Davide Campari – Milano N.V. owns the rights to the APEROL mark, created in 1919 by the Barbieri brothers, Luigi and Silvio. In the 1950’s the APEROL SPRITZ cocktail was born and has been marketed consistently ever since within Italy.
The Italian company filed a UDRP against the domain AperolSpritz.us, a domain that was registered in 2023. In doing so, the Aperol Spritz cocktail recipe was quoted:
The APEROL SPRITZ cocktail official recipe approved by the International Bartenders Association (IBA) includes 3 parts of Prosecco D.O.C. (9cl), 2 parts of Aperol (6cl), 1 splash of soda (3cl) and 1 slide of orange.
The Disputed domain is parked at Dan with a $1,450 price tag but apparently it used to display a “make offer” lander prior to the UDRP, inviting offers. That asking amount is a tad lower than the filing cost of a UDRP.
The Complainant used a third party to inquire about the domain that noted their affiliation to the Complainant and their rights; the Respondent countered with $500. Despite their large budget, the Complainant did not budge and filed the UDRP.
The sole panelist agreed with the Complainant and ordered the domain to be transferred to them.
It’s noteworthy that UDRPs (USRPs) that involve .US domains only need establish that the domain was registered OR used in bad faith.
Copyright © 2024 DomainGang.com · All Rights Reserved.Davide Campari – Milano N.V. v. Scott Bailey
Claim Number: FA2410002119458
PARTIES
Complainant is Davide Campari – Milano N.V. (“Complainant”), represented by Luca Barbero of Studio Barbero S.p.A., Italy. Respondent is Scott Bailey (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is aperolspritz.us, registered with Dynadot Inc.
PANEL
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Jeffrey J. Neuman as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on October 8, 2024; Forum received payment on October 8, 2024.
On October 9, 2024, Dynadot Inc confirmed by e-mail to Forum that the aperolspritz.us domain name is registered with Dynadot Inc and that Respondent is the current registrant of the name. Dynadot Inc has verified that Respondent is bound by the Dynadot Inc registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 9, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 29, 2024 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@aperolspritz.us. Also on October 9, 2024, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On October 30, 2024, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Jeffrey J. Neuman as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
APEROL is a famous bright-orange Italian aperitivo with a bitter taste and citrus notes. It was created in 1919 by the Barbieri brothers, Luigi and Silvio, in the liqueur company of their father. Between 1919 and 1930, APEROL became popular all over Italy, particularly with young adults gathered in cafes in Padua and traditional bars in Venice. In the 50’s the APEROL SPRITZ cocktail was born and has been marketed consistently ever since within Italy.
Following APEROL’s acquisition by Gruppo Campari in 2003, the brand continued a strong advertising campaign behind APEROL SPRITZ and expanded internationally. Since that time, Aperol expanded its reach to consumers through art, advertising, music and lifestyle, around the world. In 2021, Terrazza Aperol, the new venue of the Campari Group’s APEROL brand, officially opened its doors. With over 100 years of history, APEROL is currently recognized around the world for accompanying life’s magic moments.
The APEROL SPRITZ cocktail official recipe approved by the International Bartenders Association (IBA) includes 3 parts of Prosecco D.O.C. (9cl), 2 parts of Aperol (6cl), 1 splash of soda (3cl) and1 slide of orange. Aperol Spritz is also available as a Ready to Serve bottle, which is a pre-made ready to drink cocktail crafted with Aperol, sparkling wine, and soda water.
In March 2006, the Campari Group started importing APEROL to the United States, with specific marketing geared toward American consumption of the APEROL SPRITZ. According to Forbes magazine, APEROL SPRITZ is currently the most popular cocktail in the United States.
Respondent registered the Domain Name aperolspritz.us on October 11, 2023, without Complainant’s authorization, and has redirected it since registration to internal webpages of the Dan.com or Godaddy.com websites, available at the URL addresses https://dan.com/buy-domain/aperolspritz.us?redirected=true and https://www.godaddy.com/forsale/aperolspritz.us?utm_source=TDFS_BINNS2&utm_medium=parkedpages&utm_campaign=x_corp_tdfs-binns2_base&traffic_type=TDFS_BINNS2&traffic_id=binns2&, where the Domain Name has been offered for sale for $1,450 USD or lease to own for $100 USD per month.
On November 13, 2023, a company engaged by the Complainant emailed the Respondent to inquire about the Domain Name, mentioning the Complainant as a potential client. On the same day, the Respondent replied, requesting, “Please provide your quote for this domain name.” On November 15, 2023, the intermediary sent an offer, which the Respondent rejected. The intermediary then asked the Respondent to specify a target price for the Domain Name, to which the Respondent responded with a price of “$500.” This amount exceeds the Respondent’s out-of-pocket costs for the Domain Name.
After monitoring developments related to the Domain Name for several months, the Complainant sent a cease-and-desist letter to the Respondent, demanding that the Respondent cease using the Domain Name and transfer it to the Complainant at no cost. No response was received, even after two follow-up letters were sent on June 21, 2024, and July 3, 2024, to which the Respondent again did not reply.
B. Respondent
Respondent failed to submit a Response in this proceeding. The domain name, aperolspritz.us, was registered on October 11, 2023.
FINDINGS
1. The domain name aperolspritz.us registered by Respondent is identical or confusingly similar to the APEROL SPRITZ trademark in which Complainant has rights.
2. Respondent has no rights to or legitimate interests in respect of the domain name; and
3. The disputed domain name was registered, and is currently being used, by Respondent in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical and/or Confusingly Similar
The Complainant holds established rights in the APEROL SPRITZ trademark through its registrations of the APEROL and APEROL SPRITZ marks worldwide. This includes U.S. Trademark Registration Nos. 1545559 and 4024559, registered on June 27, 1989, and September 13, 2011, respectively, with the United States Patent and Trademark Office (USPTO), and APEROL SPRITZ Registration No. 008416679, registered on September 11, 2012, with the European Union Intellectual Property Office (collectively, the “APEROL Marks”). See Compl. Annexes 3.6 and 3.5, respectively. Registration of a mark with a national trademark office is sufficient to establish rights under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (FORUM Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that the Complainant has demonstrated rights in the APEROL SPRITZ mark under Policy ¶ 4(a)(i).
The Disputed Domain Name, aperolspritz.us is confusingly similar to Complainant’s Marks as Respondent merely adds a ccTLD to the end of the identical mark APEROL SPRITZ. Adding a TLD to a complainant’s mark does not sufficiently distinguish a disputed domain name from the mark under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Therefore, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
In addition to demonstrating that the disputed domain name is identical or confusingly similar to trademarks or service marks in which Complainant has rights, the Complainant must make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Once that prima facie case is made, the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant has met its burden in establishing a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name.
Complainant contends Respondent lacks rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the APEROL Marks. When a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). In addition, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name (as contained in the Registrar’s verification e-mail) lists the registrant as “Scott Bailey” with an e-mail address “metadomains@hotmail.com”. The record contains no evidence that might otherwise tend to provide that the Respondent is either commonly known by the disputed domain name nor that it has any authorization to use the APEROL Marks. The Panel therefore concludes that for the purposes of Policy ¶ 4(c)(iii) Respondent is not commonly known by the at-issue domain name.
Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Under Policy ¶ 4(c), a Respondent can demonstrate rights to and legitimate interests in a domain name by showing inter alia, that before any notice of the dispute, it used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. See Policy ¶ 4(c)(ii). Alternatively, the Respondent could provide evidence that it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue. See Policy ¶ 4(c)(iv).
Respondent has not provided any evidence under either of those sections of the Policy and therefore Complainant has met its burden in demonstrating that the Respondent lacks rights or legitimate interests in the disputed domain name.
Registration or Use in Bad Faith
Under the usDRP, unlike the UDRP, a Complainant must establish that the Respondent either registered OR used the disputed domain name in bad faith. Though the requirement under the usDRP is disjunctive, the Panel finds on the balance of probabilities that the Complainant has established that the domain name was both registered and used in bad faith.
The Policy ¶ 4(b) provides a number of non-exclusive scenarios that constitute evidence of a respondent’s bad faith. Policy ¶ 4(b)(i) in particular provides that evidence of bad faith could include:
(i) Circumstances indicating that you have registered, or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name:
The Panel finds, on the balance of probabilities, that at the time of registration of the disputed domain name in October 2023, the Panel believes it is highly unlikely that Respondent did not have actual knowledge of the Complainant’s Mark given its extensive use in commerce globally. By that time, the Complainant had been using the APEROL mark for over a century and the specific APEROL SPRITZ mark for more than half a century.
In addition, the APEROL portion of the APEROL SPRITZ mark is a highly distinctive term. This distinctiveness is evidenced by a Google search of the term, where the top several pages of results are exclusively associated with the Complainant’s APEROL products and/or recipes utilizing the Complaint’s APEROL products including APEROL SPRITZ. Moreover, it is well-known that one can only make an Aperol Spritz cocktail by using the APEROL-branded liquor – which is only manufactured by the Complainant and/or its licensees.
The Respondent has not provided a credible explanation for owning the domain name, nor for offering it for sale to the public, other than to capitalize on the Complainant’s established reputation in the APEROL Marks.
The Respondent, without providing a plausible explanation or demonstrating any active use, has registered a domain name that is confusingly similar to the distinctive and strong APEROL SPRITZ mark and subsequently offered it for sale to the public. An offer to sell a disputed domain name may constitute evidence of bad faith under Policy ¶ 4(b)(i). For example, in loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018), it was found that a respondent’s sole use of a substantially identical domain name for the purpose of selling it is sufficient grounds to determine registration and use in bad faith under Policy ¶ 4(b)(i). Similarly, in Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019), a general offer to sell a domain name was considered evidence of the respondent’s intent to make such an offer at the time of registration, supporting a finding of bad faith under Policy ¶ 4(b)(i).
Furthermore, it is noteworthy that Respondent Scott Bailey appears to have been involved in multiple prior UDRP and usDRP cases that concluded with the transfer of disputed domain names to the complainants. These include JCDECAUX SA v. Scott Bailey, D2022-3476 (WIPO Nov. 3, 2022), and Sopra Steria Group v. Scott Bailey, FA 2073537 (Forum Dec. 28, 2023). In these cases, as with the present matter, the disputed domain names were listed for sale, and the Panels determined that the Respondent had registered and used the domain names in bad faith. Though not dispositive, the loss of previous UDRP cases, can be used as a factor in determining a pattern of registering and using domain names in bad faith.
Finally, as further evidence of bad faith, prior Panels have held that a failure to respond to a cease-and-desist letter may indicate bad faith. Alibaba Group Holding Limited v. Jianliang Fei, FA 364507 (Forum Feb. 7, 2011)(“Respondent’s bad faith is further underscored by Complainant’s undisputed contention that it sent Respondent a cease and desist letter to stop using the Disputed Domain Name, to which Respondent did not reply.”)
In the present case, given the nature of the domain name, the lack of any active use, and the absence of a clear and substantiated alternative explanation from the Respondent, the Panel concludes that, on the balance of probabilities, the Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(i).
The Panel finds that the Complainant has satisfied Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the aperolspritz.us domain name be TRANSFERRED from Respondent to Complainant.
Jeffrey J. Neuman, Panelist
Dated: November 13, 2024
