WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Ferrero S.p.A. v. Mr. Jean-François Legendre

Case No. D2000-1534

 

1. The Parties

The complainant in this administrative proceeding is Ferrero S.p.A. ("Complainant"), a joint-stock company, incorporated under the laws of Italy with its registered office at Via Maria Cristina 41, 10025 Pino Torinese, Turin, Italy.

The respondent is Mr. Jean-François Legendre ("Respondent"), an individual having its address at 32 rue de Lappe, 75011 Paris, France.

 

2. The Domain Name and Registrar

The domain names at issue are <mynutella.org> and <mynutella.net> ("Domain Names"), registered with Network Solutions, Inc. ("Registrar" or "NSI") of 505 Huntmar Park Drive, Herndon, VA 20170, USA.

 

3. Procedural History

A complaint, pursuant to the Uniform Domain Name Dispute Resolution Policy implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999, ("Policy") and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date ("Rules"), was submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on November 8, 2000, by e-mail and was received on November 13, 2000, in hardcopy.

The Acknowledgement of Receipt of Complaint was submitted to the Complainant by the WIPO Center on December 14, 2000.

On November 27, 2000, a Request for Registrar Verification was transmitted to the Registrar, which confirmed with its Verification Response of December 1, 2000, that the disputed Domain Name was registered with NSI, that Respondent was the current registrant of the name, that NSI's Service Agreement Version 5.0 was in effect and that the registration was in active status.

The assigned WIPO Center Case Administrator completed a Formal Requirements Compliance Checklist without recording any formal deficiencies.

A Notification of Complaint and Commencement of Administrative Proceeding ("Commencement Notification") was transmitted to the Respondent on December 14, 2000, setting a deadline as of January 2, 2001, by which the Respondent could file a Response to the Complaint.

On January 2, 2001, the WIPO Center received a Response by e-mail and the hard copy was received on January 10, 2001. On January 10, 2001 the WIPO Center confirmed the receipt with an Acknowledgement of Receipt (Response).

Both, Complainant and Respondent had requested a one-member panel. Consequently, the WIPO Center invited Bernhard F. Meyer-Hauser to serve as Sole Panelist in this proceeding, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.

Having received the Statements of Acceptance and Declarations of Impartiality and Independence from the Panelist, the WIPO Center transmitted to the parties on February 8, 2001 a Notification of Appointment of Administrative Panel and Projected Decision Date. The projected decision date was February 22, 2001. On February 14, 2001 the WIPO Center informed the parties by e-mail that the Panel decided not to consider further submissions in the present case.

The Panel finds it was properly constituted and appointed in accordance with the Policy, the Rules and the WIPO Supplemental Rules.

 

4. Factual Background

Complainant is the holder of the trademark "Nutella" in numerous countries all over the world. As examples, Complainant supplied the following registration details:

- US trademark registration no. 855,647, registered on August 27, 1968, (renewed on August 27, 1988);

- UK trademark registration no. 864485, renewed on March 11, 1999;

- Canadian trademark registration no. TMA157,098, registered on February 13, 1998;

- Italian trademark registration no. 794464 renewed on November 29, 1999;

Respondent is the registered owner of the Domain Names <mynutella.org> and <mynutella.net>, which are at the center of this dispute.

 

 

 

 

 

 

5. Partiesí Contentions

A. Complainant

Complainant contends:

- that the Domain Names are confusingly similar to the trademark "Nutella";

- that in no way Respondent may not have been aware of the famous trademark "Nutella", and registration may only have occurred in bad faith;

- that Respondentís project of a real-time yearbook and the use of the software Gnutella cannot be a justification or a legitimate interest for using the Domain Names;

- that the alleged assignment of the Domain Names to a company called Jeff Consulting, Inc., controlled by Respondent, has not been recorded with Network Solutions;

- that Respondent has no connection with the Gnutella software and that he registered at any rate "mynutella" not "mygnutella";

- that Respondentís lawyers informed Complainant, that each Domain Name is on sale for approx. one million dollar;

- that the request of one million dollars for each Domain Name is the core message of the letter and is evidence of bad faith. The very first WIPO decision under the Policy (D99-0001 World Wrestling Federation v. Bosman, January 14, 2000), found that "attempts to sell the domain name for consideration in excess of [Respondent's] investment of time and money relative to the domain name constitutes "use" of the domain name in bad faith".

Consequently, Complainant requires the transfer of the Domain Names registrations to Complainant.

B. Respondent

Respondent contents:

- that Complainant failed to mention all evidence in support of its Complaint (e.g. a letter dated September 18, 2000, e-mails dated September 27, 2000, and phone messages of various telephone conversations).

- there is a flagrant difference between Complainantís trademark and the Domain Names and, therefore, Respondentís Domain Names are not identical or confusingly similar to Complainantís trademark

- that Complainant has already registered more than 20 domain names for the trademark Nutella according to the pattern www.nutella-Ö.(something), which is directly and easily to find for Internet users looking for Complainantís web site.

- that Respondent filed the disputed Domain Names in order to use them for the development of his real-time directory which is based on the Gnutella protocol. Gnutella is a name for a technology and is neither a company nor a particular application. As the Gnutella protocol is openly published, there are many interoperable "servants" to choose, for example the Gnutella protocol is called Newtella, Gnotella, Gutella, Ntella, Mtella. Gnutella protocol has tremendous potential for free exchange of information and it is considered as a possible successor to Napster.

- that Respondent is developing a real time yearbook (works on a peer to peer network) using Gnutella protocol and therefore has a legitimate interest in using the Domain Name.

- that the Domain Names were not filed to prevent the Complainant from using its name (Nutella) as a domain name. The Complainant has many sites with this name, in consequence the registration of the Domain Names cannot prevent the Complainant from reflecting the trademark in a corresponding domain name.

- that Complainant has not demonstrated the existence of any hindrance to its activities and so a legitimate right in the disputed Domain Names.

- that the filing and use of the Domain Names cannot disturb the Complainantís commercial operations under any circumstances since it operates in the food sector, specifically marketing food products, while the Respondent is developing a real-time directory.

- that at no time Respondent has attempted to attract Internet users to his site for profitable purposes.

- that Respondent did not make any approach to sell or hire to third parties the Domain Names.

- that the amount requested for the Domain Names was justified based on the investments of time and money of Respondent to develop his real time yearbook.

- that Complainant and its advisers have never replied to the Respondentís letters, telephone calls or e-mails.

- that Complainant has challenged the existence of Jeff Consulting Inc., an American company created the Respondent. These doubts and allegations are unjustified.

- that - if the Gnutella protocol and all the interoperable servants harm Complainantís business, it would be impossible to use or file a domain name containing a name that has already been filed.

All the above points demonstrate that the Domain Name is not identical or similar to Complainantís marks and Respondent has a legitimate interest in the Domain Name and that Respondent has acted in good faith.

 

6. Discussion and Findings

In a letter dated September 27, 2000, to Complainant, Respondentís lawyers contended that the Domain Names have been assigned to Jeff Consulting Inc. and that Respondent is not anymore the holder of the Domain Names. Implicitly, he raises the question of Respondentís standing.

However, the contention that the Domain Names have been assigned to Jeff Consulting, Inc., a company allegedly controlled by Respondent, is in no way proven by Respondent. Moreover, Respondentís allegation of an assignment is not supported by the facts. Quite to contrary, the Verification Response of NSI dated December 1, 2000, confirmed that Respondent is and at that time was the actual holder of the Domain Names. Furthermore, while mentioning the alleged assignment in its Response in early January, Respondent failed to explicitly deny standing to be sued. Thus, the Panel finds that the alleged transfer of the Domain Names from Respondent to Jeff Consulting, Inc. does not have any impact on these proceedings whatsoever.

Paragraph 4(a) of the policy directs that the Complainant must prove of the following:

(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and used in bad faith."

Identical or confusingly similar Domain Name: Policy 4(a)(i)

The Domain Names at issue are <mynutella.org> and <mynutella.net>. These Domain Names are composed by the words "my" and "Nutella". "Nutella" is - uncontested by the parties - a famous, widespread, well-known trademark, held by Complainant. The word "Nutella" has a strong significance as a trademark and a considerably important force of identification of the corresponding products.

The combination of an existing name (i.e. a trademark) with a possessive pronoun (such as "my" or "your") does not basically change the significance of the existing name as such in the combined expression. The added prefix "my" has, both grammatically and phonetically, an inferior distinctive importance compared to the principal component of the word; the term "my-Nutella" is clearly dominated by its principal component "Nutella".

In addition, it is a popular marketing strategy to combine the name of a product or service with the add-on formative "my..." or "your...", to create a personal identification of consumers with the product or service involved. This is especially common for Internet sites which can be personalized by the users according to their own interest and desire (e.g. "my.yahoo.com", my.netscape.com", "My Excite"). The prefix "my" plus a famous trademark in a domain name refers evidently to a special service in connection with that trademark.

The Panel therefore cannot support the contention that there is a "flagrant difference" between the Domain Names and the trademark "Nutella", as maintained by Respondent. From the point of view of ordinary consumers and Internet users - as well as from an objective viewpoint -, the Domain Names are confusingly similar to Complainantís trademark and the distinctive element of the Domain Names and Complainantís trademark are identical.

Respondent's Rights or Legitimate Interests in the Domain Name: Policy 4(a)(ii)

Respondent claims to have a legitimate right or interest in the Domain Names because he is allegedly developing a real-time directory using the Gnutella protocol.

Gnutella is an open, decentralized peer-to-peer file sharing application which functions both as a search engine and a file server. By this technology, users can search for and share files of all types by interacting directly with one another.

Obviously, Gnutella and Nutella are not the same words (even if they might be pronounced similarly in certain languages). Each of these words has a different individualizing meaning for different products. Since words are not generally verbalized on the Internet, the written form of a domain name is relevant as to the impression and perception of Internet users. In the written form, "Gnutella" and "mynutella" are clearly different."

Computer programmers may have a factual interest in identifying their programs as Gnutella-based programs. However, in order to characterize his project, Respondent could either use the word "Gnutella" or another distinctive modification of that word (such as the examples enumerated by Respondent). But it is not justified or legitimate to associate the name and trademark "Nutella" which is a famous product with a similar name instead. The use of the Gnutella technology does not create a legitimate interest in respect of the Domain Names in the sense of the Policy.

As Respondent agrees, Gnutella is not a trademark nor a company name, but a designation of a technology. It has, therefore, a lower level of legal protection than a registered trademark.

In addition, the Panel notes that Respondentís contention that the Gnutella technology may be the successor of Napster is not a very convincing argument to support Respondentís position. Using Gnutella technology does neither create a right nor a legitimate interest of Respondent in the use of the trademark "Nutella".

Domain Name Registered and Used in Bad Faith: Policy 4(a)(iii)

a. Offer to sale the Domain Names

According to the Policy Paragraph 4(b)(i), the following circumstance (among others) is deemed to provide evidence of bad faith in registering and using the Domain Names:

"(i) circumstances indicating that you [Respondent] have registered or you [Respondent] 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 trade mark 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.

In the letter dated September 27, 2000, Respondentís representatives wrote:

"Mon client semble cependant prêt à vendre ces deux noms de domaines dans le cadre díune valorisation équitable qui devra tenir compte du travail déjà opéré, des investissements, de líutilisation, de líusage de ces noms deux noms domaine. Compte tenu de líensemble de ces éléments, nous estimons le prix de chacun des noms de domaine à environ un million de dollars."

Which may be translated as follows:

"However, my client seem ready to sell the two domain names if fairly valued, taking into account the work already performed, the investments, the utilization, the use of the two domain names. Considering all these elements we estimate the prize for each of the domain names to approximately one million dollars.""

This is a clear indication of an intent to sell the two Domain Names for approximately USD one million each.

In connection with the adequacy of this sales prize both parties have quoted the Administrative Panel Decision World Wrestling Federation v. Bosnan (WIPO Case No. D1999-0001). The Panel of that decision found, in accordance with the Policy, that the offer to sell a Domain Name "for valuable consideration in excess of any out-of-pocket costs directly related to the domain name" constitutes a bad faith use. The consideration of the "investment of time and money" for determination of the value of a domain name was not mentioned in the Panelís considerations, and even if it were, the Panel sees no evidence for the alleged equivalent costs of Respondent. The amount of USD 1 Million seems clearly exaggerated.

Respondentís contention that he did not offer the Domain Names to third parties is not relevant in this context. He made an offer to Complainant, which is sufficient evidence for bad faith according to the Policy.

b. Attracting Internet users by creating a likelihood of confusion

Paragraph 4(b)(iv) sets forth another circumstance, which is to be considered as evidence of a registration and use of a domain name in bad faith:

"(iv) by using the Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or your location."

The Panel concurs with Complainantís statement that it is inconceivable Respondent was not aware of the trademark "Nutella" when registering the Domain Names. By intentionally choosing the famous name and trademark "Nutella" (plus the prefix "my") to denominate his real-time yearbook project, he at least accepted the result that the Domain Names are associated with Complainantís marks. He also accepted the risk that Internet users will be attracted to Respondentís site by Complainantís famous name.

It is irrelevant for the Panel that Complainant and Respondent seem to operate in different fields of business. An Internet user, clicking on a link to the Internet site "mynutella.org /.net" expects a web Site of Complainant and not a site relating to Respondentís real-time yearbook.

In the light of the above, the Panel finds that the registration and the use of the Domain Names by Respondent was not carried out in good faith.

 

7. Decision

In view of the circumstances and facts discussed above, the Panelist decides that the disputed Domain Names are confusingly similar to the registered trade mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Names, and that the Respondent's Domain Names has been registered and are being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panelist requires that the disputed Domain Names:

<mynutella.org>

and

<mynutella.net>

shall be transferred to the Complainant.

 


                                           

Bernhard F. Meyer-Hauser
Sole Panelist

Dated: February 22, 2001