Background

The Complainant was Consorzio Tutela Taleggio, an Italian consortium promoting and commercializing Taleggio cheese.  The Complainant had been the owner of a European Union Geographical Indication for TALEGGIO since 1996, as well as a European Union trade mark registered on 18 August 2011 and an International registration registered on 21 January 2011.

The Respondent was Gilberto Ramponi Rivelli, Publinord s.r.l., an Italian company operating several thematic Internet portals, including portals on Italian food, cities and regions of Italy.

The Disputed Domain Name, <taleggio.net>, was registered on 15 July 2004 and used to resolve to an "opening soon" website referring to several thematic portals operated by the Respondent, including <food.it> describing different types of Italian foods, <piazza.it> providing information on Italian cities and locations, and <siti.it>, an online directory enabling the user to search for products and services in Italy.

To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements under paragraph 4(a):

(i) the domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and

(ii) the 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.

Identity / similarity

With regard to the first limb, the Complainant alleged that its TALEGGIO trade mark was well known throughout the world as an indicator of cheese from the Taleggio valley in Italy.  In reply, the Respondent argued that (i) the Disputed Domain Name predated the Complainant's trade mark registration by six years, (ii) the Complainant had not shown evidence to demonstrate an acquired distinctiveness of TALEGGIO before the registration of the Disputed Domain Name, (iii) the complaint could not be based on a European Union Geographic Indication (Protected Denomination of Origin) and (iv) Taleggio is both the name of a city and of a valley in Northern Italy.

The Panel found that the Disputed Domain Name was identical to the Complainant's TALEGGIO trade mark.  The Panel underlined that the Disputed Domain Name had been registered by the Respondent before the Complainant acquired its trade mark rights, but noted that this did not by itself preclude the Complainant's standing to file a UDRP complaint and thus the Complainant had satisfied the first limb.

Rights / legitimate interests

As far as the second requirement under the UDRP was concerned regarding the Respondent's rights or legitimate interests, the Complainant asserted that the Respondent's website made explicit reference to a link where several food products including cheese were advertised and sold, thereby making the public believe that there was a connection between the Complainant and the Respondent which in fact did not exist.  The Respondent rebutted these arguments by noting that the Disputed Domain Name had been registered in relation to a portal describing Italian cities and locations.

In light of its finding under the third limb of the Policy, the Panel did not find it necessary to make a finding on the Respondent's rights and legitimate interests, although it noted that the situation was comparable to a previous case involving the same Respondent, Superga Trademark S.A. v. Gilberto, Publinord S.r.l., WIPO Case No. D2008-1890, where "Superga" was also both a trade mark and a geographic name.

Bad faith

Turning to the third limb of the Policy, the Complainant asserted that the Disputed Domain Name was registered and used in bad faith with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion as to the source, sponsorship or affiliation of the Respondent's products and services.  The Complainant also claimed that the Respondent had previously engaged in such behaviour by registering <taleggio.org> and <taleggio.eu>.  The Respondent disagreed strongly by indicating that it had registered the Disputed Domain Name in good faith a few years before the Complainant acquired its trade marks.  The Respondent also highlighted the fact that it had not offered to sell the Disputed Domain Name to the Complainant nor to any cheese producers.  The Respondent added that its portal hosted informative and noncommercial content.  Moreover, the Respondent underlined that the Complainant had been aware of the existence of the Disputed Domain Name since December 2012, as evidenced by the parties' correspondence.

The Panel noted that the Respondent had registered the Disputed Domain Name before the Complainant had acquired any trade mark rights, which would usually not be considered bad faith.  However, at the time of the registration the Complainant did have a European Union geographic indication, and the Respondent must have been aware of this.  In this regard the Panel referred to two previous UDRP decisions involving the Respondent, where essentially the same arguments were advanced.  In both cases, the panels denied the complaint, finding it more plausible that the Disputed Domain Name was registered in connection with the Respondent's plans to use places as domain names redirecting Internet traffic to its travel portal.

Furthermore, the panel considered that the Respondent had provided prima facie evidence that it had chosen and used the Disputed Domain Name in its geographical sense since (i) the Respondent had registered numerous domain names similarly based on Italian place names, towns or regions; and (ii) there was no evidence that the advertising linked to from the Respondent's website concerned the Complainant's products.  In addition the Panel observed that the Respondent had never offered to sell the Disputed Domain Name to the Complainant or to any other cheese producer.

In light of the above, the Panel made a finding that the Complainant had failed to demonstrate the requirements prescribed by the third limb of the Policy and so the Panel refused the transfer of the Disputed Domain Name.

Authored by Anchovy News Tem