WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Perfetti Van Melle Benelux BV v. Amit Sharma

Case No. D2007-1484

 

1. The Parties

The Complainant is Perfetti Van Melle Benelux BV, of Breda, of the Netherlands, represented by Perfetti Van Melle S.p.A., of Lainate, Italy.

The Respondent is Amit Sharma, of Cheshire, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <fruitelli.com> is registered with Tucows.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2007. On October 12, 2007, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On October 12, 2007, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 October 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2007.

The Center appointed Torsten Bettinger as the sole panelist in this matter on November 27, 2007. 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. The Panel is satisfied that notification of the Complaint by the Center was undertaken in accordance with the Policy and Rules. The Center subsequently received a one-line email message, apparently from the Respondent, indicating that “we are still awaiting confirmation and reasoning of the formal Complaint”. The Center indicated in reply that the matter was before the Panel, but the Respondent submitted no further reply for the Panel’s consideration or otherwise.

 

4. Factual Background

The Complainant has used the name and mark FRUITTELLA since 1950, in connection with candies. FRUITTELLA products are widely advertised and sold all round the world. The total net sales of FRUITTELLA products in 2006 amounted to USD 82,661,000 and the advertising expenses to USD 8,147,000.

The Complainant is the registered owner of the following trademark registrations for FRUITTELLA covering products in international class 30

- UK trademark registration no. 754497 “FRUITTELLA”, registered on September 26, 1956,

- International registration no. 276874 “FRUITTELLA”, registered on November 28, 1963 and

- Canadian trademark no. 298207 “FRUITTELLA”, registered on November 3, 1998.

The Complainant maintains websites at “www.perfettivanmelle.com”, “www.fruittella.com” and “www.fruittellaland.com” to advertise its products.

The disputed domain name was registered on August 18, 2007.

 

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.

In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant argues that the disputed domain name is not only confusingly similar but almost identical to the Complainant’s trademarks FRUITTELLA as it only differs in two letters.

In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainant contends that none of the situations described in paragraph 4(c) of the Policy can be established in this case. In support of this assertion the Complainant states that:

- the Respondent has not been commonly known by the domain name subject of this Complaint;

- the Respondent has no rights based upon tradition or legitimate prior use of the name chosen for his domain name; and

- there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services.

In reference to the element in paragraph 4(a)(iii) of the Policy, the Complainant asserts that:

- the Respondent is a resident of Great Britain and could therefore not have been unaware of the Complainant’s products marketed under the FRUITTELLA mark;

- there is no connection, affiliation or commercial relationship with the Respondent;

- The Complainant has never consented to the registration and use of the disputed domain by the Respondent;

- due to the similarity between Complainant’s mark FRUITTELLA and the disputed domain name, consumers may conclude that there is a connection or affiliation between the Complainant’s products and the Respondent;

- consumers may mistype the word FRUITTELLA on the computer keyboard ending up on Respondent’s website when searching the Internet for the Complainant’s products; and

- Respondent attempts to exploit the reputation of the Complainant’s FRUITTELLA products.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-l698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327; BWT Brands, Inc. and British American Tobacco (Brands), Inc. v. NABR, WIPO Case No. D2001-l480; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505).

The second level domain of the disputed domain name <fruitelli.com> differs from the Complainant’s trademark FRUITTELLA only in two letters and is visually and phonetically similar to the Complainant’s trademark. It is well established that the fact that a domain name differs in single letters does not prevent a finding of confusing similarity (See Playboy Enterprises v. Movie Name Company, WIPO Case No. D2001-1201; Deutsche Telekom AG v. Domainsforlife.com, WIPO Case No. D2002-0164; LouisVuitton v. Net-Promotion, WIPO Case No. D2000-0430; Diageo p.l.c. v. John Zuccarini, WIPO Case No. D2000-0541; Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; Time Warner Entertainment Company, L.P., and Hanna-Barbera Productions, Inc. v. John Zuccarini, Cupcake Patrol, and The Cupcake Patrol, WIPO Case No. D2001-0184).

It is also well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).

The Panel thus finds that the domain name <fruitelli.com> is confusingly similar to a trademark in which the Complainant has rights and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interest in the disputed domain name. However, it is consensus view among Panelists that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to carry the burden of demonstrating rights or legitimate interests in the domain name, then the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Complainant asserted that the Respondent has neither a license nor any other permission to use the Complainant’s trademarks. The Panel thus finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.

The Respondent has neither denied these assertions nor provided evidence of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.

Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) is satisfied.

C. Registered and Used in Bad Faith

As to the third element of the Policy, namely 4(a)(iii), the Complainant has not provided evidence that Respondent registered the domain name in order to prevent the Complainant from reflecting its mark in a corresponding domain name, and that the Respondent engaged in a pattern of such conduct (Policy 4(b)(ii)).

As to other non-exclusive examples of bad faith under the Policy, the Panel notes the information provided by Complainant as to the status of its mark and in particular the long history of the mark’s registration in the United Kingdom. The Panel also notes the annual turnover and marketing expenses related to this trademark. Having said that, it may be argued that, for all of the mark’s apparent fame, the domain name <fruitelli.com> also arguably lends itself to use of a descriptive nature. Indeed, it is this use which for example appears to be the focus of the unrelated domain <fruitellis.com> as regards the delivery of fruit and vegetables in the United Kingdom. However the Respondent has not claimed any such purpose here, or provided any information about itself supporting such an intention. Likewise the domain name is not currently being used for such a purpose, and instead contains a number of unrelated commercial links. Although again not claimed by the Respondent, the Panel acknowledges the possibility that these links may have been put up by the service provider rather than the Respondent himself. However this may be, it is the Respondent who ultimately bears responsibility for the use if its domain name, which, according to standard terms and conditions of registration, it asserted did not infringe third party rights. In this connection, allowing others to generate revenue from third party trademarks can not properly exonerate the registrant. See, e.g., MasterCard International Incorporated v. Paul Barbel, WIPO Case No. D2007-1139 (footnote no 2).

Having regard to the circumstances of record, and in particular the lack of any credible explanation from the Respondent for the choice and apparent use of this particular domain name, the Panel is left with little choice but to find that the disputed domain was registered and is being used in bad faith in the sense of the third element of the Policy.

 

7. Decision

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 <fruitelli.com> be transferred to the Complainant.


Torsten Bettinger
Sole Panelist

Dated: January 22, 2008