name MONTECASTELLI is purely for commercial gain.

Respondent's Response to Contention No. 3:

Respondent states that Complainant offers only subjective evidence of bad faith.  Complainant is required to provide concrete evidence of bad faith which Complainant has filed to do.

FINDINGS

Identical or Confusingly Similar

I find the issues on this element in favor of Complainant.

Complainant provides evidence that it has established rights in the MONTECASTELLI mark through registration of the mark with the U.S. Patent and Trademark Office, as well as through widespread and continuous use of the mark in commerce since 1993.

I find that Respondent's <montecastellioliveoil.com> domain name is confusingly similar to the MONTECASTELLI mark. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent's domain name combines Complainant's mark with a generic term that has an obvious relationship to Complainant's business) (finding that any distinctiveness resulting from Respondent's addition of a generic word to Complainant's mark in a domain name is less significant because Respondent and Complainant operate in the same industry).

I find that the registered MONTECASTELLI mark is not a geographic term, and is therefore an enforceable mark under the UDRP. See The Men's Wearhouse, Inc. v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) ("Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning"). 

Rights and Legitimate Interests

            I find the issues on this element in favor of Complainant

I find that Respondent's deliberate use of the MONTECASTELLI mark to market olive oil at the disputed domain name is not a bona fide offering of goods and services, and is evidence that Respondent lacks rights or legitimate interests in the disputed domain name. See Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant's mark and that Respondent's use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website).

Complainant argues that her MONTECASTELLI mark means "castle on the mountain," and is not a geographic term, and should be afforded a high degree of protection as a result of being "nearly unique." 

I find that Respondent's unauthorized use of Complainant's mark to sell a competing product is evidence that Respondent lacks rights or legitimate interests in the  <montecastellioliveoil.com> domain name, which entirely incorporates Complainant's mark.

I find that Respondent has no right to use the MONTECASTELLI mark, and was not "commonly known by" the mark or name prior to the registration of the disputed domain name. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

I find that Respondent has no rights or legitimate interests in the disputed domain name.

Registration and Use in Bad Faith

I find the issues on this element in favor of Complainant

Complainant contends that Respondent's use of the MONTECASTELLI mark, to market a product inferior to that of Complainant, will dilute Complainant's mark. Complainant then argues that Respondent's registration of the disputed domain name with actual knowledge of Complainant's rights in the MONTECASTELLI mark is evidence that the domain name was registered in bad faith, and that its subsequent diluting use of the domain name evidences bad faith use.

I find that Respondent's registration and use of the disputed domain name amounts to opportunistic bad faith. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is "inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant"); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the Respondent demonstrated bad faith where the Respondent was aware of the Complainant's famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).

I find that Respondent's use of Complainant's mark disrupts Complainant's business.  This is evidence that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iii). See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also SR Motorsports v. Rotary Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001) (finding it "obvious" that the domain names were registered for the primary purpose of disrupting the competitor's business when the parties are part of the same, highly specialized field).

I find that Respondent's deliberate use of Complainant's mark so as to create a likelihood of confusion as to the source or sponsorship of the disputed domain name, for profit, is evidence that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).

Complainant rebuts Respondent's assertion that the MONTECASTELLI mark is a geographic term.  I find that the distinctive nature of the mark is evidence that Respondent registered the domain name in bad faith. See Digi Int'l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that "there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant's trademarks, actually or constructively"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

I find that Respondent's <montecastellioliveoil.com> domain name is confusingly similar to the MONTECASTELLI mark.

Rights or Legitimate Interests

I find that Respondent has no rights or legitimate interest in the disputed domain name.

Registration and Use in Bad Faith

I find that Respondent registered and used the domain name in bad faith.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <montecastellioliveoil.com> domain name be TRANSFERRED from Respondent to Complainant.

Timothy D. O'Leary, Panelist
Dated: July 29, 2003

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