The Complainant is Société des Produits Nestlé S.A. (“Nestlé SA”) of Vevey, Switzerland, represented by Studio Barbero, Italy.
The Respondent is Transure Enterprise Ltd of Road Town, Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <wwwnestleusa.com> is registered with Above.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2009. On December 15, 2009, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 16, 2009, Above.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” or “UDRP”), 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 December 21, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 11, 2010.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on January 18, 2010. 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.
Complainant is Switzerland's largest company, and one of the world's largest manufacturing company in the area of food, with a total workforce of approximately 283, 000 people operating in over 200 countries around the world.
The Complainant is the owner of a broad range of trademark registrations worldwide for NESTLE, alone or in combination with other word and/or device elements. NESTLE has been in use as a trademark for the Complainant for more than a hundred years, and is a famous trademark enjoying a worldwide reputation and goodwill as one of the leading manufacturers of foods. Evidence of some of the Complainant's registered trademarks was attached to the Complaint. The Complainant has been operating in Australia, which is the second largest market for Nestle since the year 1906.
In particular Complainant asserts ownership of the following trademarks:
- International Reg. N. 400444 of July 16, 1973 NESTLÉ (word and device mark), in classes 01, 05, 29, 30, 31, 32, 33;
- International Reg. N. 479337 of August 12, 1983 NESTLÉ (word mark), in classes 01, 05, 29, 30, 31, 32, 33;
- International Reg. N. 490322 of November 27, 1984 NESTLÉ (word and device mark), classes 01, 05, 29, 30, 31, 32, 33;
- International Reg. N. 511513 of April 03, 1987 NESTLÉ (word mark), in classes 03, 16;
- International Reg. N. 638768 of June 28, 1995 NESTLÉ (word mark), in classes 35, 39, 41, 42;
- International Reg. N. 649928 of April 02, 1996 NESTLÉ (word mark), in classes 03, 05, 29, 30, 32;
- International Reg. N. 651791 of February 19, 1996 NESTLÉ (word mark), in classes 29,30;
- International Reg. N. 653196 of March 29, 1996 NESTLÉ (word mark), in class 5;
- International Reg. N. 655463 of March 13, 1996 NESTLÉ (word mark), in classes 05, 29, 30;
- International Reg. N. 655692 of January 25, 1996 NESTLÉ (word mark), in classes 05, 30;
- International Reg. N. 704989 of November 12, 1998 NESTLÉ (word mark), in class 32;
- Community Trademark Reg. N. 2977569 of May 25, 2004 NESTLÉ (word mark), in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45.
The complainant has also registered its marks as a domain name in a large number of top level and country code (cc) top level domains.
The following contentions are summarized from the Complaint.
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 Complainant's trademark rights. Complainant further alleges that the inclusion of “www” without a period before a trademark in the second level domain name is evidence of deliberate typo-squatting. In addition, the geographical designation “usa” is insufficient to distinguish the Domain Name as referring to an entity other than the Complainant.
Complainant contends that Respondent has no rights or legitimate interest in the domain name in dispute.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has provided no evidence of any such rights or interests.
Complainant argues that the disputed domain name is currently pointing to a website consisting in a page displaying sponsored links which generate revenues via the pay-per-click system to the disputed domain name holder and, at the same time, is tarnishing the Complainant's trademark. Such use cannot be considered a bona fide offering of good or services, or a legitimate non commmercial use of the disputed domain name.
Rather, the NESTLE mark is strongly distinctive and well-known as it was used since as early as 1887. It is apparent that the Respondent chose the disputed domain name only with the intention to sell it to the Complainant who is its legitimate owner.
The disputed domain name was also registered in bad faith by the Respondent. The Respondent could not have possibly ignored the existence of the Complainant's trademark registrations when he registered the disputed domain name. Complainant points to four previous cases under the UDRP that have also found that the Complainant's mark is world-famous. Consequently, the NESTLE mark is not one that could be legitimately adopted other than for the purpose of creating an impression of an association with the Complainant.
In addition, Complainant further points out that several UDRP Panels had considered that the same Respondent was acting in bad faith in a number of other decisions. Furthermore, Complainant argues that Respondent have engaged in a pattern of the conduct of registering domain names corresponding to well-known trademarks or service marks in order to prevent the legitimate owners from reflecting their marks in the corresponding domain names.
In relation to use of the disputed domain name in bad faith, the Respondent registered the disputed domain name with the aim of selling it to the Complainant, and it is being offered for sale at “www.sedo.com”. Such a use is evidence of bad faith within the meaning of paragraph 4(b)(i) of the Policy.
Finally, the Complainant points out that the disputed domain name is currently linked to a web page where Internet users can find a number of sponsored links to web sites where products of Complainant's competitors are advertised and sold. As a result, it is apparent that the Respondents at least earn commission whenever an Internet user visits the website and clicks on one of the sponsored link. Complainant mentions several Panels that have found the Respondent acting in bad faith where the respondent sought or realized commercial gain from the use of a domain name confusingly similar to Complainant's trademark.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy lists three elements which a complainant must satisfy in order to succeed. The Complainant must satisfy 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 such domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Panel finds that the Complainant have established their trademark rights in NESTLE as evidenced by the trademark registrations submitted with the Complaint, as mentioned above.
The Panel is also prepared to find that the domain name <wwwnestleusa.com> is confusingly similar to the Complainants' trademark NESTLE. 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, generic or common.
The addition of the letters “www” before the word “nestle”, without the period, does not serve to distinguish the domain name from the Complainants' trademark. Omitting the period in between the letters “www” and a domain name is a common typing error, and accordingly the addition of these letters as a prefix does not serve to reduce confusion between a trademark and a domain name (See BHP Billiton Innovation Pty Ltd v. Yorkshire Enterprises Limited and Whois Privacy Services Pty Ltd, WIPO Case No. D2009-1558; F. Hoffmann-La Roche AG v. Transure Enterprise Ltd., WIPO Case No. D2008-0422; Compagnie Gervais Danone, Bonafont S.A de C.V v. PrivacyProtect.org, WIPO Case No. D2009-1659; Scania CV AB v. Unaci, Inc., WIPO Case No. D2005-0585; CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273; Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck, WIPO Case No. D2000-0069; Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743; Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587; Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199; and Trustmark National Bank v. Henry Tsung, WIPO Case No. D2004-0274).
The domain name <wwwnestleusa.com> is confusingly similar to the Complainant's mark NESTLE. The addition of the geographical designation “usa” and the generic top-level domain suffix “.com” does not change this finding. These elements are insufficient to distinguish the Domain Name as referring to an entity other than the Complainant (Patties Foods Limited v. Studio Support, Peter Lock, Ian Cameron, WIPO Case No. D2009-0930; Farouk Systems, Inc. v. QYM, WIPO Case No. D2009-1572; Philip Morris USA Inc. v. Malton International Ltd., WIPO Case No. D2009-1263).
On the contrary, many Internet users would suppose that this domain name had been registered by the Complainant or an affiliate of the Complainant to promote its business in the United States (Société des Produits Nestlé SA v. Peter Carrington, c/o Party Night Inc., WIPO Case No. D2002-0954).
Therefore, the Panel finds that the Complainants have satisfied the first requirement of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to you 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 (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 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.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the domain name or to use the trademarks. The Complainant has prior rights in the trademarks which precede the Respondent's registration of the domain name by several decades. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 2.1; and Do The Hustle, LLC v.Tropic Web, WIPO Case No. D2000-0624 and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trademark rights in respect of the domain name or that the domain name is used in connection with a bona fide offering of goods or services.
Therefore, the Panel finds that the Complainants have satisfied the second requirement of paragraph 4(a) of the Policy.
The Complainant must prove both that the domain name was registered in bad faith and that it is being used in bad faith.
Complainant's allegations with regard to the Respondent's registration and use of the domain name in bad faith has been considered by the Panel. These allegations have not been contested by the Respondent because of its default.
Complainant's trademarks are famous, and have evidently been known to the Respondent when registering the contested domain name. Said domain name is highly unlikely to have been registered if it were not for Complainant's trademarks. In this respect, see Société des Produits Nestlé SA v. Telmex Management Services, WIPO Case No. D2002-0070; Société des Produits Nestlé SA v. Myongjin Kim, WIPO Case No. D2005-0509; Société Des Produits Nestlé SA v. Kayvan Sadeghi, WIPO Case No. DIR2007-0002; Société des Produits Nestlé SA v. Peter Carrington, c/o Party Night Inc., WIPO Case No. D2002-0954; and Société des Produits Nestlé SA v. Stuart Cook, WIPO Case No. D2002-0118 (all decisions recognizing NESTLE as a well known trademark).
In the instant case, the Panel considers that the Respondent must have had knowledge of the Complainants' rights in the NESTLE trademark when it registered the domain name, since the Complainant's trademark is a widely and well-known trademark.
Likewise, the Respondent's history of registering and using the domain names without any legitimate rights and interests, including the eleven (11) previous UDRP decisions made against the Respondent as a result thereof, referred to above by the Complainant, in the view of the Panel, is further overwhelming evidence of bad faith on the part of the Respondent (See Kahn Lucas Lancaster, Inc. v. Marketing Total S.A., WIPO Case No. D2007-1236 and General Electric Company v. Marketing Total S.A., WIPO Case No. D2007-1834).
It has also been established that the content of the domain name contains numerous advertising links to websites promoting and/or offering third party products, including in some cases links to competitors of the Complainant. The Respondent's website appears to generate revenues via a pay-per-click system. Such exploitation of the reputation of the NESTLE trademark to obtain click-through commissions from the diversion of Internet users is an indication of use in bad faith according to previous UDRP decisions (See L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451).
The circumstances in the case before the Panel indicate that the Respondent was aware of the Complainant's NESTLE trademarks when registering the domain name <wwwnestleusa.com> and that it has intentionally been and is being used in an attempt to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainants' trademarks as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on a website.
The failure of the Respondent to answer the Complainant's Complaint and take any part in these proceedings also suggests in combination with other factors bad faith on the part of the Respondent (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).
Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and is using the 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 <wwwnestleusa.com> be transferred to the Complainant.
Pablo A. Palazzi
Dated: February 1, 2010