Ferrero S.p.A. v. Jean-François Legendre

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Ferrero

S.p.A. v. Mr. Jean-François Legendre

Case No.

D2000-1534

1. The Parties

The complainant in this

administrative proceeding is Ferrero S.p.A. ("Complainant"), a joint-stock

company, incorporated under the laws of Italy with its registered office at

Via Maria Cristina 41, 10025 Pino Torinese, Turin, Italy.

The respondent is Mr. Jean-François

Legendre ("Respondent"), an individual having its address at 32 rue

de Lappe, 75011 Paris, France.

2. The Domain Name and

Registrar

The domain names at issue

are <mynutella.org> and <mynutella.net> ("Domain Names"),

registered with Network Solutions, Inc. ("Registrar" or "NSI")

of 505 Huntmar Park Drive, Herndon, VA 20170, USA.

3. Procedural History

A complaint, pursuant to

the Uniform Domain Name Dispute Resolution Policy implemented by the Internet

Corporation for Assigned Names and Numbers ("ICANN") on October 24,

1999, ("Policy") and under the Rules for Uniform Domain Name Dispute

Resolution Policy implemented by ICANN on the same date ("Rules"),

was submitted to the World Intellectual Property Organization Arbitration and

Mediation Center ("WIPO Center") on November 8, 2000, by e-mail and

was received on November 13, 2000, in hardcopy.

The Acknowledgement of

Receipt of Complaint was submitted to the Complainant by the WIPO Center on

December 14, 2000.

On November 27, 2000, a

Request for Registrar Verification was transmitted to the Registrar, which confirmed

with its Verification Response of December 1, 2000, that the disputed Domain

Name was registered with NSI, that Respondent was the current registrant of

the name, that NSI's Service Agreement Version 5.0 was in effect and that the

registration was in active status.

The assigned WIPO Center

Case Administrator completed a Formal Requirements Compliance Checklist without

recording any formal deficiencies.

A Notification of Complaint

and Commencement of Administrative Proceeding ("Commencement Notification")

was transmitted to the Respondent on December 14, 2000, setting a

deadline as of January 2, 2001, by which the Respondent could file a Response

to the Complaint.

On January 2, 2001, the

WIPO Center received a Response by e-mail and the hard copy was received on

January 10, 2001. On January 10, 2001 the WIPO Center confirmed the receipt

with an Acknowledgement of Receipt (Response).

Both, Complainant and Respondent

had requested a one-member panel. Consequently, the WIPO Center invited Bernhard

F. Meyer-Hauser to serve as Sole Panelist in this proceeding, and transmitted

to him a Statement of Acceptance and Request for Declaration of Impartiality

and Independence.

Having received the Statements

of Acceptance and Declarations of Impartiality and Independence from the Panelist,

the WIPO Center transmitted to the parties on February 8, 2001 a Notification

of Appointment of Administrative Panel and Projected Decision Date. The projected

decision date was February 22, 2001. On February 14, 2001 the WIPO Center informed

the parties by e-mail that the Panel decided not to consider further submissions

in the present case.

The Panel finds it was

properly constituted and appointed in accordance with the Policy, the Rules

and the WIPO Supplemental Rules.

4. Factual Background

Complainant is the holder

of the trademark "Nutella" in numerous countries all over the world.

As examples, Complainant supplied the following registration details:

- US trademark registration

no. 855,647, registered on August 27, 1968, (renewed on August 27, 1988);

- UK trademark registration

no. 864485, renewed on March 11, 1999;

- Canadian trademark

registration no. TMA157,098, registered on February 13, 1998;

- Italian trademark

registration no. 794464 renewed on November 29, 1999;

Respondent is the registered

owner of the Domain Names <mynutella.org> and <mynutella.net>, which

are at the center of this dispute.

5. Parties’ Contentions

A. Complainant

Complainant contends:

- that the Domain Names

are confusingly similar to the trademark "Nutella";

- that in no way Respondent

may not have been aware of the famous trademark "Nutella", and registration

may only have occurred in bad faith;

- that Respondent’s

project of a real-time yearbook and the use of the software Gnutella cannot

be a justification or a legitimate interest for using the Domain Names;

- that the alleged assignment

of the Domain Names to a company called Jeff Consulting, Inc., controlled by

Respondent, has not been recorded with Network Solutions;

- that Respondent has

no connection with the Gnutella software and that he registered at any rate

"mynutella" not "mygnutella";

- that Respondent’s

lawyers informed Complainant, that each Domain Name is on sale for approx. one

million dollar;

- that the request of

one million dollars for each Domain Name is the core message of the letter and

is evidence of bad faith. The very first WIPO decision under the Policy (D99-0001

World Wrestling Federation v. Bosman, January 14, 2000), found that "attempts

to sell the domain name for consideration in excess of [Respondent's] investment

of time and money relative to the domain name constitutes "use" of the domain

name in bad faith".

Consequently, Complainant

requires the transfer of the Domain Names registrations to Complainant.

B. Respondent

Respondent contents:

- that Complainant failed

to mention all evidence in support of its Complaint (e.g. a letter dated September

18, 2000, e-mails dated September 27, 2000, and phone messages of various telephone

conversations).

- there is a flagrant

difference between Complainant’s trademark and the Domain Names and, therefore,

Respondent’s Domain Names are not identical or confusingly similar to Complainant’s

trademark

- that Complainant has

already registered more than 20 domain names for the trademark Nutella according

to the pattern www.nutella-….(something), which is directly and easily to find

for Internet users looking for Complainant’s web site.

- that Respondent filed

the disputed Domain Names in order to use them for the development of his real-time

directory which is based on the Gnutella protocol. Gnutella is a name for a

technology and is neither a company nor a particular application. As the Gnutella

protocol is openly published, there are many interoperable "servants"

to choose, for example the Gnutella protocol is called Newtella, Gnotella, Gutella,

Ntella, Mtella. Gnutella protocol has tremendous potential for free exchange

of information and it is considered as a possible successor to Napster.

- that Respondent is

developing a real time yearbook (works on a peer to peer network) using Gnutella

protocol and therefore has a legitimate interest in using the Domain Name.

- that the Domain Names

were not filed to prevent the Complainant from using its name (Nutella) as a

domain name. The Complainant has many sites with this name, in consequence the

registration of the Domain Names cannot prevent the Complainant from reflecting

the trademark in a corresponding domain name.

- that Complainant has

not demonstrated the existence of any hindrance to its activities and so a legitimate

right in the disputed Domain Names.

- that the filing and

use of the Domain Names cannot disturb the Complainant’s commercial operations

under any circumstances since it operates in the food sector, specifically marketing

food products, while the Respondent is developing a real-time directory.

- that at no time Respondent

has attempted to attract Internet users to his site for profitable purposes.

- that Respondent did

not make any approach to sell or hire to third parties the Domain Names.

- that the amount requested

for the Domain Names was justified based on the investments of time and money

of Respondent to develop his real time yearbook.

- that Complainant and

its advisers have never replied to the Respondent’s letters, telephone calls

or e-mails.

- that Complainant has

challenged the existence of Jeff Consulting Inc., an American company created

the Respondent. These doubts and allegations are unjustified.

- that - if the Gnutella

protocol and all the interoperable servants harm Complainant’s business, it

would be impossible to use or file a domain name containing a name that has

already been filed.

All the above points demonstrate

that the Domain Name is not identical or similar to Complainant’s marks and

Respondent has a legitimate interest in the Domain Name and that Respondent

has acted in good faith.

6. Discussion and Findings

In a letter dated September

27, 2000, to Complainant, Respondent’s lawyers contended that the Domain Names

have been assigned to Jeff Consulting Inc. and that Respondent is not anymore

the holder of the Domain Names. Implicitly, he raises the question of Respondent’s

standing.

However, the contention

that the Domain Names have been assigned to Jeff Consulting, Inc., a company

allegedly controlled by Respondent, is in no way proven by Respondent. Moreover,

Respondent’s allegation of an assignment is not supported by the facts. Quite

to contrary, the Verification Response of NSI dated December 1, 2000,

confirmed that Respondent is and at that time was the actual holder of the Domain

Names. Furthermore, while mentioning the alleged assignment in its Response

in early January, Respondent failed to explicitly deny standing to be sued.

Thus, the Panel finds that the alleged transfer of the Domain Names from Respondent

to Jeff Consulting, Inc. does not have any impact on these proceedings whatsoever.

Paragraph 4(a) of the policy

directs that the Complainant must prove of the following:

(i) that the Domain

Name registered by the Respondent 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 Domain

Name has been registered and used in bad faith."

Identical or confusingly

similar Domain Name: Policy 4(a)(i)

The Domain Names at issue

are <mynutella.org> and <mynutella.net>. These Domain Names are

composed by the words "my" and "Nutella". "Nutella"

is - uncontested by the parties - a famous, widespread, well-known trademark,

held by Complainant. The word "Nutella" has a strong significance

as a trademark and a considerably important force of identification of the corresponding

products.

The combination of an existing

name (i.e. a trademark) with a possessive pronoun (such as "my" or

"your") does not basically change the significance of the existing

name as such in the combined expression. The added prefix "my" has,

both grammatically and phonetically, an inferior distinctive importance compared

to the principal component of the word; the term "my-Nutella" is clearly

dominated by its principal component "Nutella".

In addition, it is a popular

marketing strategy to combine the name of a product or service with the add-on

formative "my..." or "your...", to create a personal identification

of consumers with the product or service involved. This is especially common

for Internet sites which can be personalized by the users according to their

own interest and desire (e.g. "my.yahoo.com", my.netscape.com",

"My Excite"). The prefix "my" plus a famous trademark in

a domain name refers evidently to a special service in connection with that

trademark.

The Panel therefore cannot

support the contention that there is a "flagrant difference" between

the Domain Names and the trademark "Nutella", as maintained by Respondent.

From the point of view of ordinary consumers and Internet users - as well as

from an objective viewpoint -, the Domain Names are confusingly similar

to Complainant’s trademark and the distinctive element of the Domain Names and

Complainant’s trademark are identical.

Respondent's Rights or

Legitimate Interests in the Domain Name: Policy 4(a)(ii)

Respondent claims to have

a legitimate right or interest in the Domain Names because he is allegedly developing

a real-time directory using the Gnutella protocol.

Gnutella is an open, decentralized

peer-to-peer file sharing application which functions both as a search engine

and a file server. By this technology, users can search for and share files

of all types by interacting directly with one another.

Obviously, Gnutella and

Nutella are not the same words (even if they might be pronounced similarly in

certain languages). Each of these words has a different individualizing meaning

for different products. Since words are not generally verbalized on the Internet,

the written form of a domain name is relevant as to the impression and perception

of Internet users. In the written form, "Gnutella" and "mynutella" are clearly

different."

Computer programmers may

have a factual interest in identifying their programs as Gnutella-based programs.

However, in order to characterize his project, Respondent could either use the

word "Gnutella" or another distinctive modification of that word (such

as the examples enumerated by Respondent). But it is not justified or legitimate

to associate the name and trademark "Nutella" which is a famous product

with a similar name instead. The use of the Gnutella technology does not create

a legitimate interest in respect of the Domain Names in the sense of

the Policy.

As Respondent agrees, Gnutella

is not a trademark nor a company name, but a designation of a technology. It

has, therefore, a lower level of legal protection than a registered trademark.

In addition, the Panel

notes that Respondent’s contention that the Gnutella technology may be the successor

of Napster is not a very convincing argument to support Respondent’s position.

Using Gnutella technology does neither create a right nor a legitimate

interest of Respondent in the use of the trademark "Nutella".

Domain Name Registered

and Used in Bad Faith: Policy 4(a)(iii)

a. Offer to sale the

Domain Names

According to the Policy

Paragraph 4(b)(i), the following circumstance (among others) is deemed to provide

evidence of bad faith in registering and using the Domain Names:

"(i) circumstances

indicating that you [Respondent] have registered or you [Respondent] have 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 trade mark or service mark, or to a competitor of that Complainant, for

valuable consideration in excess of your documented out-of-pocket costs directly

related to the Domain Name.

In the letter dated September

27, 2000, Respondent’s representatives wrote:

"Mon client semble

cependant prêt à vendre ces deux noms de domaines dans le cadre

d’une valorisation équitable qui devra tenir compte du travail déjà

opéré, des investissements, de l’utilisation, de l’usage de ces

noms deux noms domaine. Compte tenu de l’ensemble de ces éléments,

nous estimons le prix de chacun des noms de domaine à environ un million

de dollars."

Which may be translated

as follows:

"However, my client

seem ready to sell the two domain names if fairly valued, taking into account

the work already performed, the investments, the utilization, the use of the

two domain names. Considering all these elements we estimate the prize for each

of the domain names to approximately one million dollars.""

This is a clear indication

of an intent to sell the two Domain Names for approximately USD one million

each.

In connection with the

adequacy of this sales prize both parties have quoted the Administrative Panel

Decision World Wrestling Federation v. Bosnan (WIPO Case No. D1999-0001).

The Panel of that decision found, in accordance with the Policy, that the offer

to sell a Domain Name "for valuable consideration in excess of any out-of-pocket

costs directly related to the domain name" constitutes a bad faith use.

The consideration of the "investment of time and money" for determination

of the value of a domain name was not mentioned in the Panel’s considerations,

and even if it were, the Panel sees no evidence for the alleged equivalent costs

of Respondent. The amount of USD 1 Million seems clearly exaggerated.

Respondent’s contention

that he did not offer the Domain Names to third parties is not relevant in this

context. He made an offer to Complainant, which is sufficient evidence for bad

faith according to the Policy.

b. Attracting Internet

users by creating a likelihood of confusion

Paragraph 4(b)(iv) sets

forth another circumstance, which is to be considered as evidence of a registration

and use of a domain name in bad faith:

"(iv) by using

the Domain Name, you [Respondent] have intentionally attempted to attract, for

commercial gain, Internet users to your web site or other on-line location,

by creating a likelihood of confusion with the Complainant's mark as to the

source, sponsorship, affiliation, or endorsement of your web site or location

or of a product or service on your web site or your location."

The Panel concurs with

Complainant’s statement that it is inconceivable Respondent was not aware of

the trademark "Nutella" when registering the Domain Names. By intentionally

choosing the famous name and trademark "Nutella" (plus the prefix

"my") to denominate his real-time yearbook project, he at least accepted

the result that the Domain Names are associated with Complainant’s marks. He

also accepted the risk that Internet users will be attracted to Respondent’s

site by Complainant’s famous name.

It is irrelevant for the

Panel that Complainant and Respondent seem to operate in different fields of

business. An Internet user, clicking on a link to the Internet site "mynutella.org

/.net" expects a web Site of Complainant and not a site relating to Respondent’s

real-time yearbook.

In the light of the above,

the Panel finds that the registration and the use of the Domain Names by Respondent

was not carried out in good faith.

7. Decision

In view of the circumstances

and facts discussed above, the Panelist decides that the disputed Domain Names

are confusingly similar to the registered trade mark in which the Complainant

has rights, that the Respondent has no rights or legitimate interests in respect

of the Domain Names, and that the Respondent's Domain Names has been registered

and are being used in bad faith.

Accordingly, pursuant to

paragraph 4(i) of the Policy, the Panelist requires that the disputed Domain

Names:

<mynutella.org>

and

<mynutella.net>

shall be transferred to

the Complainant.

Bernhard

F. Meyer-Hauser

Sole Panelist

Dated: February

22, 2001

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