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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Consorzio Tutela Taleggio v. Gilberto Ramponi Rivelli, Publinord s.r.l.

Case No. D2020-0271

1. The Parties

The Complainant is Consorzio Tutela Taleggio, Italy, represented by De Tullio & Partners Lawfirm, Italy.

The Respondent is Gilberto Ramponi Rivelli, Publinord s.r.l., Italy, represented by Nunziante Magrone Studio Legale Associato, Italy.

2. The Domain Name and Registrar

The disputed domain name <taleggio.net> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2020. On February 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 5, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 9, 2020. The Response was filed with the Center on March 9, 2020.

The Center appointed Andrea Mondini as the sole panelist in this matter on March 30, 2020. 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.

4. Factual Background

The Complainant is a consortium protecting, supervising and promoting the production and commercialization of "Taleggio" cheese.

"Taleggio" is the name of a town and of a valley in Italy and is the denomination of origin of a type of cheese.

The Complainant holds in particular (i) the European Union (“EU”) Geographical Indication TALEGGIO (i.e., Protected Denomination of Origin) registered since 1996, (ii) the EU Trademark Registration No. 9635392 filed on December 31, 2010, and registered on August 18, 2011 for goods and services in classes 29, 20 and 35, and (iii) the International Registration No. 1066783 registered on January 21, 2011 in these classes.

The Respondent is an Italian company operating several thematic Internet portals, including a portal on Italian food, and a portal providing information about Italian cities and regions.

The disputed domain name was registered on July 15, 2004.

5. Parties’ Contentions

A. Complainant

The Complainant contends in essence:

- that it uses the trademark TALEGGIO in relation to the "Taleggio" cheese produced in specific areas and according to specific production methods and that this trademark has acquired worldwide reputation as an indicator of cheese of a particular quality coming from the Italian "Taleggio" valley;

- that the disputed domain name is identical to the Complainant’s mark;

- that the Respondent has no rights or legitimate interests in the disputed domain because the Respondent’s website makes explicit reference to the link “http://food.it/” where several food products including cheese are advertised and sold, thereby making the public believe that there is a connection between the Complainant and the Respondent which in fact does not exist;

- that the Complainant did not authorize the Respondent to use the trademark TALEGGIO for a domain name;

- that the Respondent registered and used the disputed domain name 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;

- that the Respondent repeatedly engaged in such activity because in the past it also registered the domain names <taleggio.org> and <taleggio.eu>.

B. Respondent

The Respondent contends in essence:

- that, the Respondent’s ownership of the disputed domain name predates the Complainant’s registration of the TALEGGIO trademark by six years;

- that the Complainant has not shown evidence to demonstrate an acquired distinctiveness of "Talegio" before July 15, 2004;

- that the Complaint cannot be based on an EU Geographic Indication (Protected Denomination of Origin);

- that “Taleggio” is both the name of a city and of a valley in Northern Italy;

- that the Respondent has rights or legitimate interests in respect of the domain name, because it registered the disputed domain name to be reached from a portal to describe Italian cities and locations;

- that because the Respondent’s domain name predates the acquisition of the Complainant’s rights in the trademark, there is no bad faith on the part of the Respondent;

- that the Respondent never offered to sell the disputed domain name to the Complainant or any cheese producers;

- that Respondent's portal “http://food.it” hosts informative, noncommercial content;

- that the Complainant has been aware of the existence of the disputed domain name since December 2012, as evidenced by correspondence between the Parties.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

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

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

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

A. Identical or Confusingly Similar

The Complainant has shown that it holds trademark registrations for the trademark TALEGGIO. This trademark is identical to the disputed domain name.

The fact that the disputed domain name has been registered by Respondent before the Complainant has acquired trademark rights does not by itself preclude the Complainant’s standing to file a UDRP case, nor a finding of identity or confusing similarity under the first element.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

It is undisputed that the Respondent did not authorize the Complainant to use TALEGGIO for a domain name and that no relationship exists between the Parties. This establishes the Complainant's prima facie case on the second element of the Complaint, and the burden shifts to the Respondent to produce evidence of its rights or legitimate interests under paragraph 4(c) of the Policy.

The disputed domain name resolves to an "opening soon" website referring to several thematic portals operated by the Respondent, namely:

- the portal <siti.it>, an online directory enabling the user to search for products and services in Italy;

- the portal <food.it> is linked to further websites describing several types of mainly Italian food and beverages and enabling the user to search for restaurants in Italy; however, the TALEGGIO cheese is not particularly mentioned;

- the portal <navigarefacile.it>, an online directory describing numerous categories of products and services; and

- the portal <piazze.it> providing information on Italian cities and locations. This website provides in particular basic information (number of inhabitants etc.) on numerous Italian towns, including the Italian town Taleggio as well as addresses of post offices, banks, hotels and restaurants in this town, and features a further link to <taleggio.eu>, where more specific educational information on this location and also on the TALEGGIO cheese is provided.

Based on this record, it is not clear that the Respondent has established a right or a legitimate interest in the disputed domain name. The situation is comparable to Superga Trademark S.A. v. Gilberto, Publinord S.r.l., WIPO Case No. D2008-1890 involving the same Respondent, where “Superga” was also both a trademark and a geographic name.

However, given the Panel's holding on the element of bad faith in the following section, it is not necessary to reach a conclusion on the second element of the Complaint.

C. Registered and Used in Bad Faith

The Respondent's registration of the disputed domain name predates the Complainant’s registration of TALEGGIO as a trademark. However, when the Respondent registered the disputed domain name on July 15, 2004, the TALEGGIO geographic indication was already well-known for this type of cheese, at least in Italy where the Respondent is located. Therefore, the Respondent must have been aware of this (Consorzio per la Tutela dell’Asti v. Mr. Giulio Bennatto, WIPO Case No. D2004-0350; Ferrero S.p.A. v. Publinord S.r.l., WIPO Case No. D2002-0395).

The Complainant contends that the Respondent must have chosen the disputed domain name 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 Respondent's products and services. The Respondent expressly denies such intent. The Respondent claims instead that it selected the disputed domain name in furtherance of a business model under which the Respondent registers domain names based on the names of Italian towns and tourist sites and then uses them to bring Internet users to informational portals such as its “piazza.it” website.

Essentially the same arguments were advanced in two prior UDRP proceedings involving the same Respondent, i.e., Granarolo S.p.A. v. Publinord s.r.l. d/b/a Gilberto Ramponi Rivelli, NAF Claim No. 653822 and Superga Trademark S.A. v. Gilberto, Publinord S.r.l., WIPO Case No. D2008-1890; 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 place names as domain names redirecting Internet traffic to its travel portal.

This Panel similarly finds that the Respondent has advanced a plausible reason, which does not conflict with the Policy, for registering the disputed domain name in the first instance. The Respondent has unquestionably invested substantial time and money in registering a large number of domain names based on Italian place names and building an Italian tourism portal. Moreover, only educational content is provided by the Respondent with regard to the TALEGGIO cheese.

In these circumstances, also this Panel finds that the fact that the Respondent may earn advertising revenues related to the website is not dispositive. Rather, the Respondent has provided prima facie evidence that it choose and it is using the disputed domain name in its geographic sense, because (a) the Respondent has registered numerous domain names similarly based on Italian place names and operates a relevant information portal on Italian towns and regions, and (b) there is no evidence that the advertising linked from the Respondent's website concerned the Complainant's or competing products.

Furthermore, in the present case the Respondent registered the disputed domain several years before the Complainant registered TALEGGIO as a trademark. Where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Section 3.8.1).

It is also undisputed that the Respondent never offered to sell the disputed domain name to the Complainant or any cheese producers.

For all of these reasons, the Panel finds that the Complainant has not shown that the disputed domain name was registered and used in bad faith.

The Panel therefore finds that the Complainant has not satisfied the requirement under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, the Complaint is denied.

Andrea Mondini
Sole Panelist
Date: April 13, 2020

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