WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ferrero S.p.A. v. Privacy Service Provided by Withheld for Privacy ehf / Justin Friedman

Case No. D2021-3865

1. The Parties

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

The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Justin Friedman, United States of America.

2. The Domain Names and Registrar

The disputed domain names <nutellafordoge.com> and <nutellafordoge.shop> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2021. On November 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <nutellafordoge.com>. On November 19, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 22, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 23, 2021.

On November 29, the Complainant filed an amended Complaint with addition of the other disputed domain name <nutellafordoge.shop>. On December 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the additional disputed domain name. On December 15, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the additional disputed domain name and providing the contact details.

The Center verified that the Complaint together with the amendment to the Complaint and the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 28, 2022.

The Center appointed Christian Gassauer-Fleissner as the sole panelist in this matter on February 4, 2022. 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 was founded in 1946 in Alba, Italy, by Pietro Ferrero. In 1946, Pietro Ferrero introduced the original version of NUTELLA, a hazelnut-based cream called “pasta gianduja”. Mr. Ferrero had the idea to change the product into a paste that came in a jar, so it could be spread on bread. This then became known as “supercrema gianduja”, because it was a spread-able version of the gianduja. “Supercrema gianduja” was eventually renamed “Nutella” in 1964.

NUTELLA was first imported from Italy into the United States (“US”) in 1983, mainly in the North-eastern part of the country. The Complainant promotes and sells its products worldwide in over 160 countries, including the US. The Complainant’s entire group includes 38 operative companies, 18 production plants, over 36,000 employees and produces around 365,000 tons of NUTELLA each year. With specific reference to the US, the Complainant operates in said country seven offices and eight plants and warehouses with 3,000 employees. In 2017, the Complainant opened its first NUTELLA restaurant in the US.

NUTELLA has been also widely promoted via the Internet, in particular through social media, e.g. on Facebook, Twitter, YouTube, Instagram and Pinterest.

In order to further support the protection of the NUTELLA trademark on the Internet, the Complainant registered the trademark NUTELLA and variations thereof, as domain name in numerous gTLDs and ccTLDs. Amongst others, the Complainant is the owner of the domain name <nutella.com>, registered on April 2, 1997 at which it operates the website “www.nutella.com” as its primary web portal for global promotion of NUTELLA products.

The Complainant is the owner of several trademark registrations for NUTELLA worldwide, including the following:

- Italian trademark registration No. 0001569193, registered on November 26, 2013;
- European Union Trade Mark No. 009316878, registered on January 27, 2011;
- International trademark registration No. 281788, registered on March 31, 1964;
- International trademark registration No. 1073241, registered on January 27, 2011;
- International trademark registration No. 1357583, registered on November 4, 2016;
- International trademark registration No. 1191051, registered on November 18, 2013;
- US Registration No. 855647, registered on August 27, 1968;
- US Registration No. 4799778, registered on August 25, 2015;
- US Registration No. 4192415, registered on August 21, 2012

The disputed domain name <nutellafordoge.com> was registered on January 30, 2021 and resolves to a website that promotes the sale of NUTELLA products in exchange for the crypto currency “Doge Coin”. In the moment of the decision, the purchase option does not work. The disputed domain name <nutellafordoge.shop> was registered on November 22, 2021 and does not resolve to an active website in the moment of the decision. The Complainant provided evidence that the disputed domain name <nutellafordoge.shop> resolved to a parked page with pay‑per‑click links.

5. Parties’ Contentions

A. Complainant

The Complainant claims that it established rights through registration of the sign NUTELLA. The disputed domain names are confusingly similar because they incorporate the trademark wholly. The added non-distinctive elements do not affect the confusing similarity.

The Complainant furthermore alleges that the Respondent is not a licensee, authorized agent of the Complainant, or in any other way authorized to use the Complainant’s trademarks. Additionally, the Complainant is not aware of the existence of any evidence demonstrating that the Respondent might be commonly known by a name corresponding the disputed domain names as an individual, business, or other organization. The Respondent did not provide any evidence that the use of the disputed domain names is in connection with a bona fide offering of goods. Therefore, the Respondent has no rights or legitimate interests in respect of the disputed domain names.

Finally, the Complainant contends that the trademark NUTELLA is well-known and has been used extensively since 1964 and it is therefore likely that the Respondent was aware of the existence of the Complainant’s trademark and its reputation at the time of the registration. Given the distinctiveness and reputation of NUTELLA, the Respondent clearly acted in opportunistic bad faith, by registering the disputed domain names. With regard to bad faith use the disputed domain name <nutellafordoge.com> has been pointed to a website displaying the NUTELLA trademarks and an altered version of the NUTELLA jar and where, originally, NUTELLA jars were also directly offered for sale. With regard to the use of the disputed domain name <nutellafordoge.shop> it is redirected to a web page where Internet users can find a number of sponsored links to various commercial websites, including websites related to chocolate and pastry products. As a result, the Respondent may earn commission. Therefore, registration and use of both disputed domain names were in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

It has been a consensus view in previous UDRP decisions that a respondent’s default (i.e., failure to submit a response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true (see section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain names are confusingly similar to the Complainant’s NUTELLA trademark, in which the Complainant has established rights through registration and use.

The disputed domain names incorporate the entirety of the Complainant’s trademark NUTELLA extended by the terms “for” and “doge” as well as the generic Top-Level Domains (“gTLDs”) “.com” or “shop”.

Section 1.8 of the WIPO Overview 3.0 reads: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.” The added terms “for” and “doge” do not prevent a finding of confusing similarity because the trademark NUTELLA is recognizable within the disputed domain names.

In addition, gTLDs are generally disregarded when evaluating the identity or confusing similarity of the Complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD (see section 1.11 of the WIPO Overview 3.0).

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the Complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the Respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0). The Panel notes that the Respondent did not submit a response.

The Complainant makes its prima facie case by demonstrating without contradiction that it has not authorized or granted a license to the Respondent to use its trademark and that the Respondent has not been commonly known by the disputed domain name.

The disputed domain name <nutellafordoge.com> is used in connection with a website that promotes a cryptocurrency featuring the Complainant’s distinctive trademarks without the Complainant’s consent.

Furthermore, and without prejudice to the above, the nature of the disputed domain names, comprising the Complainant’s well‑known trademark in its entirety, carries a risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.

The disputed domain name <nutellafordoge.shop> does not resolve to an active website in the moment of the decision. The Complainant’s provided sufficient evidence that the domain has been used for a website displaying sponsored links, operated via pay-per-click system. According to section 2.9 of the WIPO Overview 3.0 such systems are not considered as bona fide offering or fair use, where, as here, the respondent is capitalizing on the reputation and good will of the complainant’s mark or otherwise misleads Internet users.

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

C. Registered and Used in Bad Faith

The Complainant holds trademark rights for NUTELLA since 1964. Due to its extensive use and marketing, the NUTELLA trademark has become distinctive and enjoys significant reputation in its industry.

Section 3.2.2 of the WIPO Overview 3.0 reads: “Knew or should have known: Noting the near instantaneous and global reach of the Internet and search engines and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”

The reputation of the trademark and its extensive marketing indicate the Respondent was aware of the Complainant’s trademark. Additionally, the older disputed domain name <nutellafordoge.com> explicitly shows products or variations of the original product commercialized under the trademark NUTELLA. The failure of the Respondent to react in any way to the procedure reinforces the impression that there is no bona fide registration.

The disputed domain name <nutellafordoge.com> is used for a website for commercial purposes, in particular for promoting a crypto currency by exchanging crypto currency against NUTELLA products. Although in the moment of the decision the “buy” function is not enabled, the evidence provided by the Complainant proves sufficiently that the exchange of crypto currency for products has been possible. The Complainant’s trademark is prominently displayed.

Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’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 respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith.

Given that the disputed domain name <nutellafordoge.com> incorporates the Complainant’s distinctive trademark and the website operated under the disputed domain name displays the Complainant’s trademark, the Respondent intended to attract Internet users accessing the website corresponding to the disputed domain name who may be confused and believe the website is held, controlled by, or somehow affiliated or related to the Complainant for its commercial gain.

The disputed domain name <nutellafordoge.shop> incorporates the Complainant’s distinctive trademark, too, but does not display the Complainant’s trademark. The Complainant’s evidence indicates that the disputed domain name <nutellafordoge.shop> was redirected to a website that was used to display various sponsored weblinks, inter alia related to competing chocolate and pastry products. According to section 3.5 of the WIPO Overview 3.0 such use can indicate the Respondent’s bad faith.

Furthermore, it was consistently found by previous UDRP panels that the mere registration of a domain name that is identical or confusingly similar to a third party’s well-known trademark can constitute by itself, a presumption of bad faith registration for the purpose of Policy. See section 3.1.4 of the WIPO Overview 3.0.

The Panel therefore finds that the disputed domains were registered and used in bad faith, pursuant to the Policy, paragraph 4(a)(iii).

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 names, <nutellafordoge.com> and <nutellafordoge.shop>, be transferred to the Complainant.

Christian Gassauer-Fleissner
Sole Panelist
Date: February 22, 2022