WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société des Produits Nestlé S.A. (Nestlé). v. PPA Media Services, Ryan G Foo
Case No. D2012-2528
1. The Parties
The Complainant is Société des Produits Nestlé S.A. (Nestlé) of Vevey, Switzerland, represented by Studio Barbero, Italy.
The Respondents are PPA Media Services, Ryan G Foo of Santiago, Chile.
2. The Domain Name and Registrar
The disputed domain name <usnestle.com> is registered with Internet.bs Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on December 21, 2012. On December 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 27, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 7, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 7, 2013.
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” 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 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 29, 2013.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on February 7, 2013. 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.
The Panel determines that, pursuant to paragraph 11(a) of the Rules, the language of the proceeding is English, i.e. the language of the Registration Agreement with the Registrar, a copy of which has been provided by the Complainant.
4. Factual Background
The Complainant is one of the world's largest food consumer products company and has over 283,000 employees. It markets its products in over 200 countries, including in the United States of America.
The Complainant is the owner of a large number of trademark registrations worldwide, for instance the NESTLE mark, with International Registration No. 400444 registered on July 16, 1973 for a word and device mark in classes 01, 05, 29, 30, 31, 32 and 33. The NESTLE mark ("the Mark") is ranked among the world's 100 most valuable trademarks.
The Complainant operates a website using the domain name <nestle.com> as its primary web portal for global promotion.
The disputed domain name was created on September 26, 2004.
5. Parties’ Contentions
(i) The Complainant submits that the disputed domain name reproduces the Mark in which the Complainant has rights, and are confusingly similar to the Mark insofar as the disputed domain name, <usnestle.com>, contains the Mark in its entirety. The Complainant also asserts that the addition of the geographic identifier “us” as a prefix does not serve to distinguish the disputed domain name <usnestle.com> from the Mark.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant contends that it has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the Mark in any manner. The Complainant also asserts that the Respondent has never been commonly known by the disputed domain name and has never acquired any trademark or service mark rights in the disputed domain name.
(iii) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith and has never used, or made preparations to use, the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. It alleges that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name but instead is using the disputed domain name in connection with websites that display sponsored links.
(iv) The Complainant submits that by registering the disputed domain name, the Respondent sought to misleadingly divert consumers for commercial gain. Furthermore, the Complainant submits that the Respondent acted in bad faith because the Mark being famous or at least well-known due to its extensive use since 1887, it knew or should have known about the Complainant's rights in and to the Mark when registering the disputed domain name.
(v) Finally, the Complainant contends that the Respondent acted in bad faith because the Respondent’s registration and use of the disputed domain name obviously exploits the fame and goodwill of the Mark and because the Respondent has engaged in a pattern of conduct as evidenced by numerous proceedings against the Respondent under the Policy, which have resulted in decisions ordering transfers of the disputed domain names.
(vi) The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Procedural Aspects
The Respondent is formally in default pursuant to paragraphs 5(e) and 14(a) of the Rules and paragraph 8(c) of the Supplemental Rules, because no Response was received from the Respondent within the deadline set by the Policy and the Rules.
Under the Rules, paragraphs 5(e) and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the assertions made in the Complaint.
Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name or other remedy have been met.
Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith.
B. Requirements of Paragraph 4(a) of the Policy
(i) Identical or Confusingly Similar
In comparing the Mark with the disputed domain name <usnestle.com>, it is evident that the latter consists solely of the Mark, preceded by the geographic identifier “us” for the United States.
The addition of generic terms does not serve to distinguish a domain name from registered marks. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; Royal Bank of Canada v. Rouslan Tambiev, WIPO Case No. D2002-0672; and Allianz AG v. Marian Dinu, WIPO Case No. D2006-0318.
Numerous UDRP panels have found that the addition of a geographic name to a domain name that contains a complainant’s trademark “increase[s] the likelihood of confusion between the domain name […] and the mark [….]”. See Six Continents Hotels, Inc. v. Trasporto di Networ and Pro Intel, WIPO Case No. D2004-0246; and Six Continents Hotels Inc. v. Mindwerk, Kevin M. Manhan, WIPO Case No. D2006-1074.
This is especially true where the geographic identifier is associated with a location in which Complainant conducts business. See Hilton Worlwide, Hilton Hotels Corporation, HLT Domestic IP LLC, HLT International IP LLC v. WhoIs Privacy Service Pty ltd., Customer ID: 17451672649672 / Yorkshire Enterprises Limited, Yorkshire Enterprises, WIPO Case No. D2010-1066; and Hilton Worldwide, Hilton Hotels Corporation, HLT Domestic IP LLC and HLT International IP LLC v. mga enterprises limited/Domains by Proxy, Inc., WIPO Case No. D2010-1064.
The Panel finds that the disputed domain name <usnestle.com> is confusingly similar to the Mark, which it incorporates in its entirety.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
(ii) Rights or Legitimate Interests
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of a respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of a right or legitimate interest in a domain name, once the complainant has made a prima facie showing, as the Panel believes the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
As previously noted, the Respondent did not submit a formal Response, thus offering no reason for selecting the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name or a corresponding name or uses a corresponding name in a business.
The website associated with the disputed domain name resolves to a website that displays a number of sponsored links to various websites both related and unrelated to the Complainant.
No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent (i) has no rights or legitimate interests in the disputed domain name; (ii) has no connection with or authorization from the Complainant; and (iii) is not commonly known by the disputed domain name.
In the circumstances, the Panel concludes that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name.
(iii) Registered and Used in Bad Faith
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering the disputed domain name similar to the Mark.
It is established in prior UDRP decisions that the registration of a domain name confusingly similar to a famous trademark by any entity that has no relationship to that mark may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Pfizer Inc. v. NA, WIPO Case No. D2005-0072; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; and Research in Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492.
The Panel considers that the notoriety of the Mark makes it highly unlikely that the Respondent would have chosen to register the disputed domain name randomly, not knowing of the Complainant’s rights in the Mark prior to acquiring the disputed domain name. See Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, L.L.C. v. Darmstadter Designs, WIPO Case No. D2001-1384 citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; and SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.
The Complainant has argued that the Respondent is not making a bona fide use of the disputed domain name, and has stressed that the disputed domain name is used to divert Internet users for commercial gain.
In addition, the Panel notes that many UDRP panels have held that bad faith use of a domain name by a respondent may also result from the fact its good faith use is in no way plausible (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148), considering the specificity of the activity.
The Panel also accepts that the Respondent’s website will directly or indirectly have generated revenue for the Respondent or whoever is responsible for the uploading of third party links on the websites to which the Respondent’s website resolves. The fact that it might not be the Respondent who has derived the gain is irrelevant. See Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912.
The Panel has found that there is a clear pattern of conduct on the part of the Respondent in registering domain names in order to prevent owners of the relevant trade marks from reflecting such mark in a corresponding trade name, which is clearly evidenced by a considerable number of UDRP decisions, such as the following ones: Rank Leisure Holdings Limited v. Fundacion Private Whois / PPA Media Services, WIPO Case No. D2012-1842; Sportsman’s Warehouse, Inc. v. Fundacion Private Whois / PPA Media Services, WIPO Case No. D2012-1284; Inter-Continental Hotels Corporation v. Fundacion Private Whois Domain Administrator and PPA Media Services, WIPO Case No. D2012-1095; Dyson Limited v. PPA Media Services, Ryan G Foo (also known as Fundacion Private Whois, Domain Administrator), WIPO Case No. D2012-0897; Petroleo Brasileiro S.A. - Petrobras v. PPA Media Services, Ryan G Foo / Private Whois, WIPO Case No. D2012-0655; and El Palacio de Hierro S.A. de C.V. v. Private Whois / PPA Media Services, Ryan G Foo, WIPO Case No. D2012-0185.
In EasyGroup IP Licensing Limited v. PPA Media Services, Ryan G Foo / Fundacion Private Whois, WIPO Case No. D2012-1093, the Panel noted “that the Respondent has been involved in at least ten other domain name dispute proceedings, in which all of such proceedings, the panels ordered that the domain names in dispute thereof be transferred to the respective complainants […] This record reflects a pattern of conduct on the part of the Respondent in registering other domain names in bad faith”.
PPA Media Services was also found to have acted in bad faith in Government Employees Insurance Company (“GEICO”) v. PPA Media Services, Ryan G. Foo, WIPO Case No. D2012-1486, where the Complainant also contended that the e-mail address provided by the Respondent on the WhoIs database was false (“the Respondent’s listing of a non-functioning email address as its only contact information in the publicly available WhoIs database (demonstrated by the delivery failure notice that the Complainant received pursuant to sending correspondence in connection with this Dispute to the Respondent), is indicative of bad faith").
In addition, the Panel can discern no legitimate basis under the circumstances for the Respondent’s use of a privacy shield service, Fundacion Private Whois, and considers this fact under the present circumstances as also corroborative of bad faith. See Gaylord Entertainment Company v. Nevis Domains LLC, WIPO Case No. D2006-0696.
Besides, it is well established that the mere passive holding of a domain name may in appropriate circumstances be evidence not only of bad faith registration, but also of bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallow, WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232; and Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004; Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260. In this case, the Respondent's privacy shield service did not reply to cease and desist demands sent by the Complainant.
Finally, some UDRP panels have held that in certain circumstances, persons who are registering domain names have an affirmative duty to abstain registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc v. B.B. de Boer, WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
The Panel concludes in these circumstances that the Respondent’s registration and use of the disputed domain name are in bad faith and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <usnestle.com> be transferred to Complainant.
Date: February 21, 2013