WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ferrero S.p.A. v. Alexander Albert W. Gore
Case No. D2003-0513
1. The Parties
The Complainant is Ferrero S.p.A., of Italy, represented by Studio Legale Jacobacci e Associati of Italy.
The Respondent is Alexander Albert W. Gore of Lviv Rudno, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <nutellaferrero.com> is registered with eNom Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 27, 2003. On June 27, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On July 2, 2003, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the 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").
In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 9, 2003. In accordance with the Rules, Paragraph 5(a), the due date for Response was July 29, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on August 3, 2003.
The Center appointed Anders Janson as the Sole Panelist in this matter on August 7, 2003. 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
The Complainant is an Italian joint-stock corporation, in the business of food, primarily chocolates and other types of candy. The marks NUTELLA and NUTELLA FERRERO have been registered throughout the world for two or more decades, mostly in Class 30 (food, mainly chocolate), such as, inter alia:
- Registration No 302199, of NUTELLA FERRERO in inter alia France, Germany, Egypt, Hungary, registered September 10, 1965.
- Registration No 453757, of NUTELLA FERRERO in inter alia France, Egypt, Germany, registered July 24, 1980.
- Registration No 50862, of NUTELLA FERRERO in Great Britain, registered December 17, 1974.
- Registration No 453747, of NUTELLA FERRERO, in the Russian Federation, registered July 24, 1974.
- Registration No. 294040, of NUTELLA FERRERO, in Italy, registered March 23, 1973.
- Registration No. 2000985, of NUTELLA FERRERO HAZELNUT SPREAD WITH SKIM MILK & COCOA, in USA, registered September 17, 1996.
- Registration No. 281788, of NUTELLA, in France, registered March 31, 1964.
- Registration No. 864485, of NUTELLA, in Great Britain, registered March 25, 1965.
- Registration No. 353957, of NUTELLA, in Italy, registered May 20, 1985.
- Registration No. 6240, of NUTELLA, in Ukraine, registered June 30, 1994.
The panel notes that the registration dates of all of the above-referenced registrations as well as the vast majority of the registrations listed in the Complaint predate the date of registration of the disputed domain name by the Respondent.
NUTELLA and NUTELLA FERRERO are well-known trademarks, owned by the Complainant. Nutella is a well-known product, which is manufactured by the Complainant Ferrero S.p.A under the mark NUTELLA. The panel finds it established that the NUTELLA and NUTELLA FERRERO are well-recognized trademarks and that the trademarks are both distinctive and famous.
The Respondentís stated name is Alexander Albert W. Gore who, when he registered the disputed domain name, provided the registrar with a contact address in Ukraine. The same name and address was given for the technical, administrative and billing contacts. The Respondent is in default and accordingly has not challenged the conclusions of the Complainant.
The disputed domain name <nutellaferrero.com > was registered by the Respondent with eNom Inc. The disputed domain name links to a pornographic site at "www.pinkchocolate.com" with a website called "Black Girls." When exiting this site, a number of pornographic pop-up ads appear.
5. Partiesí Contentions
The Complainant contends that:
- The disputed domain name is identical and confusingly similar to a trademark or service mark in which the Complainant has rights;
- The Respondent has no rights or legitimate interest in respect of the domain name;
- The domain name has been registered and is being used in bad faith; and
- The domain name <nutellaferrero.com> should be transferred to the Complainant.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed 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 disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The domain name at issue is <nutellaferrero.com>. Complainant is the holder of a large number of registered trademarks of the word NUTELLA and NUTELLA FERRERO. The Complainant, Ferrero S.p.A. is the producer of the product Nutella. NUTELLA is a well-known trademark throughout the world. The Complainant has provided statements to support the supposition that the disputed domain name and the name and marks of the Complainant are confusingly similar.
The Respondent does not contest this supposition.
The panel finds that the Complainantís well-known trademarks are identical with and confusingly similar to the disputed domain name <nutellaferrero.com>. The panel therefore holds that the Complainant has established element (i) of the Policyís Paragraph 4(a).
B. Rights or Legitimate Interests
The Respondent has not filed a Response in accordance with the Rules, Paragraph 5. There is no apparent connection between the Respondent and the disputed domain name, and no obvious legitimate connection between the disputed domain name and the content of the site to which it links. Any connection that may be made between the trademark NUTELLA and the content of the website <nutellaferrero.com> is vague and could also be construed as racist and/or offensive. It is not possible to conceive of an obvious reason for which the Respondent could legitimately use the domain name. The Respondent has not presented any evidence of rights or legitimate interests in using the disputed domain name.
Under these circumstances, the mere assertion from the Complainant that the Respondent has no right or legitimate interest is enough to shift the burden of proof to the Respondent for him to demonstrate such a right or a legitimate interest. The Respondent has not presented any evidence of rights or legitimate interests in using the disputed domain name and has no obvious connection to it. The panel therefore holds that the Complainant has established element (ii) of the Policyís Paragraph 4(a).
C. Registered and Used in Bad Faith
For the purposes of Paragraph 4(a)(iii), evidence of the registration and use of a domain name in bad faith shall include, inter alia, proof that by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the complainantís mark as to the source or affiliation of the website or of a product or service on the website (Policy, Paragraph 4(b)(iv)).
The panel has already established that the marks NUTELLA and NUTELLA FERRERO are well known and that the disputed domain name is identical and confusingly similar to the Complainantís famous marks. The registrations of these marks were in some cases initiated more than two or three decades ago. It is highly unlikely that the Respondent registered the disputed domain name not knowing of the Complainantís marks. Furthermore, the Respondent has not presented any reasons, evidence or arguments of a legitimate interest in using or registering the disputed domain name. The only present use of the website seems to be to direct visitors to other websites with pornographic material, which sites also contain pornographic pop-up ads.
The site to which the disputed domain name links can be further navigated only if the user pays a fee. Furthermore, the website contains a number of ads with pornographic content, with a high probability of commercial gain for the owner of the site.
In addition, the consumers of the products connected to the NUTELLA and NUTELLA FERRERO marks are mostly, though not exclusively, children. The Internet users who have a legitimate interest in these products are exposed to the pornographic ads and websites linked to the disputed name. This is not only confusing for the consumers, but can also create a dilution of the trademarks.
The panel therefore concludes that the Complainant has proven that the Respondent was acting in bad faith pursuant to Paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the panel orders that the domain name <nutellaferrero.com> be transferred to the Complainant.
Dated: August 20, 2003