WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Société des Produits Nestlé SA v. Peter Carrington, c/o Party Night Inc.

Case No. D2002-0954

 

1. The Parties

The Complainant is Société des Produits Nestlé SA, a Swiss company.

The Respondent is Peter Carrington, c/o Party Night Inc, of Amsterdam, the Netherlands.

 

2. The Domain Name and Registrar

The domain name in dispute is <nestlesusa.com>. The Registrar is Key-Systems Gmbh d/b/a domaindiscount24.com, of Bexbach, Germany.

 

3. Procedural History

The Complaint was received by the WIPO Arbitration and Mediation Center on October 16, 2002. The Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 17, 2002. No response was received from the Respondent. Accordingly, the Center notified the Respondent of its default on November 15, 2002. George R. F. Souter was appointed Sole Panelist on December 13, 2002.

 

4. Factual Background

The Complainant has produced evidence that it is the proprietor of numerous trademark registrations world-wide, including the Benelux, where the Respondent is located, for NESTLE, or trademarks including NESTLE as a major element.

The Complainants biggest subsidiary in the USA is Nestlé USA, Inc., and the Complainant operates, inter alia, a website <nestleusa.com>.

 

5. Parties Contentions

A. Complainant

The Complainant contends that, as the legitimate owner of all rights in the trademark NESTLE, and, as the distinctive element of the domain name in dispute contains "nestle", the domain name is confusingly similar to the Complainants trademark rights.

The Complainant contends that the Respondent has no rights to or legitimate interests in the domain name in dispute.

The Complainant contends that the domain name in dispute has been registered and is being used in bad faith. In particular, the Complainant draws to the Panels attention three previous disputes, all decided against the Respondent (relating to the domain names <accessaltanta.com>, <mbanetaccess,com> and <neimanmarcas.com), and alleges that the Respondent has "a deliberate strategy to register misspelt trademarks as domain names. In each case, the domain name differs from Complainants mark in one letter, a strategy referred to as "typo-squatting" ".

The Complainant drew to the Panels attention a decision by the web hosting company to shut down the website as being in violation of its terms of service, following a complaint by the Complainant that the domain name had been used to host a pornographic website.

The Complainant contends that its website operated under the domain name <nestleusa.com> has become well-known and is frequently visited, but has provided no statistical evidence to this effect.

B. Respondent

The Respondent did not respond to the Complaint.

 

6. Conclusions and Findings

Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy lists three tests which a Complainant must satisfy in order to succeed:

(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.

In connection with the first of these tests, the Panel finds that the Complainant is the owner of the trademark NESTLE both by extensive registration and reputation, to the extent that it can legitimately claim NESTLE to be a well-known mark.

The general test as to what constitutes "confusing similarity" in proceedings such as these, in the Panels opinion, is whether an informed potential customer of a companys products or services would, during the process of contacting the domain name, reasonably believe that the website to be accessed was operated by, or on behalf of, the owner of a trademark in connection with that owners business.

It is common knowledge that apostrophes cannot be used in domain names, and that lower case letters are used. Accordingly, anyone with any knowledge of the Internet accessing the website would be reasonably likely to regard the domain name in dispute as being equivalent to "Nestles USA" in standard written English. The name Nestle is clearly the dominant element of the domain name. The Panel has had little difficulty in finding that the domain name is confusingly similar to the trademark NESTLE, as the additional elements are, in a trademark sense, banal. In coming to this finding, the Panel has followed the reasoning, in particular, of the Panel in WIPO Case No. D2000-0102, discussed below.

In connection with the second test, the Complainant has asserted the Respondents lack of legitimate interest in the domain name and the Respondent has not taken the opportunity accorded to it under these proceedings of justifying its adoption of the domain name. There appear to be no circumstances attached to the Respondents name or address which might lead to any suspicion of legitimate interest. In these circumstances, the Panel decides that the Complainant, whose Complaint was transmitted to the Respondent under the procedure, has satisfied the second test.

In connection with the third test, the Panel follows the reasoning of the Panel in WIPO Case No. D2000-0102 <nokiagirls.com>, in which it considered the question of a well-known mark in connection with the mark NOKIA (the addition of "girls" to the trademark being regarded by the Panel as "a rather neutral addition to this trademark") and concluded: "The trademark NOKIA is currently enjoying such fame internationally that it cannot reasonably be argued that Respondent could have been unaware of the trademark rights vested therein when registering the Domain Name." The Panel takes the view that, in the present case, it could not reasonably be argued that the Respondent was unaware of the trademark rights vested in the Complainant when registering the domain name <nestlesusa.com>. Accordingly, the Panel finds that the domain name in dispute was registered in bad faith.

The third test is, in reality, a dual test, requiring the Panel to be satisfied both that the domain name has been registered in bad faith and used in bad faith.

There is ample authority in the previously decided cases that a pattern of abusive behaviour following registration in bad faith is sufficient to satisfy "the second leg" of this dual test. The Panel finds that the previous cases involving the Respondent drawn to his attention by the Complainant are sufficient to enable him to find that the Respondent has indulged in a pattern of abusive behaviour, and that the Complainant has, accordingly, satisfied both legs of the third test.

 

7. Decision

The Panel finds that the Complainants has satisfied the three tests of paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy, and, accordingly, requires that the domain name <nestlesusa.com> be transferred to the Complainant.

 


 

George R. F. Souter
Sole Panelist

Dated: December 27, 2002