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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ferrero S.p.A. v. Dante Ferrarini
Case No. D2006-1163
1. The Parties
The Complainant is Ferrero S.p.A., of Italy, represented by Studio Barbero, Italy.
The Respondent is Dante Ferrarini, United States of America.
2. The Domain Name and Registrar
The disputed domain name <ilovenutella.com> is registered with Go Daddy Software.
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2006. On September 12, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On September 13, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
3.2 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 21, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 11, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2006.
3.3 The Center appointed Mary Vitoria, Q.C. as the Sole Panelist in this matter on November 10, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
3.4 The language of the proceeding is English.
4. Factual Background
4.1 The Complainant is Ferrero S.p.A. which was founded in 1946 in Alba, north-west Italy by Pietro Ferrero. It carries on business as a manufacturer and supplier of sweets and confectionery products. In 1956 it opened a large production plant in Germany followed a few years later by one in France. Thereafter it expanded rapidly in Europe, and established trading companies and production plants in Belgium, Holland, Austria, Switzerland, Sweden, the United Kingdom, Ireland and Spain. Over the years, plants and several trading companies have been set up in North and South America, in South East Asia, Australia and more recently in Eastern Europe.
4.2 One of its products is a spreadable peanut butter paste which, since 1964, has been sold under the brand name NUTELLA. NUTELLA was first imported from Italy into the U.S in 1983. The popularity of NUTELLA grew steadily over the next 10 years, and demand became so strong that the Complainant decided to build a plant in the U.S., in Somerset, NJ. Since then, Nutella has been sold in the peanut butter aisles in grocery stores, warehouse clubs such as Costco and BJ’s and mass merchandisers such as Walmart all across the United States. NUTELLA is marketed in most countries of the world. The volume of sales of NUTELLA has doubled in the years 1995 to 2005, and has achieved a total amount of over 2 millions of quintals.
4.3 Goods under the trademark NUTELLA have been extensively advertised in most of the countries of the world and the trademark has been supported by intensive mass-market advertising campaigns world wide. Ferrero spent more than Euro 75,000,000 last year to solely promote its trademark NUTELLA. In particular, in the U.S. the Complainant sponsored, for example, the famous American NBA basket-ball player, Kobe Bryant in 2002-2003.
4.4 The Complainant is the registered owner of the following trademark registrations and has regularly used the trademark since 1964:
- Italian registration NUTELLA (word mark) n. 164196 filed on October 10, 1963 and registered on March 17, 1964 in class 30
- U.S registration NUTELLA (word mark) n. 855647 filed on November 18, 1966 and registered on August 27, 1968 in class 29
- U.S registration NUTELLA (logo) n. 1296656 filed on April 1, 1983 and registered on September 18, 1984 in class 30
- UK registration NUTELLA (word mark) n. 864485 filed on May 20, 1964 and registered on March 25, 1965 in class 30
Copies of these registrations were made available to the Panel as Annex 3 to the Complaint. Ferrero S.p.A. is also the owner of over 350 trademark registrations all over the world consisting of or comprising the sign NUTELLA.
4.5 The Complainant has also registered and is presently using a number of domain name consisting of or comprising the trademark NUTELLA such as <nutella.it>, <nutella-party.it>, <nutella-team.it>, <nutella-entertainment.it>, <nutellaparty.it>, <nutellateam.it>, <nutella.net>, <nutella.com>, <mynutella.org>, <mynutella.net>, <nutellaparty.com>, <nutella.biz>, <nutella.info>, <nutella-lait.com>, <nutella-lait.net>, <nutella-lait.org>, <nutellatoast.com>, <mynutella.com>, <nutella.us>, <nutellapoint.it>, <nutellashop.it>, <nutella.tv>, <mynutella.it>, <my-nutella.it>, <nutella.eu>, <nutella.ca>, <nutellausa.com>, <nutellafootball.de>, <nutellasoccerservice.de>, <nutella.de>, <nutella.fr>, <nutella.tm.fr>, <nutellaferrero.com>, <nutella.bz> and others.
4.6 The Respondent is an individual living in the United States. The Respondent registered the disputed domain name <ilovenutella.com> on June 21, 2004, without the authorization of the Complainant.
4.7 At the date of the Complaint the domain name was linked to a webpage which stated that the domain name was for sale. The webpage is set out in the Complaint. Internet users were invited to click on the email address and send an email with the offer to an Internet provider called Metavera. On the page corresponding to <ilovenutella.com> some of the services of the registrar Go Daddy - namely the domain name registration services and the hosting services - were advertised with two large banners, filling over one fourth of the page. In addition, on the left of the page there were a number of “sponsored links” (which varied according to the country the web page was accessed from) advertising a number of different services. Such a “sponsored link” will typically generate revenues for the registrar and/or for the domain name holder.
4.8 The Complainant’s authorized representative instructed a third party (a web designer company) to act on its behalf in contacting the Respondent in order to ascertain the purchase price of the domain name. The fiduciary third party contacted the Respondent by email on April 12, 2006, indicating that it wished to purchase the domain name. The Respondent replied by email, stating that he had originally bought the disputed domain name with a view to approaching the Complainant and suggested some form of collaboration with the fiduciary third party. Following further contact between the fiduciary third party and the Respondent, on May 22, 2006, the Respondent sent an email to the fiduciary third party to which there was attached a formal proposal on the letter headed paper of the Respondent’s company Kosa Minore Creative LLC which is based at the same address declared for the Registrant of <ilovenutella.com> and of which the Respondent is “executive creative director”. The domain name <ilovenutella.com> was stated to be for sale at a flat fee of Euro 28,000 and the domain name <ilovenutella.co.uk> was also offered for sale at a price of Euro 4,000 but with the clear indication that this price was conditional on the purchase of both domain names together.
4.9 On May 31, 2006, the Complainant’s authorized representative sent a cease and desist letter requesting the Respondent immediately to cease any use of the domain names <ilovenutella.com> and <ilovenutella.co.uk>; to confirm in writing that the Respondent would be available promptly to assign both the domain names to the Complainant and to sign any additional document that might be needed to secure the transfer; and to undertake not to register and/or use in any other country the designation NUTELLA as a trademark, as a domain name, as a trade name or, more generally, as a distinctive sign. The letter was sent via registered mail to the address declared on the WHOIS. The Respondent did not provide any response to the Complainant’s authorized representative. The letter was returned to the sender unclaimed on August 2, 2006.
5. Parties’ Contentions
5.1 The Complainant asserts that the disputed domain name is confusingly similar to the trademark NUTELLA in which the Complainant has rights. It submits that it is well established, that the addition of generic words to a trademark is insufficient in itself to remove the confusing similarity between the trademark and the domain name. It refers among many others decisions to F. Hoffmann-La Roche AG v. Ric Deleon, WIPO Case No. D2006-0135 concerning the domain name <order-xanax-alprazolam-valium-diazepam-online.com> where the Panel found that:
“[T]he domain name in this case is similar to the Complainant’s trademark because it uses the precise trademark name which has no general meaning and two generic words in common usage. Internet users probably have every right to expect that, when they select the disputed domain name, they will find themselves looking at a site of someone licensed by the Complainant to use its VALIUM trademark. This is not the case. For that reason, and in line with other WIPO UDRP cases, the Panel [concluded] that the domain name is confusingly similar to the Complainant’s trademark.”
5.2 The Complainant asserts that the addition of “I” and “love” to the trademark NUTELLA is likewise insufficient to prevent confusing similarity as stated in Hachette Filipacchi Presse v. Shi Cheng, WIPO Case No. D2005-1240, where the Panel stated that “the addition of the words “ilove” to the Complainant’s “ELLE” mark is not sufficient to distinguish it from the Complainant’s mark, and that the subject domain name is confusingly similar therewith” (see also Revlon Consumer Products Corporation v. Brandy Farris, WIPO Case No. D2003-0291). The Complainant points out that in Ferrero S.p.A. v. Publinord S.r.l., WIPO Case No. D2002-0395 the Panel shared its view 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” concluding that since MANIA is not distinctive per se, NUTELLA and NUTELLAMANIA should be regarded as confusingly similar. The Complainant further asserts that the words “I” and “love” are English terms which are obviously easily understood in the United States of America where the Respondent is located. The Complainant submits that the domain name <ilovenutella.com> is confusingly similar, since the top level “.com” is merely incidental to use on the Internet of the prior registered trademark in which the Complainant has rights.
5.3 The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the domain name, according to paragraph 4(a)(ii) of the Policy. It notes that the Respondent has not provided the Complainant with any evidence of its use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute. The Complainant states that, on information and belief, the Respondent is not commonly known by the domain name as an individual, business or other organisation nor is he commonly known under the name NUTELLA or any similar term.
5.4 The Complainant also asserts that the use of the domain name via a redirection to the web page currently on line where services of third parties are advertised and sponsored links are published is not to be considered a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain, in view of the fact that the Respondent and/or the Registrar gain for example, from the click-through commissions on the sponsored links. To support this assertion, Complainant refers to in PC Mall, Inc. v. Admin Billing, WIPO Case No. D2004-0692. The Complainant states that the Respondent is not a licensee nor an authorized agent of the Complainant nor in any other way authorized to use the Complainant’s trademark NUTELLA. It refers to Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134 where it was stated that “the mere registration, or earlier registration, does not establish rights or legitimate interests in the disputed domain name” and further refers to National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118; and N.C.P. Marketing Group, Inc. v. Entredomains, WIPO Case No. D2000-0387.
5.5 The Complainant submits that on the issue of rights or legitimate interest, the burden of proof lies on the Complainant but points out that 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, it submits that it is sufficient that Complainant shows a prima facie evidence in order to shift the burden of proof onto the Respondent. It relies in support on Anti Flirt S.A. and Mr. Jacques Amsellem v. WCVC, WIPO Case No. D2000-1553 and Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467. However, the Complainant submits that in the present case it can provide evidence that the Respondent had no legitimate interest in respect of the domain names since the Respondent had openly declared in an email dated April 12, 2006, that he had already planned to approach Ferrero and to sell the domain name.
5.6 The Complainant asserts that the domain name was registered and is being used in bad faith. As to the Respondent’s bad faith at the time of registration, the Complainant refers to the statement of the Respondent in his email dated April 12, 2006 “The reason I originally bought the nutella URL was in fact, because I had a similar idea to yours: to approach Ferrero”.
5.7 The Complainant also asserts that in light of the fact that the trademark NUTELLA is certainly well known and it was and is intensively used in the United States of America where the Respondent is presently based (despite his Italian origin, which is relevant anyway as Italy is the country where Nutella was first introduced), the Respondent could not have possibly ignored the existence of the trademark registration, confusingly similar to the disputed domain name. The Complainant submits that in Ferrero S.p.A. v. Mr. Jean-Franзois Legendre, WIPO Case No. D2000-1534 it was held “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”. The Complainant also points out that the trademark NUTELLA has been recognised to be a well known trademark in the decisions Ferrero S.p.A v. Mario Pisano, WIPO Case No. D2000-1794; Ferrero S.p.A. v. Publinord S.r.l., WIPO Case No. D2002-0395; Ferrero S.p.A. v. Alexander Albert W. Gore, WIPO Case No. D2003-0513 and Ferrero S.p.A. v. Jacques Stade, WIPO Case No. DBZ2003-0002.
5.8 The Complainant asserts that with reference to the use of the domain name in bad faith the disputed domain name is clearly offered for sale on the website linked to “ilovenutella.com” and points out that the Panel in Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044 decided that an offer to sell generally was sufficient evidence for a finding of bad faith, and that likewise offering a domain name for sale on a website constitutes an offer to sell to the Complainant, the Complainant’s competitors and others (VENTURUM GmbH v. Coventry Investments, Ltd., DomainCollection Inc., WIPO Case No. D2003-0405).
5.9 The Complainant draws attention to the fact that in the correspondence exchanged with the Respondent and the fiduciary third party aimed at ascertaining the actual amount requested, the Respondent asked for the transfer of <ilovenutella.com> a consideration of Euro 28,000. The Complainant submits that this is a circumstance indicating without doubt that the domain name was registered primarily for the purpose of selling to the Complainant, for valuable consideration well in excess of the Respondent’s out-of-pocket costs directly related to the domain name. In view of the above, the Complainant deems paragraph 4(b)(i) of the Policy applicable to the present case.
5.10 The Complainant points out moreover, that the disputed domain name is currently linked to a web page where some banners are published and Internet users can find a number of sponsored links to various websites. As a result, it says, the Respondent may earn commission whenever an Internet user visits the website and clicks on one of the sponsored links.
5.11 The Complainant submits that such conduct where a Respondent has sought or realized commercial gain has been taken as an indication of the Respondent’s bad faith in many previous UDRP decisions such as Zinsser Co. Inc., Zinsser Brands, Co. v. Henry Tsung, WIPO Case No. D2006-0413; Volvo Trademark Holding AB v. Unasi, Inc. WIPO Case No. D2005-0556; Cox Radio, Inc. v. Domain Administrator; WIPO Case No. D2006-0387 Gianfranco Ferre’ S.p.A. v. Unasi Inc., WIPO Case No. D2005-0622; L’Oreal, Biotherm, Lancome Parfums et Beautй & Cie v. Unasi, Inc., WIPO Case No. D2005-0623, Scania CV AB (Publ) v. Unaci, Inc. WIPO Case No. D2005-0585; Volvo Trademark Holding AB v. Michele Dinoia, WIPO Case No. D2004-0911; Claire’s Stores, Inc., Claire’s Boutiques, Inc., CBI Distributing Corp. v. La Porte Holdings, WIPO Case No.D2005-0589; Members Equity PTY Limited v. Unasi Management Inc., WIPO Case No. D2005-0383. Therefore, the Complainant deems paragraph 4(b)(iv) of the Policy also applicable to the present case.
5.12 The Complainant points out that the Respondent has also registered <ilovenutella.co.uk> and has voluntarily offered this domain name for sale together with <ilovenutella.com>. The Complainant acknowledges that according to the consensus view cited in the WIPO Overview of WIPO Panel Views on Selected UDRP on what constitutes a pattern of conduct of preventing a trade or service mark owner from reflecting the mark in a corresponding domain name, “the registration of two domain names in the same case is not generally sufficient to show a pattern” see among others Home Interiors & Gifts, Inc. v. Home Interiors WIPO Case No. D2000-0010 and Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046. The Complainant states that it agrees with the consensus view to the extent that the registration of two domain names is generally not sufficient to establish the pattern needed to directly apply also paragraph 4(b)(ii) of the Policy but submits that in the present case it should at least be considered as an additional circumstance evidencing bad faith in view of the voluntary offer for sale of the second identical domain name and the fact that the Respondent is thus preventing the owner of the trademark from registering the sign ilovenutella as a domain name in another key market, besides blocking the most relevant gTLD.
5.13 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 According to Paragraph 15(a) of the Rules, the Panel must decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
6.2 In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements are satisfied:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 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.
6.3 Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies on the Complainant. At the same time, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel may draw such inferences therefrom, as it considers appropriate.
6.4 Since the Respondent failed to respond to the Complaint within the stipulated time, the Panel assumes that the Respondent admits, and does not contest, all the facts asserted by the Complainant in the Complaint. Upon careful review of the evidential materials submitted by the Complainant to support its contentions, the Panel finds the following:
A. Identical or Confusingly Similar
6.5 The domain name <ilovenutella.com> is confusingly similar to the NUTELLA trademark in which the Complainant has rights.
6.6 The word NUTELLA is an invented word in the English language. The Complainant submitted that the addition of generic words to a trademark is insufficient in itself to remove any confusing similarity between the trademark and the domain name and relied on F. Hoffmann-La Roche AG v Ric Deleon, WIPO Case No. D2006-0135 in support. The addition of the generic top-level domain (gTLD) name “.com” is without legal significance since use of a gTLD is required of domain name registrants, “.com” is one of only several such gTLDs, and “.com” does not serve to identify a specific service provider or enterprise as a source of goods or services.
6.7 The Complainant also submitted that the addition of “I” and “love” to the trademark NUTELLA is likewise insufficient to prevent confusing similarity and relied on Hachette Filipacchi Presse v. Shi Sen, WIPO Case No. D2005-1240 and on Revlon Consumer Prodcuts Corporation v. Brandy Farris, WIPO Case No. D2003-0291. The addition of the words “I love” to a trademark or brand name (“X”) to yield a slogan “I love X” is a well established advertising practice. The purpose of these words in such slogans is to reinforce the perception of the average consumer that “X” is the trademark or brand name and to evoke favourable feelings in relation it. As was stated in the Revlon case, supra,
“The disputed domain names, <loverevlon.com> and <iloverevlon.com>, incorporate the REVLON mark in its entirety. Prior panels have recognized that incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to Complainant’s mark. Furthermore, addition of a generic word such as “love” or “I” does not distinguish the domain names sufficiently to avoid confusion. See, e.g., Nokia Corporation v. Nokiagirls.com aka IBCC, WIPO Case No. D2000-0102.”
The Panel is likewise of the view that, in the present case, the addition of the words “I” and “love”, albeit in lower case, do not distinguish the disputed domain name sufficiently to avoid confusion.
6.8 The Panel accepts the Complainant’s submissions and finds for the Complainant on the first element.
B. Rights or Legitimate Interests
6.9 The burden of proof is on the Complainant to establish that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name. However, the Panel accepts that it is sufficient, as submitted by the Complainant, for the Complainant to show a prima facie case in order to shift the burden to the Respondent (see Anti Flirt S.A. and Mr. Jacques Amsellen v. WCVC, WIPO Case No. D2000-1553 and Intocast AG v Lee Daeyoon, WIPO Case No. D2000-1467, cited by the Complainant.) The Respondent has not filed any response to the Complaint. Consequently, the Panel accepts all reasonable inferences and allegations included in the Complaint summarised herein as true.
6.10 The Panel finds that the Complainant has made out a prima facie case that the Respondent at relevant times lacked rights or legitimate interests in the domain name in dispute. The Panel notes, inter alia, the Complainant’s statement that the Respondent does not appear ever been known by the name NUTELLA or the domain name in dispute and that he has not made legitimate non-commercial or fair use of the domain names in dispute. From the correspondence annexed to the Complaint, the Respondent appears to trade as a graphic designer and art director of promotional broadcasts and motion graphic works. The word nutella is an invented word and is not in use in the area of trade in which the respondent practises. The Respondent is not a licensee or an authorised agent of the Complainant nor is he authorised in anyway to use the Complainant’s trademark NUTELLA.
6.11 In addition, the Complainant has drawn attention to the fact that the Respondent had openly declared in correspondence (annexed to the Complaint) that he had bought the domain name in dispute in order to approach the Complainant and sell the disputed domain name. This demonstrates conduct contrary to legitimate business or to legitimate non-commercial or fair use of the domain name in dispute.
6.12 The Panel accepts the Complainant’s submissions that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name. The Panel finds for the Complainant on the second element
C. Registered and Used in Bad Faith
6.13 The Complainant submits that bad faith is shown by the following:
(i) The Respondent’s statement to a third party acting on behalf of the Complainant in the correspondence annexed to the Complaint: “The reason I originally bought the nutella url was in fact, because I had a similar idea to yours: to approach Ferrero”;
(ii) the trademark NUTELLA is well known and was and is intensively used in the U.S. where the Respondent is based and the Respondent must have been aware of the existence of the trademark. The Complainant relies, inter alia, on previous WIPO decisions involving the NUTELLA trademark to establish that NUTELLA is well known as a trademark;
(iii) the disputed domain name has been offered for sale on a website linked to <ilovenutella.com>;
(iv) in correspondence with the above-mentioned third party the Respondent asked for a consideration of Euros 28,000 to transfer the disputed domain name to the third party;
(v) that the consideration asked for was well in excess of the Respondent’s out-of-pocket costs directly related to the domain name;
(vi) the disputed domain name is linked to a web page containing sponsored links to various web sites with the result that the Respondent can earn commission whenever an internet user visits the web site and clicks on one of the sponsored links;
(vii) the Respondent has also registered <ilovenutella.co.uk> as a domain name and offered it for sale alongside of <ilovenutella.com>.
6.14 The Panel accepts the Complainant’s assertion that NUTELLA is a well-known mark. The trademark has been used since 1964 in Italy and from about 1983 in the U.S. The demand in the U.S. was so strong that a manufacturing plant was built in Somerset, New Jersey. NUTELLA is sold in grocery stores, warehouse clubs such as Costco and through mass merchandisers such as Walmart. Furthermore, the Complainant has maintained its NUTELLA trademarks in many countries since the early 1960’s. The Panel considers that such maintenance of its mark by the Complainant is not a futile exercise. Sales of NUTELLA are enormous on a world-wide scale and the trademark is supported by a very large advertising spend. In particular, the NUTELLA product was the subject of a high-profile advertising/sponsorship campaign in the United States in 2002 to 2003, which is the year preceding the date of the Respondent’s registration of the disputed domain name.
6.15 The Respondent has stated openly in correspondence that he bought the disputed domain name in order to approach Ferrero, thereby admitting that not only was he aware of the existence of the NUTELLA trademark but also who owned it. Even in the absence of this admission, the Panel would have been prepared to infer that the Respondent was in all probability aware of the trademark when he registered the disputed domain name. In the first place, the word NUTELLA is an invented word and it is unlikely in the extreme that the Respondent could have invented it a second time independently. In the second place, the Respondent is in or connected with the business of advertising and part of his expertise in this capacity would likely involve plausible familiarity with well-known marks in use in the U.S.
6.16 The Panel finds that the only possible reason for the Respondent to register the word NUTELLA in the disputed domain name was that he hoped to gain from that reputation and goodwill enjoyed by the mark in some way. The Panel concludes that the Respondent registered the disputed domain name in bad faith.
6.17 Paragraph 4(a)(iii) of the Policy requires that the Respondent must both register and use the domain name in question in bad faith. See, e.g., WIPO Case No. D1999-0001 World Wrestling Federation Entertainment, Inc. v. Michael Bosman; WIPO Case No. D2000-0003 Telstra Corporation Ltd v. Nuclear Marshmallows. The question thus arises as to whether the Respondent, having registered the disputed domain name in bad faith, has also used it in bad faith.
6.18 Paragraph 4(b) of the Policy provides some guidance on this question. It provides:
“b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you 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 trademark 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; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you 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 location.”
6.19 Sub-paragraphs (ii) and (iii) are not applicable. As far as sub-paragraph (i) is concerned, there is direct evidence as to the Respondent’s purpose in registering the disputed domain name and of offering to sell it to a third party for a consideration in excess of his out-of-pocket expenses directly related to the domain name. Although the final offer for sale was made by Kosa Minore Creative LLC, the Panel is prepared to infer that this company was in all probability merely being used by the Respondent as the vehicle through which he would effect the sale. The disputed domain name was registered in the Respondent’s name, he personally carried on the negotiations with the third party and he is identified as the “executive creative director” of Kosa Minore Creative LLC. Indeed, he is the only individual identified on that company’s business stationery.
6.20 In addition, the mark NUTELLA has no natural connection with the Respondent or his business. The disputed domain name is clearly offered for sale on the website linked to <ilovenutella.com>. For the reasons set out in Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044 an offer to sell the domain name may in certain circumstances be sufficient evidence for a finding of bad faith and offering the disputed domain name for sale on the website constitutes an open offer to sell to any purchaser willing to pay the price. In the present case, as distinct from Educational Testing Service, there is also the additional fact of the Respondent’s statement of intent in relation to the acquisition of the disputed domain name for the purpose of approaching the Complainant. Accordingly, the Panel concludes that subparagraph (i) is applicable to the present case.
6.21 As far as sub-paragraph (iv) is concerned, it would be difficult, perhaps impossible, for Respondent to use the disputed domain name as the name of any business, product or service for which it would be commercially useful without violating Complainant’s rights. Internet users could, for example, easily be confused into thinking that the Respondent’s website was in some way sponsored or endorsed by the Complainant. Moreover, the Respondent is able to benefit from such confusion because such users, once they have accessed the Respondent’s website, could make use of the sponsored links. The Panel concludes that subparagraph (iv) is also applicable to the present case.
6.22 The Panel notes the Complainant’s submission that, in the present case, whilst the requirement of paragraph 4(b)(ii) of the Policy, do not apply directly, the voluntary offer for sale of the domain name <ilovenutella.co.uk> and the fact that the Respondent is thus preventing the Complainant from registering the sign “ilovenutella” as a domain name in another key market, besides blocking the most relevant gTLD should be taken as an additional circumstance evidencing bad faith. The Panel notes, however, that there is no evidence from the Complainant of its desire to register or use “ilovenutella” either as a trademark or as a domain name, despite the fact that it is the owner of many domain names incorporating the word NUTELLA, and cannot, therefore, draw the conclusion that it is being prevented from registering the domain name <ilovenutella.co.uk>.
6.23 However, for the reasons given above, the Panel concludes that the disputed domain name was registered and is being used in bad faith. The Panel finds for the Complainant on the third element.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <ilovenutella.com> be transferred to the Complainant.
Mary Vitoria, Q.C.
Dated: November 23, 2006