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Ferrero S.p.A. v. Fistagi S.r.l. [2001] GENDND 1008 (23 May 2001)

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Complainant is Ferrero S.p.A., a company incorporated under the laws of Italy, with principal place of business at Via Maria Cristina 41, 10025 Pino Torinese, Torino, Italy.

The Respondent is Fistagi S.r.l., a company incorporated under the laws of Italy, with principal place of business in Contrada Vertonica, 65013 Città Sant'Angelo, Pescara, Italy.

The domain name at issue is "kinderferrero.com" (hereinafter the "Domain Name"). The registrar is Signature Domains, Inc., (hereinafter the "Registrar") with address at 4021 Laguna Street, Miami, Florida 33146, U.S.A.

On February 19, 2001, the Complainant filed by e-mail a complaint (hereinafter the "Complaint") with the WIPO Arbitration and Mediation Center (hereinafter the "Center"). The Center received a hard copy of the Complaint on February 22, 2001, and acknowledged its receipt.

On March 12, 2001, the Center requested the Registrar to verify the Domain Name in dispute. The Registrar confirmed on March 14, 2001, that it had received a copy of the Complaint, that the Domain Name had been registered via the Registrar, that the current registrant is the Respondent, that the administrative, technical and zone contact for the Respondent is Sisti Fabrizio, Via Trento 62, Pescara, PE 65122 Italy, that the Uniform Domain Name Dispute Resolution Policy applies to the Domain Name and that the Domain Name registration is in "active" status.

The Center proceeded to verify whether the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (hereinafter the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "ICANN Rules") and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "WIPO Rules"), including the payment of the requisite fees. The Center concluded that the Complaint satisfies all of these formal requirements.

On March 15, 2001, the Center sent a copy of the Complaint to the Respondent and to its administrative contact. The Center also set Respondent a deadline expiring on April 3, 2001, to file its Response.

On April 2, 2001, the Center received Respondent's Response and acknowledged receipt on April 3, 2001.

On May 10, 2001, the Center informed the Parties that an administrative panel (the "Panel") has been appointed and transferred the file to the Panel.

The Panel finds it was properly constituted in compliance with the ICANN Rules and the WIPO Rules and the panelists issued Statements of Acceptance and Declarations of Impartiality and Independence.

The Complainant, Ferrero S.p.A., is an internationally known company in the field of manufacturing and marketing food products. It owns several hundreds of trademarks, including the block letters registration of the marks KINDER, FERRERO, FERRERO KINDER and KINDER FERRERO registered in Italy and in numerous other countries. Copies of the corresponding registration certificates are attached to the Complaint (Annex 1, 2, 3, 4, 5).

The Respondent is Fistagi S.r.l., a company active in the field of wholesale of food and non-food products, which registered the Domain Name "kinderferrero.com" on March 16, 2000. The Domain Name is currently linked to a test page for Apache installations.

With its letter of September 18, 2000, Complainant stated that it noted that Respondent registered the Domain Name and asked whether Respondent was prepared to sell the Domain Name. No answer to this offer has been filed.

Complainant contends:

- that the Domain Name "kinderferrero.com" is confusingly similar to the Complainant's famous trademarks including the words KINDER, FERRERO, FERRERO KINDER and KINDER FERRERO which are registered in numerous countries of the world (Annex 1, 2, 3, 4, 5);

- that the Complainant has been the owner of the trademark KINDER FERRERO for many years. The Complainant claims that according to market research results, KINDER FERRERO chocolates are leaders in their category (Annex 8);

- that the Respondent has no rights or legitimate interests in the Domain Name at issue because it is neither named nor does it own a trademark which includes the words KINDER or FERRERO;

- that the Domain Name has been registered in bad faith because Respondent must have been aware of the fame of Complainant's trademark and that Respondent's primary purpose of registration was to exploit its notoriety;

- that Respondent's passive holding of the Domain Name registration constitutes use in bad faith.

Respondent contends:

- that the Complainant has not registered any ".com" domains for its products. Therefore, the Respondent believed that Complainant was not interested in registering the Domain Name;

- that the Respondent is a wholesaler of food and non-food products, including Complainant's products. Respondent claims to have significant commercial relations with the Complainant and to be authorized by Complainant to sell its products;

- that the Respondent has a right to use the Domain Name to inform consumers about the products it sells;

- that the Respondent did not passively hold the Domain Name in bad faith but refrained from actively using the Domain Name pending the present proceedings.

To have the disputed Domain Name transferred to it, Complainant must prove each of the following (Policy, paragraph 4(a)):

(i) that the 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 domain name; and

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

Complainant has shown that it owns block letter trademark registrations including the words KINDER, FERRERO, FERRERO KINDER and KINDER FERRERO in numerous countries of the world. The Panel, therefore, finds that the Domain Name is identical to Complainant's trademark KINDER FERRERO.

By submitting Complainant's invoices dated March 1, 1999, and February 29, 2000, Respondent has demonstrated that it resells Complainant's products according to certain sales conditions agreed between the parties (Annex 1 and 2 to the Response). Neither party submitted a copy of the terms of the sales conditions. The issue to be decided is whether under such circumstances Respondent has legitimate rights or interests in the Domain Name.

Respondent's business is registered and appears to be known under the name "Fistagi s.r.l." and not under the name "Kinder Ferrero". The Domain Name does not reflect the name of Respondent's business but the trademark of just one of the products, among others, sold by Respondent. Nor does the Domain Name describe Respondent's business field which is "the wholesale of food and non-food products".

Previous WIPO Decisions differentiated domain names that are descriptive of goods (e.g. known marks of a supplier plus an indicia of the actual product sold), and domain names that constitute a potentially infringing use of the supplier's famous mark. A legitimate interest of Respondent was found to exist where Complainant's trademark was weak and descriptive of a business which was carried out by both parties (EAuto L.L.C. v. Triple S. Auto Parts, WIPO Case No.D2000-0047). In other words, the question is whether or not the domain name reflecting the Complainant's trademark is used by Respondent "for describing an element of its business and not for the nefarious purpose of causing confusion or diversion of business" (EAuto L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096).

In the present case, the Domain Name "kinderferrero.com" is identical to Complainant's trademark and is not descriptive of the generic type of goods sold by, or the business of Respondent. Other than being authorized to sell Complainant's products, the Respondent failed to demonstrate that its business, as a whole, is commonly known by the Domain Name at issue. Therefore, it is clear that Respondent is not commonly known by the domain name and cannot claim the defense of paragraph 4(c)(ii) of the Policy.

The Respondent claims to have a legitimate right to use the Domain Name because it has been authorized by the Complainant to sell the latter's products. Agreeing with Respondent's argument would mean to allow any distributor, wholesaler or retailer to register and monopolize a third's party's trademark as a domain name, based on the mere fact that it sells those products. However, the right to resell or market a product does not create the right to use a mark more extensively than required to advertise and sell the product at issue (R.T. Quaife Engineering, Ltd. v. Luton, WIPO Case No. D2000-1201; Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079). The extent to which a reseller of legitimate goods can use complainant's mark depends on the extent to which such use accurately reflects the user's connection with the mark owner (WWF Entertainment v. Ringside Collectibles, WIPO Case No. D2000-1306).

Respondent has not shown to what extent the sales conditions agreed with Complainant authorize Respondent to use the KINDER FERRERO mark. Absent such evidence, Respondent appears to be just one out of many resellers of Complainant's products. However, the registration of the Domain Name by Respondent suggests a much closer affiliation with Complainant than a mere reseller relationship: it suggests that Respondent's site is the place where consumers can go to get all their questions about KINDER FERRERO products answered (R.T. Quaife Engineering, Ltd. v. Luton, WIPO Case No. D2000-1201). Therefore, allowing Respondent to register and use the Domain Name would not accurately reflect Respondent's connection with Complainant as the trademark owner.

Moreover, in order to demonstrate Respondent's rights or legitimate interest in the Domain Name, the Policy also requires the Respondent to submit in his Response evidence of any demonstrable preparation to use the Domain Name before any notice of the dispute (Policy, paragraph 4(c)(i)). Respondent alleges that it intends to use the Domain Name in connection with the resale of Complainant's goods. However, the registration was made in March 2000 and Respondent has failed to demonstrate any steps evidencing his preparation to use the Domain Name. The Domain Name is merely linked to the Apache test page instructing how to contact Respondent. This clearly does not qualify as bona fide use in the sense of the Policy. The Respondent alleges that it has refrained "from taking any further initiatives" pending the ruling of this Panel. However, before these proceedings started, Respondent had almost a year to prepare to use the Domain Name, but has not taken any demonstrable steps to this effect.

Under these circumstances, the Panel finds that the Respondent did not demonstrate to have any legitimate rights or interest in the Domain Name.

The trademark KINDER FERRERO unquestionably is a well-known mark, and the Respondent was clearly aware thereof, also due to its commercial relation to Complainant. While the Respondent has not shown that the Domain Name identifies its business, it is deliberately preventing the Complainant from reflecting its well known trademark KINDER FERRERO in a corresponding ".com" domain name (FC Bayern München v. Miguel Garcia, WIPO Case No. D2000-1773). The Panel, therefore, finds that Respondent registered the Domain Name primarily for the purpose of disrupting the business of a competitor in the sense of paragraph 4(b)(iii) of the Policy.

Respondent warehoused the Domain Name reflecting a well-known mark for almost a year without posting an actual web page thereunder. Panels have repeatedly held that the passive holding of a domain name may constitute a "use" in the sense of paragraph 4(a)(iii) of the Policy. The concept of a domain name being used in bad faith is not limited to positive action; rather, inaction is within the concept (Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; WWF Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306). The Domain Name clearly identifies the KINDER FERRERO products originating from Complainant. This trademark is so obviously connected with Complainant that by definition its registration was made in opportunistic bad faith and its use by the Respondent in the Domain Name creates a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's planned website in the sense of paragraph 4(b)(iv) of the Policy (Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin v. The Polygenix Group Co., WIPO Case No. D2000-0163).

Accordingly, this Panel finds that Respondent has registered and used the Domain Name in bad faith.

For all of the foregoing reasons, this Panel decides that the Domain Name "kinderferrero.com " registered by Respondent is identical to the trademark KINDER FERRERO owned by the Complainant, that the Respondent has no rights or legitimate interests in respect of this Domain Name, and that the Respondent registered and used the Domain Name in bad faith. Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the Domain Name "kinderferrero.com" be transferred to the Complainant.

Andrea Mondini
Presiding Panelist

Anna Carabelli
Panelist

Kevin H. Fortin
Panelist

Dated: May 23, 2001