World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société des Produits Nestlé S.A. v. Cengiz Simsek

Case No. D2011-0022

1. The Parties

The Complainant is Société des Produits Nestlé S.A. of Vevey, Switzerland, represented by Studio Barbero, Italy.

The Respondent is Cengiz Simsek of Adana, Turkey.

2. The Domain Names and Registrar

The disputed domain names <nescafealtarica.com>, <nescafe-cappuccino.com>, <nescafecappuccino.com>, <nescafe-classic.com>, <nescafeclassic.com>, <nescafecollection.com>, <nescafe-gold.com>, <nescafegold.com>, <nestledamak.com>, <nestlepurelifewater.com>, <nestlepurelifewaters.com>, <xn--nescafetrkiye-3ob.com>, and <xn--nestleikolata-ngb.com> (the “Disputed Domain Names”) are registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2011. On January 6, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Disputed Domain Names. On January 8, 2011, GoDaddy.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 January 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 2, 2011.

The Center appointed Derek M. Minus as the sole panelist in this matter on February 9, 2011. 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 a Swiss limited liability company founded in 1866 by Henri Nestlé which today sells products and services all over the world in various industries, primarily the food industry, including coffee products, baby foods, breakfast cereals, chocolate and confectionery, beverages, bottled water, dairy products, ice cream, prepared foods, and food services. With over 283,000 employees, the Complainant is the world's largest food consumer products company marketing its products in over 200 countries. According to Fortune Magazine’s “Fortune Global 500”, an annual ranking of the world's 500 largest companies, the Complainant was in 2010, the 44th biggest company in the world.

According to Interbrand’s annual Best Global Brands ranking for 2010, the trademark NESTLÉ was worth USD 6,548 million in 2010, making it the 58th most valuable trademark in the world. The NESCAFÉ mark was initially launched in 1938 in connection with the Complainant’s instant coffee products and has become one of the Complainant’s leading brands all over the world. The NESCAFÉ mark is now used in connection with a range of coffee products marketed by the Complainant, including Classic, Decaff, Dolce Gusto, Gold, Cappucino, Blend 37, Fine Blend, Gold Blend, Alta Rica, Cap Colombie and Partners’ Blend.

As well, the Complainant is the owner of the over 100,000 international and national trademark registrations worldwide including the following, registration details of which are provided by the Complainant:

- International Reg. No. 400444 of July 16, 1973, NESTLÉ (word and device mark), in classes 01, 05, 29, 30, 31, 32, 33;

- International Reg. No. 479337 of August 12, 1983, NESTLÉ (word mark), in classes 01, 05, 29, 30, 31, 32, 33;

- International Reg. No. 490322 of November 27, 1984, NESTLÉ (word and device mark), classes 01, 05, 29, 30, 31, 32, 33;

- International Reg. No. 511513 of April 3, 1987, NESTLÉ (word mark), in classes 03, 16;

- International Reg. No. 638768 of June 28, 1995, NESTLÉ (word mark), in classes 35, 39, 41, 42;

- International Reg. No. 649928 of January 4, 1996, NESTLÉ (word mark), in classes 03, 05, 29, 30, 32;

- International Reg. No. 651791 of February 19, 1996, NESTLÉ (word mark), in classes 29, 30;

- International Reg. No. 653196 of March 29, 1996, NESTLÉ (word mark), in class 5;

- International Reg. No. 655463 of March 13, 1996, NESTLÉ (word mark), in classes 05, 29, 30;

- International Reg. No. 655692 of January 25, 1996, NESTLÉ (word mark), in classes 05, 30;

- International Reg. No. 704989 of November 12, 1998, NESTLÉ (word mark), in class 32;

- Community Trademark Reg. No. 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;

- International Reg. No. 189879 of January 9, 1956, NESCAFÉ (word mark), in class 30;

- International Reg. No. 208358 of March 22, 1958, NESCAFÉ (word mark), in class 30;

- International Reg. No. 300360 of July 21, 1965, NESCAFÉ (word mark), in class 5, 29, 30, 31, 32;

- International Reg. No. 638767 of June 28, 1995, NESCAFÉ (word mark), in class 35, 39, 41, 42;

- Community Trademark Reg. No. 897333 of August 29, 2006, NESTLÉ (word mark), in classes 11, 21;

- Community Trademark Reg. No. 1116318 of August 2, 2000, NESTLÉ (word mark), in classes 29, 30;

- Community Trademark Reg. No. 3346053 of April 21, 2005, NESTLÉ (word mark), in classes 9, 11, 14, 16, 18, 21, 24, 25, 28, 29, 30, 32, 35, 41, 43;

- International Reg. No. 314144 of May 31, 1966, NESCAFÉ GOLD (word mark), in class 30;

- International Reg. No. 701120 of September 29, 1998, NESCAFÉ CLASSIC (word mark), in class 30;

- International Reg. No. 897333 of August 29, 2006, NESCAFÉ (word mark), in class 11, 21;

- International Reg. No. 694649 of May 27, 1998, PURE LIFE (word mark), in class 32;

- International Reg. No. 895043 of July 13, 2006, PURE LIFE (word mark), in class 32;

- International Reg. No. 941054 of September 21, 2007, NESTLÉ PURE LIFE (word and device), in class 32.

The Complainant has also registered over 180 distinct domain names that incorporate the NESTLÉ and NESCAFÉ trademarks in numerous gTLDs and ccTLDs. The Complainant operates the web sites “www.nescafe.com” and “www.nescafe.co.uk” as its primary web portals for the promotion of its NESCAFÉ brand and the web site “www.nestle.com.tr” is used to promote its activity in Turkey. The Complainant also operates the website “www.nestle-purelife.us” as its primary web portal for the promotion in the United States of its Pure Life brand of bottled water.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that:

“The Respondent registered all of the disputed Domain Names between the dates of December 7th and 9th, 2009 without the Complainant’s authorization and, although most are not currently pointing to active web sites, each of the Domain Names have previously directed Internet users to a Turkish language web site where competitor water products were promoted and users were invited to submit inquiries by email suggesting the sale the Domain Names.”

“As soon as the Complainant became aware of the registration of these thirteen Domain Names either identical or confusingly similar to its registered trademarks, it developed a strategy to reclaim them. In order to ascertain the intentions of the Respondent and any legitimate interest that may have existed, an email was sent to the Respondent on May 4, 2010 by a marketing company expressing interest for those of the Domain Names about which it was currently aware and inquiring about their availability.”

“ [. . .] In light of this additional evidence of the Respondent’s bad faith, the Complainant thereupon instructed its legal representative to send a cease and desist demand letter to the domain name holder, which was sent on March 23, 2010 by email and registered mail to the address of the registrant indicated in the WHOIS database, requesting transfer of the disputed domain names.”

B. Respondent

The Respondent did not provide any reply to the Complainant’s contentions by the due date for Response on February 1, 2011. However, in an email message sent on February 02, 2011 from one of the Respondent’s email addresses, Harun Aksoy informally communicated to the Center: “Is there anything I should do?”

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving, on the balance of probabilities, each of the following three elements:

(i) that the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(iii) that the Disputed Domain Names have been registered and is being used in bad faith by the Respondent.

As the Respondent did not file a Response or otherwise reply to the Complainant’s contentions, the Panel shall decide the complaint on the basis of the Complainant’s submissions and such inferences that can be reasonably drawn from the failure to submit a Response as the Panel considers applicable (Rules, paragraph 14(b)).

A. Identical or Confusingly Similar

The Panel finds that the Complainant is the owner of the trademarks NESTLÉ and NESCAFÉ both by extensive registration and reputation, to the extent that it can legitimately claim NESTLÉ and NESCAFÉ to be well-known marks.

The Complainant submits that the Disputed Domain Names are confusingly similar to the names and trademarks in which the Complainant has extensive rights as each of the Disputed Domain Names incorporates either the Complainant’s NESTLÉ or NESCAFÉ trademark in its entirety. This is then followed by one of the Complainant’s brand names, either with or without a hyphen (e.g. “altarica”, “collection”, “cappuccino”, “classic”, “gold”, “damak”, and “purelifewater”) or the generic words “trkiye” (from the Turkish word “türkiye”, which means “Turkey” in English) and “ikolata” (from “çikolata”, which means “chocolate” in English) with the gTLD “.com” identifier at the end.

Whether a domain name that incorporates a Complainant’s trademark together with a prefix or suffix is confusingly similar to the trademark has been considered in numerous UDRP decisions and it has been consistently held that domain names are identical or confusingly similar to a complainant’s trademark “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” see Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662, concerning the domain name <wal-martsucks.com>.

Here, the Complainant’s NESTLÉ or NESCAFÉ trademark is the distinctive part of each of the Disputed Domain Names, such that the Disputed Domain Names must be considered to be confusingly similar to the registered trademarks (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694). The use of a generic or descriptive term (which in the Disputed Domain Names is one of the Complainant’s brand names) does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189). As well, the mere addition of punctuation symbols, such as hyphens within a mark does not constitute a substantive change, see FOCUS DO IT ALL GROUP and others v. ATHANASIOS SERMBIZIS, WIPO Case No. D2000-0923, where it was found that: “[m]ere differentiation by the insertion of dashes (“-”) still leaves the two [marks] virtually identical.”

The Disputed Domain Names are confusingly similar to the Complainant’s registered trademarks as neither the addition of generic words, the hyphen symbol, or the gTLD “.com”, nor the addition of all of them together, is sufficient to prevent confusion with the Complainant’s unique registered NESTLÉ and NESCAFÉ trademarks.

The Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Paragraph 4(c) of the Policy provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name, as follows:

“(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.”

The Respondent is not a licensee or authorized agent of the Complainant or in any way authorized to use the Complainant's NESTLÉ or NESCAFÉ trademark. As was stated in Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134, “the mere registration, or earlier registration [of a domain name], does not establish rights or legitimate interests in the disputed domain name”.

The Respondent has not provided any evidence of use of, or demonstrable preparations to use, the Disputed Domain Names in connection with a bona fide offering of goods or services. Instead, the Complainant advises that the Respondent currently holds most of the Disputed Domain Names passively. Mere non-use is insufficient to establish a legitimate interest in respect of a domain name (see Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483; Euromarket Designs, Inc. v. Domain For Sale VMI, WIPO Case No. D2000-1195; Netcentives Inc. v. B W Brody Company, WIPO Case No. D2000-0672).

Furthermore, the Complainant took active steps to identify the use that the Respondent intended to make of the Disputed Domain Names and issued cease and desist letters advising it of its registered interests. In Stanworth Development Limited v. Mike Morgan (290436), WIPO Case No. D2006-0230, two “cease and desist” letters were sent, it was held that

“since the Respondent was informed of the Complainant’s claims in relation to the trademark and made no attempt to offer any explanation for his adoption of so similar a domain name for use in relation to services of the same description, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name”.

Similarly in this case, the Respondent has failed to provide any explanation to his incorporation of the Complainant’s trademarks, NESTLÉ and NESCAFÉ, used in the Disputed Domain Names.

There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Names in connection with a bona fide offering of goods or services. There is no evidence that the Respondent is making legitimate, noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert Internet users or to tarnish the Complainant’s trademark. Rather the unauthorized use of the Complainant’s copyright material incorporated into the Respondent’s website precludes the assessment in this case of it making a bona fide offering of goods or services or a legitimate noncommercial, or fair use, of the Disputed Domain Names. The Panel therefore finds that the Complainant has made a prima facie case of the Respondent’s lack of rights to or legitimate interests in the Disputed Domain Names.

Given that the Complainant has satisfactorily made out a prima facie case that the Respondent lacks rights or legitimate interests, the burden is on the Respondent to establish its right or legitimate interests in the Disputed Domain Names (see PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174; Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Sampo plc v. Tom Staver, WIPO Case No. D2006-1135; Audi AG v. Dr. Alireza Fahimipour, WIPO Case No. DIR2006-0003). The Respondent has not demonstrated or established any such right or legitimate interest.

The Respondent has not provided evidence of circumstances illustrated by paragraph 4(c) of the Policy, or any other circumstances evidencing any rights to or legitimate interests in the Disputed Domain Names. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances, which “in particular but without limitation”, shall be evidence of the registration and use of a domain name in bad faith. These four circumstances, which are framed in the alternative are:

“(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”

The Policy lists four circumstances in paragraph 4(b) that are deemed to indicate bad faith. These examples are expressly non-exclusive.

The Complainant’s NESTLÉ and NESCAFÉ trademarks have been in widespread use for a considerable period and predate the Respondent’s recent registration of the Disputed Domain Names. In Société Des Produits Nestlé SA v. Kayvan Sadeghi, WIPO Case No. DIR2007-0002, dealing with the domain name <nestle.ir>, the panel found that

“[e]ven without evidence of the Complainant's registered rights, it is apparent that the Complainant's mark is so famous that, as such, a Panel could legitimately take the equivalent of 'judicial notice' of that fact. Judicial notice is a rule of evidence that allows a matter to be taken as proven, because it is so well-known that it cannot reasonably be contested.” See also Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556.

It is therefore inconceivable that the Respondent was unaware of the Complainant’s trademarks when it registered the Disputed Domain Names.

From the information provided by the Complainant it appears that the Respondent’s registration of the Disputed Domain Names, appears to be an attempt to exploit the fame and goodwill of the Complainant’s NESTLÉ and NESCAFÉ trademarks, by diverting Internet traffic intended for the Complainant’s web page to its own web page. As the Complainant reports,

“each of the Domain Names have previously directed Internet users to a Turkish language web site where competitor water products were promoted and users were invited to submit inquiries by email suggesting the sale the Domain Names. Indeed, the disputed Domain Name <xn--nescafetrkiye-3ob.com> still currently points to that corresponding site”

The deliberate and misleading use of another person’s trademark for the purpose of diverting Internet traffic to their own web site is evidence of bad faith. As was held by the panel in Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, WIPO Case No. D2003-0248,

“it could never be a legitimate or fair use to select a domain name which is confusingly similar to another person’s trade or service mark, with a view to misleadingly attracting visitors to a website linked to that domain name.” The offer of a competitor’s product (water) for sale from the Respondent’s website is a clear example of “intentionally attempting to attract, for commercial gain, Internet users to your web by creating a likelihood of confusion with the complainant’s mark”.

It appears that the Respondent has intentionally attempted to attract Internet users to its web site by creating a likelihood of confusion with the Complainant’s NESTLÉ and NESCAFÉ trademarks as to the source, sponsorship, affiliation, or endorsement of its web site. The Panel finds that paragraph 4(b)(iv) of the Policy is made out.

By a ruse the Complainant initiated contact with a, Harun Aksoy, at an email address listed on the only website which was displayed at one of the Disputed Domain Names. This was the same person who supplied a late informal response to the Center’s request for submissions. The ensuring communication between a “marketing company” apparently acting on the instructions of the Complainant and this person, evidenced an intention by Harun Aksoy to sell the Disputed Domain Names for what may have been valuable consideration in excess of the documented out-of-pocket costs directly related to that Disputed Domain Name. However, the relationship between Harun Aksoy and the Respondent, Cengiz Simsek, was not sufficiently established for any positive finding of bad faith in relation to paragraph 4(b)(i) of the Policy to be made.

Paragraph 4(b)(ii) of the Policy provides that bad faith registration and use will be made out where 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.” InTelstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, it was held that “a ‘pattern of conduct’ as required in Paragraph 4.b.(ii) typically involves multiple domain names directed against multiple Complainants, but may involve multiple domain names directed against a single Complainant (see Smoky Mountain Knife Works v. Deon Carpenter, eResolution Case Nos. AF-230ab; Gruner + Jahr Printing & Publishing Co., G + J McCall’s LLC, Rosie O’Donnell and Lucky Charms Entertainment, Inc. v. Savior Baby, WIPO Case No. D2000-1741)”. In this case, the registration by the Respondent of thirteen Disputed Domain Names that utilise the Complainant’s NESTLÉ or NESCAFÉ trademarks involves a pattern of conduct directed against the Complainant, which prevents it from reflecting its trademark in corresponding domain names. The Panel finds that paragraph 4(b)(ii) of the Policy is made out.

For the foregoing reasons, the Panel accepts that the Disputed Domain Names were registered and are being used in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the following Disputed Domain Names be transferred to the Complainant:

<nescafealtarica.com>

<nescafe-cappuccino.com>

<nescafecappuccino.com>

<nescafe-classic.com>

<nescafeclassic.com>

<nescafecollection.com>

<nescafe-gold.com>

<nescafegold.com>

<nestledamak.com>

<nestlepurelifewater.com>

<nestlepurelifewaters.com>

<xn--nescafetrkiye-3ob.com>

<xn--nestleikolata-ngb.com>

Derek M. Minus
Sole Panelist
Dated: February 23, 2011

 

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