WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ferrero S.p.A v. Costabella
Case No. D2001-1137
1. The Parties
1.1 The Complainant is Ferrero S.p.A, Piazzale Pietro Ferrero 1, 12051 Alba (Cuneo) Italy. It is represented by Mr. Massimo Introvigne and Mr. Fabrizio Jacobacci, Studio Legale Jacobacci e Associati, Corso Regio Parco 27, 10152 Turino, Italy.
1.2 The Respondent is Costabella, of Poligono de can Velero, Palma de Mallorca, 07010, Spain and at D’Alexandre de Laborde, 6 Polig.Cas Enagistes, Palma de Mallorca, 07011, Spain.
1.3 The Respondent is not represented and has not filed any Response (see below).
2. The Domain Names and Registrar
2.1 The domain names at issue are <ferrero-rocher.com>, <ferrero-rocher.net> and <ferrero-rocher.org>.
2.2 The Registrar with whom the domain names <ferrero-rocher.net> and <ferrero-rocher.org> are registered is Tucows.Inc. The Registrar with whom the domain name <ferrero-rocher.com> is registered is Namesecure.com Inc.
3. Procedural History
3.1 The Complaint submitted by Ferrero S.p.A was received by email on September 18, 2001, and in hard copy on September 20, 2001, by the WIPO Arbitration and Mediation Center (the "Center").
3.2 No response to the Complaint has been filed. Notice of the proceedings was served on the Respondent at each of the addresses set out above in accordance with the rules applicable to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN"). Notification of Respondent Default was served on October 29, 2001. A Panel was constituted on November 13, 2001, with a single panelist, Nick Gardner. A statement of acceptance and declaration of impartiality and independence has been filed by the Panelist.
3.3 The date scheduled for the Panel to render its decision is November 27, 2001. The Complainant is represented by Mr. Massimo Introvigne and Mr. Fabrizio Jacobacci, Studio Legale, Jacobacci e Associati, Croso Regio Parco 27, 10152 Turino, Italy.
The Respondent is not represented in these proceedings.
4. Factual Background
4.1 The Complainant states that it is an internationally well known company in the field of food (in particular chocolate). It adduces extensive evidence as to its activities and reputation. It is the registered proprietor of several hundreds of trade marks world-wide including the words "ROCHER" and "FERRERO" in Italy, Spain and the United States. Proof of ownership of the trade mark registrations is furnished in document 1 attached to the Complaint.
4.2 The Respondent is a Spanish company who acts as a representative, agent and distributor of various mass-market products, as well as being able to provide merchandising services, warehousing and transportation services.
4.3 In Spain, where the Respondent is located, Ferrero-Rocher chocolate products are among the leaders in their category of the market. This is evidenced by a declaration dated January 16, 2001, by A C Nielsen Company, S.L., attached as document 13 to the Complaint. A C Nielsen is the publisher of the "Nielsen Index", which is published in several European countries. A C Nielsen is one of the world’s leading providers of market research, information and analysis to the consumer products and services industries.
4.4 The Respondent’s registration of the <ferrero-rocher.com> <ferrero-rocher.org> and <ferrero-rocher.net> domain names occurred on February 26, 2000, November 10, 2000, and November 10, 2000, respectively. Copies of a Who Is abstract for each of the domain names is produced at documents 14 to 16, attached to the Complaint.
4.5 The Respondent refused to take delivery of the couriered letter of October 8, 2001, addressed "D’Alexandre de Laborde 6, Polig. Cas Enag.sacs, Palma de Mallorca 07011, Spain". The letter to the other address was delivered on October 9, 2001. The Respondent has not replied to the emails regarding the Complaint sent by the Case Manager.
5. The Claimants Contention
These are set out in full in the Complaint, but may be summarized as follows:
- The domain names at issue are directly associated with the Complainant. The Complainant currently trades under the names Ferrero and Rocher.
- The Complainant has provided the Panel with evidence to demonstrate the use of the marks "FERRERO" and "ROCHER" by the copy declaration by A C Nielsen Company (see document 13, attached to the Complaint).
- As a result of the use of its marks, the Complainant has amassed considerable goodwill and recognition, particularly in the area of chocolate products.
- The domain names <ferrero-rocher.com>, <ferrero-rocher.org> and <ferrero-rocher.net> are identical, or at a minimum, confusingly similar to the Complainant’s name and trade marks.
- The Complainant is the proprietor of the Spanish registration for the trade marks Ferrero and Rocher (see documents 6, 10, 11 and 12 attached to the Complaint).
- The Respondent has no legitimate reason to register or maintain the domain names <ferrero-rocher.com>, <ferrero-rocher.org> and <ferrero-rocher.net> and has failed to articulate any rights in or legitimate reason for registering the domain names.
- The domain names <ferrero-rocher.com>, <ferrero-rocher.org> and <ferrero-rocher.net> are unrelated to the Respondent and the Respondent does not use either "Ferrero" or "Rocher" or variations thereof in its business or as part of its legal or corporate name and has never been commonly known by the domain names at issue.
- The Respondent is not a licensee or distributor of the Complainant. The Respondent does not have any consent, license or other authorization for the use or registration of the domain names.
- The Respondent has not provided any submissions to this Panel.
6. Discussion and Findings
The Panel has reviewed the Complaint and the documents annexed to the Complaint. In the light of this material, the Panel finds as set out below:
6.1 This Panel does not find there are any exceptional circumstances within paragraph 5(e) of the ICANN Rules applicable to the Policy so as to prevent this Panel determining the Complaint, notwithstanding the failure of the Respondent to lodge a Response. Details of these proceedings have been served in accordance with the relevant requirements set out in the Policy.
6.2 The domain names <ferrero-rocher.com>, <ferrero-rocher.org> and <ferrero-rocher.net> are identical or confusingly similar to various of the Complainant’s registered trade marks.
6.3 The Complainant has a substantial reputation and goodwill in the marks "FERRERO" and "ROCHER" and variations thereof and its activities involving the trade marks pre-date those of the Respondent.
6.4 There is no evidence to show that the Respondent had any legitimate basis to register the domain names or any intent to use them in any manner unconnected with the Complainant’s business. Absent such evidence, the Panel concludes that the Complainant is correct and that the domain names were registered in bad faith. Paragraph 4(b) of the Policy sets out the types of evidence required to illustrate bad faith. The circumstances set out in paragraph 4(b) are said to be "without limitation" i.e. the Policy expressly recognizes that other circumstances can be evidence that the domain name was registered and is being used in bad faith.
6.5 An internet user entering the www.ferrero-rocher.com/org/net websites is more likely than not expecting to arrive at a website hosted by the Complainant, the holder of numerous registered trade marks and service marks similar or identical to those domain names dating back several years. Moreover, the generic Top Level Domain <.com> has come to suggest that the Second Level Domain name which precedes the <.com> will equate to the trade name of the commercial enterprise holding the domain name. It is clear that so-called "passive" holding of a domain name, that is registration of a domain name alone, can support a determination of bad faith use (see the ‘Telstra’ decision, D2000-0003 and the numerous cases subsequently citing that principle). The Respondent, according to information and belief, has never maintained a web presence for the domain names <ferrero-rocher.com>, <ferrero-rocher.org> and <ferrero-rocher.net> and has never made any legitimate use of the domain names.
Accordingly, the Panel directs that all 3 of the domain names be transferred to the Complainant.
Dated: November 26, 2001