WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société des Produits Nestlé S.A. v. MrToys.com LLC

Case No. D2012-1356

1. The Parties

The Complainant is Société des Produits Nestlé S.A. of Vevey, Switzerland, represented by Studio Barbero, Italy.

The Respondent is MrToys.com LLC of New Jersey, United States of America.

2. The Domain Names and Registrar

The disputed domain names <bacichocolate.com>, <bacistore.com>, <peruginabacichocolate.com>, <peruginachocolate.com> and <peruginachristmaschocolate.com> are registered with DNC Holdings, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2012. On July 4, 2012, the Center transmitted by email to DNC Holdings, Inc. a request for registrar verification in connection with the disputed domain names. On July 5, 2012, DNC Holdings, Inc. 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 July 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2012.

The Center appointed Peter Burgstaller as the sole panelist in this matter on August 9, 2012. 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 the owner of several international, European and national registered trademarks including PERUGINA (IR 993105, IR 443911, IR 236492, CTM 993105, CTM 966386), PERUGINA BACIO (CTM 6851943), PERUGINA BACI (IR 206082, US 2272366) and BACI (IR 968775, IR 940762, IR 966386, IR 581412, CTM 940762, CTM 968775).

Perugina is an Italian confectionery company based in Perugia, Italy since its founding in 1907 and a division of the Complainant. Perugina produces a wide array of chocolate and food products, including chocolate bars, hard candy, nougat, and biscotti. In 1922, Perugina introduced its most successful product, the BACI chocolate “kiss”. Today BACI candies are sold 300,000 times a year.

The sale of BACI is undeniably global, with exports to consumers in over fifty countries. The Complainant registered numerous domain names where it maintains official websites, including <baciperugina.com>, <baci-perugina.com>, <baciperugina.it>, <peruginabaci.com>, <perugina.eu>, <baci.eu>, <baci.gr>, <neroperugina.it>, and <perugina.it>.

The Respondent has registered the disputed domain names between 2001 and 2009 and uses the disputed domain names to address its Websites on which PERUGINA and BACI products are presented as well as username on Facebook.

5. Parties’ Contentions

A. Complainant

The disputed domain names are confusingly similar to the above mentioned trademarks over which the Complainant has rights. The Respondent has no rights or legitimate interests in respect of the disputed domain names and the Respondent has registered and is using the disputed domain names in bad faith.

For these reasons the Complainant requests the disputed domain names to be transferred.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests with respect to the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain names incorporate the entirety of the Complainant’s trademarks, either BACI or PERUGINA or PERUGINA BACI.

The use of the Complainant’s trademarks with the suffixes “store” or “chocolate” or “christmaschocolate” does not make the disputed domain names distinctive from the Complainant’s trademarks.

In fact it is the Panel’s conviction that in using the above mentioned suffixes it rather strengthens the impression that the disputed domain names are in some way connected to the Complainant or at least “free rides” on the fame/publicity of Complainant’s trademarks (see e.g. Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; Telstra Corporation Limited v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO Case No. D2000-1511; Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2000-1406; Ryder Cup Europe LLP v. Rydercuponline.com / Andrew Seaforth, WIPO Case No. D2010-0688; Sanofi-aventis, AVENTISUB II Inc. v. Murugan Nadar / Rajesh Singh, WIPO Case No. D2010-1959; Atlas Copco Aktiebolag v. MKC Supply Inc, WIPO Case No. D2011-1844.

It has also long been held that suffixes such as the gTLD “.com” cannot typically negate confusing similarity where it otherwise exists, as it does in the present case.

The Panel therefore finds that the Complainant has made out the first of the three elements under paragraph 4(a) of the Policy that it must establish.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

But by virtue of paragraph 4(c) of the Policy, it is open to a Respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your 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; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

If the Respondent proves any of these elements or anything else that shows it has a right or legitimate interest in the disputed domain names, the Complainant will have failed to discharge its onus and the Complaint will fail with respect to the disputed domain name. However, in the present case the Respondent failed to submit a Response.

It is well established that, as it is put in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second edition ("WIPO Overview 2.0") “[…] complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, 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 UDRP”.

Considering all of the evidence in the Complaint and the annexes attached to it (especially with regard to Annex 20 regarding prior communications between the Parties), the Panel finds that the Complainant has made out an undisputed prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, if the following circumstances, in particular but without limitation, are found by the Panel to be present, shall be evidence of the registration and use of the disputed domain names in bad faith:

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

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

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

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

As stated in many decisions adopted under the Policy (Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001) both conditions, registered and used in bad faith, are cumulative, consequently, the Complainant must show that:

- the disputed domain names were registered by the Respondent in bad faith and,

- the disputed domain names are being used by the Respondent in bad faith.

Registered in bad faith

The disputed domain names are composed by the Complainant’s distinctive trademarks and the suffixes “chocolate” or “christmaschocolate” or “store”.

It is the Panel’s opinion that the choice of these suffixes has the only purpose to attract Internet traffic while using the publicity and the reputation of the Complainant’s trademarks.

Previous panels moreover held that in certain circumstances when a trademark is well-known, the Respondent’s bad faith could be inferred, see AT&T Corp. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1088: “Bad faith can be presumed based on the fame of Complainant’s marks, such that the Respondent was aware or should have been aware of Complainant’s well-known marks and claims of rights thereto.”

With regard to the disputed domain names it is clear for this Panel, that the Respondent was aware of the Complainant’s marks otherwise it would not have used the Complainant’s trademark in its entirety together with the above mentioned generic suffixes for registering the disputed domain names.

Moreover the Respondent presents PERUGINA and BACI products on its Websites.

These findings together with the Complainant’s contentions and presented proofs lead this Panel to the conclusion that the disputed domain names have been registered in bad faith by the Respondent.

Used in bad faith

In order to meet paragraph 4(a)(iii) of the Policy the Complainant has also proved that the disputed domains names are being used in bad faith.

In the present case the Respondent addresses its own Websites with the disputed domain names and presents on its Websites PERUGINA and BACI products. Following Annex 20 the Respondent even declares, that “I have owned those names for years & I sell their Perugina chocolate on them, I am not going to give them up!!”

Given the fact that the Respondent incorporated the Complainant’s trademarks in its entirety together with the generic suffixes “store”, “chocolate” and “christmaschocolate” and the Respondents’ arguments especially in Annex 20 (above mentioned), it is the Panels conviction that the disputed domain names are being used in bad faith by the Respondent and the conditions set out in paragraph 4(a)(iii) of the Policy have been met by the Complainant.

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, <bacichocolate.com>, <bacistore.com>, <peruginabacichocolate.com>, <peruginachocolate.com> and <peruginachristmaschocolate.com> be transferred to the Complainant.

Peter Burgstaller
Sole Panelist
Dated: August 20, 2012