The Freename Forum

The confectionery manufacturer Ferrero S.p.A., owner of the trade mark ‘Nutella’, won the domain notella.site before the WIPO without any problems. The opponent did not know what was happening to him and merely asked whether Ferrero wanted to buy the domain.

Ferrero S.p.A., a leading manufacturer of chocolate products and a confectionery company based in Switzerland, believes that its rights to the ‘Nutella’ trade mark have been infringed by the notella.site domain. Its international trade mark ‘Nutella’ has existed since 1964; the complainant registered the domain nutella.com in 1997 and uses it for its product range. The domain notella.site was registered by the opponent on 23 May 2024. Under it, he operates a cryptocurrency offer for the ‘$NOTELLA’ coin. The site states, among other things: ‘Ever wished your crypto could be as fun and tasty as Nutella?’. In June 2024, the complainant sent a cease-and-desist letter in which he also demanded the transfer of the domain. The opponent did not respond. The complainant therefore initiated UDRP proceedings before the WIPO. Among other things, he argues that notella.site is a typical typo domain; the opponent knew the well-known trade mark ‘Nutella’ and was using the reputation of the trade mark to gain economic advantages. The website featured a modified Nutella jar and no indication that the offer had nothing to do with ‘Nutella’. The opponent did not officially enter into the proceedings, but wrote an email in which he asked: ‘So what exactly do you want from me? Do you want to buy the domain?’. The Indian lawyer Shwetasree Majumder, founder of the law firm ‘Fidus Law Chambers’ among others, was appointed as the decision-maker.

Majumder upheld Ferrero's complaint and ruled in favour of transferring the domain (WIPO Case No. D2024-2757). It found that the trade mark ‘Nutella’ is perceptible in the domain name notella.site and confirmed the existence of the first element of the UDRP. On the question of a right or legitimate interest of the opponent, it first confirmed that the complainant had provided prima facie evidence that no right existed on the part of the opponent. The opponent had not countered this. Majumder referred to similar cases involving cryptocurrency domains in connection with the use of third-party trademarks. In each of these cases, the panels were of the opinion that there was no legitimate interest in using the domain. In the present case, the situation was exactly the same for Majumder. As the opponent did not counter the complainant's allegations, coupled with his offer to sell the domain, Majumda was unable to see how the opponent could have any rights or legitimate interests in the domain. She considered whether the opponent was perhaps making a parody or otherwise making a legitimate use, but all indications were that it was an attempt to attract users to notella.site by exploiting the complainant's trade mark. Majumder thus saw the second element confirmed and turned to the question of the opponent's bad faith. She confirmed this, as the opponent was obviously aware of the well-known trade mark ‘Nutella’ at the time of the domain registration and registered the domain in bad faith for the purpose of deriving commercial benefit from the complainant's trade mark by intentionally creating a likelihood of confusion with the trade mark. Thus, the third element of the UDRP was also present. Majumder upheld the complaint and decided to transfer the domain notella.site to the complainant.

The UDRP decision on the domain notella.site can be found at:
https://www.wipo.int/amc/en/domains/dec ... 4-2757.pdf