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Ferrero S.p.A. v. Publinord S.r.l. [2002] GENDND 1009 (1 July 2002)

WIPO Arbitration and Mediation Center

Case No. D2002-0395

The Complainant is Ferrero S.p.A., an Italian joint-stock company, with registered office at Piazzale Pietro Ferrero 1, Alba, Cuneo, Italy.

The Respondent is Publinord S.r.l., an Italian company with registered office at Vicolo Ghirlanda 2, Bologna, Italy.

The domain name at issue is <nutellamania.com> and the registrar with whom the domain name is registered is Network Solutions, Inc., 505 Huntmark Park Drive, Herndon, Virginia, United States of America.

The Complaint was submitted via e-mail on April 29, 2002 and in hard copy on May 1, 2002, to the WIPO Arbitration and Mediation Center (hereinafter the "the Center").

On April 30, 2002, the Center requested the Registrar, Network Solutions Inc., pursuant to Paragraphs 2(a) and 4 of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "Rules"): (1) to confirm that a copy of the Complaint had been sent to Network Solutions Inc. by the Complainant; (2) to confirm that the domain name at issue was registered with Network Solutions Inc. (3) to confirm that the person identified as the Respondent is the current registrant of the domain name; (4) to provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es) available in the registrar's Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact); (5) to confirm that the Uniform Domain Name Dispute Resolution Policy (hereinafter the "Policy") applies to the domain name, (6) to confirm that the domain name will remain locked during the pending administrative proceeding; (7) to indicate the specific language of the registration agreement as used by the registrant for the domain name; and (8) to indicate whether the Registrant has submitted in its Registration Agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the domain name.

On May 3, 2002, Network Solutions Inc. replied that: (1) Network Solutions Inc. was the Registrar of the domain name registration; (2) the Registrant’s contact information resulting from the WHOIS database were: Publinord S.r.l., Vicolo Ghirlanda, 2, Bologna, BO 40121 IT; (3) the status of the domain name is "Active"; (4) the language of the Service Agreement is English; (5) the Registrant has submitted in its Registration Agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the domain name; and (6) it will not cancel, transfer, activate, deactivate, or otherwise change the status of the domain name registration under the Policy, except as provided in Paragraph 3 of the Policy.

In accordance with Paragraph 2(a) of the Rules, the Complaint was properly notified on May 6, 2002 (which is also the date of commencement of the administrative proceeding), to the Respondent who did not file any Response and was notified of its default on May 27, 2002. On June 17, 2002 the Parties were informed that in accordance with Paragraph 6(f) of the Rules, an Administrative Panel consisting of a single member had been appointed. The sole Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence and the date scheduled for the issuance of the Panel’s decision was set for July 1, 2002.

In light of the above and according to the documents filed with the Panel, the Complaint appears to have been filed in accordance with the requirements of the Rules and of the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "Supplemental Rules").

The Panel finds that the payment was properly made and agrees with the Center’s assessment concerning the Complaint’s compliance with the formal requirements.

Finally, in accordance with Paragraph 11 of the Rules, the language of the administrative proceeding will be the language of the relevant Registration Agreement, i.e. English.

According to the Complaint, the Complainant is an internationally well-known company in the field of food, and the owner of several hundreds of trademarks including the word NUTELLA throughout the world. The Complainant has enclosed to the Complaint (Exhibit 1) a list of all its NUTELLA trademark registrations and applications all over the world as well as copies of the NUTELLA trademark registration certificates (Exhibits 2-7) as follows:

1. U.S. Registration No. 855,647 of August 27, 2002, renewal of a prior registration dating back to 1988;

2. U.K. Registration No. 864485 of March 11, 1999, renewal of a prior registration dating back to 1985;

3. Canadian Registration No. 157,098 of February 13, 1998, renewal of a prior registration dating back to 1983;

4. Italian Registration No. 794464 granted on November 29, 1999, renewal of a prior registration dating back to 1977;

5. Italian application No. 40156-C/83, filed on March 28, 1983, renewal of a prior registration dating back to 1963;

6. International application No. 24103-D/83 of November 17, 1983, being the renewal of International registration No. 281788 of March 31, 1964.

Most of the NUTELLA trademarks cited by the Complainant - but not all of them - cover chocolate products.

According to the Complaint, NUTELLA is an indisputably renown trademark as it would also clearly result if one performed a search against this trademark on the Internet. The product NUTELLA is so famous that it has become a real "myth" throughout the world.

All the aforementioned statements are uncontested. Furthermore, in compliance with the powers conferred to the Panel, in particular by Paragraph 10 (b) and (d) of the Rules, the Panel has deemed appropriate to perform on the Internet the search for NUTELLA suggested by the Complainant. The search has revealed the existence of 11,300 web pages containing the mark NUTELLA - including some NUTELLA fans club- corresponding to domain names under the ccTLD .IT, and 43,200 web pages in the entire web.

In the light of the foregoing, the Panel takes the view that Complainant’s statements are a fair representation of Complainant’s activities and of the renown of the NUTELLA trademark.

According to the Complainant, the disputed domain name is confusingly similar to a trademark in which the Complainant’s has rights for the following reasons:

Finally, the Complainant alleges, on the basis of several concurring arguments, that the disputed domain name should be considered as having been registered in bad faith. In particular, the reasons alleged by the Complainant to support its view are the following:

- Respondent’s trade name does not include NUTELLA or NUTELLAMANIA, nor does Respondent trade under these names;

- Respondent is located in Italy, where NUTELLA is certainly well-known. It is not possible that the Respondent was not aware of the famous trademark NUTELLA. Thus, registration may only have occurred in bad faith;

To reinforce its statements Complainant cites some decisions where the Panels found a relation between the fact that the disputed domain names were identical or confusingly similar to third party's well-known trademarks and the Respondent’s bad faith in registering these domain names.

According to the Complainant, also the use of the domain name <nutellamania.com> is in bad faith. The Complainant cites a considerable bulk of decisions stating that there may be a use in bad faith of a domain name even when the domain name does not lead to an "actual Web page by Respondent, nor an offer for selling the domain name". Use in bad faith does not necessarily entail a positive action, inaction may suffice.

However, according to the Complainant, in the case at hand the disputed domain name is "somewhat active. By trying www.nutellamania.com on a browser, one does not connect to any empty page, but finds a publicity for "Publinord - Your next partner in Internet" (Exhibit 10). According to the Complainant, this form of use of the domain name may be considered a use in bad faith.

Respondent did not submit any Response and should therefore be considered in default. The Panel, in compliance with Paragraph 14 of the Rules, shall therefore proceed to a decision on the Complaint and shall draw such inferences therefrom as it considers appropriate.

According to Paragraph 4(a) of the Policy, in an administrative proceeding, the Complainant must prove that each of following three elements are present: (1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name was registered and is being used in bad faith.

1) The Panel believes that the domain name at issue <nutellamania.com> is confusingly similar to a trademark in which the Complainant has rights.

Complainant asserts that "Adding "mania" to a well-known trademark is quite common in Italy in advertising campaigns (e.g. COCACOLAMANIA) and to indicate a "special" or "collector" series of a product. MANIA, thus is not distinctive per se and NUTELLA and NUTELLAMANIA should be regarded as confusingly similar".

The Panel shares Complainant’s view. The distinctive part of the disputed domain name lies on the NUTELLA component, while the term MANIA is deprived of distinctive character. MANIA is a term frequently used in Italy - the country where the Respondent is located - to indicate a particular enthusiasm towards something or someone. Under this connotation, the word MANIA does not have such negative implication that it usually has when it is associated to the concept of "maniac", i.e., to a person who is affected with a form of madness.

The Panel is aware of the fact that the term MANIA is frequently added to other terms to indicate a particular propensity towards the object identified by the term to which MANIA is added. Hence, under this connotation, the term MANIA is often used and considered as a synonym of positiveness and therefore of good quality of the object to which MANIA is associated. In the example made by the Complainant, COCACOLAMANIA expresses great enthusiasm for COCA-COLA and thus the high level of quality of this beverage. The same should apply for NUTELLAMANIA.

In the light of the aforementioned considerations, the Panel believes that the addition of the term MANIA to NUTELLA is not sufficient to avoid a likelihood of confusion between the disputed domain name and Complainant's trademark NUTELLA.

Therefore, the Panel believes that the domain name <nutellamania.com> is confusingly similar to NUTELLA. Hence, the Panel is satisfied that the first condition is met.

(2) The Panel finds that the Respondent has neither rights nor legitimate interests in respect of the domain name.

It is a consolidated principle that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the domain name according to Rule 4 (a) of the Policy is quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one. Accordingly, and in line with other prior decisions, the Panel holds that it is sufficient that Complainant shows a prima facie evidence in order to shift the burden of proof on Respondent (Anti Flirt S.A. and Mr. Jacques Amsellem v. WCVC, WIPO Case No. D2000-1553, Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467).

Complainant alleged several circumstances that, in the Panel’s view, create a sufficient prima facie evidence that justifies an inversion of the burden of proof.

In particular, Complainant denies the existence of all such circumstances listed in Paragraph 4 c. of the Policy, which, without limitation, would have proved Respondent's rights or legitimate interests in respect of the domain name <nutellamania.com>.

In particular, according to the Complaint, there is no evidence of (i) "Respondent's use of, or demonstrable preparations to, use the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Respondent does not offer any goods or services whatsoever; (ii) Respondent has never been commonly known in the normal course of business by the trademark, tradename or domain name NUTELLA or NUTELLAMANIA; (iii) absent any presence online or offline, by Respondent under the name NUTELLAMANIA, any easily conceivable use Respondent may do of a domain name whose "heart" is a trademark as famous as NUTELLA is, may only be commercial, thus excluding the possibility for a non-commercial use".

Respondent might have rebutted all Complainant's arguments but failed to do so and thus, the Panel must conclude that Complainant’s allegations are sufficient to establish that Respondent has no rights or legitimate interests in the domain name <nutellamania.com>.

In light of the foregoing, this Panel is satisfied that also the second condition is met.

3) This Panel finds that the domain name was registered and is being used in bad faith.

In order to reach this conclusion, the Panel examined separately two issues:

1) whether or not bad faith existed when the domain name was registered; and

2) whether or not the domain name was used in bad faith.

As far as the first issue is concerned, the Panel finds that Complainant has given enough and supported evidence of the fact that the domain name <nutellamania.com> was registered in bad faith.

According to the Complainant, "[t]here is no way that Respondent may not have been aware of the famous trademark NUTELLA, and registration may only have occurred in bad faith. Respondent’s name is Publinord S.r.l., and does not include NUTELLA or NUTELLAMANIA not does it trade under these names. Respondent is located in Italy, where NUTELLA is certainly well-known. When it may be presumed that "the Respondent (…) knew of the renown of the Complainant’s trademarks" a finding of "opportunistic bad faith" is in order (…)."

Absent any contrary evidence by Respondent, the Panel believes that given the renown of the NUTELLA trademark in Italy, which is the country where Respondent is located, Respondent could not ignore Complainant’s trademark NUTELLA at the time of the registration of the disputed domain name. In line with other prior decisions (Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin v. The Polygenix Group Ltd., WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia, WIPO Case No. D2000-0226; Ferrero S.p.A. v. Mario Pisano, WIPO Case No. D2000-1794; Altavista Company v. Grandtotal Finances Limited et. al., WIPO Case No. D2000-0848), the Panel believes that, in the absence of any right or legitimate interest, and lacking any Respondent’s contrary evidence, Respondent’s registration of a domain name confusingly similar to Complainant’s well-known trademark suggests opportunistic bad faith.

Having deemed satisfied the first condition, the Panel must now establish whether or not there has been use in bad faith.

The Complainant states that "Respondent uses the domain name in bad faith. On the question of "use of a domain name in bad faith when there is no actual Web page by Respondent, nor an offer for selling the domain name, there is now an entire body of significant precedents (…)". According to the Complainant, use in bad faith is not limited to a positive action. Also inaction may be considered use in bad faith. Therefore, under certain circumstances, even Respondent’s inactivity may prove to be use of a domain name in bad faith under Paragraph 4(b) of the Policy. In the Complainant’s view, only one of the circumstances listed in Paragraph 4 (b) of the Policy, namely that of Paragraph 4(b) (iv), necessarily involves exclusively a positive action "(using the domain name to attract custom to a web site or other on-line location)". According to the Complainant, the other three circumstances involve either a positive action or inaction in relation to the domain name. Passive holding of a domain name may thus, under certain circumstances, amount to a use of the domain name in bad faith.

However, according to Complainant, in the case at issue "the holding [of the domain name] is somewhat active. By trying www.nutellamania.com on a browser, one does not connect to any empty page, but finds a publicity for "Publinord – Your next partner in Internet". This statement is supported by Exhibit 10 to the Complaint.

The Panel believes that although the domain name <nutellamania.com> does not resolve to an active web site, the ownership of the disputed domain name by Respondent cannot be considered a mere passive domain name holding.

In fact, when the Internet user digits <www.nutellamania.com>, he/she accesses to a page advertising Respondent’s activity: "Publinord – Your next partner in Internet" (Exhibit 10). In accordance with the powers conferred by Paragraph 14 of the Rules, the Panel believes, absent any Respondent’s challenge, that the use of the <nutellamania.com> domain name to advertise Respondent’s activity is to be considered a use of the domain name in order to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent web site or location or of a product or service on Respondent’s web site or location, hence a use of the domain name in bad faith under Article 4 (b) (iv) of the Policy.

In light of the foregoing, the Panel is satisfied that also the third condition is met.

In light of the foregoing, the Panel finds that Respondent’s disputed domain name <nutellamania.com> is similar to a Complainant’s trademark, that Respondent has no legitimate rights or interests in the disputed domain name, and that Respondent has registered and made use of the domain name in bad faith. Accordingly, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <nutellamania.com> be transferred to the Complainant.

Angelica Lodigiani
Sole Panelist

Dated: July 1, 2002