Illycaffe S.p.A. v. Esteban c/o Esteban
Remecz
Claim Number: FA0910001291938
PARTIES
Complainant is Illycaffe S.p.A., (“Complainant”) represented by Luca Danelon, of Kivial
s.r.l.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <illy.us>,
registered with Register.com.
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on October 29, 2009; the Forum received a hard
copy of the Complaint on November 2, 2009.
On October 29, 2009, Register.com confirmed by e-mail to the Forum that
the domain name <illy.us> is
registered with Register.com and that the Respondent is the current registrant
of the name. Register.com has verified
that Respondent is bound by the Register.com registration agreement and has
thereby agreed to resolve domain-name disputes brought by third parties in
accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution
Policy (the “Policy”).
On November 4, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 24, 2007 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of
the Rules for usTLD Dispute Resolution Policy (the “Rules”).
A Response was received on December 1, 2009 and determined by the Forum
to be deficient because it was not received prior to the Response deadline.
On December 3, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the Forum
appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
This Complaint is based on the following factual and legal grounds:
usTLD Rule 3(c)(ix).
Illycaffè (Complainant) was founded in 1933 in
The illy blend is distributed to hotels, restaurants, cafes, and is
consumed at home and in the office. It is currently marketed in 140 countries,
in all 5 continents, and is served in more than 50,000 commercial businesses.
Since 2005 exports exceed 50% of total sales.
In 2003, for its Clients all over the world, the Company created
Espressamente illy, a chain of Italian-style bars which operate under a
licensing agreement. In the course of three years, 150 bars have been opened in
20 countries. The project is supported by the “
Today the illycaffè group contributes to the development of the market
and the global coffee culture using all the elements that contribute to the
enjoyment of a perfect cup of espresso coffee: from the blend to the coffee
machines, from the training of specialized staff for bars to the study and
selection of the premises where the coffee is to be tasted, combining the
divulgation of coffee culture with a tradition that is continuously
re-interpreted.
In 2007 the illycaffè group, which includes eight controlled Companies
and one connected Company, and which employs more than 700 people, had a
consolidated turnover of € 270 million and a net profit of € 7 million.
Illycaffè has protected its distinctive signs, including “ILLY”, by
registered trademarks both in
In order to protect its property rights and to make its services
accessible on-line, illycaffè started working on the Internet already in 1996
with the domain names ILLY.COM and ILLY.IT. It then protected, over the years,
its domain names in the main generic extensions and in the extensions of the
States where the Company mainly operates.
To give an example, the domain name ILLY is currently protected in the
following extensions:
ILLY.ASIA, ILLY.BIZ, ILLY.CO.IL, ILLY.CO.NZ, ILLY.COM.HR, ILLY.COM.MX,
ILLY.COM.TR, ILLY.EU, ILLY.FI, ILLY.HK, ILLY.IE, ILLY.NU, ILLY.OR.AT, ILLY.PE,
ILLY.PH, ILLY.PT, ILLY.RS, ILLY.SE, ILLY.SG, ILLY.SI, ILLY.TK, ILLY.TW
From the above, it is clear how important the Company is and how famous
is the name “ILLY”, which is certainly known on an international level.
Further proof of the fame of the trademark is shown by a short press
review attached with this communication, containing both international and
national press advertisements, television spots, and also - as an example - the
advertising campaign started on 2004 with dates of publication on the main
Italian newspapers and magazines (where Respondent lives).
In order to meet the requirements of the usTLD Policy, we shall now
show that:
A. The domain name is
identical or confusingly similar to a trademark or service mark in which the
Complainant has rights (Rules, paras. 3(c)(ix)(1));
B. The Respondent has no
rights or legitimate interests in respect of the domain name (Rules, para. 3(c)(ix)(2));
C. The domain name was
registered and is being used in bad faith (Rules, para. 3(c)(ix)(3)).
For points A) and B) as above, the Respondent has taken over
Complainant’s trademark in its entirety.
According to the usTLD Policy, para. 4(a), Complainant proves with this
communication that the ILLY.US domain name is identical to its trademarks,
cited above and attached herewith. Complainant also states that Respondent has
no title or license to use the Complainant’s trademark, nor any authorization
to register domain names on behalf of Complainant. Moreover, specific searches
of trademarks all over the world have established that Respondent does not own
any trademark similar to or interfering with Complainant’s.
With regard to the registration and use in bad faith of the contested
domain name (point C), it should be noted that Complainant’s trademark is
extremely distinctive, since it quotes a specific Italian family name that is
neither banal nor common, that is also well-known in the coffee market.
The domain name ILLY.US is not currently linked to any active website,
returning a browser error.
A search at the site ARCHIVE.ORG, which allows users to archive the
different versions and revisions of a web site over the course of time, reveals
that the domain name has never been linked to a specific or distinctive content
created by Respondent.
As prescribed by the usTLD Policy, para. 4(c), Complainant did not find
any evidence of the Respondent’s use of, or demonstrable preparations to use, the
domain name in connection with a bona fide offering of goods or services, or
that the Respondent has been commonly known by the domain name, or finally that
the Respondent is making a legitimate non-commercial or fair use of the domain
name.
This may be considered first proof that the registration made by
Respondent was not dictated by a desire to use the domain name for his own
activity or for his own interest, and that the current owner may be considered
a “passive holder”.
Considering that the domain name was registered in 2002, and having
verified that Respondent has never used the domain name actively, it is
legitimate to believe that Respondent did not even act to use the domain name
really and correctly, and therefore the domain name is held in bad faith.
On this point numerous decisions can be found in which the Panelists
agree that the non-use of the domain name – combined with proven bad faith when
the registration was made – is an indication of bad faith, starting from
re-assignment procedures on an international level (see “Telstra Corporation v.
Nuclear Marshmallows”, WIPO Case No. D2000-0003, later
repeated and cited in numerous other decisions).
Finally, let us consider Respondent’s nationality: from the data
available publicly, Respondent appears to be an Italian citizen resident in
Padova, a city less than 200 kilometers near
In support of the figures previously given, and just to give a further
example, using the “Global Locator” service on the web site ILLY.COM operated
by Complainant, we find the sales points in bars and cafes of illycaffè
products: in Italy there are 4,460 sales points, more than 70 sales points
dealing in illycaffè products in the province of Padova, where Respondent is
resident, and 29 sales points in the city of Padova itself; this makes it clear
that Respondent cannot claim that he does not know Complainant, therefore registering
the contested domain name in bad faith.
On a side note, Complainant would eventually highlight that Respondent,
a citizen with probable citizenship and place of residence in
This means that probably the registration of the domain name infringed
the Nexus Policy of usTLD, that requires that the
registrant should be one of these:
“1.A natural person (i) who is a
2.A United States entity or organization that is (i) incorporated
within one of the fifty (50) U.S. states, the District of Columbia, or any of
the United States possessions or territories, or (ii) organized or otherwise
constituted under the laws of a state of the United States of America, the
District of Columbia or any of its possessions or territories (including a
federal, state, or local government of the United States or a political
subdivision thereof, and non-commercial organizations based in the United States)
[Nexus Category 2], or
3.A foreign entity or organization that has a bona fide presence in the
United States of America or any of its possessions or territories [Nexus
Category 3].”
B. Respondent
Respondent failed to submit a timely response. However, this Panel elects to follow J.W.
Spear & Sons PLC v. Fun League Mgmt., FA 180628 and decide the dispute
on the merits (Nat. Arb. Forum Oct. 17, 2003) (finding that where the
respondent submitted a timely response electronically, but failed to submit a
hard copy of the response on time, “[t]he Panel is of
the view that given the technical nature of the breach and the need to resolve
the real dispute between the parties that this submission should be allowed and
given due weight”).
Respondent’s
late submission was considered even though it is not quoted at length. Respondent failed to submit a timely copy in
a word processing format, which made it difficult to quote the submission at
length.
C. Additional Submission by Complainant
Concerning the NAF Case mentioned above, we would like hereby to answer
the statements submitted by the Respondent with his reply.
Although, according to usDRP rules, the Panelist is not obliged to
examine the possible reply provided by the Complainant as regards the
statements by the Respondent, we deem that a clarification from us may be
useful for the Panelist, in order to actually explain some aspects of that
account.
The Respondent made some misleading assertions:
- on the complaint, the Complainant quoted Italian market in
specific detail because - examining the
data available on the Whois - the Respondent appeared to live in
- the Respondent quotes his company and his trading
activities, but ILLY.US domain name is owned by the Respondent himself on an
individual personal basis, not as a company. As previously highlighted on the
complaint, there is no evidence that the domain has been
used to promote products or services during the years, nor the Respondent gave
demonstration of the use of the domain on his reply.
Moreover, the Respondent does not, in any way, explain the manner in
which the domain name is not identical or confusingly similar to the trademark
in which the Complainant has rights (as prescribed by usTLD Rule 3(c)(ix)(1);
usTLD Policy 4(a)(i)), nor why he should be considered as having rights or
legitimate interests in respect of ILLY.US domain name (usTLD Rule 3(c)(ix)(2);
usTLD Policy 4(a)(ii)).
Finally, the Respondent as a last statement declares his willingness to
reach an amicable agreement with the Complainant.
The Complainant appreciates this and - as a demonstration of his good
will - would like to settle the dispute eventually paying for the disbursements
the Respondent had to register and maintain the domain name through the years.
The Complainant’s representative formally sent this offer to the Respondent on
the day of the Respondent’s reply, but as of today no approval has been
received.
FINDINGS
(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 or is being used in bad
faith.
DISCUSSION
Paragraph 15(a) of 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 or is being used in bad
faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical and/or Confusingly Similar
Complainant has provided evidence of multiple registrations of the ILLY mark with the Italian Trademark Authority (e.g., Reg. No. 587,028 issued February 10, 1993). The Panel finds these registrations satisfy Policy ¶4(a)(i) and also find it establishes Complainant’s rights in its ILLY mark. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Respondent’s <illy.us> domain name is identical to Complainant’s
ILLY mark pursuant to Policy ¶4(a)(i). The Panel finds Respondent’s disputed domain
name contains Complainant’s mark in its entirety and adds the country-code
top-level domain (“ccTLD”) “.us.” The
Panel finds the addition of a ccTLD is irrelevant in distinguishing a disputed
domain name from a registered mark. See Lifetouch, Inc.
v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005)
(“The addition of ‘.us’ to a mark fails to distinguish the domain name
from the mark pursuant to the Policy.”); see
also Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002)
(finding that since the addition of the country-code “.us” fails to add any
distinguishing characteristic to the domain name, the <tropar.us> domain
name is identical to the complainant’s TROPAR mark). Therefore, pursuant to Policy ¶4(a)(i) the Panel finds Respondent’s <illy.us> domain name is identical to Complainant’s
ILLY mark.
The Panel finds Policy ¶4(a)(i)
satisfied.
Rights or Legitimate Interests
Complainant must first make a prima
facie case Respondent lacks rights and legitimate interests in the disputed
domain name under Policy ¶4(a)(ii), and then the
burden shifts to Respondent to show he has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Aug. 18, 2006) (holding that the complainant must first make a prima facie
case that the respondent lacks rights and legitimate interests in the disputed
domain name under UDRP ¶4(a)(ii) before the burden
shifts to the respondent to show that it does have rights or legitimate
interests in a domain name); see also AOL
LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant
must first make a prima facie showing that Respondent does not have rights or
legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”).
The Panel finds Respondent has not presented any evidence demonstrating he is the owner or beneficiary of a mark identical to the <illy.us> domain name. The ILLY mark is famous in Respondent’s geographical area. Therefore, the Panel finds Respondent cannot satisfy Policy ¶4(c)(ii). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶4(c)(i)).
Complainant contends Respondent is neither commonly known by nor licensed to register the disputed domain name. Respondent’s WHOIS information identifies registrant as “Esteban c/o Esteban Remecz.” The Panel finds, absent any affirmative evidence, Respondent is not commonly known by the disputed domain name. Therefore, pursuant to Policy ¶4(c)(iii), the Panel finds Respondent lacks rights and legitimate interests in the disputed domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant presents evidence that Respondent’s disputed
domain name resolves to an error message.
The Panel may find that Respondent’s failure to make an active use of
the disputed domain name is not a bona
fide offering of goods and services pursuant to Policy ¶4(c)(ii), nor a legitimate noncommercial or fair use pursuant
to Policy ¶4(c)(iv). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr.
25, 2007) (finding that the respondent had no rights or legitimate interests in
a domain name under either UDRP ¶4(c)(i) or UDRP ¶4(c)(iii) where it failed to
make any active use of the domain name); see
also VICORP Rests., Inc. v. Paradigm
Techs. Inc., FA 702527 (Nat. Arb.
Forum June 21, 2006) (finding that the respondent’s failure to use the disputed
domain name for several years was not a bona fide offering of
goods or services pursuant to UDRP ¶4(c)(i) or a legitimate noncommercial or
fair use pursuant to UDRP ¶4(c)(iii)).
The Panel finds Policy ¶4(a)(ii)
satisfied.
Registration and Use in Bad Faith
A finding of bad faith registration and use under Policy ¶4(a)(iii) is not limited to those instances enumerated in Policy ¶4(b). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that UDRP ¶4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in UDRP ¶4(b) are intended to be illustrative, rather than exclusive.”).
Complainant argues that
Respondent’s failure to make an active use of the disputed domain name is
evidence of bad faith. Coupled with the
famous name of the mark in Respondent’s geographical area, the Panel finds Respondent’s non-use constitutes
bad faith registration or use under Policy ¶4(a)(iii). See
Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding
that the respondent made no use of the domain name or website that connects
with the domain name, and that failure to make an active use of a domain name
permits an inference of registration and use in bad faith); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in bad
faith).
This is a
“1. A
natural person (i) who is a
2. A United States entity or organization that is (i) incorporated within one of the fifty (50) U.S. states, the District of Columbia, or any of the United States possessions or territories, or (ii) organized or otherwise constituted under the laws of a state of the United States of America, the District of Columbia or any of its possessions or territories (including a federal, state, or local government of the United States or a political subdivision thereof, and non-commercial organizations based in the United States) [Nexus Category 2], or
3. A
foreign entity or organization that has a bona fide presence in the United
States of America or any of its possessions or territories [Nexus Category 3].”
At the time of Registration, Respondent was not a
The Panel finds Policy ¶4(a)(iii) satisfied.
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <illy.us> domain name be TRANSFERRED from Respondent to Complainant.
Dated: December 22, 2009
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