ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is Consorzio per la tutela del formaggio Grana Padano of Desenzano del Garda (BS), Italy. In its Complaint, filed online with eResolution on June 12, 2000, Consorzio per la tutela del formaggio Grana Padano seeks the transfer of the domain name granapadano.com registered in the name of Mr Cristiano Colombi of Melegnano (MI), Italy.
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's website on June 12, 2000. The hardcopy of the Complaint Form was received on the same date. Payment was received on May 4, 2000.
Upon receiving all the required information, eResolution's clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the required contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
The inquiry leads the Clerk's Office of eResolution to the following conclusions: the Registrar is Network Solutions Inc., the Whois database contains all the required contact information, the contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.
An email was sent to the Registrar by eResolution Clerk's Office to confirm the name of the billing contact and to obtain a copy of the Registration Agreement on June 12, 2000. The requested information was received on June 19, 2000.
The Clerk's Office then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.
The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on June 19, 2000. That date is the commencement date of the administrative proceeding.
On June 19, 2000, the Clerk's Office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.
On July 8, 2000, the Respondent submitted, via eResolution Internet site, his response. The signed version of the response was received on the same date.
On July 17, 2000, the Clerk's Office contacted Mr. Riccardo Roversi and requested that he act as panelist in this case.
On July 18, 2000, Mr. Riccardo Roversi accepted to act as Lead Panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On July 18, 2000, the Clerk's Office forwarded a user name and a password to Mr. Riccardo Roversi, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On July 18, 2000, the parties were notified that Mr. Riccardo Roversi had been appointed and that a decision was to be, save exceptional circumstances, handed down on July 31, 2000.
On July 31, 2000, Lead Panelist ordered that Complainant file a copy of the agreement entered with Mr Medeghini and relating to the use by the latter of the domain names granapadano.net and granapadano.org. As a consequence, the term for the decision was postponed to August 14, 2000.
On August 3, 2000 Complainant's counsel replied to the above order.
3. Factual Background
Complainant is a consortium incorporated in 1954 in Italy in accordance with Law n. 125 of April 10, 1954.
Pursuant to said law, as well as to various other laws enacted in Italy since its incorporation, Complainant is in charge of controlling the manufacturing process of the world-famous Italian parmesan cheese "Grana Padano", with particular reference to the quality of milk used and the compliance with the provision stating that Grana Padano must be seasoned for at least 8 months.
As far as marketing of the Grana Padano cheese is concerned, Complainant holds the collective trade mark "Grana Padano" which is also a "Denomination of Protected Origin" in accordance with European Union regulations 2081/92 and 1107/96.
The possibility to make use of the words "Grana Padano" to mark products is subject to an authorization to be issued by the Complainant and to the terms and conditions of a convention to be subsequently signed between Complainant and the legal entity from time to time authorised to make use of the mark "Grana Padano".
Respondent is an Italian private individual who registered the domain name in question on November 7, 1999 (see Complainant's document 11).
By a letter dated December 27, 1999 (Complainant's document 12a) Complainant's counsel informed Respondent that, in his view, the registration was illegitimate and formally requested Respondent to transfer the domain name granapadano.com to the Consortium.
Respondent replied by a letter received by Complainant on January 25, 2000 (Complainant's document 13a). By said letter Respondent confirmed that he was willing to create and manage a web site dedicated to the sale of Grana Padano cheese under the domain name granapadano.com.
In his letter, Respondent made reference to the circumstance that the domain names granapadano.org and granapadano.net are registered and are being used by a Mr. Medeghini and that the Consortium never challenged the right of Mr. Medeghini to make use of these domain names.
Complainant initially stated (page 6 of the Complaint Form) that the Consortium entered into an agreement with Mr Medeghini concerning the use by the latter of the domain names granapadano.org and granapadano.net.
However, Complainant's counsel subsequently stated (in its supplementary submission of August 3, 2000) that the initial reference to an agreement with Mr Medeghini was a mistake and that no agreement at all exists with Mr Medeghini in connection with the above mentioned domain names. Complainant's counsel further added that an agreement does exist in connection with the use of the domain name granapadano.it and confirmed that Complainant was ready to submit a copy of this agreement should lead panelist consider this opportune.
Lead panelist personally ascertained that a company (Industria Agricola Casearia Medeghini Snc of Mazzano, Italy) registered three domain names and, in particular, medeghini.com on June 14, 1996, granapadano.org and granapadano.net on January 11, 1999. All these domain names are active and are connected to the same web site, which is the corporate web site of Industria Agricola Casearia Medeghini. Industria Agricola Caseraria Medeghini is a producer of Grana Padano, but makes use of its web site to promote other diary products, including milk, butter and various other cheeses.
In 1998, Industria Agricola Casearia Medeghini registered also the domain name granapadano.it, which was subsequently transferred to the Consortium and is now used by the latter as its official web site.
4. Parties' Contentions
(i) Copy or Similarity
Complainant based its claim on the circumstance that the domain name granapadano.com is identical to the mark which belongs to the Consortium and is also identical to the name under which the product is known world-wide.
Respondent expressly recognised that the domain name is identical to a trade mark registered by Complainant (see page 3 of the Response Form), but - at the same time - he objected that Complainant is a non-profit organisation. In Respondent's view a non-profit organisation should only make use of .org domain names and, therefore, may not have any interest to a .com domain name.
As far as illegitimacy is concerned, Complainant remarked that Respondent is an individual who is not known with the name "granapadano", is not holder of any authorisation to trade in Grana Padano cheese, is not a member of the Consortium and has never made use of the domain name granapadano.com.
Respondent's reply is quite confused. He repeated that the Consortium is a non-profit organisation and, as such, it should not have any interest to a .com domain name. He also stated that he will make use of the domain name in question only to sell original Grana Padano cheese, which he will buy only from authorised producers and that he proposed to the Consortium to insert in his web site a link to the official Grana Padano's web site. Lead Panelist notes that this last statement is confirmed by the clear wording of Respondent's letter received by Complainant on January 25, 2000 (Complainant's document 13a).
(iii) Bad Faith
In Complainant's view Respondent registered and is making use of the domain name granapadano.com in bad faith. In particular Complainant states that Respondent "intentionally attempted to attract for commercial gain internet users to his web site by creating confusion with the complainant's mark to the source, sponsorship and affiliation of the product Grana Padano" (page 6 of the Complaint Form).
Complainant deals also with Respondent's statement relating to the circumstance that a Mr. Medeghini registered and is making use of the domain names granapadano.org and granapadano.net with Complainant's consent or tolerance.
As far as this issue is concerned, Complainant's position is unclear. Complainant initially stated that Mr. Medeghini (formerly a vice-president of the Consortium) was making use of the domain names in accordance to an agreement entered into with Complainant itself. Following Lead Panelist's preliminary decision ordering Complainant to submit a copy of this agreement, Consortium's counsel stated that no agreement is in force in connection with the domain names granapadano.net and granapadano.org, while an agreement was in fact signed between Mr Medeghini and Complainant in relation to the domain name granapadano.it.
5. Discussion and Findings
This procedure is regulated by the ICANN Uniform Domain Name Dispute Resolution Policy and by the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"). According to article 4(a) of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), Complainant must submit evidence confirming that in a specific case all of the following three elements are present:
(i) that the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights (Copy or Similarity); and
(ii) that respondent has no rights or legitimate interests in respect of the domain name (Illegitimacy); and
(iii) that the domain name has been registered and is being used in bad faith (Bad Faith).
Parties submissions and evidence relating to each of the above three elements will be dealt with in the following paragraphs.
(i) Copy or Similarity
As far as the Copy or Similarity issue is concerned, Respondent expressly recognized that the domain name is identical (see page 3 of the Response Form) to the Complainant's service mark As it has been already noted (see Parties' Contentions above), Respondent argued that, notwithstanding the identity, Complainant is a non-profit organization and, therefore, may not legitimately make use of .com domain names, which (in Respondent's personal opinion) are reserved to companies and other profit-oriented businesses.
Lead Panelist holds that Respondent's argument is not relevant to the purpose of discussion on the element provided by article 4(a) of the Policy (Copy or Similarity). The Copy or Similarity element is an objective one and should be assessed on the basis of objective evidence, without taking into whatsoever account the legal nature of parties involved in a dispute. Respondent's argument will be dealt with in the following paragraph (Illegitimacy).
Complainant submitted sufficient evidence that it holds the collective trade mark "Grana Padano" (see Complainant's documents 3a, 4a, 5, 6a - 6d, 7 and 9) and the domain name in question is identical (as it has been expressly recognised by Respondent) to this trade mark, having taken into account that the .com suffix is not relevant to the purpose Lead Panelist's evaluation regarding the Copy or Similarity issue.
Lead Panelist is therefore of the opinion that Complainant submitted sufficient evidence of similarity between the domain name in question and the Complainant's trade mark "Grana Padano".
As far as the second element is concerned, lead panelist remarked in Spincycle Inc. v. Spin Cycle (eResolution Case No. AF - 00176) that - from a general point of view - the Policy is not completely clear as to the attribution of the burden of the proof in connection with this element.
While article 4(a) states that Complainant shall prove the illegitimacy of the registration, article 4(c) of the Policy states that "any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based in its evaluation of all evidence presented, shall demonstrate your [Respondent's] rights or legitimate interests to the domain name". From the wording of the above provision (which makes use of the words "proved", "demonstrate"), it seems to lead panelist that Respondent (not Complainant) has to prove that it has rights or legitimate interests to the domain name in question.
In the present case, Complainant stated that Respondent has no right or legitimate interest to make use of the domain name granapadano.com since (a) he is not known with the name "granapadano" or similar, (b) he is not an authorised producer of Grana Padano cheese, (c) he is not a member of the Consortium and (d) he has never used the domain name being the subject of this dispute to sell, or otherwise trade in, Grana Padano cheese.
Respondent did not submit any direct evidence that it holds any right to make use of the domain name granapadano.com. Respondent relied solely on (a) the circumstance that, in his opinion, Complainant may not have any interest to .com domain names since it is a non-profit organization and (b) the circumstance that in December 1999 he requested an "IT consultant" to provide him with an estimate of costs for the realization of a web site dedicated to the sale of Grana Padano cheese.
According to article 4(c) of the Policy, the existence of Respondent's right or legitimate interest may be demonstrated by any of the following circumstances:
(i) use of, or demonstrable preparations to use, the domain name by Respondent before any notice of the dispute, in connection with a bona fide offering of goods or services;
(ii) respondent has been commonly known by the domain name, even if it has not acquired trade mark or service mark rights;
(iii) respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Respondent's first argument does not fall within article 4(c) of the Policy and, in Lead Panelist's opinion, it may be considered as a preliminary issue by which Respondent disputes that a non-profit organization may have claims in connection with a .com domain name.
This argument may not be accepted. While it is true that the .com suffix stands for "company" or "commercial" and it is also true that the .org suffix stands for "organization", this represents only the historical explanation of the existence of the .com and .org generic top-level domains.
Lead Panelist is of the opinion that there is no rule in force providing that a non-profit organization may not register and make use of .com domain names. This conclusion is supported by the following circumstances: (a) no preliminary control exists as to the legal nature and/or activity of the registrant and as to the compatibility of said legal nature and/or activity with the gTLD used for the registration of the relevant domain name and (b) gTLDs are by definition "generic", i.e. they may be used to register any kind of domain name, relating to any kind of activity and it's up to registrant to decide the gTLD under which the registration should take place.
Respondent's second argument falls within the case provided by article 4(c)(i) of the Policy. Respondent states that he is effectively willing to start a commercial activity under the domain name granapadano.com and submits, as evidence of his "preparation to use" the domain name in question, a letter he sent to an "IT consultant" regarding his Grana Padano web site.
According to the Policy, Respondent's behaviour may be considered legitimate if the same Respondent gives evidence that he is making use (or he is going to make use) of the domain name "in connection with a bona fide offering of goods or services".
Since the Policy makes express reference to the concept of "bona fide", Lead Panelist holds that Respondent's second argument relating to the Illegitimacy element should be evaluated together with the third element (Bad Faith) requested by article 4 of the Policy. It is Lead Panelist's opinion, that - from a purely logical point of view - it is not possible that a party is offering in good faith products and/or services under a domain name and, at the same time, it has registered and is making use of the same domain name in bad faith. Lead Panelist holds that article 4(a)(iii) of the Policy should be interpreted extending the meaning of "good faith use" also to the nature and content of any activity carried on under the relevant domain name.
For the time being, subject to any subsequent evaluation, it could be however noted that Respondent did not submit sufficient evidence of his preparation to use the domain name granapadano.com. The letter dated December 2, 1999 (Respondent's document 6a) is very general, contains unrealistic figures and it was sent by a private individual who apparently does not even hold a VAT number and, therefore, does not appear to be professionally active in the web design field.
For the above reasons, subject to the evaluation of circumstance provided by article 4(c)(i) (which will be examined in the following subparagraph), Lead Panelist holds that Respondent has no rights or legitimate interests to the domain name being the subject of this dispute.
(iii) Bad Faith
Under article 4(b) of the Policy, evidence of registration and use in bad faith of the domain name at issue is given if any of the following circumstances is proved:
(i) respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of respondent's documented out-of-pocket costs;
(ii) respondent registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has been engaged in a pattern of such conduct;
(iii) respondent registered the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of respondent's web site or location or of a product or service on its web site or location.
Complainant statements are based on paragraph (iv) above, while the essence of Respondent's reply is (once again) that there does not exist any competition between himself and Complainant since the latter is a non-profit organization.
In other words Respondent does not dispute that, using the domain name granapadano.com, he will inevitably benefit from the world-wide reputation of the Grana Padano cheese, but he raises a preliminary issue regarding the possibility that a non-profit organization may have legitimate claims relating to a .com domain name.
A non-profit organization is a legal entity whose aim is different to that of making a profit, but nevertheless this legal entity may well be owner of assets, even of a substantial value. In the present case Complainant is certainly a non-profit organization and, in particular, is a consortium incorporated in accordance with a law providing for the creation of an independent body in charge of monitoring the production and marketing of the Grana Padano cheese. In the course of its activity, Complainant has registered a collective trade mark (Grana Padano), which - thanks to the world-wide success of the Grana Padano cheese - is now a valuable asset: the trade mark in question is a very famous one and, as such, could be easily used to mark products other than cheese and diary products. Complainant can't start any commercial activity (since it is a non-profit body), but there is no Italian law provision preventing Complainant to enter into a licence agreement authorising a third party to make use of the Grana Padano logo to mark new products, against payment of a consideration.
In Lead Panelist's opinion, Respondent's interest to start a new commercial activity may not have priority on Complainant's legitimate interest to safeguard its valuable asset represented by the Grana Padano trade mark. As a consequence of a decision in favour of Complainant, Respondent could still create a web site to sell Italian cheeses online and could even negotiate with Complainant an agreement authorising him to make use of granapadano.com. On the other hand, a decision in favour of Respondent would deprive Complainant of the possibility to exploit its trade mark as a domain name.
Respondent's preliminary argument is therefore rejected and, reverting to the analysis of the Bad Faith element, Lead Panelist holds that evidence of bad faith has been given and, in particular, that the circumstance provided by article 4(b)(iv) of the Policy occurred in this case.
For the same reason Lead Panelist holds that Respondent may not claim that he had right or legitimate interest to the domain name in question on the basis that its activity was connected with "a bona fide offering of goods or services". It is Lead Panelist's opinion that if evidence is given of registration and use in bad faith, it is no longer possible to hold that Respondent registered the domain in connection with a bona fide offering of goods and services: the bad faith affecting registration and use of the domain name should be certainly extended to the activity carried out through the Respondent's web site.
(iv) Complainant's behaviour in the course of this procedure
Finally, Lead Panelist wishes to briefly comment on the behaviour of Complainant and its counsels in the course of this procedure.
In particular, Lead Panelist reminds that Complainant undersigned the Complaint Form and, consequently, declared that "the information contained in this Complaint is to the best of Complainant's knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaints are warranted under these Rules and under applicable law, as it now exists or as it may be executed by a good-faith and reasonable argument".
As it has been already noted (see Factual Background and Parties' Contentions above), Complainant initially stated that it entered into a specific agreement allowing Industria Agricola Casearia Medeghini to make use of the domain names granapadano.org and granapadano.net.
Following Lead Panelist's preliminary decision dated July 31, 2000 ordering Complainant to submit a copy of this agreement, the same Complainant modified its original declaration, stating that Industria Agricola Casearia Medeghini is not authorized to make use of the above mentioned domain names and that the Consortium reserves the right to start a new procedure in accordance with the Policy against Industria Agricola Casearia Medeghini.
Lead Panelist is of the opinion that this behaviour does constitute a breach of the representation contained in the Complaint Form as well as of the general principle of law requesting all parties involved in a dispute to act in good faith.
Lead Panelist is aware that no provision of the Policy and the Rules attributes to the panel the power to issue any decision relating to such breach, with the exception of the provision concerning reverse domain name hijacking, which - however - is applicable only where the complaint is rejected.
Notwithstanding the above, Lead Panelist holds that Complainant's breach should be expressly mentioned in this decision so as to allow Respondent to take any further step he might consider opportune.
For the above reasons, Lead Panelist orders that the domain name granapadano.com be transferred to the Complainant.
Signed on this 14th day of August 2000 in Milan by the lead panelist Riccardo Roversi
(s) Riccardo Roversi