Complainant states that “[t]he Alimonti family has been active in marble and natural stone business since 1903, operating in Romano di Lombardia, Bergamo, Italy, since its founding”; that “[t]he Alimonti family founded several companies all active in natural stone business and known for their high standard of workmanship: all companies operating in Bergamo area”; and that “[n]owadays Alimonti is an Italian design company recognized worldwide for the quality of workmanship and products.”<\/p>\n
A registration record from ICANN for the Disputed Domain Name provided by Complainant shows that the Disputed Domain Name was created on March 19, 2009, although Complainant states that the Disputed Domain Name “was [previously] owned by a company belonging to the Alimonti family, as evidenced by the photos downloaded from Web Back [sic] Machine”.<\/p>\n
Complainant states that the Disputed Domain Name “does not resolve to any web site,” although a corresponding annex provided by Complainant shows a web page stating that the Disputed Domain Name is “REGISTERED FOR DEVELOPMENT” and also states: “This domain has been registered. If you’re interested in this domain, contact us to check availability for customer use, ownership, or other development opportunities.” The web page then offers “Domain Only” services, an “e-Inclusive Package” for “getting your new online business started” and “Other Services.”<\/p>\n
Respondent states that it is “a corporation located in Richmond, British Columbia, Canada, [that] is in the website development, website hosting, and branding business”; that it “lawfully registers non-infringing domain names and develops websites”; that it “registers domain names that are surnames, descriptive, unique and brand-able, acronyms, or are otherwise non- infringing”; that it “offers a service wherein a customer can either purchase a domain name by itself from Respondent, or the customer can alternatively purchase a website development package along with a domain name.”<\/p>\n
Respondent further states that it registered the Disputed Domain Name “because it saw the [Disputed] Domain Name as being generally attractive as an Italian-sounding surname that would be potentially attractive to any number of people who shared the Alimonti name and who wished to have a corresponding web presence”; that Respondent has registered other “Italian sounding surnames, such as Binatti.com, Bisanti.com, Lamenti.com, Miniutti.com, Proveti.com, and others”; that “[a]t no time had Respondent been aware of Complainant or its business and certainly did not register the [Disputed] Domain Name because of Complainant or its business,” adding that “at the time of the [Disputed] Domain Name registration in 2010, Complainant didn’t have any registered trademarks, let alone in Canada where Respondent is located[,] [n]or did Complainant have any significant reputation in Canada such that Respondent would have heard of it.”<\/p>\n
Respondent further states that “many people and businesses all over the world… share” the Alimonti name as a surname or as a business name. In support thereof, Respondent provides as annexes examples of people with the surname Alimonti on Facebook and LinkedIn; companies that use the Alimonti name in Brazil, Florida (USA) and Germany; “an Alimonti Law Offices and Mediation Services in New York”; as well as individuals who share the surname Alimonti on websites for a wide variety of industries, including writing, accounting, teaching, medicine, sports and more. “Even in Italy where Complainant is located, there are many Alimontis and Alimonti-named businesses that are not associated with Complainant company as shown in the Italian Business Register,” Respondent states, adding that “[t]he Italian trademark registry additionally shows many Alimonti-formative trademarks that are unassociated with Complainant marble and stone business, such as Pasta Alimonti and Alimonti Tents” and that the WIPO Global Brand Database shows “many Alimonti formative trademarks belonging to third parties, such as in Brazil (ALIMONTI & Design for construction), PASTIFICO ALIMONTI & Design in Italy for pasta, and DR. ALIMONTI in the United States for wrinkle creams.”<\/p>\n
Respondent further states that it never “solicit[ed] Complainant” and instead “merely responded to Complainant’s request for a quote based upon false pretenses” in which Complainant agreed to Respondent’s terms, which include the following: “Neither You nor any Potential Buyer possesses or is claiming any right, title or interest in or to the Domain Name and neither you nor any Potential Buyer have any, or intend to commence any, claim, investigation or proceeding of any nature in law or in equity, by way of arbitration or before any court or other governmental authority that… challenges or contests eWeb’s right, title or ownership in and to the Domain Name… [or] alleges bad faith registration or use, or that eWeb has no rights or legitimate interest in the Domain Name.”<\/p>", "other_legal_proceedings": "
The Panel is not aware of any other legal proceedings that are pending or decided and that relate to the Disputed Domain Name.<\/p>", "no_response_filed": "
Complainant contends, in relevant part, as follows:<\/p>\n
Paragraph 4(a)(i): Complainant argues that it has rights in the ALIMONTI Trademark as a result of the two Italian registrations as well as the alleged “unregistered trademark rights” referred to above. Complainant further states that the Disputed Domain Name “is identical to the trademark ‘Alimonti’” and “[t]he addition of .com is also without legal significance in determining identity, as it is a designation that every internet provider must use part of its internet address.”<\/p>\n
Paragraph 4(a)(ii): Complainant argues that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “it has not licensed or otherwise permitted the Respondent to use any of its unregistered trademark and\/or trademark, nor has it licensed or otherwise permitted the Respondent to apply for or use any domain names incorporating any of those marks”; “[t]o the best of the Complainant’s knowledge, the Complainant is unable to find any association with the Respondent and Alimonti”; “[w]ith more than 100 years of experience, the Complainant has not heard of any organization, activity, project nor product identified as Alimonti except for the Complainant’s own initiative”; “the word ‘ALIMONTI’ is a family name and not a fancy word or contained in vocabularies [and]… [t]herefore, it is not a word that a trader would rightly choose unless seeking to create an impression to associate with the Complainant.”<\/p>\n
Paragraph 4(a)(iii): Complainant argues that the Disputed Domain Name was registered and is being used in bad faith because, inter alia, “Complainant finds it highly unlikely that the Respondent was unaware of the Complainant’s rights by the time it registered the disputed domain name, given the fact Alimonti is not a dictionary word and is an Italian family name”; the Disputed Domain Name “does not resolve to any web site” and “satisfies the concept of ‘passive holding’”; “[i]t is clear that the domain name was registered primarily for the purpose of transferring the domain name registration to the owner of the trademark for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name” as “clearly demonstrated by the Respondent's large monetary claim…, taking into account that, starting 2009, the domain name is ‘for sale’,” as shown on a web page stating that the Disputed Domain Name could be purchased for $39,500 USD.<\/p>\n
Respondent contends, in relevant part, as follows:<\/p>\n
Paragraph 4(a)(i): Respondent argues that, inter alia, “it is arguable whether Complainant’s two respective figurative marks [registered in Italy] each of which contain additional words and images, give Complainant trademark rights in a mark which is identical or confusingly similar to Respondent’s [Disputed] Domain Name,” although “it is respectfully submitted that the case is better decided on the subsequent two parts of the three-part UDRP test.” Respondent further argues that “Complainant’s claim of common law trademark rights has not been adequately supported with evidence.”<\/p>\n
Paragraph 4(a)(ii): Respondent states that it has rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, it was “the first person to register the Domain Name at a time when it was not subject to any demonstrated trademark rights held by Complainant”; “Respondent used the Domain Name as understood by the Policy, namely for Respondent’s web development and branding services and also for offering the Domain Name for sale with or without additional services,” which has been upheld in four previous decisions under the Policy, including Kevac S.r.l v. Eweb Development Inc., WIPO Case No. D2019-2991; Sanofi v. Domain Manager, eWeb Development Group, WIPO Case No. D2014-1185; and Ferm-O-Feed B.V. v. Domain Manager, eWeb Development Inc., WIPO Case No. D2018-1112.<\/p>\n
Paragraph 4(a)(iii): Respondent states that the Disputed Domain Name was not registered and used in bad faith because, inter alia, “Respondent’s domain name registration precedes any proven trademark rights held by Complainant as aforesaid” and “[i]t is well-established that in general, a finding of bad faith registration cannot be made with respect to a trademark that did not exist at the time of registration of the disputed domain name”; Complainant “provides no evidence whatsoever of any reputation such that Respondent would have heard or even ought to have heard of Complainant”; Respondent “did not target Complainant and was not even aware of it”; “Respondent has provided a credible explanation of why it registered the [Disputed] Domain Name, consistent with its other comparable domain names and has demonstrated that it is in the business of supplying attractive surname, dictionary word, acronym, and made up words to new entrants to the marketplace who are looking for a web presence”; and “it has been established that the name, Alimonti is by no means exclusively or even predominantly associated with Complainant.”<\/p>\n
Finally, Respondent asks the Panel to enter a finding that Complainant has engaged in Reverse Domain Name Hijacking because, inter alia, the Complainant lacks “any evidentiary basis for a finding that [Complainant] was targeted by Respondent’s [Disputed] Domain Name registration”; “Complainant failed to address the obvious fact that there were numerous other persons and entities who all share the Alimonti name and that Complainant had no exclusive right to it”; “Complainant made unsubstantiated allegations of ‘worldwide fame’”; “Complainant misrepresented its unregistered trademark rights by conflating third-party entities and prior third-party ownership of the Domain Name”; and “Complainant intentionally omitted the context for its receipt of a quote from [Respondent] and failed to address its breach of its representations and warranties to Respondent.”<\/p>", "rights": "
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 UDRP).<\/p>", "no_rights_or_legitimate_interests": "
The Complainant has not shown, to the satisfaction of the Panel, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name (within the meaning of paragraph 4(a)(ii) of the UDRP).<\/p>", "bad_faith": "
The Complainant has not, to the satisfaction of the Panel, shown that the Disputed Domain Name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the UDRP).<\/p>", "procedural_factors": "
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.<\/p>", "decision": "Rejected", "panelists": [ "Alan Limbury", "Gregor Kleinknecht LLM MCIArb", "Douglas Isenberg" ], "date_of_panel_decision": "2024-09-02 00:00:00", "informal_english_translation": "
Complainant states that it owns two figurative trademark registrations in Italy for marks that include the words ALIMONTI MILANO (Reg. No. 302015000053670; registered June 20, 2017) and ALIMONTI ADVANCE (Reg. No. 302023000147510; registered February 23, 2024). Complainant also states that it has “unregistered trademark rights to the Alimonti sign… [t]hrough more than 100 years or extensive and continuous use of the Alimonti trademark by the Complainant and its family.” These registrations and alleged “unregistered trademark rights” are referred to herein as the “ALIMONTI Trademark.”<\/p>", "decision_domains": { "alimonti.com": "REJECTED" }, "panelist": null, "panellists_text": null }