WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Societe des Produits Nestle SA v. Deleting domain, Umbeke Membe
Case No. D2008-0738
1. The Parties
Complainant is Societe des Produits Nestle SA, Vevey, Switzerland, represented by Studio Barbero, Italy.
Respondent is Deleting domain, Umbeke Membe, Harare, Zimbabwe.
2. The Domain Name and Registrar
The disputed domain name <sahabatnestle.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2008. On May 14, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On May 14, 2008, eNom transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on May 19, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 10, 2008.
The Center appointed R. Mark Halligan as the sole panelist in this matter on July 4, 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
Since Respondent has not submitted any evidence and has not contested the contentions made by Complainant, the Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by Complainant.
Complainant is a Swiss limited liability company, founded in 1866 by Henri Nestle, selling products and services all over the world, but most notably in the food industry, for its chocolate and confectionery items, beverages, bottled water, baby foods, breakfast cereals, dairy products, ice cream, and other prepared foods. Complainant is the owner of multiple trademark registrations around the world for the word mark NESTLE, including four in Indonesia, where it has been using the mark for over twenty years:
- Registration NESTLE in Indonesia (word mark) N. 363346 filed on June 17, 1985, registered on November 17,1985 and duly renewed thereafter in class 5;
- Registration NESTLE in Indonesia (word mark) N. 82213 filed on June 17, 1985, registered on November 17, 1985 and duly renewed thereafter in class 29;
- Registration NESTLE in Indonesia (word mark) N. 363348 filed on June 17, 1985, registered on November 17, 1985 and duly renewed thereafter in class 30;
- Registration NESTLE in Indonesia (word mark) N. 363347 filed on June 17, 1985, registered on November 17, 1985 and duly renewed thereafter in class 29.
Complainant uses the words “Sahabat Nestle” as a corporate name for its subsidiary, Nestle Indonesia, and owns the domain name <sahabatnestle.co.id>, from which it operates a website aimed at promoting its activities in Indonesia. Complainant also owns the domain names <nestle.com>, <nestle.info> and <nestle.mobi>.
When Complainant became aware of the registration of the disputed domain name, the registrant was Mr. Bao Shui, and the contested domain name was redirected to a website where Internet found a number of sponsored links to various web sites. Complainant sent a cease and desist letter on August 17, 2007, to the known address of Mr. Shui via email and courier requesting that Mr. Shui transfer the domain name, and a follow-up letter was sent on September 14, 2007.
In October 2007, the domain name was transferred to Mr. Xiaojie, who recorded the same postal address as the previous owner. Complainant sent a cease and desist letter to Mr. Xiaojie on November 15, 2007, by email and courier, requesting that Mr. Xiaojie transfer the disputed domain name. On November 16, 2007, the disputed domain name was transferred to Respondent. A final cease and desist letter was sent on December 21, 2007, again via email and courier, to Respondent, who did not reply. At the time of Complainant’s filing, the contested domain name redirected users to a number of sponsored links to various web sites, including adult content web sites.
5. Parties’ Contentions
Respondent has registered the domain name <sahabatnestle.com> (the “Disputed Domain Name”). Complainant contends that the Disputed Domain Name contains Complainant’s trademark and trade name, is confusingly similar to Complainant’s trademark and trade name, Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the Disputed Domain Name was registered and is being used in bad faith.
Respondent did not reply to Complainant’s contentions. Therefore, pursuant to Rule 5(e), the Panel shall decide the dispute based upon the Complaint.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has not alleged that it has registered trademarks for “Sahabat Nestle,” and it does not provide examples of its products bearing the term “Sahabat Nestle”.
Nevertheless, NESTLE is a well-recognized mark.. See Societe des Produits Nestle SA v. Stuart Cook, WIPO Case No. D2002-0118 (“The trademark NESTLE is registered in many countries around the world including in the country of residence of the Respondent, England. In addition, the mark must be considered world famous”). In Societe des Produits Nestle SA v. Stuart Cook, WIPO Case No. D2002-0118, the Panel found that “although the combination of the two signs is not registered or used as a trademark, the contested domain names must nevertheless be considered confusingly similar to the marks in which the Complainant has rights” where the word “purina”, the trade name of the company Ralston Purina, was added to the trademark NESTLE. Id.. Furthermore, Complainant’s registration of <sahabatnestle.co.id> is identical to that of the Disputed Domain Name.
Here, Complainant has established rights in its well-known NESTLE mark. Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the prior registered NESTLE trademark in which Complainant has rights.
B. Rights or Legitimate Interest
Respondent has not provided any evidence of its use of, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The Disputed Domain Name, at the time of Complainant’s filing, was being used only to generate revenues via the pay per click system to the present domain name holder. In the circumstances, the use of the Disputed Domain Name to redirect users to the websites of third parties through advertised and sponsored links is not a legitimate, non commercial, or fair use of a domain name. See Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044; F. Hoffmann-La Roche AG v. Titan Net, WIPO Case No. D2006-0424’).
The redirection to sponsored “adult content” websites is also is indicative of Respondent’s lack of good faith intent and tarnishes Complainant’s NESTLE mark. Tarnishing is inevitable where the use of a domain name confusingly similar to a registered mark diverts consumers to “adult content” websites. HartsfieldArea Transportation Management Association, Inc. v. Max Davidovich, WIPO Case No. D2006-0743.
Based on these facts, the Panel finds no rights or legitimate interests of Respondent in the Disputed Domain Name.
C. Registered and Used in Bad Faith
Through its use of the Disputed Domain Name, Respondent is intentionally attempting to attract for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s trademark and trade name.
Respondent’s use of the Disputed Domain Name to seek and/or realize commercial gain by redirecting consumers to third-party websites indicates Respondent’s bad faith. See Deutsche Telekom AG v. Gary Seto, WIPO Case No. D2006-0690; Eraser Co. Inc., Zinsser Brands, Co. v. Henry Tsung, WIPO Case No. D2006-0413; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; Cox Radio, Inc. v. Domain Administrator, WIPO Case No. D2006-0387; Gianfranco Ferre’ S.p.A. v. Unasi Inc., WIPO Case No. D2005-0622 ; L ‘Oreal, Biotherm, Lancome Parfums et Beaute & Cie v. Unasi, Inc., WIPO Case No. D2005-0623; Scania CVAB (Publ) v. Unaci, Inc., WIPO Case No. D2005-0585; Volvo Trademark Holding AB v. Michele Dinoia,. WIPO Case No. D2004-0911; Claire’s Stores, Inc., Claire’s Boutiques, Inc., CBIDistributing Corp. v. La Porte Holdings, WIPO Case No. D2005-0589; Members Equity PTY Limited v. Unasi Management Inc., WIPO Case No. D2005-0383.
Furthermore, in the Panel’s view the failure of Respondent to respond to the cease and desist letter sent by Complainant, is further indication of registration and use in bad faith. See, e.g., The Great Eastern Life Assurance Company Limited v. Unasi Inc., WIPO Case No. D2005-1218; Stanworth Development Limited v. Mike Morgan (290436), WIPO Case No. D2006-0230 (“failure to respond to two cease and desist letters indicates that Respondent had no rights or legitimate interests in the disputed domain name”).
Therefore, pursuant to paragraph 4(a)(iii) and 4(b)(iv) of the Policy, Respondent has registered and is using 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 <sahabatnestle.com> be transferred to Complainant.
R Mark Halligan
Dated: July 21, 2008