WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ferrero S.p.A. v. Mr. Leopoldo Hernandez
Case No. D2001-0169
1. The Parties
The complainant in this administrative proceeding is Ferrero SpA based at Via Maria Cristina 41, 10025 Pino Torinese, Turin, Italy ("the Complainant").
The respondent is Mr. Leopoldo Hernandez, Arco 11, Salamanca 37004, Spain ("the Respondent").
2. The Domain Name and Registrar
The domain name at issue is "ferrerorocher.com" ("the Domain Name").
The registrar of the Domain Name is Network Solutions Inc. ("NSI" or "the Registrar"), 505 Huntmar Park Drive Herndon, Virginia 20170, USA.
3. Procedural History
The Complainant filed a Complaint ("the Complaint") with the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") electronically on January 31, 2001, and by hard copy on February 5, 2001.
On February 2, 2001, the Center transmitted to NSI a request for registrar verification in connection with this case. On February 6, 2001, NSI responded to the Center's request and confirmed that NSI is the registrar of the Domain Name "ferrerorocher.com" and also confirmed that the Domain Name was registered in the name of Mr. Leopoldo Hernandez, who is both listed as the current registrant and the administrative and billing contact. According to the NSI verification response, the technical contact for the Domain Name is Publishing, Springrose Web based in Orange, California, USA. The Registrar further informed the Center that the Domain Name registration is in "active" status.
On February 7, 2001, the Center verified that the Complaint met the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), 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").
The undersigned has reviewed the documentary evidence provided by the parties and the Center and agrees with the Center's assessment that the Complaint complies with the formal requirements of the afore-mentioned policies.
The administrative proceeding commenced on February 7, 2001. The same day, the Complaint was notified to Respondent. The Respondent sent two e-mails on February 7 and 8, 2001, to the Center, but did not submit a response within 20 days as of the commencement of the administrative proceeding (sub-section 5A of the Rules). Accordingly, the Center notified Respondent on March 1, 2001, that it was in default.
Upon receipt of the necessary declaration of independence and impartiality, the Center appointed the undersigned on March 12, 2001, to serve as sole panelist in this administrative proceeding.
4. Factual Background
The Complainant is a well-known Italian company active in the field of food, especially chocolate production. Ferrero and Rocher are names designating Complainant's famous chocolate products. Pursuant to Exhibit 13 (a declaration by the publisher Nielsen of January 16, 2001), the Ferrero Rocher chocolate products play an important role on the market in Spain, where Respondent is located (Complaint, page 3).
The Complainant alleges that several hundreds of trademarks including the words Rocher and Ferrero Rocher are registered throughout the world (Exhibit 1). It submits 11 registrations for the trademarks in question. The trademark Rocher is registered in Spain by a national registration N° 1995206 (Exhibit 6) as well as via an international registration N° 688261 (Exhibit 12). Furthermore, two different trademarks and designs with the words Ferrero Rocher, i.e. N° 463594 (Exhibit 10) and N° 486213 (Exhibit 11) are the object of international registrations, also valid in Spain.
Pursuant to a declaration of Mrs. Monica Aritzi Acha, a trademark attorney who represented Complainant in Spain, the Respondent told Mrs. Aritzi on October 11, 2000, during a telephone call that "the Domain Name was on sale for PTAS 1 million and, that, for obvious reasons, he would not put this offer in writing" (Exhibit 12).
By e-mail of February 7, 2001, the Respondent informed the Center that he does not speak English and that he would like to have the Center's information in Spanish. Furthermore, he specified that he agreed "with the resolution". On February 7, 2001, the Center replied to Respondent informing him that unless the Complainant agrees to deal with this dispute in Spanish, the administrative proceeding has to be kept in English, the language of the registration agreement. On February 8, 2001, the Respondent wrote to the Center "Thanks for your e-mail. My problem is that I don't know how give the domain to Ferrero Rocher Company. I need information to the requirement to give the domain. I really like to devolution the domain www.ferrerorocher.com. I don't need problems. Sincerely, Leopoldo Hernandez". The Center replied on February 9, 2001, as follows: "You have to contact the registrar as well as the complainant's attorney in order to deal with any settlement or transfer of the domain name. We don't deal with the transfer or cancellation of the domain names. Please explore our website to know about the administrative proceeding in details. It will also help you to prepare your response. Thanks."
No further communications have been received by Respondent. Nor has he submitted a formal response.
The panel is unaware of any facts leading to the conclusion that Respondent has tried to transfer, or actually transferred the Domain Name to Complainant.
5. Parties' Contentions
The Complainant alleges that the Domain Name is confusingly similar to the trademarks Rocher and Ferrero Rocher (Complaint, page 3). It points out that Respondent has no rights or legitimate interests in respect of the Domain Name and that it does not trade under the name Ferrero Rocher (Complaint, page 4 f.).
According to the Complainant, the Respondent must have been aware of the famous trademark Ferrero Rocher when it registered the Domain Name and therefore acted in bad faith (Complaint, page 3). The aforementioned declaration of Mrs. Aritzi (Exhibit 12) pursuant to which the Respondent wanted to sell the Domain Name for PTAS 1 million would be a further proof for Complainant that the Respondent acted in bad faith. Complainant additionally points out that even absent such attempt to sell the Domain Name, the latter has still to be considered as being used in bad faith according to numerous WIPO precedents to which it refers (Complaint, page 5 ff).
Respondent has not contested the allegations of the Complainant and is in default. Furthermore, as can be deduced from Respondent's e-mail dated February 8, 2001, to the Center, Mr. Hernandez does not seem to be opposed to a transfer of the Domain Name to the Complainant.
6. Discussion and Findings
To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4 (a) of the Policy are satisfied, namely that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and used in bad faith.
These three elements will be considered below.
(i) Identity or confusing similarity
The domain name "ferrerorocher.com" is not only confusingly similar as claimed by Complainant (Complaint, page 3), but identical to various trademarks registered by Complainant all over the world (see Exhibits 1 to 12). Moreover, as it has been stated hereinabove, Complainant has registered the wordmark Rocher and, via international registrations, two designs of Ferrero Rocher in Spain as well.
(ii) Rights or legitimate interests
The panel does not have any evidence that Complainant has licensed or otherwise permitted Respondent to use its trademark or to apply for the Domain Name incorporating this mark. As Respondent has not submitted a response, the panel can find no indicia that Respondent has any rights or legitimate interests in the Domain Name pursuant to Article 4 (c) of the Policy. On the contrary, the fact that the Domain Name does not resolve and is not used by Respondent indicates Respondent's lack of legitimate rights or interests in the Domain Name. The panel is thus of the opinion that Complainant has satisfied the second element of the Policy.
(iii) Bad faith
The third element Complainant has to prove to succeed in its Complaint is registration and use of the Domain Name in bad faith.
Due to the fact that Ferrero Rocher is a well-known trademark and that Ferrero Rocher products are widely marketed and sold, including in Spain, Respondent must have been aware of Complainant's rights in the Ferrero Rocher trademark when it registered the Domain Name. Consequently, the registration has been made in bad faith (see also Article 4 (5) c of the joint recommendation concerning provisions on the protection of well-known marks, adopted by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of the World Intellectual Property Organization (WIPO) of September 20 – 29, 1999).
To satisfy the conditions set out in Article 4 (a) (3 i) of the Policy, Complainant has not only to prove that the domain name was registered, but also that it is being used in bad faith. The panel has no reason to doubt the declaration of Mrs. Aritzi, the trademark attorney of Complainant in Spain, according to which on October 11, 2000, Mr. Hernandez wanted to sell the Domain Name for PTAS 1 million. Moreover, Respondent has not contested this statement. The panel is of the opinion that this fact indicates clearly that Respondent used the Domain Name in bad faith, i.e. by offering to sell the Domain Name to Complainant for a valuable consideration in excess of any out-of-pocket costs directly related to the Domain Name (see the landmark decision World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case N° D99-0001).
The fact that Respondent does not actively use the Domain Name to offer any products or services does not exonerate Respondent. As it has been held by many other panels, the passive holding of a domain name may be sufficient to meet the use requirement of paragraph 4 (b) of the Uniform Policy (see, for instance, the famous Telstra decision, WIPO Case No. D2000-0003).
Therefore, the undersigned is of the opinion that the Domain Name has been registered and used in bad faith in the sense of Article 4 (a) (iii) of the Policy.
For all these reasons, the panel decides to transfer the disputed Domain Name to Complainant.
In the light of the foregoing the panel concludes and decides that
(i) the Domain Name of the Respondent is identical to the trademark in which Complainant has the right;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name;
(iii) the Domain Name has been registered and is being used in bad faith;
(iv) the Domain Name "ferrerorocher.com" shall be transferred to the Complainant.
Dr. Thomas Legler
Dated: March 26, 2001