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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Perfetti Van Melle Benelux BV v. Ingrid or Bron Eelkman Rooda

Case No. D2008-0617

 

1. The Parties

The Complainant is Perfetti Van Melle Benelux BV, The Netherlands, represented by Perfetti Van Melle S.p.A., Italy.

The Respondent is Ingrid or Bron Eelkman Rooda of United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <fruitella.net> is registered with GoDaddy.com, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2008. On April 21, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On April 22, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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”).

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 May 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2008.

The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on June 3, 2008. 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

The Complainant is a Dutch company that has been engaged since the 1950s in the manufacture of candies and other food products under the famous Fruittella brand. The brand has become well known throughout the world.

The Complainant is the owner of many international trademark registrations and applications for FRUITTELLA as a word and/or a device, covering mainly products of international class 30 and used in particular on candies. Among the trademarks of which it is the registered owner are the following:

(a) Trademark for FRUITTELLA registered with the United Kingdom Patent Office on June 7, 1956;

(b) Trademarks registered numbers 2787946 and 3015819 for FRUITTELLA registered with the United States Patent and Trademark Office on December 2, 2003 and November 15, 2005; and

(c) Trademark for FRUITTELLA registered in Mexico on August 30, 1991.

According to the WhoIs search result annexed to the Complaint, the Respondent registered the domain name <fruitella.net> on March 4, 2008.

 

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the domain name <fruitella.net> should no longer be registered with the Respondent, but that it should be transferred to the Complainant.

It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is confusingly similar to the Complainant’s registered trademark, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.

In support of its case on the first of these three elements, the Complainant relies on the registered FRUITTELLA trademarks to which reference has already been made. It then says that it is self-evident that the domain name <fruitella.net> is confusingly similar to the FRUITTELLA mark, as the spelling of the word in the domain name is virtually the same as the spelling of the word in the trademark and that the only variation is the omission in the domain name of a single letter ‘t’ that is in the trademark.

The Complainant then contends, to establish the second element, that the Respondent has no rights or interests in the domain name because the facts show an obvious intention by the Respondent to benefit from the reputation of the well known FRUITTELLA mark, that the Respondent is not named “Fruittella” or “Fruitella” and that it has not been authorized to use the FRUITTELLA name or mark. Nor, it is argued, can the Respondent bring itself within any of the provisions of paragraph 4(c) of the Policy.

Finally, the Complainant contends that the domain name was registered and is being used in bad faith. It contends that this is so because the Respondent must have been aware of the existence of the FRUITTELLA mark and could only have chosen the domain name to attract visitors to a proposed website by targeting users of the Internet who were seeking products under the name FRUITTELLA, but who mistyped the correct spelling of the word. Moreover, consumers might think there was a link between the Complainant’s products and the Respondent’s domain name. The Complainant contends that these factors show that the Respondent both registered and has used the domain name in bad faith.

B. Respondent

The Respondent did not reply by way of Response to the Complainant’s contentions. However, the Respondent sent two emails to the Center in which he referred to the merits of the Complaint. In the first email, dated May 2, 2008, the Respondent submitted that it uses the domain name in connection with an organic ranch in Mexico, and that it had a registered ‘brand name’ for FRUITELLA and a website in Mexico. In the second email, dated May 27, 2008 the Respondent said, apart from some formal observations about the proceedings, the following: ‘I don’t even understand what this is all about. A company selling sweets in Italy is angry about our company in Mexico selling fresh fruit and vegetables using a simmelar (sic) name which is not even spelt the same way. Now they want our domain names (sic). Well let them come up with an offer and if the price is right we might sell it.’

 

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the 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.

In that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainant to make out its case and past UDRP panels have said many times that despite the absence of a submission from a respondent, a complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.

However, as the Panel will illustrate later, it is possible to draw inferences from the evidence that has been submitted and in some cases from silence. Indeed, paragraph 14 of the Rules incorporates both of those notions into the procedures of the Panel.

The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.

For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:

(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.

It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the FRUITTELLA marks. The spelling of the domain name is virtually the same as that of the mark and all that has been done to create the domain name is to omit a single letter ‘t’ from the trademark FRUITTELLA. Otherwise the word remains the same. It has been held in numerous UDRP proceedings such as National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011 and Caterpillar Inc. v. Spiral Matrix/ Kentech, Inc. /Titan Net / NOLDC, Inc, WIPO Case No. D2006-0808 , and GS Development Aktiebolag, Aimpoint Aktiebolag v. Aimpiont.com c/o Whois IDentity Shield/GS Development AB, WIPO Case No. D2007-0629 that such minor spelling discrepancies do not negate confusing similarity which is otherwise present, which it is in the present case.

The Complainant has therefore made out the first element that it must establish.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.

But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your 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; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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.

Thus, if the Respondent proves any of these elements or indeed anything else that shows he has a right or interest in the domain name, the Complainant will have failed to discharge its onus and the Complaint will fail.

The Panel’s task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when, as in the present case, the registrant is in default and does not file a Response. The Respondent was given notice that he had until May 22, 2008, to send in his Response, that he would be in default if he did not do so and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.

It is also well established that, as it is put in the Overview of WIPO Panel Views on Selected UDRP Questions (‘the Overview’) that “…a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a) (ii) of the UDRP”.

The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name.

That finding is based on the facts that the Respondent chose for his domain name a name virtually identical to the Complainant’s famous trademark, that the domain name was registered many years after the Complainant had established the name “Fruittella” in the international market and that the Complainant has never given the Respondent permission to use its trademark in a domain name or anywhere else.

The Respondent has not sought to rebut this prima facie case by way of Response, although it has sent to the Center two emails setting out its case and which the Panel has taken into account.

Having considered the contents of those emails and all of the evidence as a whole, the Panel concludes on the balance of probabilities that the Respondent has not rebutted the prima facie case against it.

Had it been shown that the Respondent had been using the domain name in connection with an organic farm, that there was no reason to suspect he was trading on a similarity with the Complainant’s trademark and that such an enterprise was otherwise bona fide, the Respondent may well have brought himself within paragraph 4(c)(i) of the Policy.

That, however, is not the evidence. The evidence is that the domain name is not being used for a business at all, but is dormant. The domain name resolves to a website carrying the banner ‘This Website is coming soon.’ The website does not contain any other information at all.

It is true that the Respondent refers in the email of May 2, 2008 to ‘the website we had also for many years.’ Again, if the evidence were that the Respondent had used the domain name for a legitimate website, the conclusion on this issue may well have been different. But the evidence is that the domain name was registered on March 4, 2008, making the Respondent’s claim about its website and its use difficult to accept.

The other factors militating against a finding of legitimate rights or interests in the domain name are that the FRUITTELLA trademark was first registered in the United States of America, where the Respondent is domiciled, December 2, 2003 and in Mexico where his farm is said to be conducted, on August 30, 1991.

These facts suggest that the Respondent was more likely than not aware of the FRUITTELLA trademark at the time he registered the domain name.

Finally, as well as the evidence showing that the domain name does not resolve to an active website, the evidence is that the Respondent is prepared to entertain an offer to sell the domain name to the Complainant.

This is not conclusive one way or the other, but it does tend to weaken the Respondent’s claim that he is in no way influenced by the close similarity between the domain name and the Complainant’s trademark and that he has every right to use the name. In other words, if the Respondent is legitimately using the name “Fruitella” as the name of its business, it calls for an explanation that he is now prepared to sell it.

The sum total of all of these evidentiary matters is that it was always open to the Respondent to prove that he had registered the name “Fruitella” in Mexico in connection with his organic farm, that the farm was a going concern under the name “Fruitella” and that it was promoted by the domain name and a website to which the domain name resolved. Those matters could have been established by evidence that must have been available if the Respondent’s claims were of any substance. But as it has not sought to bring any such evidence forward, the Panel is unable to be satisfied that those claims have any substance or sufficient substance to rebut the prima facie case made out by the Complainant.

The matter is not beyond argument, of course, but in reaching its conclusion on this issue the Panel must apply the principle that the onus is on the Respondent to discharge the prima facie case against it. Putting all of the evidence in balance, the Panel is not satisfied that the Respondent has discharged that onus.

The Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain name and the Complainant has made out the second of the three elements that it must establish.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 .

Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:

(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.

The Complainant submits first, that the Panel should draw the inference that the Respondent registered the domain name in bad faith and that such an inference should be drawn from the following facts and circumstances: that the Complainant has never had any connection, affiliation or commercial relationship with the Respondent, that the Respondent has never approached the Complainant to inform it of his intention to register the disputed domain name or to ask for consent to its registration and that the Respondent chose for his domain name a name that is so similar to FRUITTELLA that he probably intended to use the name ‘to take unfair advantage of the Complainant’s rights’; that is so, it is argued, for consumers who mispelt the word FRUITTELLA on their computers might end up in any website the Respondent set up using the disputed domain name.

The Panel accepts this submission and concludes that the Respondent registered the domain name in bad faith.

In his emails the Respondent in effect rejects this argument and maintains that it chose the name not because of any similarity with the FRUITTELLA mark , but because he runs an organic farm in Mexico producing fruit. Moreover, it maintains that it has had the brand name “Fruitella” registered for 10 years and that it also had a website for ‘many years’.

To this, the Complainant has asserted that “Fruitella” is not registered as a trademark in Mexico, but that FRUITTELLA, the Complainant’s trademark, is.

Again, the matter is not beyond doubt, but the Panel is influenced by the fact that the domain name chosen by the Respondent is virtually identical to the Complainant’s trademark of long standing and that, on the only evidence, it is not used as a domain name for the Respondent’s business or indeed for any other purpose.

That being so, the balance of probabilities is that the domain name was registered with the Complainant’s trademark very much in mind and in bad faith.

The question then arises whether it can also be said that the Respondent has used the domain name in bad faith. This involves consideration of the question whether a respondent may be said to have used a domain name in bad faith even without having established a website to which the domain name resolves.

That question has been discussed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions where it is said :

‘3.2 Can there be use in bad faith when the domain name is not actively used and the domain name holder has taken no active steps to sell the domain name or contact the trademark holder? (Passive holding)

Consensus view: The lack of active use of the domain name does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.

Relevant decisions:
Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000- 0003 , Transfer
Jupiters Limited v. Aaron Hall WIPO Case No. D2000-0574 , Transfer Ladbroke Group Plc v. Sonoma International LDC WIPO Case No. D2002-0131 among others, Transfer.’

In the present case, the elements present are that the trademark is widely known and has become so throughout the world progressively since the 1950s and that the Respondent has only slightly changed its spelling, without putting the domain name to some good use.

Moreover, it is significant that the trademark FRUITTELLA is registered in the United States of America where the Complainant’s products are widely advertised and sold, that that is where the Respondent is domiciled and that FRUITTELLA is also registered as a trademark in Mexico where the Respondent’s farm is said to be conducted. Accordingly, it is more likely than not that the existence and fame of the FRUITTELLA trademark would have come to the notice of the Respondent and remained so during the passive holding of the domain name.

Accordingly, the Panel concludes that that present case comes within the principles laid down by the above decisions, particularly Telstra Corporation Limited v. Nuclear Marshmallows (supra) where it was said that ‘... the passive holding of the domain name in this particular case satisfies the requirement of paragraph 4(a) (iii) that the domain name ‘is being used in bad faith’ by the Respondent’, an observation equally applicable to the present case.

Accordingly, the Panel finds that the Complainant has shown that the Respondent registered and used the domain name in bad faith and that the Complainant has thus made out the third of the three elements that it must establish.

 

7. Decision

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 <fruitella.net> be transferred to the Complainant.

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The Honourable Neil Anthony Brown QC
Sole Panelist

Dated: June 24, 2008