359
Nominet UK Dispute Resolution Service
DRS 00359
Consorzio del Prosciutto di Parma -v- Vital Domains Limited
Decision of Independent Expert
Complainant: | Consorzio del Prosciutto di Parma |
Country: | IT |
Respondent: | Vital Domains Limited |
Country: | GB |
Parmaham.co.uk; parma-ham.co.uk
The Complaint was lodged with Nominet on 19 April 2002. Nominet validated the Complaint and notified the Respondent of the Complaint on 29 April 2002 and informed the Respondent that it had 15 days within to lodge a Response. A response was received on 6 May 2002 and forwarded to the Complainant on 8 May 2002 with an invitation to make any further submission in reply to the Response by 15 May 2002. The Complainant duly filed a reply on 14 May 2002. On 13 June 2002 Nominet informed the parties that it had not been possible to achieve a resolution of the dispute by Informal Mediation and invited the Complainant to pay the fee to obtain an Expert Decision by 27 June 2002. On 24 June 2002 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy").
On 27 June 2002, David King, the undersigned, ("the Expert") confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and further confirmed that he knew of no matters which ought to be brought to the attention of the parties, which might appear to call into question his independence and/or impartiality.
None.
Parma ham is the English translation of Prosciutto di Parma. It is a product of the Parma region of Italy; it enjoys worldwide fame and reputation and is made according to traditional methods and standards. Under Italian law, the Complainant has legal status and has been entrusted with safeguarding the essential characteristics of the quality of Parma ham.
The Respondent operates a web-site offering domain names for sale.
The Respondent is unconnected with the Complainant.
On December 1999 the Respondent registered the Domain Name of parmaham.co.uk and on 27 January 2000 the Respondent registered the Domain Name of parma-ham.co.uk.
Complainant:
The Complainant has submitted grounds of complaint which read as follows:
Respondent:
The Respondent's reply to the Complaint reads as follows:
The domain names parmaham.co.uk and parma-ham.co.uk were registered together with many other generic domain names for the purposes of generating traffic to Mr. Reza Sobati's main site. This later developed into a company called vital domains limited as the marketing potential of such domains made domain names increasingly more like assets. When Mr Grimshaw [the Complainant's representative] first contacted me concerning these domain names nearly a year and a half ago I agreed that if they sent me proof of their trademark ownership I would hand the domain names over. They failed to do so instead sending me documents pertaining to the "corona ducale" mark of the ancient Grand Duchy of Parma which under Italian law has to be stamped upon their packages as well as their rights to the name 'Prosciutto di Parma'in the UK. I asked Mr.Grimshaw why they had been unsuccesful in obtaining the Uk trademark for the term 'parma ham' and his response was that they had never attempted to obtain it. I put it to him that until they did obtain such a trademark,the domains would remain as they are perceived by most people to be, that is generic. This means that they have no more rights to the domain name than say a person who owns a sandwich bar called 'Parma Ham' or even a person who wants to start a recipe site. In reference to the case law cited by the Complainant this is more like champagne.com rather than marksandspencer.com. The past 18 months has seen stop-start attempts by this consortium's legal team to obtain these names. Their own documentation of our correspondence shows that it is they who discontinued negotiations as well as discontinuing a previous attempt to use the DRS. What is disconcerting is Consorzio's litigious approach which has resulted in them spending hundreds of thousands of pounds in failed court cases against uk retailers. It is this legal belligerence which has now prompted practices which vital domains considers to be reverse domain hijacking. The Complainant contends that the registrant is engaged in a pattern of abusive registrations. This is not the case as vital domains ltd has not received a single complaint to date through the DRS despite having approximately 2000 domains. This is because it is engaged in registering generic names as the list of names on the website vitaldomains.co.uk clearly shows.It should be noted that under Nominet's rules there is nothing illegal about having alot of names. There are only five domains cited by the complainant out of the many as being examples of abusive registrations. However the products rollerblades, palmcorder and cornettos were all perceived to be generic and in a fair analysis this is an easy enough mistake given the fact that these words like Hoover have crept into the vernacular. In any case vital domains will always return a domain to its rightful owner where a trademark has clearly been obtained for that name. Furthermore the complainant has made unsubstantiated allegations with regards to the original intentions of the registrant when having first registered his domains.
Complainant's reply
The Complainant's representatives' reply to the Respondent's response reads as follows:
We are now in receipt of Mr Sobati's response filed on 6th May 2002. We understand that we must limit this reply to new issues arising out of that response. Mr Sobati claims that we failed to send him proof of trade mark ownership. This is contested. We refer to Annex 4 from our original complaint. It will be noted that specific reference was made in our letter of 28 September 2000 to the complainants trade mark registration no. 1457952 PARMA and a copy of the original registration certificate was also enclosed. We also refer to a telephone conversation with Mr Sobati dated 2 October 2000 (details at Annex 4 as above). Mr Sobati stated that he did not feel that our client had 'any grounds' but indicated that he would be prepared to listen to any offer that we might make for the domain names. I have no record of any other issues addressed in that conversation but would point out that as the complainant has registered the mark PARMA in respect of 'ham', it would be entirely superfluous for them to then seek to register the mark PARMA HAM as such a registration would not extend their rights. The complainants strongly contest Mr Sobati's claim that their marks PARMAHAM/ PROSCIUTTO DI PARMA are perceived to be generic. The very fact that the mark PARMA is registered in the UK is evidence against this claim. If Mr Sobati wished to prove this point, he could launch a challenge against the validity of those registered marks. In the original complaint we referred to the protection of the complainants mark PROSCIUTTO DI PARMA as a 'protected geographical indication' and 'protected designation of origin' and referred to Article 13(3) of EC Regulation 2081/92 which states that 'protected names may not become generic'. Furthermore, we enclose attached hereto and marked Annex A a copy of the Regulations relating to the complainants UK certification trade mark registration nos. 1457941 and 1457952 which set out the strict requirements laid down for use of the trade marks in question. The complainant enforces these Regulations to further guarantee that the marks do not become generic. Mr Sobati has no basis on which to claim that our clients mark is generic. Mr Sobati is correct in stating that the complainants discontinued any negotiation with him once it became clear that he would not be prepared to accept the sum of £3,000 in return for an assignment of the two domain names parmaham.co.uk/parma-ham.co.uk. Annexed hereto and marked Exhibit RSG2 are copies of the exchange of e-mails between Mr Sobati and ourselves to this effect. The complainants were not prepared to pay the sum requested for what they feel is 'their' property. It is also correct to state that the complainants previously lodged documents with Nominet under the disputed resolution service however these proceedings were withdrawn as the complainant wished to take advantage of the amended resolution procedure which recently came into force. These proceedings were of course subsequently filed under that new procedure. Mr Sobati refers to the complainants 'litigious approach' and 'legal belligerence' and claims that the complainant is engaging in 'reversed domain hijacking'. This claim is also strongly contested. It is certainly true to say that they are quite rightly determined to take all appropriate steps to protect their interests in the mark PARMA HAM. It is for this very reason that these proceedings have been entered into. As further evidence of our clients determination to protect their interest we can advise that they are the owners of the domain names prosciuttodiparma.com, prosciuttodiparma.biz, prosciuttodiparma.info, prosciuttodiparma.it, prosciuttodiparma.net, parmaham.biz, parmaham.info, parmaham.it, parmaham.net, parmaham.us, jambondeparma.org, jambondeparma.biz, jambondeparma.info, jambondeparma.org, jamondeparma.biz, jamondeparma.info, parmaschinken.biz, parmaschinken.info, parmaschinken.org, parmaschinken.net, parmaskinken.net, parmaskinken.org and presuntodeparma.biz, presuntodeparma.info. Mr Sobati admits to owning approximately 2,000 domain names. We did not survey all 2,000 marks, but our cursory inspection revealed five other domains which are felt to be 'abusive registrations' in that they consist essentially of registered trade marks. The marks PARMAHAM/PARMA-HAM fall into this category. If Mr Sobati is to be believed in stating that he will 'always return a domain to its rightful owner where a trade mark has been clearly obtained for that name', he should agree to return the domain names parmaham/parma-ham.co.uk to the complainant.
The Expert confirms that he has read all the Attachments referred to in the Complainant's Reply to the Respondent's response.
General
Paragraph 2 of the Policy requires that, for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, both that it has Rights in respect of a name or mark which is identical or similar to the Domain Names and that the Domain Names, in the hands of the Respondent, are Abusive Registrations as defined in Paragraph 1 of the Policy.
Complainant's Rights
The Complainant has asserted that it has rights in a name or mark, which is identical or similar to the Domain Names. The only difference between the two Domain Names is the hyphen in parma-ham.co.uk. In the circumstances, the Expert does not consider it necessary to carry out a separate analysis in respect of each of the Domain Names. The main issue at this stage is to establish whether, on the balance of probabilities, the Complainant has rights in respect of the name or mark of "Parma ham".
From the evidence available, it is clear that the Complainant enjoys UK and EC trade mark rights in the name "Prosciutto di Parma" and the mark "Parma". The English translation of Prosciutto di Parma is Parma Ham. The Expert does not consider it essential for the Complainant to prove trade mark ownership of the name "Parma Ham" for it succeed on this issue.
In assessing whether or not a name or mark is identical or similar to a domain name, it is appropriate to discount the domain suffix <co.uk> which is of no relevant significance and wholly generic. The Expert finds that, for the purposes of the Policy, the Complainant does have Rights in respect of names or marks which are similar to the Domain Names.
Abusive Registration
Are the Domain Names, in the hands of the Respondent, Abusive Registrations? Paragraph 1 of the Policy defines "Abusive Registration" as a Domain Name which either:
"a Domain Name which either:
i. was registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR
ii. has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."
A non-exhaustive list of factors, which may be evidence that a Domain Name is an Abusive Registration, is set out in Paragraph 3 of the Policy. The factors set out in Paragraph 3 a i A, 3 a ii and 3 a iii are relevant in this case.
Paragraph 3 a i A reads as follows:
"Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
A. primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;
Paragraph 3 a ii reads as follows:
"Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name in dispute is registered to, operated or authorised by, or otherwise connected with the Complainant"
Paragraph 3 a iii reads as follows:
"In combination with other circumstances indicating that the Domain Name in dispute is an Abusive Registration, the Complainant can demonstrate that the Respondent is engaged in a pattern of making Abusive Registrations"
The Respondent operates a web-site offering domain names for sale. There is nothing inherently wrong with that. The question is did the Respondent register the Domain Names for the purposes of selling them to the Complainant or one of its competitors for more than the cost of acquiring or using them. It is not disputed that the Respondent offered to sell the Domain Names to the Complainant for a substantial sum when the Complainant challenged the Respondent. However, there are probably many people or businesses, other than competitors of the Complainant, who might be interested in acquiring the Domain Names for perfectly legitimate reasons, which would not infringe the Complainant's rights. On the evidence before him, the Expert cannot conclude that the requirements of Paragraph 3 a i A are satisfied in this case.
With regard to Paragraph 3 a ii, the Complainant considers that both the current and any future use of the Domain Names will inevitably cause confusion to internet users. The Complainant has asserted that, while the Domain Names are not being used by the Respondent in relation to a proprietary web-site, internet users would be deceived in to believing there is a connection between the Respondent and the Complainant and that the Complainant approved the registration by the Respondent. The Expert notes that the Complainant has not produced any evidence that anyone has actually been confused by the registration of the Domain Names by the Respondent. The Expert has visited the Respondent's web-site and notes that that the Respondent is offering for sale a large number of names which appear to be mainly descriptive or generic. In the view of the Expert, it should be apparent to anyone who is directed to the Respondent's web-site, that there is no connection between the Respondent and the Complainant. It should also be noted that Paragraph 3 b of the Policy, states that "failure on the Respondent's part to use the Domain Name for the purposes of e-mail or a web-site is not in itself evidence that the Domain Name is an Abusive Registration". In the circumstances, the Expert does not consider that the requirements of Paragraph 3 a ii are satisfied.
Turning to Paragraph 3 a iii, the Complainant has also alleged that the Respondent is engaged in a pattern of Abusive Registrations in that it has registered domain names which incorporate the registered trade marks of third parties. As the Expert has already noted above, the names on offer at the Respondent's web-site are mainly descriptive or generic. Furthermore, the Expert does not regard this case as similar to the One in a Million case, which involved a portfolio of the trading names of high profile enterprises. In the opinion of the Expert, the evidence available is insufficient to support the view that the Respondent is engaged in a pattern of making Abusive Registrations.
The Expert has also considered Paragraph 4 of the Policy headed "How the Respondent may demonstrate in its response that the Domain Name is not an Abusive Registration". The provisions of Paragraph 4 a i and b are not relevant in this case and need not be considered in this Decision. Paragraph 4 ii reads as follows:
"The Domain Name is generic or descriptive and the Respondent is making fair use of it."
At all times, the Respondent has taken the view that the Domain Names are generic. The Complainant is adamant that any unauthorised use of the Domain Names would infringe its trade mark rights. It draws attention to the registration of "Prosciutto di Parma" as a "protected designation of origin" under EU Regulation 2081/92, Article 13 3 of which states "Protected names may not become generic". In the opinion of the Expert, this does not prevent the term being regarded as generic in the context of this case. The Expert believes that, to most people, the term "Parma ham" indicates ham produced in the Parma area. Under the Complainant's Community Registration Mark No. 1116458, the list of goods for which the Complainant has registered its trade mark is expressed to be "Parma ham". It is well established that only generic terms can be specified in the list of goods and services for which a trade mark is registered. In reality, the Complainant's rights in the Domain Names are more in the nature of certification/mark rights than exclusive trade mark rights of the traditional kind. Parma ham is a genus of ham and, therefore, has to be a generic term (using the ordinary dictionary meaning of the term). In the context of the disputed Domain Names, the Expert therefore considers that the term "Parma ham" is indeed generic. In view of the comments already made by the Expert above, the Expert is also satisfied that the Respondent is making fair use of the Domain Names on its web-site as registering generic terms with a view to selling them for a market value is perfectly fair.
In light of the above findings, namely that the Complainant has Rights in respect of names or marks which are similar to the Domain Names but that neither of the Domain Names, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the complaint in respect of each of the Domain Names be refused.
Finally, the Expert wishes to comment on the Respondent's contention that the Complainant's use of the Policy amounts to reverse domain name highjacking. Under Paragraph 1 of Nominet's "Procedure for the conduct of proceedings under the Dispute Resolution Service" (" the Procedure"), reverse domain name highjacking "means using the Policy in bad faith in an attempt to deprive a registered Domain Name holder of a Domain Name". Paragraph 16 of the Procedure provides that, if "the Expert finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Highjacking, the Expert shall state this finding in the decision. If the Complainant is found on three separate occasions within a 2 year period to have brought a complaint in bad faith, Nominet will not accept any further complaints from that Complainant for a period of 2 years." For the avoidance of doubt, it is the view of the Expert that the available evidence does not support the Respondent's contention of Reverse Domain Name Highjacking. The Expert does not find that the Complainant has used the Policy in bad faith.
David King
Date: 10 July 2002