WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ferrero S.p.A. v. Domains By Proxy, LLC / Vladimir Natchev

Case No. D2012-2546

1. The Parties

The Complainant is Ferrero S.p.A. of Alba, Cuneo, Italy, represented by Studio Barbero, Italy.

The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Vladimir Natchev of Ventnor, New Jersey, United States of America.

2. The Domain Name and Registrar

The disputed domain name <kinder-chocolate.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on December 28, 2012. On January 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 7, 2013, the Registrar 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” or “UDRP”), 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 January 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2013.

The Center appointed Eduardo Machado as the sole panelist in this matter on February 5, 2013. 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 facts relevant to the findings and decision in this case are that:

1. the Complainant is the owner of several national and international trademark registrations worldwide constituted of, or comprising, KINDER;

2. KINDER is a brand leader in the confectionery market and it is present in more than 100 countries worldwide;

3. KINDER products, including Kinder Chocolate, are promoted online through the Complainant’s official websites “www.ferrero.com” and “www.kinder.com” and on various dedicated websites, such as “www.kindercioccolato.it”, “www.kinderchocolate-me.com” and “www.kinderschokolade.de”;

4. the Complainant recently reclaimed the domain names <kinderchocolate.com> and <kinderchocolates.com>, which were previously registered by not authorized third parties and are, today, assigned to Ferrero S.p.A;

5. the Respondent registered the disputed domain name <kinder-chocolate.com> on November 18, 2009, without authorization by the Complainant, and redirected it to a website featuring the history of the Complainant’s Kinder Chocolate product and explicit references to the Complainant and to its products and trademarks;

6. several links published on the website “www.kinder-chocolate.com” were redirecting Internet users to the commercial websites, some of them promoting the sale of chocolate products made by the Complainant’s competitors;

7. on May 18, 2012, Complainant served Respondent with a cease and desist letter requesting the cease of any use of the disputed domain name;

8. notwithstanding the absence of a formal reply from the Respondent, which received the cease and desist letter, the contents of the website were modified, i.e.; the disputed domain name had been redirected to a web page with a white background featuring only a red line and some sponsored link;

9. in the absence of a reply from the Respondent to the cease and desist letter, the Complainant’s representatives sent a reminder to its attention, by email, on May 25, 2012;

10. the Complainant noted that the “WhoIs” information of the disputed domain name was changed, as the owner’s contact details were hidden behind the privacy service provided by Domains by Proxy, Inc;

11. on June 25, 2012, the Complainant addressed a new email communication to the attention of the Respondent as well as to the General Manager of Domains by Proxy Inc, requesting the disclosure of the underlying registrant contact information of the disputed domain name;

12. on July 6, 2012, the Complainant received an email communication from Domains by Proxy Inc. disclosing the underlying registrant’s contact details, which were shown to be the same as the ones indicated in the “WhoIs” database before the Respondent’s receipt of the cease and desist letter and subsequent reminders;

13. the Complainant monitored the disputed domain name until the renewal date of November 18, 2012 and verified that the Respondent had provided for the renewal, as the disputed domain name is now set to expire on November 18, 2013;

14. in the absence of the Respondent’s answer Complainant filed the present Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant asserts rights in the trademark KINDER and alleges that the disputed domain name is confusingly similar to the trademark.

The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant alleges that the Respondent registered and/or is using the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:

(i) that the disputed domain name 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

Based on the evidence adduced by the Complainant as noted above, this Panel has no hesitation in finding that the Complainant has rights in the KINDER mark. The Complainant has an on-line presence and uses the domain name <ferrero.com> and <kinder.com> and on various dedicated websites, such as “www.kindercioccolato.it”, “www.kinderchocolate-me.com” and “www.kinderschokolade.de” to market its services. Its brand is a leader in the confectionery market and it is present in more than 100 countries worldwide, including the United States of America (where the Respondent appears to be based).

The Panel finds that the threshold test for confusing similarity under the Policy involves a comparison between the trademark and the disputed domain name to determine the likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.

In this Panel’s view, this threshold test is satisfied. The disputed domain name reproduces the KINDER mark in its entirety but merely adds the common term “chocolate”.

As found by previous UDRP panels, the mere addition of common or generic words will not be sufficient under the circumstances to avoid a finding of confusing similarity. See the decisions by previous UDRP panels which have found that domain names that combine generic terms with trademarks are confusingly similar to the marks: Autodesk, Inc. v. Nurinet, WIPO Case No. D2011-1426, and the decision cited by the Complainant Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409. The top level domain “.com” is required only for technical reasons and may be disregarded.

Additionally, the Panel finds that the addition of the descriptive term “chocolate” to the KINDER mark does not distinguish the Respondent’s website from the Complainant or its services/products, but indeed only, as the Complainant asserts, adds to the likelihood of confusion.

In this Panel’s view, the test of confusingly similarity is clearly satisfied. This Panel accordingly finds that the disputed domain name is confusingly similar to the Complainant’s trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

As several UDRP panels have found, a complainant is only required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name and once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. On the evidence, the Panel accepts that the Respondent is not commonly known by the disputed domain name as an individual, business, or other organization, and “Kinder” or “Kinder Chocolate” is not the family name of the Respondent.

The Respondent has not provided the Panel with any evidence of its use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute.

The Complainant further contends that the disputed domain name was pointed, before receipt of the cease and desist letter sent by the Complainant’s representatives, to a website featuring the Complainant’s figurative trademark KINDER, the history of Kinder Chocolate product, the name of several products of the Complainant (such as Kinder Surprise Eggs, Kinder Happy Hippo, Kinder Schoko-Bons, Kinder Bueno, Kinder country, Pocket Coffee, Mon Cheri and Nutella) and several additional phrases and sentences which were apt to suggest to Internet users an affiliation with the Complainant that does not exist.

The Complainant has produced evidence that the website published at the disputed domain name was used by the Respondent to convey Internet users to other websites or web pages where various products are offered for sale, including chocolate products manufactured by Complainant’s competitors, such as MILKA and RITTER.

The Complainant asserts that the Respondent’s website “www.kinder-chocolate.com” featured - and is still featuring, notwithstanding the reiterated requests of the Complainant’s representatives to immediately and permanently cease any use of the disputed domain name - banners and/or sponsored links that advertise third party commercial websites (such as the website “www.nespresso.com” of the Complainant’s competitor Societe des Produits Nestle S.A., and from which the Respondent likely derives revenues.

The Complainant also asserts that it is apparent that the Respondent’s use can be considered neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the disputed domain name. Such willful conduct clearly demonstrates, to the contrary, that the Respondent did not intend to use the disputed domain name in connection with any legitimate purpose.

The Complainant states that the fact that the Respondent apparently resells, also, the Complainant’s products through its website “www.malincho.com” and on eBay, is not sufficient to substantiate any possible claim that the Respondent could raise as to rights or legitimate interest in the disputed domain name. Indeed, as it has been repeatedly stated in prior UDRP decisions and is summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements, which include: i) the actual offering of goods and services at issue; and ii) the use of the site to sell only the trademarked goods - which is not satisfied, in the case at hand -; and iii) the site's accurately and prominently disclosing the registrant's relationship with the trademark holder – lacking in the present case -; and iv) the absence of the Respondent’s intent to "corner the market" in domain names that reflect the trademark – requirement that is also not met as <kinder-chocolate.com> is identical to the name of one of the main chocolate products of the Complainant and is registered in the “.com” extension, which may be considered to be the most important Top Level Domain.

As an additional element within the frame of rights or legitimate interest, the Respondent did not reply to the cease and desist letters sent by the authorized representatives of the Complainant. In Stanworth Development Limited v. Mike Morgan (290436), WIPO Case No. D2006-0230, - a case in which two cease and desist letters were sent - it was held that “since the Respondent was informed of the Complainant’s claims in relation to the trademark and made no attempt to offer any explanation for his adoption of so similar a domain name for use in relation to services of the same description, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name”. Moreover, in the case at hand, the Respondent, after having received the cease and desist letter sent by the Complainant’s representatives, decided to hide its contact information through adoption of a privacy service, in a clear attempt to evade enforcement of the Complainant’s intellectual property rights.

Absent a Response and in light of the material before the Panel, the Panel accepts the contentions of the Complainant that the Respondent has no rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Even if the Respondent has not responded to the Complaint, as is the case here, the Complainant has to prove under the Policy that the Respondent has registered and is using the domain name in bad faith.

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the Respondent registered and used the disputed domain name in bad faith. The language of paragraph 4(a)(iii) of the Policy requires that both bad faith registration and bad faith use be established.

Pursuant to paragraph 4(b) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:

(i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or

(ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or

(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.

As to registration in bad faith, the Complainant has asserted that, in light of the fact that the trademarks of the Complainant are certainly well-known worldwide in the field of chocolate goods and confectionary, and used since as early as 1968, it is inconceivable that the Respondent was unaware of the existence of the Complainant or of its trademarks, with which the disputed domain name is confusingly similar.

As to use in bad faith, the Complainant has also asserted that the Respondent has demonstrated actual knowledge of the Complainant’s trademarks, as it redirected the disputed domain name, until recently, to a website where the trademark KINDER was featured prominently and several phrases and sentences related to the Complainant, its trademarks and products were published. Moreover, as indicated on the Respondent’s website “www.malincho.com” and on its eBay web page, the Respondent’s company Malincho, Inc. appears to specialize in the import of European food, including KINDER products.

The Complainant argues that the Respondent’s statements published at its websites - “Kinder is a famous product of the Italian manifacturer Ferrero. Kinder is also one of the most popular chocolate brands in Germany. Ferrero Kinder Chocolates are well known all over Europe and now in the USA. Kinder offers a large assortement: […] the regular Kinder chocolate, […] and many more”,- unequivocally shows that the Respondent was well aware of the Complainant’s trademarks when it registered the disputed domain name.

The Complainant states that the circumstances of the case suggest that Respondent's purpose in registering the disputed domain name, which incorporates the Complainant's trademarks in their entirety, was to capitalize on the reputation of the Complainant's marks by diverting Internet users seeking chocolate products under the Complainant’s trademarks to its own websites, where consumers may purchase various kind of products sold by the Respondent’s company Malincho, Inc., including products of Complainant’s competitors. In addition, Complainant states that the Respondent has published on the website corresponding to the disputed domain name several sponsored links, which have likely generated revenue to the Respondent, redirecting users to third party commercial sites which are not affiliated with the Complainant.

In light of the above, the Panel finds that paragraph 4(b)(iv) of the Policy is certainly applicable to the present case, since the Respondent, by registering and using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent's website.

The Panel also notes that the Respondent appears to have engaged in a pattern of bad faith registrations according to paragraph 4(b)(ii) of the Policy, as it has registered and actively used multiple domain names which are similar to third party trademarks, such as <milkachocolate.com>, <ritter-sport-chocolate.com> and <jacobs-coffee.com>.

The attempt by the Respondent to hide its identity by using a privacy shield after receipt of a cease and desist letter also supports a finding of bad faith. Although privacy shields may be legitimate in some cases it is difficult to see why in the present case the Respondent needs to protect its identity except to frustrate the purposes of the Policy or make it difficult for a brand owner to protect its trademarks against infringement, dilution and cybersquatting.

Based on the evidence submitted by the Complainant and having regard to all the relevant circumstances, the Panel accepts the Complainant’s contentions that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

The Complainant has therefore succeeded in all three elements of the test in paragraph 4 of the Policy and is entitled to succeed in this Complaint.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <kinder-chocolate.com> be transferred to the Complainant.

Eduardo Machado
Sole Panelist
Date: February 19, 2013