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Ferrero S.p.A. v. Fistagi S.r.l.

WIPO Case No. D2001-0262

Outcome
Transfer
Domain names
kinderferrero.com
Complainant
Ferrero S.p.A.
Respondent
Fistagi S.r.l.
Panel
Andrea Mondini, Anna Carabelli, Fortin
Decided
05 Jun 2001
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0262.html

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Ferrero

S.p.A. v. Fistagi S.r.l.

Case No.

D2001-0262

1. The Parties

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.

2. The Domain Name

and the Registrar

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.

3. Procedural History

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.

4. Factual Background

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.

5. Parties' Contentions

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.

6. Discussion and

Findings

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.

Identity or Confusing

Similarity

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.

Legitimate Rights or

Interests

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.

Registration and Use

in Bad Faith

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.

7. Decision

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

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