Barilla G. e R. Fratelli S.p.A. v domain admin

WIPO Case No. D2025-3223

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Barilla G. e R. Fratelli S.p.A. v. domain admin

Case No. D2025-3223

1. The Parties

The Complainant is Barilla G. e R. Fratelli S.p.A., Italy, represented by Studio Barbero S.p.A., Italy.

The Respondent is domain admin, Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <barillagerflli.com> is registered with Spaceship, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2025. connection with the disputed domain name. On August 12, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Redacted for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 14, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 14, 2025.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for

Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on August 19, 2025. In accordance with the Rules, paragraph
5, the due date for Response was September 8, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on September 10, 2025.

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The Center appointed Fabrice Bircker as the sole panelist in this matter on September 23, 2025. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

According to documented and uncontested elements in the case file, the Complainant, is a leading company in the field of oven-baked products, pasta and ready-made sauces. Its business was founded in 1877 in Parma, Italy, by Pietro Barilla, and in 1993 his sons, Gualtiero and Riccardo took over the management of the company. Nowadays, the Complainant operates in 28 countries directly, exports its products to over 100 countries, employs over 9,000 people and in 2023 had a turnover of EUR 4.869 million.

The Complainant’s activities are protected by the following trademarks registrations among many others:

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Besides, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in substance because:

- the Respondent is not a licensee, an authorized agent of the Complainant or in any other way
authorized to use the Complainant’s trademarks,

- the Respondent is not known under a name corresponding to the disputed domain name,

- as the disputed domain name redirects to a page offering it for sale for USD 2,799, which is an amount
exceeding the mere out-of-pocket costs directly related to said disputed domain name, the
Respondent is not using it in connection with a bona fide offering of goods or services and is not
making a legitimate noncommercial or fair use of said disputed domain name, and

- as the disputed domain name incorporates the well-known trademark BARILLA and reproduces the verbal part of the BARILLA G.E.R.F.LLI trademark, said disputed domain name carries a high risk of implied affiliation with the Complainant.

Then, the Complainant contends that the disputed domain name has been registered in bad faith notably because:

- in light of the well-known feature of the BARILLA trademark, it is inconceivable that the Respondent
was unaware of it when registering the disputed domain name, and

- the composition of the disputed domain name suggests that the Respondent was actually aware of,
and intended to target the Complainant as the disputed domain name is almost identical to the
Complainant’s company name “Barilla G. e R. Fratelli S.p.A.”, from which it differs only by the
elimination of the dots, the four letters “rate” in the word “Fratelli” and the company legal form “S.p.A.”.

Finally, the Complainant argues that the disputed domain name is being used in bad faith, notably because:

- the Complainant’s trademarks are well known and panels have consistently found that the mere
registration of a domain name that is identical to a famous or widely known trademark by an
unaffiliated entity can by itself create a presumption of bad faith,

- the Respondent failed to reply to the Complainant’s cease-and-desist letter, which can evidence bad
faith, and

- the Respondent has already been involved in other UDRP procedures which concluded with the
transfer of the disputed domain names to the complainants. As a consequence, the Respondent is
engaged in a pattern of conduct consisting in preventing trademark owners from reflecting their
trademarks in corresponding domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

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Based on the available record (Annex 3 of the Complaint), the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The entirety of the textual part of the BARILLA G.E.R.F.LLI mark is reproduced within the disputed domain name except for the dots. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, sections 1.7 and 1.10.

Regarding the generic Top-Level Domain (“gTLD”) “.com” in the disputed domain name, it is well established that a gTLD does not generally affect the assessment of a domain name for the purpose of determining identity or confusingly similarity. WIPO Overview 3.0, section 1.11.1.

Further, the Panel also finds that the entirety of the BARILLA mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is also confusingly similar to this mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Indeed, while the addition of other terms (here, “gerflli”) may bear

on the assessment of the second and third elements, the Panel finds the addition of such term does not
prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of
the Policy, as the Complainant’s trademark remains recognizable within the disputed domain name. WIPO

Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

Indeed, the Complainant contends that it has not given its consent to the Respondent to use its trademarks in a domain name registration or in any other manner.

In addition, there is nothing in the record of the case likely to indicate that the Respondent may be commonly known by the disputed domain name.

Furthermore, the disputed domain name redirects to a webpage indicating that it is offered for sale for USD 2,799. Offering a domain name for sale is not a noncommercial use, but on the contrary a commercial use. Of course, selling domain names is not forbidden. However, for the purposes of the Policy such an activity must not infringe upon third parties’ rights, in particular in enabling the Respondent to unduly capitalize or

trade on the value of a prior trademark. In the present case, it results from the documents supporting the
Complaint and from the cited decisions (e.g. Barilla G. e R. Fratelli S.p.A. v. Super Privacy Service LTD c/o
Dynadot / Ali Aslan, WIPO Case No. D2021-3054, Barilla G. e R. Fratelli S.p.A. v. Michael Nava, Brand

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Boogie LLC, WIPO Case No. DIO2023-0039 and Barilla G. e R. Fratelli S.p.A. v. Sahand Consulting Inc., WIPO Case No. D2012-2450) that the BARILLA trademark is globally well known. As a consequence, the offering for sale of the disputed domain name, which is confusingly similar to the BARILLA trademark,

amounts to capitalizing on the value of the Complainant’s trademark and, therefore, cannot be considered as
a legitimate commercial use, and cannot give rise to rights or legitimate interests in the disputed domain
name.

Moreover, the Panel finds that the composition of the disputed domain name, which reproduces the well- known BARILLA trademark and is almost identical to the Complainant’s BARILLA G.E.R.F.LLI trademark, carries a risk of implied affiliation and tends to suggest sponsorship or endorsement by the Complainant, whereas the Respondent is not connected to the latter. This is a further indication of the Respondent’s lack

of rights or of legitimate interests in the disputed domain name (WIPO Overview 3.0, section 2.5.1).

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that:

- the use of the BARILLA trademark predates the registration of the disputed domain name by almost
150 years,

- the BARILLA trademark is intrinsically distinctive and globally well known,

- the BARILLA trademark is protected all over the world, including in Hong Kong, China where the
Respondent is located,

- the disputed domain name identically reproduces the textual part of the BARILLA G.E.R.F.LLI
trademark (except for the dots) and is also extremely close to the Complainant’s company name,

- the disputed domain name may also refer to the managers of the Complainant, namely the brothers Gualtiero and Riccardo Barilla, as it reproduces their family name and the initials of their first names combined with the element “Flli”, the Italian abbreviation for “Fratelli” meaning “brothers”,

- when registering the disputed domain name, the Respondent has used a privacy service to conceal its
identity, and

- the Respondent has neither replied to the Complainant’s cease-and-desist letter nor put forward any
argument intended to establish its good faith.

In these circumstances, it is not conceivable that the Respondent was not aware of the Complainant’s rights when registering the disputed domain name.

Besides, as far as the use of the disputed domain name is concerned, the Panel notes that the disputed domain name resolves to a page offering it for sale for USD 2,799, which is most likely an amount in excess of the out-of-pocket costs directly related to the disputed domain name. The present case falls into the scope of paragraph 4(b)(i) of the Policy, namely, that the Respondent has registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration most likely in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name.

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The Panel further notes that the Complainant asserts that the email address of the Respondent was associated with other respondents who were found by other panels in registering and using some of the domain names in bad faith.

The Panel finds that the Complainant has established the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <barillagerflli.com> be transferred to the Complainant.

/Fabrice Bircker/
Fabrice Bircker
Sole Panelist
Date: October 7, 2025

(BARILLA) International trademark Registration No. 349555 registered on September 26,

1968, designating notably Austria, Benelux, Germany, Spain, France, Morrocco, Portugal, and protecting
products of classes 5 and 30,

BARILLA, Honk Kong, China trademark registration No. 306248043, registered on May 19, 2023 and protecting products and services of classes 29, 30 and 43, and

(BARILLA G.E.R.F.LLI) European Union Trademark Registration No. 019029546, filed on

May 20, 2024, registered on September 3, 2024, and protecting products of class 30.

The disputed domain name, <barillagerflli.com>, was registered on June 2, 2025.

It resolves to a website offering it for sale for USD 2,799.

Before initiating the present procedure, the Complainant sent a cease-and-desist letter to the Respondent through the Registrar’s online WhoIs contact form requesting the transfer of the disputed domain name and also requested from the marketplace the delisting of the disputed domain name, but in vain.

Very little is known about the Respondent, except that, based on the information disclosed by the Registrar, it is apparently located in Hong Kong, China.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name reproduces the verbal part of its registered trademarks which therefore are recognizable within it.