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Consorzio per la Tutela dell’Asti v. Mr. Alexander Albert W. Gore [2004] GENDND 901 (14 July 2004)

1. The Parties

The Complainant is Consorzio per la Tutela dell’Asti, Palazzo Gastaldi, Asti, of Italy, represented by Studio Legale Jacobacci e Associati, Italy.

The Respondent is Mr. Alexander Albert W. Gore, Ukrainian Cat. University, Lviv Rudno, of Ukraine.

2. The Domain Name and Registrar

The disputed domain name <astispumante.net> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2004. On May 13, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On May 13, 2004, eNom 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 May 18, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 8, 2004.

The Center appointed Christian Gassauer-Fleissner as the sole panelist in this matter on June 10, 2004. 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.

On June 30, 2004, an Administrative Panel Procedural Order No. 1 was issued by the Center. In this order the Complainant was requested by the Panel to present the relevant excerpts of the Ministerial Decree dated November 29, 1993, in copy together with an English translation of the relevant clauses due to the fact that the Complainant based its claim on this Ministerial Decree, however has not submitted evidence of the existence of this Decree.

To present this Ministerial Decree, respectively the relevant excerpts thereof, the Panel set a time period of seven days as of the notification of the Panel Order. The Complainant has submitted the respective filing on July 1, 2004.

4. Factual Background

Complainant is an Italian entity controlling the use of the denomination of controlled and guaranteed origin status of “ASTI” wine in accordance with the Ministerial Decree dated November 29, 1993. According to Art. 2 of this Decree wines with the denomination of controlled and guaranteed origin status “ASTI” must be made only with grapes from vineyards of white Moscato wine. Under Art. 1 (a) of this Decree it is set out that the denomination “ASTI” without other information or accompanied by the specification spumante (“Asti” or “Asti Spumante”) is reserved to the type of sparkling wine as further described under the Decree.

The word “spumante” means in Italian “sparkling wine”.

According to the sheet provided by Complainant in Annex 1, Complainant has registered several trademarks, including the word “ASTI”, in particular

reg. no.	mark	class	country
IR 496278 (priority 2.8.1985)	Device Consorzio dell’ Asti (collective/certification mark)	33	various states
IR 652246 (priority 12.3.1996)	Device Consorzio dell’ Asti (collective/certification mark)	33	various states

Complainant has provided excerpts of the following three trademark registrations, in Annex 2 namely:

reg. no.	mark	class	country
531744 (priority 27.11.1984)	ASTI	Certification mark	Canada
257987 (priority 27.6.2002)	ASTI	33	Paraguay
73 (priority not to be seen on the excerpt)	ASTI	33	Peru

Respondent has registered the domain <astispumante.net> on May 7, 2003, and is using it to attract users to pornographic pages.

Respondent already was subject to other WIPO domain cases wherein other panels have assumed bad faith of Respondent as follows:

5. Parties’ Contentions

A. Complainant

Complainant submits that the domain name <astispumante.net> is confusingly similar respectively identical to the denomination of origin “Asti Spumante” which may only refer to products guaranteed by Complainant as being sparkling wine legitimately indicated as “ASTI” under the 1993 Decree. Complainant further contents, that Respondent has no right or legitimate interest in respect to the domain name at issue and that Respondent has registered and is using the domain name at issue in bad faith. Bad faith of the Respondent is shown by the fact that Respondent must have been aware of the famous denomination “ASTI SPUMANTE”, and by Respondent using the domain at issue to lead visitors to a pornographic page. Respondent has been subject to several other decisions where bad faith of Respondent was found by other panels.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

According to paragraph 14 (b) of the Rules the Panel shall draw such interferences from this default, as it considers appropriate.

6. Discussion and Findings

A. Identical or Confusingly Similar

The domain astispumante.net is confusingly similar to Complainant’s trademarks “ASTI” and “CONSORZIO DELL’ASTI”. The word “spumante” only is a descriptive term for “sparkling”, the word “consorzio” also is a descriptive term for “association” whereas “Asti” for wines and sparkling wines is a distinctive word. The trademarks of Complainant are of better priority than Respondent’s domain registration. The Panel therefore considers the trademarks of Complainant “ASTI” and “CONSORZIO DELL’ASTI”, confusingly similar compared to Respondent’s domain name <astispumante.net>.

The Panel also concludes that the domain in dispute is identical with the denomination of origin “Asti Spumante”.

B. Rights or Legitimate Interests

Neither is Respondent affiliated with Complainant, nor has Complainant consented to Respondent’s registration of the domain name in dispute. Respondent uses the domain name <astispumanti.net> to lead users to pornographic sites, which circumstances are sufficient to show the absence of rights or legitimate interests in the disputed domain name on part of Respondent.

In absence of any submission by Respondent, Panel therefore concludes, that no such rights or interests exist on behalf of Respondent.

C. Registered and Used in Bad Faith

It can not be seriously assumed that Respondent may not have been aware of the denomination of origin “Asti Spumante” which in fact is well known for white sparkling Italian wine of certain origin. Also the circumstances that Respondent already was subject of other WIPO domain decisions in respect to trademarks, such as Ermenegildo Zegna, wherein bad faith of Respondent was found, are indicating that also the domain name <astispumante.net> was registered by Respondent in bad faith. Finally Respondent is using the domain name at issue for the sole purpose of leading visitors of this website to pornographic sites. The registration of websites incorporating in particular trademarks several times was founded to be use in bad faith when the net users are directed to pornographic websites (“Mousetrapping”, for instance Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022, <holidayinnakron.com>). Under these circumstances, the conclusion is inescapable, that Respondent has registered and used the domain in dispute in bad faith, with the purpose of lead users to pornographic sites.

In absence of any submission by Respondent contesting the facts brought forward by Complainant in conjunction with the pornographic site still to be seen when entering the domain name <astispumante.net>, Panel finds that the condition of paragraph 4(a) (iii) of the Policy is fulfilled.

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 domain name, <astispumante.net> be transferred to the Complainant.

Christian Gassauer-Fleissner
Sole Panelist

Dated: June 14, 2004