WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ferrero S.p.A. v. Jacques Stade
Case No. DBZ2003-0002
1. The Parties
The Complainant is Ferrero S.p.A., Alba, Italy, represented by Studio Legale Jacobacci & Associati, Italy.
The Respondent is Jacques Stade, Paris, France.
2. The Domain Name and Registrar
The disputed domain name <nutella.bz> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 25, 2003. On June 26, 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 July 31. 2003.
The Center appointed Peter G. Nitter as the sole panelist in this matter on August 11, 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
Complainant is an internationally well-known company in the field of food. The Complainant is the owner of several hundred trademarks including the word NUTELLA throughout the world, ref. Annex 1 to the Complaint. The trademarks cover mostly, but not exclusively, chocolate products.
The Complainant is among other the owner of the following registered NUTELLA trademarks:
- U.S registration No. 855,647, ref. Annex 2 to the Complaint;
- U.K registration No.864,485, ref. Annex 3 to the Complaint;
- Canadian registration No. 157,098, ref. Annex 4 to the Complaint;
- Italian registration No. 794,464 (whose first filing dates back to 1977), ref. Annex 5 to the Complaint;
- Italian registration No. 418,059 (whose first filing dates back to 1963), ref. Annex 6 to the Complaint;
- International registration No. 281788R, duly extended to France, where Respondent is situated, ref. Annex 7 to the Complaint.
The Complainant is and has been the owner of the trademark NUTELLA for many decades. NUTELLA is an internationally well-known and famous trademark.
5. Partiesí Contentions
The domain name <nutella.bz> is confusingly similar with the trademark NUTELLA.
Respondent has no rights or legitimate interests in respect of the domain name.
(i) There is no evidence of the Respondentís use of, or demonstrable preparations to, use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. The only thing Respondent offers through its domain name is a link to a pornographic Web site.
(ii) Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name <nutella.bz>.
(iii) Respondent links to the default page of a web site, which can be further navigated only by paying a fee. Hence, its use is commercial, and any possibility of a non-commercial fair use is excluded.
Respondent uses the domain name in bad faith.
The product NUTELLA is so famous that it has become a cultural "myth" throughout the world. There is an international fan club for NUTELLA consumers, and several other initiatives, details of which are available on the web site "www.mynutellla.it".
That NUTELLA is a famous trademark has been recognized, inter alia, by the Panel in Ferrero S.p.A v. Mario Pisano, WIPO Case No. D2000-1794 .
There is no way that Respondent may not have been aware of the famous trademark NUTELLA. Registration may only have occurred in bad faith. Respondent is located in France, a primary market for Complainant, where NUTELLA is certainly well-known.
That the Respondent operates in bad faith is also evidenced by his registration of several other domain names identical to, or confusingly similar with, well-known trademarks, such as for example, <ferrari-scuderia.info>, <ciuffo-gatto.com> and <rotta-pharm.com>, ref. Annexes 8, 9 and 10 to the Complaint.
The default page of <nutella.bz> resolves in a pornographic page selling various services connected with pornography. NUTELLA is, as mentioned, one of the most famous international trademarks in the field of chocolate, and the pornographic Web site offers "Pink chocolate", in the shape of pornographic photographs of African and other black girls, with the slogan: "Taste some pink chocolate". The attempt to use the fame of the NUTELLA products in order to promote, with a politically incorrect and vaguely racist allusion, pornographic material related to black women, is both blatant and disturbing. Consequences for Complainant, whose chocolate products are largely sold to children, are potentially catastrophic, should even a minority of Internet users come to believe that Complainant is actually associated with pornography.
The redirection of pornographic sites from a domain name incorporating a well-known trademark is, per se, evidence of bad faith. This has been confirmed by several Panel decisions.
The pornographic sites of also commercial, i.e. in order to access further pornographic images the Internet user is invited to pay.
There is also a "mouse-trapping effect" on the site, making it more difficult for the casual Internet user to leave the pornographic site.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
Because the Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, paragraph 14 (a)), and the Panel may draw such inferences from the Respondentís default as the Panel finds appropriate (Rules, paragraph 14(b)).
A. Identical or Confusingly Similar
The domain name in question is <nutella.bz>.
Complainant has provided evidence that Complainant is the legitimate holder of the NUTELLA trademark.
The trademark has been registered in U.S since 1988, in UK since 1985, in Canada since 1983, in Italy since 1963, and the international registration is dated 1964.
The Panel determines that the Complainantís rights in the trademark arose prior to the Respondentís registration, on March 25, 2003.
As the addition of ".bz" in the domain name is without legal significance the Panel decides that the disputed domain name are identical to the trademark NUTELLA.
B. Rights or Legitimate Interests
The Respondent has no connection or affiliation with the Complainant. The Complainant has not licensed, authorized or otherwise permitted the Respondent, explicitly or implicitly, to use the Complainantís trademark in a domain name or in any other manner.
The Respondent has not been commonly known by the disputed domain name.
The Respondentís domain name is not used in connection with a bona fide offering of goods or services.
The Respondent has not made any legitimate non-commercial or fair use of the disputed domain name. The domain name leads to a web site with pornographic material, where services are offered against payment. The domain name is thereby used with intent for commercial gain to misleadingly divert consumers and to tarnish the trademark at issue.
The Respondentís activities do not correspond to any of the circumstances set forth in the Policy, paragraph 4 (c).
C. Registered and Used in Bad Faith
The registration has been done in bad faith as the Respondent could not have been unaware of the fact that NUTELLA is a famous trademark. The NUTELLA trademark has a long history and was registered in Italy as far back as in 1963. Respondent is located in France, where NUTELLA is certainly well known. An other Panel has decided likewise in an analogous case, ref. Ferrero S.p.A v. Mario Pisano, WIPO Case No. D2000-1794.
The Respondent has also registered several other domain names identical to, or confusingly similar with, well-known trademarks, such as for example:
Reference is made to Annexes 8, 9 and 10 to the Complaint.
By using the domain name for commercial pornographic web sites the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship and/or affiliation. The redirection to pornographic sites from a domain name incorporating a well-known mark is evidence of bad faith. This has been confirmed by several Panel decisions. E.g. Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022 noting that "the diversion of the domain names to a pornographic site is itself certainly consistent with the finding that the domain name was registered and is being used in bad faith".
The fact that the pornographic web site uses a "mouse-trapping" technique to prevent visitors from leaving clearly reinforces the bad faith use of the disputed domain name, and reference is made to Dell Computer Corporation v RaveClub Berlin, WIPO Case No. D2002-0601.
The Panel decides that Respondentís bad faith has been established.
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, <nutella.bz> be transferred to the Complainant.
Peter G. Nitter
Dated: August 25, 2003