WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Parmalat S.p.A. v. Domain Strategy Inc.
Case No. D2003-0021
1. The Parties
The Complainant is Parmalat S.p.A. of Parma, Italy, represented by Società Italiana Brevetti S.p.A. of Italy.
The Respondent is Domain Strategy Inc. of Quebec, Canada.
2. The Domain Name and Registrar
The domain name at issue is <parmalat-ca.com> and the Registrar is Dotster Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint by e-mail on January 9, 2003, and in hard copy on January 10, 2003. On January 14, 2003, the Center received a minor typographical correction to the Complaint from the Complainant by e-mail. The Center verified that the Complaint satisfies 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 Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules"). The Complainant made the required payment to the Center.
On January 9, 2003, the Center transmitted via e-mail to the Registrar a request for registrar verification in connection with this case and on January 16, 2003, the Registar transmitted by e-mail to the Center a verification response confirming that the registrant is Domain Strategy Inc. and that the contact for administrative and technical purposes is Richard Mandanice of Domain Strategy Inc.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on January 17, 2003, to the Respondent via e-mail the Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by February 6, 2003. Also on January 17, 2003, the Center transmitted by fax and mail copies of the foregoing documents to the Respondent at its contact fax number and address as indicated in the Registrar Verification report and the Complaint.
No Response was received from the Respondent by the due date of February 6, 2003. On February 7, 2003, Notice of Respondent Default was sent to the Complainant and to the Respondent using the same contact details and methods as were used for the Notification of Complaint and Commencement of the Administrative Proceeding. No reply by the Respondent to the Notification of Respondent Default was received.
Having received on February 17, 2003, Ms. Angela Foxís Declaration of Impartiality and Independence and her Statement of Acceptance, the Center transmitted to the parties on the same day a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Ms. Angela Fox was formally appointed as the Sole Panelist. The Projected Decision Date was March 3, 2003. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Administrative Panel shall issue its decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of any Response from the Respondent.
4. Factual Background
The Complainant describes itself as a leading Italian food company with worldwide renown. Its principal business is in processing milk and dairy products, but extracts from its financial statements for 2001, which it filed in evidence, indicate that it also trades in the vegetable, bakery and fresh food sectors. The Complainantís activities extend across five continents through a large network of subsidiaries, many of whose names reflect their parentage such as Parmalat France S.A., Parmalat de Mexico S.A., Parmalat Australia Pty, Ltd. and Parmalat Canada Ltd.
The word PARMALAT is also the Complainantís trade mark, which it claims to use worldwide on milk, milk products, bakery products, water and other non-alcoholic drinks, fruit and vegetable juices and tomato sauces. The Complainant asserts that its PARMALAT trademark is famous for dairy products in Canada, where the Respondent is based. By way of illustration it quotes its Canadian market share figures for 2001, when it claims to have held 43.9% of the market in yoghurt and 42.3% of the market in processed cheese.
The Complainant has registered its PARMALAT trademark widely. It lists nine registrations, several of which cover multiple countries, and says that there are many others in Asia, Africa and South America. Those cited cover principally food and drink in Classes 5, 29, 30 and 32 and consist of Canadian registration 242412 dating from April 3, 1980; Community Trademark registration 244319 of July 12, 1999; International Registration ("IR") R378105 of May 6, 1971; IR 469307 of June 16, 1982; IR 664731 of February 7, 1996; Italian registration 204670 of October 27, 1965; Italian registration 251337 of February 11, 1971; Italian registration 359030 of July 3, 1978; and United States registration 73182587 of August 18, 1978.
The Respondent registered the domain name <parmalat-ca.com> on October 30, 2002. The Complainant has exhibited a copy of the page accessed via this domain name at Annex 12 to the Complaint. This page bears the banner "Future Home of a Dotster Registered Domain." Below this is another banner reading "Welcome to PARMALAT-CA." Underneath, visitors are invited to "search the web for sites related to: PARMALAT-CA." There follows a list of 26 links, 14 of which bear titles clearly related to food or drink including "Food," "Bakery equipment," "Healthy eating," "Beverages," etc. The remaining 12 links bear titles which either relate to California such as "California job" and "California home" or whose meaning is unclear such as "Manufacturer," "Producer," "Ca" and "Cal." No evidence has been filed as to what the links led to, and the site is no longer accessible.
5. The Partiesí Contentions
5.1. The Complainant
The Complainant points to its rights in the trademark PARMALAT and argues that the domain name <parmalat-ca.com> is confusingly similar. The Complainant contends that since the first word of the domain name at issue is identical to the Complainantís mark and the suffix "-ca" is well-known as an abbreviation for California or Canada, Internet users will be misled into assuming that the domain name leads to an official website of the Complainant or one of its subsidiaries in Canada or California.
The Complainant asserts that the Respondent has no rights or legitimate interests in the domain name at issue. The Complainant claims to monitor the marketplace in foods internationally for possible infringements and likewise to monitor trademark applications consisting of or resembling PARMALAT through a worldwide watching service. Despite this, the Complainant states that it has never encountered any use or registration of the trade mark PARMALAT or PARMALAT-CA by the Respondent. It is implicit from the Complainantís remarks that the Complainant has not itself authorised the Respondent to use the PARMALAT mark.
It is the Complainantís case that the Respondent registered and has used the subject domain name in bad faith. The Complainant argues that the success of PARMALAT foods in the Respondentís own country, coupled with the prevalence of food-related links on the Respondentís <parmalat-ca.com> website, leads to the inexorable conclusion that the Respondent knew about the Complainantís PARMALAT trade mark prior to registration of the subject domain name and intended to attract Internet users who were seeking the Complainantís legitimate site.
5.2. The Respondent
The Respondent did not respond to the case against it and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with Paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondentís default.
6. Discussion and Findings
Under Paragraph 4(a) of the Policy, a Complainant can only succeed in an administrative proceeding under the Policy if the Panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests to the domain name;
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a Complainant can succeed in an administrative proceeding under the Policy.
6.1. Identical or Confusingly Similar to Complainantís Mark
The Complainant is the owner of Italian, Canadian, United States, Community and International trade mark registrations for PARMALAT which predate the registration of the domain name at issue. Apart from the non-distinctive domain name suffix ".com," which does not affect the question of identity or confusing similarity, the only difference between the Complainantís mark and the domain name at issue is the suffix "-ca" in the latter. The domain name is not identical to the Complainantís mark. The question is therefore whether the suffix "-ca" is enough to avoid confusing similarity.
In considering this question, the Panel notes that trade marks are frequently used with suffixes or other words or abbreviations that denote a characteristic of the business under that mark. The Complainantís own subsidiary names are good examples of this. The Canadian public is apt to perceive PARMALAT as the principal element in the company name Parmalat Canada Ltd., because the words "Canada Ltd." are descriptors which shape the business context of PARMALAT but do not transform the mark into something else. Likewise, where a distinctive trade mark appears in its entirety within a domain name and is followed by a suffix which can bear a plausible descriptive meaning in respect of that mark, Internet users will be likely to focus on the mark as the principal element and the suffix as a mere descriptor.
In this case, the suffix "-ca" is set apart from PARMALAT by a hyphen which emphasises the discrete nature of the trademark. The letters CA are well-known as the postal abbreviation for the state of California and as a common abbreviation for Canada. The titles of some of the links on the Respondentís site encourage visitors to assume that the suffix refers to California. Even without this further information, however, a commonly known geographical indicator such as "-ca" would be likely to foster the presumption, based on the structure of the domain name and the inherent distinctiveness of PARMALAT, that the site was linked to the business in PARMALAT foods in California or Canada. Similar findings on the impact of geographical indicators were reached concerning the domain names <dellca.com> and <toeflrc.org> in Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363 and Educational Testing Service v. Park Jeong Foreign Language Institute, WIPO Case No. D2001-1064.
The Panel agrees that the domain name <parmalat-ca.com> is confusingly similar to the Complainantís earlier registered trademark PARMALAT.
6.2. Respondent Has No Rights or Legitimate Interests in Domain Name
The Panel can find nothing in the facts as presented by the Complainant, and which are uncontested by the Respondent, which suggests that the Respondent can have any rights or legitimate interests in the domain name <parmalat-ca.com>.
There is nothing in the Respondentís website page as annexed to the Complaint which suggests that the Respondent had used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services, was commonly known by the domain name or was making any legitimate, non-commercial use of the domain name, without intent for commercial gain to misleadingly divert consumers. What use has been demonstrated is of ambiguous intent, probably deliberately so, and cannot be described as non-commercial in the absence of corroborating information.
The Panel deems that the Complainant has established an arguable case and that the burden of proof has thus shifted to the Respondent to show that there is a right or legitimate interest which justifies his registration. The Respondent has not challenged the assertion that it has no such right or interest and has not discharged this burden. The Panel finds that the Respondent has no rights or legitimate interests in the domain name <parmalat-ca.com>.
6.3. Registration and Use of Domain Name in Bad Faith
The Complainantís evidence is not enough on its own to establish that the PARMALAT trademark is world-famous as contended. However, it is enough to demonstrate that the Complainant has an international business in foods, including a substantial trade in dairy products in the Respondentís own country. Moreover, PARMALAT is an inherently distinctive trade mark, being an invented word which alludes to dairy products and the Parma region of Italy, but which has no independent meaning in Italian, English or even French, the latter two of which are spoken in the Respondentís country. It is not the type of mark which could easily be adopted independently by another without knowledge of the Complainantís use, and particularly not by one who has no connection to Parma or the dairy business.
The Respondent does not appear to have any connection to Parma or the dairy trade. It has not attempted to explain how it came to adopt the Complainantís trademark as part of its domain name. There is a predominance of food-related links on the site which the Respondent set up. The Complainant has shown that it has a successful international business in foods with a considerable presence in the Respondentís country. There is, in short, an irresistible inference that the Respondent knew about the Complainantís trademark and that such knowledge prompted the registration of the domain name at issue. That the Respondent has not sought to lift this cloud of suspicion by providing an alternative explanation suggests that, in honesty, it could not.
More information on the type of websites accessed via the links on the Respondentís site would have been helpful, but even without them the Panel feels able to conclude that the Respondent registered the domain name <parmalat-ca.com> with the intention, for commercial gain, to attract Internet users to its website by creating a likelihood of confusion with the Complainantís trade mark, which is identified as prima facie evidence of registration and use in bad faith under Paragraph 4(b)(iv) of the Policy. The purpose of domain name registration is to direct Internet traffic to a particular site, and the Panel takes into account that it is not uncommon for domain names to be registered for the purpose of diverting traffic to particular websites, with a financial reward for the domain name owner proportional to the amount of the diverted traffic. Such practice has accounted for many cases decided under the Policy.
The fact that the Respondentís site invites visitors to select from 26 links suggests that someone stands to gain from the selection of those links. In the absence of evidence to the contrary, that person can be assumed to be the Respondent, who registered and controls the domain name leading to the site. That the domain name <parmalat-ca.com> is used to lure visitors to links which are predominantly related to the Complainantís field of trade suggests that the Respondent is seeking commercial advantage from the confusion likely to be caused by the similarity of his domain name to the Complainantís mark.
In the absence of any explanation to the contrary from the Respondent, the Panel finds that the Respondent registered and has used the domain name <parmalat-ca.com> in bad faith.
The Panel finds that the domain name at issue is confusingly similar to a trade mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the domain name, and that the Respondent has registered and used the domain name in bad faith. The Panelist requires that the domain name <parmalat-ca.com> be transferred to the Complainant.
Dated: February 26, 2003