Barilla G. e R. Fratelli S.p.A. v mesut erdogan

WIPO Case No. D2025-1494

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Barilla G. e R. Fratelli S.p.A. v. mesut erdogan

Case No. D2025-1494

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 mesut erdogan, Türkiye.

2. The Domain Names and Registrar

The disputed domain names <barillaprotein.com> and <barillaproteinplus.com> are registered with Dynadot

Inc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2025. On April 14, 2025, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain names. On April 15, 2025, the Registrar transmitted by email to the Center its verif ication response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (REDACTED FOR PRIVACY, Super Privacy Service LTD c/o Dynadot) and contact information in the Complaint. The Center sent an email communication to the

Complainant on April 16, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant f iled an amendment to the Complaint on April 17, 2025.

The Center verif ied that the Complaint together with the amendment to the Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on April 22, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 12, 2025. The Respondent did not submit any response. Accordingly, the Center notif ied the Respondent’s default on May 13, 2025.

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The Center appointed Gill Mansfield as the sole panelist in this matter on May 16, 2025. The Panel f inds 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

The Complainant is a leading company in the field of oven-baked goods, pasta, and ready-made sauces, and is the owner of the BARILLA trademark. The Complainant’s history dates back to 1877 and it now ranks as one of the top Italian food groups and a leader in the global pasta business. It employs 9,000 people and in 2023 had a turnover of EUR 4.869 million, with a strong presence internationally. The Complainant

operates directly in 28 countries, exports its products to over 100 countries and owns 30 production sites
across 11 countries.

The Complainant has a portfolio of international registrations for the BARILLA trademark the earliest of which dates back to 1968, including (inter alia) the following:

International trademark registration number 675652 for BARILLA (word mark) registered on June 20, 1997 in classes 29 and 30.

European Union trademark registration number 008585747 for BARILLA (word mark) registered in February

22, 2010 in classes 5, 29, 30, 31, 32, 33, 35, and 43.

United States of America trademark registration number 2005752 for BARILLA (word mark) registered on

October 8, 1996 in international class 30.

In addition, and of note, the Complainant’s f iled for the following additional trademark registrations on
October 21, 2024:

European Union trademark registration number 019093971 for BARILLA PROTEINPLUS (word mark) registered on March 18, 2025 in classes 29, 30 and 43, and

European Union trademark registration number 019093973 for BARILLA PROTEIN+ (word mark) registered on March 18, 2025 in classes 29, 30 and 43.

The Complainant has registered various domain names incorporating the BARILLA mark including the BARILLA brand and products, and has a corporate website at “ dedicated to the BARILLA group and all of the related brands of the group. These websites are available in several dif ferent languages.

<barilla.com> registered on December 15, 1995, and <barillagroup.com> registered on August 2, 2002. The
The disputed domain names were both registered on October 21, 2024. When the Complainant first became
aware of the disputed domain names they resolved to inactive website. On November 13, 2024, the
Complainant ascertained that the disputed domain names had started to resolve to a website indicating that
the disputed domain names were available for purchase for USD2,550 via Efty Pay. The Complainant later
discovered that the disputed domain names were available for purchase on the GoDaddy Auction
Marketplace for USD3,477.22 each. On November 25, 2024, the Complainant’s representatives sent a
“cease and desist” letter to the registrant of the disputed domain names via the contact form available the
webpage which the disputed domain names redirected to, and a contact request via the Registrar’s website.
In the absence of a reply, a f irst reminder was sent on December 3, 2024, and a second reminder on
January 21, 2025.

On January 21, 2025, the Complainant ascertained that the disputed domain names were being re-directed to a GoDaddy web page where each of the disputed domain names were available to purchase for USD2,850. On March 7, 2025, the Complainant ascertained that the disputed domain names had been listed on another marketplace (DaaZ.com) and were being of fered for sale for USD2,850 each.

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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 names.

Notably, the Complainant contends that the disputed domain names are identical or confusingly similar to that of the Complainant. The Complainant states that the disputed domain names incorporate the BARIILA mark in its entirety, consisting of the BARILLA trademark with the addition of the term “protein” alone or in combination with the additional term “plus”. The Complainant also notes that the disputed domain name <barillaproteinplus.com> is identical to the Complainant’s registered trademark BARILLA PROTEINPLUS with the only dif ference being the omission of the space between the two words in the mark. The

Complainant concludes that the disputed domain name <barilliaproteinplus.com> is identical to the similar with the Complainant’s BARILLA mark.

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain names. It states that the Respondent is not an employee, licensee, affiliated person or authorized agent of the Complainant, or in any way authorized to use the Complainant’s trademarks, or to register or use the disputed domain names. The Complainant contends that there is no evidence of use of , or demonstrable preparations to use the disputed domain names in connections with a bona fide offering of goods or services, or evidence of any legitimate noncommercial or fair use of the disputed domain names. The Complainant points to the fact that the disputed domain names have been redirected to webpages that offer the disputed domain names for sale at amounts which it submits exceed the out-of -pocket costs directly related to the disputed domain names. Further, it asserts that the Respondent is not commonly known by the disputed domain names, and a cannot reasonably claim to be.

The Complainant argues that in light of its prior registration and extensive use of the BARILLA mark, including in Türkiye, it is inconceivable that the Respondent was unaware of the existence of the Complainant’s registered and well-known trademark at the time it registered the disputed domain names. It points to the well-known character of the Complainant’s trademark. It also points to the fact that the disputed domain names were registered on the same date that the Complainant f iled its applications to register the European Union trademarks BARILLA PROTEINPLUS and BARILLA PROTEIN+. In respect of bad faith use, it refers to the fact that both disputed domain names have been directed to webpages where the disputed domain names are offered for sale at amounts in excess of the out-of -pocket expenses directly related to the disputed domain names. It also notes that the Respondent has failed to reply to the “cease and desist” letter and subsequent reminders. As further evidence of bad faith, the Complainant submits that the Respondent has previously registered several domain names corresponding to third party trademarks on the same day as the filing of the corresponding European Union trademark applications, and then of fered those domain names for sale.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy the Complainant carries the burden of proving:

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A. Identical or Confusingly Similar

It is well accepted that the f irst 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.

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 Panel f inds that the entirety of the BARILLA mark is reproduced within the disputed domain names (and is clearly recognizable within the disputed domain names). Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms (here the addition of the terms “protein” and “proteinplus” respectively) may bear of the assessment of the second and third elements, the Panel finds the additional of such terms does not prevent a finding of confusing similarity between the disputed domain names and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

Further, the Panel f inds that, for the purposes of the Policy, the disputed domain name
<barillaproteinplus.com> is identical to the Complainant’s BARRILLA PROTEINPLUS trademark.

The Panel f inds the f irst 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 of ten 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 satisf ied 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 names. 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 names such as those enumerated in the Policy or otherwise.

The Panel notes that the Respondent is not an employee, licensee, affiliated person, or authorized agent of the Complainant and has not, in any other way, been given authorization to use the Complainant’s trademark, or to register or use the disputed domain names.

There is no evidence that the Respondent is commonly known by either of the disputed domain names and, in the light of the information about the Respondent disclosed by the Registrar and given the nature of the disputed domain names, the Respondent cannot plausibly claim to be known by either of the disputed domain names.

There is also no evidence of use, or demonstrable preparations to use, the disputed domain names for a bona f ide offering of goods or services, or evidence of legitimate noncommercial or fair use of the disputed domain name. On the contrary, the disputed domain names have been redirected to webpages where the disputed domain names are being of fered for sale.

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The Panel notes that the disputed domain names comprise the Complainant’s distinctive BARILLA trademark with the addition of the descriptive terms “protein” and “proteinplus” respectively. The Panel also notes that the disputed domain name <barilliaproteinplus> is identical to the Complainant’s BARILLA PROTEINPLUS mark. Having viewed the available record, the Panel further notes that the terms “protein” and “protein plus” directly correspond to the Complainant’s field of business activity being descriptive of the Complainant’s protein-enriched products. This creates the impression that the disputed domain names are those of the Complainant, or related, linked to, or affiliated with the Complainant. As such, the Panel f inds that the composition of the disputed domain names is such as to carry a risk of implied affiliation that cannot constitute fair use, as it effectively impersonates the Complainant, or suggests affiliation with, or sponsorship or endorsement by, the Complainant. WIPO Overview 3.0, section 2.5.1.

Further, under paragraph 14(b) of the Rules, the Panel may draw f rom the lack of response of the Respondent such inferences as it considers appropriate. The Panel is of the view that the lack of response f rom the Respondent corroborates the absence of any rights or legitimate interests of the Respondent in the disputed domain names.

The Panel f inds 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 record shows that the Barilla family started trading using the Barilla name in 1877. The BARILLA brand has a long trading history with signif icant worldwide sales and international promotion of its brand and products under the BARILLA mark. As such the BARILLA mark is widely-known worldwide. In contrast, the disputed domain names were only registered in 2024.

Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising a typo or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4.

Given the distinctiveness and reputation of the Complainant’s trademark, the Panel f inds that it is inconceivable that the Respondent was unaware of the Complainant’s trademark at the date on which the disputed domain names were registered, and that it specif ically targeted the Complainant’s marks. In making this finding, the Panel notes the composition of the disputed domain names which, in addition to incorporating the BARILLA mark in its entirety, include the addition of the descriptive terms “protein” and “proteinplus”. These terms directly correspond to the Complainant’s f ield of commercial activity and specifically its protein-enhanced pasta products. The Panel has also noted the timing of the registration of the disputed domain names: both of the disputed domain names were registered on the same date that the Complainant filed the European Union trademark applications for BARILLA PROTEINPLUS and BARILLA PROTEIN+ (October 21, 2024) evidencing the Respondent’s knowledge of the Complainant and its trademarks.

As noted above, the disputed domain names have been redirected to webpages where they are being of fered for sale. The price at which the disputed domain names have been offered for sale has varied over a period of time, with offerings at USD2,550, USD3,477.22 and USD2,850. All of these are amounts that in all likelihood significantly exceed the out-of-pocket expenses of registration of the disputed domain names.

Having regard to all of the circumstances, the Panel finds that the Respondent has registered the disputed domain names “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 that complainant, for valuable consideration in excess of the respondent’s out-of-pocket expenses directly related to the domain name” under paragraph 4(b)(i) of the Policy.

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The Panel also notes the Complainant’s evidence of a pattern of abusive domain name registrations and bad faith on the part of the Respondent. In each of the UDRP cases cited by the Complainant (e.g. Verisure Sarl v mesut erdogan, WIPO Case No. D2024-4599, and Rolf Benz AG & Co.KG v. mesut erdogan, WIPO Case No. D2024-4380) the Respondent registered domain names corresponding to European Union trademark applications by the relevant complainants on the same date that those applications were f iled by the

complainants. As in the present case, those domain names were then offered for sale. The Panel f inds that the Respondent has also engaged in a pattern of bad faith conduct under paragraph 4(b)(ii) of the Policy.

The Panel f inds 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 names <barillaprotein.com> and <barillaproteinplus.com> be transferred to the Complainant.

/Gill Mansfield/
Gill Mansfield
Sole Panelist
Date: May 30, 2025