WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Societe des Produits Nestle, S.A. v. Whois ID Theft Protection
Case No. D2006-1154
1. The Parties
The Complainant is Societe des Produits Nestle, S.A., Vevey, Switzerland, represented by Baker & McKenzie, Switzerland.
The Respondent is Whois ID Theft Protection, Cayman Islands, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <masnescafe.com> is registered with Rebel.com Services Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2006. On September 12, 2006, the Center transmitted by email to NameTorrent.ca Inc. a request for registrar verification in connection with the domain name at issue. On September 28, 2006, the Center transmitted by email to Rebel.com Services Corp. a request for registrar verification in connection witht the domain name at issue. On October 3, 2006, Rebel.com Services Corp 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 5, 2006. 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”), 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 October 12, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 31, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 2, 2006.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on December 4, 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.
4. Factual Background
The Complainant is the owner of more than 2,000 trademark registrations worldwide for NESCAFE, alone or in combination with other word and/or device elements. In the United Kingdom, the first trademark registration for NESCAFE occurred on May 26, 1938 under registration number 585860. The Cayman Islands are an overseas territory of the United Kingdom. The trademark protection for NESCAFE has been extended to the Cayman Islands by application to the UK Patent Office on May 4, 1987.
The Complainant contends that NESCAFE is a famous trademark. NESCAFE was launched as a product in 1938, and today it enjoys a worldwide reputation and goodwill as the leading trademark for instant coffee. Interbrand (a leading branding consultancy) ranked the NESCAFE trademark at number 23 in its 2006 league table of global brands, with an estimated value of USD 12.50 billion. The Complainant uses its trademark NESCAFE for instant coffee in more or less all of the countries in the world.
The Complainant is one of the largest food and beverage manufacturing companies in the world. The Complainant operates a website under the domain name <nescafe.com>. This is a promotional website which is primarily designed to attract customers of the Complainant's NESCAFE products. Given the fame of its NESCAFE trademark, its “www.nescafe.com” website has become well known and is a frequently visited website. The Complainant also operates the websites “www.mas-nescafe.com.mx” and “www.mas-nescafe.com.co” which are mainly designed for its customers in Mexico / Colombia. “Mas NESCAFE” is Spanish and it means “more Nescafe”.
In late April 2006, Complainant became aware that the Respondent had registered the domain name <masnescafe.com> for a website. A person going to the domain name <masnescafe.com> is presented with a list of – purportedly sponsored – links to websites which do not belong to nor are operated by Complainant. The links at the Respondent’s website have nothing at all to do with NESCAFE but concern websites offering everything from language courses in Argentina and vacation in Costa Rica to job recruiting, debt consolidation and singles’ dating. The domain name <masnescafe.com> remains active as of today.
5. Parties’ Contentions
First, the Complainant contends that the Respondent has registered a domain name, which is identical with Complainant's trademark. The Complainant contends that the disputed domain name <masnescafe.com> incorporates the Complainant’s NESCAFE trademark and that the only difference is “mas” which means “more” in Spanish.
Second, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant contends that the Respondent has nothing to do with Complainant or Complainant's business or with NESCAFE or with instant coffee in general, and there are absolutely no indications whatsoever that Respondent would have bona fide interests in relation to the trademark NESCAFE.
Third, the Complainant contends that the disputed domain name has been registered and used in bad faith. The Complainant contends that NESCAFE is a famous mark and that the Respondent is aware that Complainant's websites “www.nescafe.com”, “www.mas-nescafe.com.mx” and “www.mas-nescafe.com.co” enjoy great popularity among many consumers of NESCAFE. The Complainant contends that it is thus very likely that Respondent is fully aware that Complainant used the domain name <mas-nescafe.com.mx> and/or <mas-nescafe.com.co> for its websites and that it wants to exploit the Internet traffic that is bound for these websites. Since the Respondent is responsible for the website under the domain name <masnecafe.com>, the Complainant contends that the fact that the Respondent has used this website to display links to a multitude of other, completely unrelated websites shows clearly that it has registered and that it uses the domain name in bad faith. It is the Complainant’s contention that the Respondent exploits the fame and goodwill of the NESCAFE trademark by diverting Internet traffic intended for the Complainant. The Complainant contends that such actions on the part of the Respondent have caused great and irreparable harm to the Complainant and its trademark.
The Complainant has also pointed out that the Respondent is a known domain name squatter who has registered numerous domain names which incorporate famous trademarks of third parties or slight variations on famous trademarks, as is evidenced by and reported in the WIPO Domain Name Decision No. 2006-0659 concerning the domain name <tabassco.com>. Other domain names of a similar nature which have been registered by the Respondent include <kelloggsfuntown.com>; <nikeskatesshoes.com>; and <birkenstok.com>. The Complainant contends that all this shows that the Respondent is engaged in a pattern of conduct of registering domain names incorporating famous trademarks. Finally, the Complainant contends that the long use by the Complainant of its mark and its fame leave little doubt that the Respondent was aware of it when the subject domain name was registered. Therefore, the Complainant contends that the Respondent is capitalizing on the Complainant’s mark and its NESCAFE products through its use of the subject domain name. The Complainant contends that this is a typical case of domain name squatting and it causes substantial harm to the Complainant. The Respondent's bad faith is in the opinion of the Complainant absolutely and manifestly evident.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
1. the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2. the Respondent has no rights or legitimate interests in respect of the domain name; and
3. the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall 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. Moreover, 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 of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
A. Identical or Confusingly Similar
The Complainant has produced substantial evidence to demonstrate that it has registered trademark rights in the mark NESCAFE in many countries throughout the world.
In assessing the degree of similarity between the Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user seeking to purchase or download information about the Complainant’s food and beverage products.
The disputed domain name comprises (a) an exact reproduction of the Complainant’s trademark NESCAFE and (b) the addition of the word “mas” in front of it. In English, “mas” is a word without any meaning, but in Spanish it means “more” whilst in the Malay language it means “gold”. When they are placed together, and to a person conversant in Spanish or Malay, “masnescafe” means “more NESCAFE” or “gold NESCAFE”. In either case, the most prominent and distinctive part of the domain name is the mark NESCAFE which is the Complainant’s registered trademark. The word “mas”has become descriptive or laudatory of the Complainant’s products and it does not serve to distinguish the Respondent’s domain name from the Complainant’s trademark NESCAFE. Given the widespread reputation of the Complainant’s trademark and products, there is a great likelihood that someone looking at the domain name <masnescafe.com> may think that it belongs to the Complainant together with other confusingly similar websites that are owned by the Complainant such as “www.nescafe.com”; “www.mas-nescafe.com.mx”; and “mas-nescafe.com.co”.
Bearing in mind the following factors, in particular (a) the widespread reputation of the Complainant’s trademark; (b) the distinctive character of the Complainant’s mark NESCAFE; (c) the dominant component of the disputed domain name; (d) the visual, aural and similarities between them; and (e) that the disputed domain name closely resembled the Complainant’s other registered domains such as <mas-nescafe.com.mx>; and <mas-nescafe.com.co>, the Panel therefore finds that the disputed domain name <masnescafe.com> is confusingly similar to a trademark or service mark in which the Complainant has rights.
The Panel finds for the Complainant on the first part of the test.
B. Rights or Legitimate Interests
Based on the following reasons the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:
1. the Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of the word “masnescafe” in its business operations;
2. there was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the trademark;
3. there is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services;
4. the Complainant and its mark NESCAFE enjoy a considerable reputation with regard to food and beverages in Switzerland and in many countries all over the world. Consequently, in the absence of contrary evidence from the Respondent, the NESCAFE mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the 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 noncommercial 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.”
The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against it. In particular, the Respondent has failed to make submissions to demonstrate that it has rights or legitimate interests to the domain name. In accordance with the Rules paragraph 14, the Panel thus draws such inferences as the Panel considers appropriate, namely that the Respondent appears to be unable to adduce evidence of any rights or legitimate interests to the disputed domain name.
The Panel finds for the Complainant on the second part of the test.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(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 the 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, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the 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.
The Panel concludes based on the case file that the circumstances referred to in Paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith.
Firstly, the Panel finds that the Complainant and its mark NESCAFE enjoy a considerable reputation with regard to food and beverages in Switzerland and in many countries all over the world. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the domain name. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with the Complainant and its food and beverages products.
The Panel finds that there is overwhelming evidence that the Respondent has registered the disputed domain name for less than honorable intentions. The Complainant has adduced evidence and proved that by using confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website. Furthermore, the Respondent has through the use of a confusingly similar domain name created a likelihood of confusion with the Complainant’s trademark and this constitutes a misrepresentation to the public that his website is associated or connected with the Complainant. In the absence of evidence to the contrary and rebuttal from the Respondent, the choice of the disputed domain name and the conduct of the Respondent as far as the website on to which the domain name resolve are indicative of registration and usage of the disputed domain name in bad faith.
The Panel accepts the Complainant’s submission that this fact coupled with all the other evidence proves that the Respondent has registered and used the disputed domain name in bad faith.
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, <masnescafe.com> be transferred to the Complainant.
Susanna H.S. Leong
Dated: December 18, 2006