Decision for dispute CAC-UDRP-107696

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 submitted evidence that it is the owner of multiple trademarks including, inter alia:

- International trademark registration No. 567929 “VALSOIA” (figurative mark), granted on March 26, 1991 and duly renewed, in connection with goods of classes 5 and 29;

- International trademark registration No. 625598 “VALSOIA” (figurative mark), granted on September 20, 1994 and duly renewed, in connection with goods of class 30;

- EU trademark registration No. 003439379 “VALSOIA” (word mark), filed on October 31, 2003, granted on March 14, 2005 and duly renewed, in connection with goods of classes 5, 29 and 30;

- EU trademark registration No. 018026615 “VALSOIA” (figurative mark), filed on February 22, 2019 and granted on August 13, 2019, in connection with goods of classes 5, 29, 30 and 32;

- Italian trademark registration No. 587684 “PAROLA DI FANTASIA VALSOIA”, filed on July 5, 1990, granted on February 15,1993 and duly renewed, in connection with goods of classes 5, 29, 30, 31 and 32;

- Italian trademark registration No. 542350 “VALSOIA”, filed on February 8, 1991, granted on March 26, 1991 and duly renewed, in connection with goods of classes 5 and 29;

- Italian trademark registration No. 2019000007935 “VALSOIA” (word mark), filed on February 1, 2019 and granted on August 6, 2019, in connection with services of class 42.

Hereinafter referred to as the “Complainant’s Trademarks”.

The Complainant is an Italian company that has been operating in the food products sector since 1990. The Complainant offers a comprehensive range of plant-based alternatives inspired by the Italian culinary tradition, including milk, beverages, ice cream, desserts, biscuits, cheeses, and condiments. The Complainant’s products are widely available across all major supermarkets in Italy and are also present in numerous European countries. Since 2006, the Complainant has been listed on the Milan Stock Exchange.

The Complainant is also the owner of the following domain names: <VALSOIA.IT>, <VALSOIA.INFO>, <VALSOIA.ORG>, <VALSOIASPA.ORG>, <VALSOIASPA.INFO>, <VALSOIASPA.IT> and <VALSOIAINTEGRATORIVEGETALI.IT>.

The disputed domain name <VALSOIA-IT.COM> was registered on March 30, 2025.

The Complainant contends that the disputed domain name is identical to its well-known trademarks and was registered and used in bad faith. The Complainant also contends that the Respondent does not have rights or legitimate interests into the disputed domain name.

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.

Confusing Similarity:

The disputed domain name is confusingly similar to the Complainant's Trademarks. The entirety of the word element “VALSOIA” of the Complainant’s Trademarks is incorporated into the domain name, with the sole addition of the letters “IT” which seem to refer to the country of Italy, the home country of the Complainant. The hyphen (“-“) and the generic Top-Level Domain (gTLD) “.com” should be disregarded in the comparison. The Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark under paragraph 4(a)(i) of the Policy.

No Rights or Legitimate Interests:

The Complainant has not authorised the Respondent to use the Complainant's Trademarks, nor is there any evidence that the Respondent is commonly known by the disputed domain name. The Respondent has used the disputed domain name to create a false e-mail address “giorgia.conso@valsoia-it.com”. Such use cannot be considered a legitimate non-commercial or fair use. The Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy.

Bad Faith:

The Respondent’s conduct constitutes registration and use in bad faith.

The Complainant’s Trademarks and domain names predate the registration of the disputed domain name with several years.

It is inconceivable that the Respondent would have come up with a domain name consisting of the term “VALSOIA” in combination with the term “IT” without having prior knowledge of the Complainant, the Complainant’s Trademarks and its activities. The Panel emphasises that the term “IT” likely refers to the country of Italy, that the Complainant has its headquarters in Italy, that the Complainant sells Italian culinary products, and that the Respondent used the Italian language in its email. On the balance of probabilities, it seems evident that the Respondent had actual knowledge of the existence of the Complainant and its activities, and of the Complainant's Trademarks at the time of registration and use of the disputed domain name. The Panel is convinced that the Respondent had the trademarks of the Complainant in mind when registering and using the disputed domain name.

The Panel also points out that an e-mail was sent by the e-mail address “giorgia.conso@valsoia-it.com”, which included the following text (in Italian): “Buongiorno, Potrebbe farmi sapere quando sarà effettuato il pagamento della fattura allegata? Avete whatsapp per comunicare facilmente? in attesa di una vostra risposta.” Translated into English, this e-mail reads: “Good morning, Could you let me know when the attached invoice will be paid? Do you have WhatsApp for easy communication? I look forward to hearing from you.” This seems to the Panel to be a phishing attempt.

The Respondent did not contest any of the Complainant’s arguments and failed to provide any explanation for its choice to register and/or use a domain name incorporating the dominant element of the Complainant’s Trademarks in combination with the term “IT”, or for sending such e-mails.

The Respondent did not answer to the cease-and-desist letter of the Complainant.

Given the above elements, the Panel concludes that the disputed domain name is being used for the purpose of misleading internet users for commercial gain, highly likely for a phishing scheme, impersonating the Complainant. There is no evidence whatsoever of a bona fide offering of goods or services. The disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.