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WIPO Domain Name Decision: D2000-1794
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ADMINISTRATIVE PANEL DECISION
Ferrero S.p.A. v. Mario Pisano
Case No. D2000-1794
1. The Parties
The Complainant is Ferrero S.p.A., Via Maria Cristina 41, 10025 Pino Torinese (Italy)
The Respondent is Mario Pisano, Via Case Sparse Villanis, 12020 Bernezzo – Cuneo (Italy)
2. The Domain Name and Registrar
The domain name at issue is "nutellaparty.com" (Domain Name), which Domain Name is registered with Network Solutions Inc., Herdnon, Virginia, U.S.A. (NSI or the Registrar).
3. Procedural History
A Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the Policy), to the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the Rules) and to the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules), was submitted electronically to the WIPO Arbitration and Mediation Center (the Center) on December 22, 2000. The signed original with attachments was received by the Center on January 8, 2001.
On January 17, 2001, the Center transmitted to NSI a request for Registrar Verification in connection with this case. The following day, NSI confirmed that: (i) NSI is the Registrar of the Domain Name "nutellaparty.com"; (ii) the current registrant of the Domain Name is Mario Pisano; (iii) the administrative contact is Mario Pisano while the billing contact is Gianluca Tucci, both at CNNET s.r.l., Via Bra 9, 12100 Cuneo, Italy.
On January 17, 2001, the Center completed the Formal Requirements Compliance Checklist and on January 19 transmitted to the Respondent a Notification of Complaint and Commencement of Administrative Proceedings (Commencement Notification) electronically, by courier and fax. In the Commencement Notification the Center advised the Respondent that a response was due on February 7, 2001. On the same date the Commencement Notification was copied to Complainant and to ICANN and the Registrar.
On February 7, 2001, the Center received the Respondent’ response electronically. The signed original with attachments was received by the Center on February 19, 2001.
On February 12, 2001, the Center acknowledged receipt of the Response.
On March 9, 2001, the Center notified the parties that Ms. Anna Carabelli had been appointed as the panelist in this proceeding, indicating that, absent exceptional circumstances, the Administrative Panel is required to send its decision to the Center by March 23, 2001.
The Panelist has independently determined and agreed with the assessment of the Center that the Complaint formally complies with the requirements of the Policy, the Rules and the Supplemental Rules.
4. Factual Background
On the basis of the documents submitted by the parties the following facts can be established as agreed between the parties or insufficiently disputed.
The Complainant is and has been the owner of the trademark NUTELLA for many decades. In this connection the Complainant has provided a copy of a print out of a number of trademark registrations throughout the world mostly, but not exclusively, covering chocolate products and copies of the following certificates of trademark registration: (Attachments 1 to 5 bis to the Complaint):
Renewal of U.S Reg. No. 855,647
Renewal of U.K. Reg. No. 864,485
Renewal of Canadian Reg. No. 157,098
Renewal of Italian Reg. No. 794,464
Renewal of Italian Reg. No. 418,059
The filing of the first application for the Italian trademark registration dates back to 1963.
NUTELLA is an internationally well known and famous trademark, which fact is not denied or in any way objected to by the Respondent.
5. Parties’ Contentions
The Complainant contends that:
· the Respondent’s Domain Name is confusingly similar to Complainant’s NUTELLA registered and long used trademark and the association between the word NUTELLA and the word PARTY enhances the risk of confusion since the product NUTELLA is typically served during parties;
· NUTELLA is a famous trademark worldwide and there is no way that the Respondent may have not been aware of it when he registered the Domain Name also considering that the Respondent is located in the same area as the largest Italian factory of the Complainant manufacturing the NUTELLA products (which probably also is the largest industrial factory in the area);
· the Respondent has no right or legitimate interests in the Domain Name;
· the Domain Name has been registered and is being used in bad faith under paragraph 4b(i) of the Policy, as shown by letter sent by the Respondent’s attorney on November 17, 2000, (Attachment 6 to the Complaint) by which the Respondent accepted to transfer the Domain Name for a sum in excess of the reimbursement of the out-of-pocket expenses offered by the Complainant, amounting to 5 million Lira.
Consequently, the Complainant requests the transfer of the Domain Name.
The Respondent contends that:
· the Domain Name is a combination of the words nutella and party, which gives rise to an original expression with a distinguishing capacity. The Respondent admits that NUTELLA does in fact distinguish the Complainant’s product but if combined with the word "party" it defines an activity (i.e.: the act of organizing a party). The Respondent therefore denies any confusing similarity of the Domain Name with the Complainant’s trademark NUTELLA;
· when the Respondent registered the Domain Name (on September 30, 1999) the Complainant had not yet used or registered the word "nutellaparty" as a brand or as a domain name, since the relevant trademark application was filed by the Complainant in December 1999 only (Attachment 8 to the Complaint). Therefore, the Complainant cannot claim any prior trademark rights in the word nutellaparty;
· the Respondent has rights to and legitimate interests in the Domain Name since before notice of the dispute he had taken steps for the preparation to use the Domain Name to promote, through the Internet, the organization of fashion shows and beauty contests accompanied by parties based on Nutella. In this connection the Respondent has carried out negotiations with Mr. Dino Rossetti who in the late eighties/early nineties had organized fashion events and beauty shows (Attachments 5 to 9 to the Response). This circumstance is confirmed by a written statement by Mr. Rossetti (Attachment 9 to the Complaint) in which the latter maintains that he has been engaged in negotiations with the Respondent since October 1999;
· no bad faith registration or use of the Domain Name occurs in this case under none of the circumstances indicated in paragraph 4(b) of the Policy. In particular:
Nothing suggests that the Domain Name was registered by the Respondent primarily for the purpose of selling the Domain Name. The Complainant took the first step offering to purchase the Domain Name. The Respondent did not accept the sum offered by the Complainant since it did not compensate the Respondent’s activity carried out in connection with the registration of the Domain Name. In this connection the Respondent refers to the Panel decision in the case Manchester Airport PLC v. Club Club Limited ( WIPO D2000-0638), in that it states that "selling a domain name is not per se prohibited by the ICANN Policy";
Nothing suggests that the Respondent has registered the Domain Name to prevent the Complainant from reflecting its trademark in a corresponding domain name. In this connection the Respondent points out that the filing by the Complainant of the application for nutellaparty trademark registration occurred after the registration of the Domain Name and in any case a number of variations of nutellaparty domain names with different extensions (".com", ".org", ".net", etc.) are still available;
Nothing suggests that the Respondent registered the Domain Name for the purpose of disrupting the business of the Complainant. On the contrary, the intended use of the Domain Name (in connection with the organization of events accompanied by nutella parties) would have provided "added benefit" to the Complainant.
6. Discussion and findings
1. Under paragraph 4.(a) of the Policy, the Complainant must prove each of the following:
(i) the domain name in issue is identical or confusingly similar to the complainant’s trademark or service mark; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4.(b) of the Policy identifies in particular but without limitation four circumstances which for the purposes of paragraph 4.(a) shall be evidence of the registration and use of a domain name in bad faith, as follows:
(i) circumstances indicating that respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct;
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or on the on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
Paragraph 4.(c) sets out in particular but without limitation three circumstances which if proved by respondent, shall be evidence of the respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4.a(ii), namely:
(i) before any notice of the dispute to the respondent, the respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
(a) Identity or confusing similarity
The Domain Name is "nutellaparty.com". "NUTELLA" is a registered trademark of the Complainant. The Domain Name therefore consists of the Complainant’s trademark to which the general term "party" is added. The Panelist notices that in principle the general term "party" would be indeed a rather neutral addition which is not capable of distinguishing the Domain Name from the Complainant’s trademark which is incontestably the principal part of the Domain Name. In the view of the Panelist, however, in the case in hand the term "party" indeed enhances the risk of confusion with the Complainant’s trademark. The product NUTELLA, in fact, is typically associated with the term "party" not only because the product may be served at parties, but also in consideration of the extensive TV campaign run in the last few years by the Complainant (and widely known in Italy), specifically set in parties where the product NUTELLA is served.
The Panelist finds therefore that the Domain Name is confusingly similar to the numerous trademark registrations of the word "NUTELLA" held by the Complainant.
(b) Rights or legitimate interests
The Respondent has failed to establish a legitimate right or interest under paragraph 4c (ii) and (iii) in that there is no evidence nor even allegation that the Respondent is commonly known by the Domain Name or that he has a legitimate non commercial or fair use of the Domain Name. In addition, the Respondent is obviously not a licensee of the Complainant nor has he received any permission to use the Complainant’s trademark NUTELLA to which the Complainant incontestably owns prior rights (the filing of the relevant first trademark registration in Italy dates back to 1963 – see Attachment 5bis to the Complainant).
In the Panelist’s opinion, the Respondent has also failed to establish a legitimate right or interest under paragraph 4b(i).
The Respondent alleges an intention to use the Domain Name in connection with a bona fide offering of services (i.e.: the organization and promotion on the web of fashion events, shows and beauty contests accompanied by parties during which the NUTELLA product is served). To support such allegation the Respondent has submitted a written statement signed by Mr. Dino Rossetti who confirms to have been involved in negotiation with the Respondent since October 1999 for the realization of such project (Attachment 9 to the Response).
In the Panelist’s view the evidence provided by the Respondent is of low probative value and insufficient to overcome a prima facie finding of no legitimate right or interest in the spirit of paragraph 4c(i) of the Policy. The mere speculative idea for a bona fide business application of a domain name is not in fact sufficient under paragraph 4a(i) of the Policy (in this connection see Libro AG v. NA Global Link Limited – WIPO D2000-0186; Interep National Radio Sales Inc. v. Technical Staffing – WIPO D2000-0175; Sociйtй des Hotels Meridien SA v. United States of Moronica WIPO D2000-0405).
The document submitted by the Respondent merely indicates an interest of the Respondent to use the Domain Name in connection with events to be organized in co-operation with Mr. Rossetti, but does not show an even small monetary or intellectual investment in such venture and no other evidence has been provided by the Respondent such as business plans, correspondence, reports or other forms of evidence showing that the Respondent is engaged in any activity to use the Domain Name for a bona fide offering of goods or services.
In addition, the Panelist notices that: (i) negotiations alleged in Mr. Rossetti’s statement have not led to any positive action in more than a year -since October 1999; (ii) in his letter of November 17, 2000, (Attachment 12 to the Response) the Respondent’s authorized representative avv. Fabrizio Rivelli confirms that there is no actual use of the Domain Name in connection either with an active website or with any kind of product of service; and (iii) according to the information provided by the Respondent (Attachment 13 to the Response) the Respondent’s business activity has nothing to do with the alleged use of the Domain Name.
The Panelist therefore finds that the Respondent has no rights or legitimate interests in the Domain Name.
(c) Bad Faith
The Respondent denies bad faith under each of the circumstances indicated in paragraph 4(b) of the Policy, based on the arguments summarized in paragraph 5(b) here above.
As regards under paragraph 4b(i) of the Policy, the Panelist notices that Respondent’s reference to the decision in Manchaster Airport PLC v. Club Club Limited ( WIPO D2000-0638) has no relevance. In that decision, the Panel found in fact that "selling a domain name is not per se prohibited by the ICANN Policy … " but added that "Selling of domain names is prohibited … only if the other elements of the ICANN Policy are also violated, namely trademark infringement and lack of legitimate interest". Based on the findings under paragraphs 6(a) and (b) here above, citation of the above mentioned decision does not help the Respondent to substantiate its proposition.
The Panelist finds that at least factor (i) of paragraph 4(b) of the Policy applies in this case. In the view of the Panelist, in fact, the Respondent offered to sell the Domain Name to the Complainant for an amount far in excess of the out-of-pocket costs directly related to the Domain Name. The letter of November 17, 2000, sent by Respondent’s authorized representative avv. Fabrizio Revelli, amounts to such an offer. In this letter, in fact, the Respondent refused to transfer the Domain Name for the sum offered by the Complainant (250,000 Italian Lira) and equated a reasonable offer with the amount of 5,000,000 Lira which is incontestably far in excess of the Respondent’s documented out-of-pocket costs related to the Domain Name i.e.: 650,000 Italian Lira (see CNNET invoice submitted as Attachment 3 to the Response). No evidence of the additional costs allegedly incurred by the Respondent has been submitted by the Respondent.
In addition, the Panelist considers that, given the wide fame and reputation of the Complainant’s trademark NUTELLA (which the Respondent does not deny) there is no way that the Respondent, who lives in the province where the largest Italian factory of the Complainant manufacturing the NUTELLA product is located, may not have been aware of the Complainant’s trademark when he registered the Domain Name, and this suggests opportunistic bad faith (Veuve Cliquot Ponsardin v. The Polygenix Group Co. WIPO D2000-00163; Parfums Christian Dior v. Javier Garcia WIPO D2000-0226).
Therefore, the Panelist concludes that the Domain Name has been registered and used in bad faith.
The Panelist decides that: (a) the Domain Name "nutellaparty.com" registered by the Respondent is confusingly similar to the NUTELLA trademarks owned by the Complainant (b) the Respondent has no rights or legitimate interests in respect of the Domain Name "nutellaparty.com"; and (c) the Domain Name "nutellaparty.com" has been registered and is being used in bad faith by the Respondent.
Accordingly, the Panelist requires that the Domain Name "nutellaparty.com" be transferred to the Complainant.
Dated: March 23, 2001