Decision for dispute CAC-UDRP-107529

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant has evidenced to be the owner of, inter alia, but not limited to, the following trademark registrations:

- Word/device trademark G GRANA PADANO P, European Union Intellectual Property Office (EUIPO), registration No. 001753284, registration date: November 29, 2001, status: active;

- Word/device trademark GRANA PADANO DOP, Italian Patent and Trademark Office, registration No. 302020000025237, registration date: August 31, 2020, status: active.

Also, the Complainant has substantiated to own various domains names relating to its company name and brand GRANA PADANO, e.g. the domain names <granapadano.it> (since 1998) and <granapadano.com> (since 1999) which both resolve to the Complainant’s official website at “www.granapadano.it”, used to promote the Complainant’s “Grana Padano” cheese products and related services.

The disputed domain name was registered on May 22, 2024.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

First, the Panel finds that the disputed domain name, <granapadanodop.org>, is confusingly similar to the Complainant’s GRANA PADANO trademarks, as it incorporates the dominant part “Grana Padano” of the latter in its entirety, simply added by the descriptive term “dop” (the official abbreviation for the term “Protected Denomination of Origin” which directly relates to the “Grana Padano” cheese). Numerous UDRP panels have recognized that where a domain name incorporates a trademark in its entirety, or where at least a dominant feature of the relevant trademark is recognizable therein, the domain name will normally be considered confusingly similar to that trademark. Moreover, it has been held in many UDRP decisions and has meanwhile become a consensus view among UDRP panels that the mere addition of descriptive or other terms, such as e.g. descriptive term “dop” (the official abbreviation for the term “Protected Denomination of Origin”), is not capable to dispel the confusing similarity arising from such incorporation of the Complainant’s GRANA PADANO trademarks in the disputed domain name

Therefore, the Complainant has established the first element under the Policy as set forth by paragraph 4(a)(i).

Second, the Complainant contends, and the Respondent has not objected to these contentions, that the Respondent has neither made use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, nor is the Respondent commonly known under the disputed domain name, nor is the Respondent making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain. The Respondent has not been licensed or otherwise authorized to use the Complainant’s GRANA PADANO trademarks, either as a domain name or in any other way.  Also, there is no reason to believe that the Respondent’s name somehow corresponds with the disputed domain name and the Respondent does not appear to have any trademark rights associated with the term “grana padano” on its own. Finally, the Complainant has demonstrated that the disputed domain name does not, and apparently did not in the past, connect to any relevant content on the Internet, but is passively held instead. Many UDRP panels, however, have recognized that the mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase, may not of itself confer rights or legitimate interests in a disputed domain name.

Accordingly, the Panel finds that the Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.

Third, the Panel holds that the disputed domain name was registered and is being used by the Respondent in bad faith. There is a consensus view among UDRP panelists that a passive holding of a disputed domain name may, in appropriate circumstances, be consistent with the finding of bad faith, in particular in circumstances in which, for example, a complainant’s trademark is well-known, and there is no conceivable use that could be made of the disputed domain name and would not amount to an infringement of the complainant’s trademark’s rights. In the case at hand, in the absence of any other reasonable explanation as to why the Respondent should rely on the disputed domain name which includes the Complainant’s undisputedly well-known GRANA PADANO trademarks almost entirely, and given that the Respondent has brought forward nothing in substance relating to the intended use of the disputed domain name, the Panel finds that the Respondent has registered and is making use of the disputed domain name in a manner which at least takes unjustified and unfair advantage of the Complainant’s GRANA PADANO trademark’s reputation and must, therefore, be considered as registered and being used in bad faith within the meaning of the Policy. Such finding also takes into consideration that the disputed domain name combines the Complainant’s GRANA PADANO trademarks and the descriptive term “dop” (the official abbreviation for the term “Protected Denomination of Origin” which directly relates to the “Grana Padano” cheese), which is a further indication that the Respondent was well aware of the Complainant and its prior rights in the GRANA PADANO trademarks when registering the disputed domain name and that the use of the latter, therefore, is inconceivable of being of a good faith nature.

Therefore, the Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).