Pasticceria Balla S.n.c. di Balla Stefano & C. v. Mr. Stanley Filoramo [2004] GENDND 948 (5 July 2004)

The Complainant is Pasticceria Balla S.n.c. di Balla Stefano & C., Torino, Italy, represented by Massimo Introvigne, of Studio Legale Jacobacci e Associati, Torino, Italy.

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The domain name which is the subject of these administrative proceedings is <torta900.biz>.

On May 17, 2004, the Complaint was filed by the WIPO Arbitration and Mediation Center (the “Center”) by e-mail and on May 19, 2004, in hard copy.

An Acknowledgement of Receipt of Complaint was sent out by the WIPO Arbitration and Mediation Center, dated May 17, 2004. On the same day, the Center sent a Request for Verification to Wild West Domains, Inc. and on May 24, 2004, Wild West Domains, responded, confirming that it was the registrar of the domain name <torta900.biz>, that the Respondent was the current registrant of the said domain name, that the Uniform Domain Name Dispute Resolution Policy applies to the said registration and that the domain name will remain locked during the pending administrative proceeding.

On May 25, 2004, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding relating to the registration of the said domain name <torta900.biz> to the Respondent. A copy of said Notification was sent to the Registrar and to the Complainant.

In accordance with the Rules, paragraph 5(a), the due date for Response was June 14, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2004.

On June 25, 2004, the Center invited the undersigned to act as Administrative Panel in these administrative proceedings, and, after having received the Statement of Acceptance and Declaration of Impartiality from him, in accordance with paragraph 7 of the Rules, the Center proceeded to appoint the undersigned as Administrative Panel on June 29, 2004. On the same day the case file was transmitted to the Administrative Panel.

In the view of the Administrative Panel, proper procedures were followed and this Administrative Panel was properly constituted. The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.

Because there is no submission from the Respondent, the facts are taken from the Complaint and are generally accepted as true.

Pasticceria Balla is an Italian manufacturer of biscuits and cakes. One of his cakes has been marketed for more than 40 years under the trademark “TORTA 900” registered in Italy (n°TO2000C002177) and in the European Union (n°1.105.055). By the way this product benefits of an effective popularity in Italy and among Italian people abroad.

1) The domain name <torta900.biz> is confusingly similar to the trademark TORTA 900;

2) The Respondent was perfectly aware of the association of “TORTA 900” with the Complainant;

3) The Respondent has no rights or legitimate interests in respect of the domain name;

As a consequence, Pasticceria Balla requests the domain name <torta900.biz> to be transferred to its own profit.

The following discussion will take place strictly within the frame of Paragraph 4 of the Policy with no regards to the Italian trademark law, i.e. in construing Paragraph 4 the Panel notes that:

- the Complainant has the burden of proof in showing that the three elements set out in the provisions listed in Paragraph 4(a) are present;

As the Complainant has furnished evidence of its ownership and continued use of the trademark “TORTA 900” over forty years, this Administrative Panel is fully satisfied that it has rights in the said trademark. As a matter of fact the Complainant has used the mark on a regular basis and the mark has acquired fame and recognition in Italy and abroad.

B. Is the domain name <torta900.biz> identical or confusingly similar to the trademark “TORTA 900” ?

The domain name <torta900.biz> is identical to the Complainant’s trademark “TORTA 900” since the generic suffix “.biz” makes no difference. All the more, the domain name can be considered as confusingly similar.

C. Has the Respondent any rights or legitimate interests in respect of the domain name ?

The panelist, looking at one or more of the circumstances listed in Paragraph 4(c), which are not exclusive but which if are found to be proved are sufficient to demonstrate the Respondent’s rights or legitimate interests in the domain name, assesses that the Respondent did not use or prepared to use the domain name <torta900.biz>, before any notice of the dispute, in connection with a bona fide offering of goods or services as total default of any answer is sufficient to prove.

By not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to Paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.

All the more, Respondent has never been commonly known in the normal course of business by the trademark or trade name TORTA 900.

Paragraph 4(b) of the Policy sets out - but without limitation - four circumstances which, if found to be present, shall be evidence of the registration and use of a domain name in bad faith.

In this case the product offered by Respondent was pornographic material. It cannot be considered, on this unique ground, that the use of the domain name was made in bad faith though some decisions seem to suggest it ( Motorola Inc, v. NewGateInternet Inc., WIPO Case No. D2000-0079). Be that as it may, the Panel found, however, Paragraph 4(b)(iv) applicable:

“by using the domain name respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or on the on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s web site or location or of a product or service on the respondent’s web site or location”.

This was in the present matter, exactly the case. Based on the case file, the Complainant has proved the third element of the Policy.

- that the Complainant, has duly proved in accordance with Paragraph 4 of the Uniform Policy;

- that the domain name <torta900.biz> is confusingly similar to the trademark “TORTA 900”;

- that M. Stanley Filoramo has no rights or legitimate interests in respect of the domain name; and

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 <torta900.biz> be transferred to the Complainant.

Generic Top Level Domain Name (gTLD) Decisions

Pasticceria Balla S.n.c. di Balla Stefano & C. v. Mr. Stanley Filoramo [2004] GENDND 948 (5 July 2004)

World Intellectual Property Organization