WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ferrero S.p.A. v. Garnik MOURADIAN, The Original Kabob Factory, Inc.

Case No. D2021-3772

1. The Parties

The Complainant is Ferrero S.p.A., Italy, represented by Studio Barbero, Italy.

The Respondent is Garnik MOURADIAN, The Original Kabob Factory, Inc., United States of America (“United States”).

2. The Domain Names and Registrar

The disputed domain names <nutellamuffin.com>, <nutellaponchick.com>, <nutellaponchik.com> (“Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2021. On November 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 11, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 17, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 18, 2021.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2022.

The Center appointed Piotr Nowaczyk as the sole panelist in this matter on January 26, 2022. 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.

4. Factual Background

Ferrero S.p.A., the Complainant in the present proceedings, is a chocolate producer and confectionery company. The Complainant promotes and sells its products worldwide in over 160 countries, including the United States. One of the Complainant’s signature products is NUTELLA, a hazelnut-based cream. It was first introduced in Italy in 1946 and imported into the United States in 1983. On September 15, 2020, the Complainant announced the introduction of its first bakery product, the Nutella Muffin.

The Complainant is the owner of numerous NUTELLA trademark registrations, including:

- United States Trademark Registration NUTELLA No. 4799778 registered on August 25, 2015;
- European Union Trademark Registration NUTELLA No. 009316878 registered on January 27, 2011;
- International Trademark Registration NUTELLA No. 1073241 registered on January 27, 2011.

The Complainant also owns numerous domain names incorporating its NUTELLA trademark, including the domain name <nutella.com>.

The Respondent registered the Domain Names on November 13, 2020.

In accordance with the screenshots attached to the Complaint, at the time of drafting the Complaint, the Domain Names were being redirected to the domain name <muffincanstopus.com> which resolved to an inactive website. Previously, the Domain Names had been redirected to the domain name <muffin.delivery>, resolving to a website promoting the commercial activity of the online store “Muffin Can Stop Us”. This store specialized in the sale and delivery of various products, including sweets.

On April 21, 2021, April 28, 2021, May 10, 2021, and May 21, 2021, the Complainant sent to the Respondent cease and desist letters requesting the transfer of the Domain Names to the Complainant. The Respondent did not respond to the Complainant’s communications.

As of the date of this Decision, the Domain Names are being redirected to the domain name <muffincanstopus.com>, which still resolves to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant requests that the Domain Names be transferred to the Complainant. According to the Complainant, each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case.

First, the Complainant submits that the Domain Names are confusingly similar to the trademark registration of the Complainant.

Second, the Complainant argues that the Respondent has neither rights nor legitimate interests in the Domain Names.

Third, the Complainant submits that the Domain Names were registered and are being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements, which can be summarized as follows:

(i) the disputed 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 the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The requested remedy may only be granted if the above criteria are met.

At the outset, the Panel notes that the applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”. See section 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the Domain Names are identical or confusingly similar to the Complainant’s trademark rights.

The Complainant holds several valid NUTELLA trademark registrations, which precede the registration of the Domain Names.

The Domain Names incorporate the Complainant’s NUTELLA trademark in its entirety. As numerous UDRP panels have held, incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696).

The addition of the terms “muffin”, “ponchick”, and “ponchik” (“donut” in Russian) does not prevent confusing similarity between the Domain Names and the Complainant’s trademark. UDRP panels have consistently held that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, would not prevent a finding of confusing similarity under the first element. See WIPO Overview 3.0, section 1.8.

The Top-Level domain “.com” in the Domain Names is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See WIPO Overview 3.0, section 1.11.1.

Given the above, the Panel finds that the Domain Names are confusingly similar to the Complainant’s trademark. Thus, the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the Domain Names.

The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(a) that it has made 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 prior to the dispute; or

(b) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or

(c) that it is making a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

Although given the opportunity, the Respondent has not submitted any evidence indicating that any of the circumstances foreseen in paragraph 4(c) of the Policy are present in this case.

On the contrary, it results from the evidence in the record that there are the Complainant’s NUTELLA trademark registrations, which predate the Respondent’s registration of the Domain Names. There is also no evidence in the case that the Complainant has permitted the Respondent to use the NUTELLA trademark or to register the Domain Names incorporating this trademark. There is also no evidence to suggest that the Respondent has been commonly known by the Domain Names.

Furthermore, it does not result from the evidence in the record that the Respondent has made preparations to use the Domain Names in connection with a bona fide offering of goods or services, or that the Respondent is making a legitimate, noncommercial or fair use of the Domain Names without intent for commercial gain. In this regard, the Panel notes that the Domain Names originally were being redirected to the domain name <muffin.delivery> resolving to an online store “Muffin Can Stop Us”. This store specialized in the sale and delivery of sweets, beverages and other products. Such use of the Domain Names cannot be considered a bona fide offering of goods or services, or a legitimate, noncommercial or fair use without intent for commercial gain.

The Panel also notes that as of the date of this Decision, the Domain Names are being redirected to the domain name <muffincanstopus.com>, which resolves to an inactive website. Such passive holding of the Domain Names does not also constitute legitimate, noncommercial or fair use.

Finally, the Panel finds that the Domain Names carry a high risk of implied affiliation with the Complainant. See WIPO Overview 3.0, section 2.5.1.

Given the above, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the Domain Names. Thus, there is no evidence in the case that refutes the Complainant’s submissions. The Panel concludes that the Complainant has proved the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The third requirement the Complainant must prove is that the Domain Names have been registered and are being used in bad faith.

Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. See WIPO Overview 3.0, section 3.1.

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:

(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the domain name were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or

(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.

As indicated above, the Complainant’s rights in the NUTELLA trademark predate the registration of the Domain Names. It has been proven to the Panel’s satisfaction that the Complainant’s NUTELLA trademark is well known and unique to the Complainant. The Respondent could not likely reasonably ignore the reputation of products this trademark identify. Thus, the Respondent in all likelihood registered the Domain Names with the expectation of taking advantage of the reputation of the Complainant’s trademark.

Moreover, the Complainant presented evidence that the Domain Names were being used in bad faith by the Respondent to attract Internet users to the online store “Muffin Can Stop Us”, which offered various products, including sweets, and their delivery. In consequence, the Panel accepts that the Respondent was using the Domain Names in an attempt to attract, for commercial gain, Internet users to this online store by creating a likelihood of confusion with the NUTELLA trademark as to the source, sponsorship, affiliation, or endorsement of the website or the activity carried out through this website by the Respondent.

Moreover, as previously noted, the Domain Names are being redirected now to the domain name <muffincanstopus.com> resolving to an inactive website. In the overall circumstances of this case, the Panel finds that the Respondent’s passive holding of the Domain Names supports the finding of bad faith. As numerous UDRP panels have held, passive holding, under the totality of circumstances of the case, can constitute a bad faith use under the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Novo Nordisk A/S v. CDMS Invest, WIPO Case No. D2012-0676.

For the reasons discussed above, the Panel finds that the Complainant has proved the requirements under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <nutellamuffin.com>, <nutellaponchick.com>, <nutellaponchik.com> be transferred to the Complainant.

Piotr Nowaczyk
Sole Panelist
Date: February 9, 2022