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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Perfetti S.p.A., Van Melle N.V. and Van Melle Nederland B.V. v. MIC
Case No. D2001-0400
1. The Parties
Complainants are Perfetti S.p.A., via XXV Aprile 7/9, I 20020 Lainate, Milano, Italy; Van Melle N.V., Zoete Inval 20, 4815 HK Breda, The Netherlands; and Van Melle Nederland B.V., Zoete Inval 20, 4815 HK Breda, The Netherlands. They are represented by their authorized legal representative, Mr. Willem J. H. Leppink, Attorney-at-Law, Nautadutilh, P.O. Box 1110, 3000 BC Rotterdam, The Netherlands.
Respondent is MIC, 15 5th Street, CLOSTER, NJ 07624, USA.
2. The Domain Names and Registrar
The disputed domain names are <perfetti-vanmelle.com> and <perfettivanmelle.com>.
The registrar of the disputed domain names is BulkRegister.com.
3. Procedural History
1. On March 21 and 26, 2001, Complainants filed a complaint to be decided by this Administrative Panel, asking for the following remedies:
"In accordance with paragraph 4(i) of the Policy, for the reasons described in Section V above, the Complainants request the Administrative Panel appointed in this administrative proceeding to issue the decision and order that the contested domain names (that is: <perfetti-vanmelle.com> and <perfettivanmelle.com>) be transferred to Complainants Perfetti in accordance with paragraph 3(c) of ICANN’s Uniform Domain Name Dispute Resolution Policy".
2. Receipt was acknowledged by the Arbitration and Mediation Center of the World Intellectual Property Organization on March 23, 2001.
The WIPO Arbitration Center Registrant verified and accepted the formal validity of the complaint.
On April 4, 2001, BulkRegister.com confirmed to the Arbitration Center that it had received a copy of the complaint on April 3, 2001; that the domain names <perfetti-vanmelle.com> and <perfettivanmelle.com> were registered with BulkRegister.com and that the Respondent in the complaint was the current registrant of the said domain names.
BulkRegister.com confirmed at this occasion details of the domain name registration which were the same for both domain names, having as both administrative and technical contact: Syed Hussain, MIC.
The confirmation by BulkRegister.com specified that the registrant’s record were created on January 15, 2001.
BulkRegister.com confirmed that the Uniform Domain Name Dispute Resolution Policy applied to the litigious domain names and that the current status of the domain name is "registrar Lock".
3. On April 5, 2001, the WIPO Arbitration Center issued a notification of complaint and commencement of administrative proceeding, requested from Respondent a response by April 24, 2001, drew Respondent’s attention on the consequences of default, asked Respondent whether it wished a decision by an administrative panel of 1 or 3 arbitrators, communicated to Respondent the contact e-mail address for the case (email@example.com) and communicated all necessary information in relation with the case manager at WIPO Arbitration Center in Geneva, Switzerland.
4. The communication was sent to MIC at its administrative and technical contact according to BulkRegister.com’s record by post and e-mail, with a copy to Complainants’ legal representative, by electronic mail.
5. Respondent did not file any submissions.
6. On April 25, 2001, the WIPO Arbitration and Mediation Center notified Respondent’s default, by e-mail, using the administrative and technical contact address existing at BulkRegister.com, a copy of such notification being sent to Complainants’ legal representatives.
7. On May 17, 2001, the undersigned arbitrator was appointed accorded to paragraph 6(f) of the Rules for Uniform Domain Name Dispute Resolution Policy.
This appointment was communicated to Complainants by e-mail of the same day as well as to Respondent, at the same administrative and technical contact at addressees.
8. Respondent failed to make any submissions thereafter.
4. Findings of Facts
9. In the absence of any submissions and documents filed by Respondent, the panel could verify the relevant facts as stated by Complainants and as documented by the evidence filed by Complainants.
10. The panel has particularly verified that:
11. On January 15, 2001, Complainant Perfetti SpA and Complainant Van Melle N.V. announced a merger of their companies. The announcement was made by joint press release dated January 15, 2001.
The press release announced the combined name "Perfetti Van Melle".
12. Complainants learned on January 17, 2001, by searching the "Whois database of Network Solutions Inc.", about the registration of the two domain names <perfetti-vanmelle.com> and <perfettivanmelle.com> by MIC with BulkRegister.com.
13. On January 29, 2001, Complainants summoned Respondent by registered mail and e-mail and facsimile to transfer the litigious domain names to them, offering to reimburse any reasonable and demonstrable out of pocket expenses made in relation to the registration of the said domain names.
14. Respondent reacted, agreeing to sell the said domain names for an amount of USD 6’500.-.
15. Even though registration of the litigious domain names took place at the time or soon after the announcement of the merger of Complainants, Respondent, at no time, gave any explanations or justification for its reasons for registering such domain names and its possible or actual interests in such domain names.
16. The litigious domain names have been registered on January 15, 2001, with BulkRegister.com.
They fall within the scope of the Domain Name Dispute Policy, applicable to Respondent as Registrant of the two domain names. This panel has therefore jurisdiction to rule on the remedies sought by Complainants.
b) Material issues
17. According to paragraph 4(a) of the Policy, Complainants must demonstrate that the litigious domain names are identical or confusingly similar to trademarks or service marks in which the Complainants have rights, that Respondent has no rights or legitimate interests in respect of the domain name and that the domain names were registered and are being used in bad faith.
18. As Respondent did not make any submissions, none of his rights or legitimate interests have been demonstrated and this panel assumes that he has none.
19. Evidence has also been provided showing that the registration by Respondent of the litigious domain names closely followed the public announcement of Complainants’ merger and proposed use of their combined name.
20. It has also been shown that Respondent had already registered domain names, in similar circumstances, with the effect that, after an administrative procedure was conducted, in which Respondent did default, the transfer of such names was ordered.
Therefore, this panel is of the opinion that Respondent’s registration of the two domain names <perfetti-vanmelle.com> and <perfettivanmelle.com> has been made in bad faith and their use by him would also constitute an act of bad faith.
21. This panel must therefore decide whether the domain names are identical or confusingly similar to the trademarks of Complainants. Evidence has been given showing that Complainant Perfetti is the registered owner of the trademark "Perfetti" in many countries. "Perfetti" has been registered in classes 30, sometimes in combination with class 5, for a wide variety of goods.
22. Evidence has been given showing that Complainant Van Melle Nederland is the registered owner of the trademark "Van Melle" in many countries.
It has also been shown that Complainants Perfetti and Van Melle have used, and are using, their names as trade names in their respective home countries.
Evidence has also been filed with regard to the merger of the two companies and the proposed use of their common name "Perfetti Van Melle".
23. This panel is of the opinion that, if, separately, Complainants possessed rights in trademarks and/or trade names, there is no reason why they should loose such rights when they combine their activities and names through a merger.
In addition, it has been shown that Complainant Van Melle Nederland has acted within the Van Melle Group as the owner of registered trademarks of the Van Melle group and recently filed for the word mark "Perfetti Van Melle" in the Benelux, thus being in a position to claim such trademark protection as of the date of filing according to the applicable regulations in the Benelux.
24. The two domain names <perfetti-vanmelle.com> and <perfettivanmelle.com> are identical with the word mark Complainant Van Melle Nederland has recently filed in the Benelux. Even though the date of filing is later than the date of registration of the disputed domain names, it was made clear from the official announcement of the merger that the merged entity "Perfetti Van Melle" had chosen the trade name Perfetti Van Melle and intended to use it in the future. It was also obvious that, considering the merger, word marks of the same or similar content had been or would be filed by Complainants. This panel is therefore of the opinion that the litigious domain names are in conflict with such common law rights to the trade name as well as, today, with the filed word mark. They are identical to such trademarks. Respondent has not alleged any prior use of the domain name, or intended use, which would justify a different view.
25. The litigious domain names contain obviously both the name Perfetti and the name Van Melle, either combined in one word or separated by a hyphen. The combination and the use of the words or the words’ elements, even if not exactly identical with the registered trademarks respectively of Perfetti and Van Melle, cause the domain names to be at least confusingly similar with such trademarks. This is even more true since the merger of the two companies was made public. Therefore any domain names using any of the companies’ previous names or both of them combined will induce consumers to wrongly believe that the domain names are associated with the merged entity or any of the two previously existing companies or their trademarks.
26. Since the two disputed domain names are either identical or confusingly similar to existing trademarks, and since Respondent has demonstrated no legitimate interest in the registration and use of such domain names, and since the facts show that the registration and use is intended in bad faith, the conditions laid down by the Domain Name Dispute Policy are met and thus the transfer of the disputed domain names must be ordered.
27. As the three Complainants have requested jointly the same remedies, and as all three of them request the litigious domain names to be transferred to Complainant Perfetti (even though Perfetti is not the company having filed the new word mark "Perfetti Van Melle"), the transfer must be ordered according to this joint request.
28. Considering the above findings of facts and law, this panel decides and orders that the domain names <perfetti-vanmelle.com> and <perfettivanmelle.com> be transferred to Complainant Perfetti in accordance with paragraph 3(c) of ICANN’s Uniform Domain Names Dispute Resolution Policy.
Dated: August 24, 2001