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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Fratelli Carli S.p.A. v. Linda Norcross

Case No. D2006-0988

 

1. The Parties

The Complainant is Fratelli Carli S.p.A., Imperia, Italy, represented by Studio Legale Imperiali, Italy.

The Respondent is Linda Norcross, Laguna Niguel, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <carli.org> is registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2006. On August 5, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On August 6, 2006, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied 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 WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 10, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2006. The Respondent did not submit any response within the fixed due date. Accordingly, the Center notified the Respondent’s default on August 31, 2006.

Respondent filed a submission entitled “Response” on September 6, 2006.

The Center appointed Knud Wallberg as the sole panelist in this matter on September 13, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On September 20, 2006, the Panel issued the following Panel Order:

“The Panel has noted that the Response in this case was filed after the Response due date. Taking into account the circumstances of the case such as the late actual delivery of the hard copy of the Complaint to the Respondent, and given the fact that under paragraph 10(b) of the Rules, the Panel must ensure that the parties are treated with fairness and equality, and that the Panel has the power, under paragraph 10(c) and (d) of the Rules, to extend time periods and to determine the admissibility, relevance and weight, etc. of evidence filed, the Panel will allow the Response.

Since the Response contains information about the Respondent and other facts that the Complainant could not reasonably have taken into account at the time of the filing of the Complaint, the Panel will at the same time allow the Complainant to file a supplementary statement if it so wishes. The statement must be filed within one week from the date of notification of this Panel Order (no later than September 27, 2006).”

The Complainant filed a Supplementary Statement on September 26, 2006.

 

4. Factual Background

The Complainant

The Carli Company was founded in Italy in 1911 by Giovanni Carli and is producing and selling olive oil and other related products primarily through a system of direct marketing to families in Italy and abroad including the United States of America. Since 1998, Complainant entered the online marketing and launched an e-commerce site to sell olive oil and other products.

The Complainant is world famous for its production of olive oil and other products such as tuna, wine, table olives, olive paste, vinegar, perfume, soap and other cosmetics, with a turn over of 110 millions Euros and 250 employees.

The Complainant is the owner of many trademark registrations consisting of or comprising the term Carli, in Italy, in Europe and in United States of America, the country of residence of the Respondent. In the United States of America the following marks are registered: FRATELLI CARLI (AND DESIGN); FRATELLI CARLI PRODUTTORI OLIO D’OLIVA IMPERIA & OLIO CARLI.

The Complainant also holds several domain names consisting of or comprising the term “Carli”, such as <carli.com>, <fratellicarli.com>, <oliocarli.com> and.

The Respondent

The Respondent is a natural person, whose daughter is named Carli Lane Dossey.

 

5. Parties’ Contentions

A. Complainant

The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant contends that contested domain name <carli.org> is identical to the trademark “CARLI” in which the Complainant has rights. The sole difference is the addition of the gTLD suffix “.org”, but as previous WIPO UDRP decisions firmly established, when analyzing the similarity of the trademark and a domain name, the “.org” portion of the domain name is to be disregarded

The Respondent has no rights or legitimate interests in respect of the domain name.

The Respondent has no rights or legitimate interests in the domain name <carli.org>, because Respondent does not use the domain name as a trademark, or in any other manner than as a domain name. Further, the domain name does not describe any feature of Respondent’s services.

The Respondent neither uses the domain name in connection with a bona fide offering of goods or services, nor has it made preparations to do so. In fact the Respondent did not create any website corresponding to the URL “www.carli.org”. The Respondent redirects web traffic from the domain name to a website (www.backdoors.to) intending to benefit from the web traffic actually intended for the Complainant. Such use cannot be a bona fide use, since the only purpose is to divert Internet users to commercial/advertisement sites. In fact the above mentioned site accessible under the contested domain name contained plenty of hypertext links, pop-ups, and advertising not related to the domain name.

The Respondent has never been, and is not currently, commonly known by the disputed domain name. The Complainant has not licensed, permitted, authorized, sold or otherwise allowed to Respondent’s use of Complainant’s mark in the disputed domain name. In addition, “Carli” is neither a common noun, nor a common name; therefore the choice of a domain name comprising this denomination is only motivated by the will to create an illegitimate diverting of Internet users. In fact, even through a simple searching in Internet, Respondent could have known about the celebrity of “Carli” mark. Respondent cannot have ignored that its registration and use of the domain name comprising this mark would infringe on the rights of the Complainant, so that Respondent has no legitimate interests in the disputed domain name.

The Respondent is not making a legitimate non-commercial or fair use of the domain name. Rather the Respondent receives money from the advertisements which appear on the website accessible via the domain name, and thus unfairly enriches itself to Complainant’s detriment.

The domain name was registered and is being used in bad faith.

Complainant contends that the Respondent registered the domain name in bad faith, because, even through a simple research on whois database, when was registering the contested domain name, the Respondent would have noticed that all the domain names consisting or comprising the word “carli” were already owned by the Complainant.

The Respondent’s bad faith is moreover shown by the fact that even entering the keyword “carli” in popular search engines, such as Google, the first search results pages are related to Complainants’ links and websites.

The Respondent uses the domain name in bad faith by misleadingly diverting ’potential consumers of the Complainant to the website “www.backdoors.to”. The site accessible under the contested domain name contains plenty of hypertext links, pop-ups, and advertisements which are not related to the domain name. The Respondent redirect web traffic from the domain name to a website, thereby benefiting from the web traffic actually intended for the Complainant. The Respondent is only using the domain name to attract Internet users for commercial gain to a website not associated with the Complainant. Accordingly, the Respondent is trading off the Complainant’s commercial reputation and goodwill and gaining commercially by receiving revenues through the proliferation of pay per click links on the Domain Name, such as Google AD-Sense. Numerous UDRP panels have determined that such use of domain name for sponsored links related to massive multitude of businesses does not constitute legitimate or right-based use by a respondent.

B. Respondent

Respondent’s use of the name Carli is not confusingly similar to any trademark or

service mark in which the Complainant has rights.

The Respondent’s daughter was born Carli Lane Dossey and the contested domain name is registered for her. She was named after her paternal grandfather, Carl Hayden Dossey, who has recently been nominated this year to the National Cowboy Hall of Fame in Oklahoma City.

The Complainant has no blanket right to use the Carli and would never be granted a trademark on the name Carli for services related to a female human being. None of Complainant’s trademarks registered with the United States Patent and Trademark Office consists of the name Carli alone, and there are other trademark registrations containing the name Carli, registered by entities other than Complainant such as Mara Di Carli and Carli Gry.

There is no confusion between the Complainant’s rights and the domain name. The Respondent has never heard of Carli Olive Oil and it is not a commonly known mark.

The Respondent has every right and legitimate use in respect to the domain name <carli.org>.

The domain name was acquired for the benefit of Respondent’s daughter who’s first name is Carli – a name which is becoming a popular name.

It is not illegal or statutorily required to build a website within a certain period of time after acquiring it. Until it is, an individual should be permitted to save her site for future use. To do otherwise would deprive Respondent (’s daughter) of a legitimate right that was acquired legally, with no intent to confuse people who search the web for olive oil. A website will be build as soon as Respondent (’s daughter) is capable hereof.

The fact that <carli.org> is registered with a service that directs traffic to other services should not be a deciding factor. Respondent (’s daughter) receives no benefit from the service provider and Respondent will transfer it to another server soon. The domain name will not be offered for sale.

The domain name was not registered to be used in bad faith.

Respondent rebuts Complainant’s claim that a simple search would have shown that Fratelli Carli owned all other associated web addresses. Complainant does not own the domain names <carli.it>, <carli.net> or <carli.info>.

In fact, the large number of websites Complainant owns with the name Carli creates greater rationale for denying Complainant’s request. Complainant has acquired more than enough websites to promote its business on the Internet.

There is no confusion because Carli is a common name and Complainant’s products are not likely to be confused by anybody searching for olive oil or its other limited products. Unless one is specifically looking for <carli.org>, he will search the “www.carli.com” URL.

C. Supplementary filing by the Complainant

In its solicited supplemental filing the Complainant upholds the facts, claims and arguments put forward in the Complaint.

As to the content of Respondent’s filing Complainant has the following main comments:

Respondent states that she registered the contested domain name for her daughter, named after her paternal grandfather, Carl Hayden Dossey, which, as she declares, should be widely known in USA, as an American hero, world champion cowboy, inventor and so on. When performing a web research by using the key words “Carl Hayden Dossey” no results about this name come out, so that it is difficult to believe that he is famous in the United States of America.

As to Respondent’s statement that she has never heard of Carli Olive Oil, or even seen it on any shelf in a store, this is obvious because since its establishment, Complainant’s business has developed through a direct marketing system, and starting from 1998 also through e-commerce. Performing a simple web search by entering the keyword “Carli” in a popular search engine, such as amazon.com, google.com, does however reveal the Complainant and its products on the first page results.

As to Respondent’s information that she is a mother who registered the website for her daughter, without any other economic interest, Complainant confirms that Respondent’s behaviour shows a use in bad faith of the domain name. In fact if Respondent would have been building her own website, as she asserted, she could have utilised in the meantime a “courtesy page” with an expression like “coming soon” or “website under construction”. Respondent registered the contested domain name in May 2005, did not create any website and has been redirecting web traffic to the website “www.backdoors.to”. Moreover, Respondent, even though she has the chance to modify the above mentioned situation, until today has not modified the redirecting of Internet users, procuring visibility to “www.backdoors.to”.

As to Respondent’s claim that the registration of the contested domain name is not detrimental to Complainant this is contested because Complainant actually bases its business’ development on e-commerce; in addition, Respondent does not use the contested domain name for a legitimate fair non commercial use, since the only use is misleadingly diverting the Complainant’s consumers to the website “www.backdoors.to”. As already highlighted in the Complaint, the site accessible under the contested domain name contained plenty of hypertext links, pop-ups, and advertising not related to the domain name. Accordingly, the Respondent is trading off the Complainant’s commercial reputation and goodwill.

 

6. Discussion and Findings

A. Procedural aspects

Respondent appears to have received timely the electronic version of the Complaint on August 9, 2006. In the notification from the Center it was stated that a Response must be filed before August 30, 2006. However, the Respondent has informed and the Center has confirmed that the hard copy of the Complaint and annexes was not delivered to the Respondent until August 31, 2006. The Response was filed shortly thereafter, namely on September 6, 2006.

In the event of a late response, the Panel’s default course of action, pursuant to paragraph 14(a) of the Rules, is to proceed to a decision based only on the complaint, which ensures a that a timely decision can be made. The Panel may however, in its discretion, consider the Response if “exceptional circumstances” exist.

The need for timely decisions shall however be balanced against obligation for the Panel to ensure that the parties are treated with fairness and equality conform paragraph 10(b) of the Rules. The Panel therefore has the power, under paragraph 10(c) and (d) of the Rules, to extend time periods and to determine the admissibility, relevance and weight, etc. of evidence filed.

The Panel has observed the Complainantґs comments on the procedural aspects. In view of the Complainant there are no exeptional circumstances present in this case since the late Response is simply due to Respondens’t misunderstanding of time limits explicitly given in the notification of the Complaint.

The Panel disagrees. The Respondent is a private person who cannot be expected to be familiar with the UDRP. Although the e-mail notification contained a fixed deadline of August 30, 2006, the hard copy of the Complaint with all the Annexes was not delivered to her before August 31, 2006. In order to ensure that Respondent is given a fair chance to present her case, Respondent must be given ample time to look through the entire Complaint with Annexes, and at least for a private person this may entail to have acces to the hard copy. The Panel also notes that the Response was filed before commencement of the decision-making process by the Panel, and therefore did not in itself delay the decision. The Panel will therefore allow the late Response and take it into consideration.

Previous decisions where late responses have been accepted include J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035, and International Spar Centrale B.V. vs. Scientific Process & Research, Inc., WIPO Case No. D2005-0603.

It follows from the Panel Order that the Panel will also take into consideration the solicited Supplemental Filing of the Complainant.

B. Substantial matters

According to paragraph 15(a) of the Rules, the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the complaint where no response has been submitted.

In accordance with paragraph 4(a) of the Policy, Complainant must prove that each of the three following elements is satisfied:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the complainant.

C. Identical or Confusingly Similar

The domain name <carli.org> contains the trademark CARLI in which Complainant has rights. The Panel notes that the inclusion of the gTLD denomination “.org” shall be disregarded for the purpose of this proceeding.

The Panel finds that the domain name is identical to Complainant’s mark in accordance with paragraph 4(a)(i) of the Policy.

D. Rights or Legitimate Interests

Carli is a fairly common first name as well as a fairly common last name in the country of residence of the Respondent, the United States of America.

Respondent’s carries Carli as a first name and Respondent claims to have registered the domain name for the benefit of her daughter. Although the Panel has no reason to question this information, which in itself indicates that Respondent may have a legitimate interest in the domain name, the claim is somewhat contradicted by the actual use of the contested domain name. The URL “www.carli.org” redirects traffic from this domain to the website “www.backdoors.to” which contains links to what appears to be gaming sites. The Respondent has stated that this use is done by her service provider and is not specifically authorised by her, nor does she make any profit from this.

However, the Panel does not find it necessary to reach a conclusion on this question, given the Panel’s view that Complainant has not established registration and use of the domain name in bad faith, see below.

E. Registered and Used in Bad Faith

To prevail, the Complainant must prove that the contested domain name was registered and is being used in bad faith.

The Panel finds that there is no indication that Respondent was aware of Complainant, Complainant’s activities or Complainant’s trademarks at the time of registration of the domain name. The Panel notes in this context that Complainant has not registered CARLI (alone) as trademark in the United States of America. Further, Complainant has not otherwise proven to have protected Carli as such in the Unites States of America, since the submitted evidence of use in this territory only shows use of thecomposite marks that are registered in the USA and which are listed above under 4. In Barlow Lyde & Gilbert v. The Business Law Group, WIPO Case No. D2005-0493, and in the previously mentioned International Spar Centrale B.V. vs. Scientific Process & Research, Inc., WIPO Case No. D 2005-0603, the panels found it an element of relevance that complainant at the time of registration of the domain name had no trademarks in United States of America where respondent was domiciled.

Further the Complainant has not submitted evidence that the mark is so well known that the Respondent likely registered the name in bad faith to attract Internet users to her site by creating a likelihood of confusion with Complainant’s mark and thereby specifically targetting the Complainant. The presented information that references and links to Complainant is shown at the top of the hit lists when entering the keyword “carli” in popular search engines, is thus not sufficient proof that the mark is well known. The Panel agrees with the Complainant that the fact that the URL “www.carli.org” redirects traffic from this domain to the website “www.backdoors.to”, which contains links to what appears to be gaming sites, instead of just being an ordinary “parking site” may cause confusion amongst Internet users who are looking for the Complainant. On the other hand the said use does not specifically target and harm the Complainant and its activities and in the absense of other indications of bad faith this is not enough to lift the burden of proof.

The Panel can thus not see that Complainant has proved, that Respondent has been familiar with Complainant’s marks, or has tried to benefit from Complainant’s marks and Complainant’s goodwill by creating a likelihood of confusion. On the contrary, the Panel notes that the Respondent has submitted e.g. her daughter’s birth certificate supporting her assertions on the registration of the domain name in good faith.

Thus, the Panel finds that Complainant has not established Respondent’s bad faith according to paragraph 4(b).

 

7. Decision

For all the foregoing reasons, the Complaint is denied.


Knud Wallberg
Sole Panelist

Dated: October 4, 2006

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2006/d2006-0988.html

 

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