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

WIPO Case No. D2002-0395

Outcome
Transfer
Domain names
nutellamania.com
Complainant
Ferrero S.p.A.
Respondent
Publinord S.r.l.
Panelist
Lodigiani
Decided
09 Jul 2002
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2002/d2002-0395.html

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Ferrero

S.p.A. v. Publinord S.r.l.

Case

No. D2002-0395

1. The Parties

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.

2. The Domain Name and

Registrar

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.

3. Procedural History

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.

4. Factual Background

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.

5. Parties’ Contentions

A. Complainant

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:

"The domain name "nutellamania.com"

is confusingly similar with the trademark NUTELLA; the product NUTELLA is so

famous that it has become a cultural "myth" throughout the world. (...) Complainant

prevailed in a parallel procedure against the owner of the domain name nutellaparty.com

(...) in a case which seems quite similar to this one. 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 Complainant also alleges

that the Respondent has no rights or legitimate interests in respect of the domain

name that is the subject of the Complaint because: "(i) there is no evidence

of the Respondent's 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; 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, trade name 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 of a non-commercial fair use".

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.

B. Respondent

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.

6. Discussion and Findings

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.

7. Decision

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

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