WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société des Produits Nestlé S.A. v. Julia Zeller

Case No. D2015-0019

1. The Parties

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

The Respondent is Julia Zeller of Herisau, Switzerland, self-represented.

2. The Domain Name and Registrar

The disputed domain name <shakissimo.com> is registered with Corehub S.R.L. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2015. On January 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 9, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On January 13 and 19, 2015, the Center received informal communications from the Respondent.

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 21, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 10, 2015. The Response was filed with the Center on February 9, 2015.

The Center appointed Anne-Virginie La Spada-Gaide as the sole panelist in this matter on February 24, 2015. 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 language of the proceedings is English.

4. Factual Background

The Complainant, Société des Produits Nestlé S.A., is a Swiss company which is part of the Nestlé Group. The Complainant owns the majority of the trademarks used under license by the companies of the Nestlé Group.

The Nestlé Group sells products and services all over the world in various industries, primarily in the food industry, including beverages and dairy products.

Nescafé coffee was launched by the Nestlé Group in 1938 and is today a world’s leading coffee brand. In the course of 2014, the Nestlé Group launched a new range of chilled, ready-to-drink coffees in Europe under the brand SHAKISSIMO.

The Complainant is the owner of international, community and national trademark registrations for SHAKISSIMO, including the following:

- Swiss Trademark Registration No. 653342 for SHAKISSIMO filed on December 23, 2013 and registered on January 13, 2014, in classes 29 and 30;

- International Trademark Registration No. 1207889 for SHAKISSIMO registered on April 11, 2014 in classes 29 and 30.

The launch was the subject of an on-line article published on the Blick.ch website on April 14, 2014, under the headline “Jetzt kommt der kalte Kaffee-Krieg” (meaning “here comes the cold coffee war“), and mentioning the name “Shakissimo”.

The disputed domain name <shakissimo.com> was registered on April 16, 2014 in the name of the Respondent Julia Zeller, who is domiciled in Switzerland.

When the domain name was first registered, the registrant email mentioned in the WhoIs details was “z[…]@chiefs.ch”. Such email address was changed to a “bluewin.ch” address very shortly after the registration of the disputed domain name. The domain name <chiefs.ch> belongs to the Swiss company “Chiefs (Schweiz) GmbH”, which appears to be in the business of selling milk drinks, according to the exhibits submitted with the Complaint. The Respondent is mentioned on the Facebook page of Chiefs, under the name Julia Gnos-Zeller.

The disputed domain name has not been used since its registration, a fact that is confirmed by the Respondent.

The Complainant has sent a cease and desist letter to the Respondent on June 3, 2014. Additional reminders were sent to the Respondent via email on June 13, 2014, June 30, 2014 and July 17, 2014. The Respondent did not reply to these communications.

However, a few days after receiving a copy of the Complaint, the Respondent sent an email to the Complainant and to the Center suggesting that she might be considering a transfer of the disputed domain name. The Complainant wrote to the Respondent, asking her to clarify her intentions about the disputed domain name. In an email dated January 16, 2015, the Respondent requested the Complainant to “make an offer for the domain name”, as she had had expenses. The Complainant replied that it was its policy to offer no more than documented out-of-pocket costs. The Respondent replied that if the Complainant’s interest in the domain name was serious, it should make a “realistic offer in line with market requirements”.

5. Parties’ Contentions

A. Complainant

The Complainant’s submissions may be summarized as follows:

The disputed domain name is identical to the trademark SHAKISSIMO in which the Complainant has rights.

The Respondent has no rights or legitimate interests in respect of the disputed domain name, as the Respondent is not affiliated or related to the Complainant, nor is it licensed by the Complainant or otherwise authorized to use the SHAKISSIMO mark. The Respondent is not commonly known by the disputed domain name as an individual, business, or other organization, and SHAKISSIMO is not the family name of the Respondent. In addition, the Respondent has not prima facie secured trademark registration for the sign “Shakissimo” . Furthermore, the Respondent has passively held the disputed domain name since its registration, and did not reply to the cease and desist letters sent by the Complainant. It is sufficient that the Complainant shows a prima facie evidence in order to shift the burden of production to the Respondent.

The disputed domain name was registered and is being used in bad faith. Indeed, the disputed domain name was registered three months after the registration of the trademark SHAKISSIMO in Switzerland and two days after the publication of the first article dedicated to the launch of Shakissimo products on a Swiss online newspaper. Furthermore, the Respondent, being closely cooperating with a company active in the beverage industry and thus competing with the Complainant on some products, ought to be aware of the Complainant’s registration of the trademark SHAKISSIMO, which is an invented word. The Complainant contends that the reason for registering the disputed domain name has been primarily to block the Complainant from registering it. Finally, the failure to respond to communications of the Complainant is evidence of the Respondent’s bad faith.

The Complainant consequently requests that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent’s submissions may be summarized as follows:

The disputed domain name was registered by Julia Zeller as a private person, and there is no connection with the company “Chiefs (Schweiz) GmbH” or “Chiefs AG”. The Respondent did work for a short time as an administrative assistant at “Chiefs (Schweiz) GmbH”, but is currently working at a Swiss bank.

The Respondent, as a personal trainer in pole fitness/dance, bought the domain name in order to launch her own sports wear collection, including outfits for pole fitness and workout clothes, via an online shop. “Shake” has been chosen in connection with “dancing” and “-issimo” for “bravissimo”. In addition, Shakissimo contains the word “kiss”, the logo being a kiss mouth.

The word “Shakissimo” will not be used in connection with classes 29 and 30 protected by the Complainant, but only in relation with sports and clothing. The Respondent intends to protect the trademark SHAKISSIMO for sports and clothing in the next few weeks. The logos are developed and the production should take place soon. At this stage, a change of name would be a disaster. The Respondent bought the <shakissimo.com> and <shakissimo.de> domain names because <shakissimo.ch > was, and is still, occupied.

The Respondent did not reply to the Complainant’s communications because she did not take them seriously and she has for principle to never respond to threats. She affirms that she registered the disputed domain name in good faith.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:

(i) the domain name registered by the respondent 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 the domain name; and

(iii) the domain name registered by the respondent has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name <shakissimo.com> is identical to the trademark SHAKISSIMO, to which the Complainant has rights.

The Complainant has thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden of production shifts to the respondent, who has to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.

In this particular case, the Complainant makes the following undisputed allegations:

- the Respondent is not a licensee of the Complainant, nor has the Complainant granted to the Respondent an authorization to use the disputed domain name;

- the Respondent is not commonly known by the disputed domain name as an individual, business, or other organization, and “Shakissimo” is not the family name of the Respondent;

- the Respondent has not prima facie secured trademark registration for the sign “Shakissimo” ;

- the Respondent did not reply to the cease and desist letters sent by the Complainant:

- the Respondent is not using the disputed domain name.

In the opinion of this Panel, the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

In her response to the Complaint, the Respondent explains that she is about to launch a sports wear collection called Shakissimo, that will have nothing in common with the products protected by the Complainant’s trademark SHAKISSIMO. She alleges that she will soon register the word “Shakissimo” as a trademark for sports and clothing.

According to the paragraph 4(c)(i) of the Policy, a respondent may show that it has legitimate interests to domain name when it has used or made demonstrable preparations to use the domain name in connexion with a bona fide offering of goods or services before receiving any notice of the dispute from the complainant.

In the present case, the Respondent alleges an intent to use the disputed domain name in connection to goods that would not compete with the Complainant’s goods offered under the mark SHAKISSIMO, but she does not provide any document or details that would substantiate her allegations. In particular, the Respondent does not come forward with any information that would be apt to show that the alleged preparations begun before she received the first cease and desist letter from the Complainant’s representative.

If her assertions were true, the Panel believes that the Respondent would have been in the position to submit evidence of her preparations (see e.g. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

Therefore, the Panel is of the opinion that the Respondent has failed to come forward with appropriate evidence of her legitimate interests in the disputed domain name, and that the Complainant has satisfied the condition set forth in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Respondent registered the disputed domain name three months after the registration of the Complainant’s Swiss mark, and just two days after the publication of an article, published on the website of a popular Swiss newspaper, announcing the launch of the Complainant’s new “Shakissimo” range of chilled coffees. Although it is unclear whether the Respondent was an employee of Chiefs (Schweiz) GmbH when she registered the disputed domain name, the use of an email address “[…]@chiefs.ch” as the registrant email shows that on the date of registration, the Respondent had ties to this company, which appears to be a direct competitor of the Complainant.

In view of such circumstances, and also considering that “Shakissimo” is a fantasy term, this Panel considers it very unlikely that the Respondent chose the disputed domain name by coincidence. It rather seems that the article published on the Blick.ch website prompted the Respondent to register the disputed domain name.

The fact that the Respondent then immediately changed the registrant’s email address upon registration is likewise a troubling circumstance. It may suggest that the Respondent did not want her relationship to Chiefs to be visible.

These circumstances lead the Panel to consider that the disputed domain name was registered in bad faith.

The Policy requires complainants to demonstrate not only registration but also use in bad faith of a domain name. In the present case, it is undisputed that the disputed domain name <shakissimo.com> has never been connected to an active website.

The consensus view of UDRP panelists is that passive holding of a disputed domain name may in certain circumstances be consistent with a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith (see Barlow Lyde & Gilbert v. The Business Law Group, WIPO Case No. D2005-0493).

In the case at hand, the Respondent did not react to the cease and desist letter – and subsequent reminders – that the Complainant’s representatives sent in June and July 2014. In particular, she did not, at that time, inform the Complainant of any personal project involving the use of the disputed domain name.

When she received the Complaint, the Respondent did not mention such a project either, but rather asked the Complainant to make an offer for the disputed domain name. The Respondent thus seemed willing to transfer the disputed domain name to the Complainant if the price was right.

It is only in the Response to the Complaint that the Respondent alleges for the first time the intent of using the disputed domain name in connection with the online sale of sports clothes. The Respondent states that a name change would be “a disaster” as this stage, as the logos are developed and she is about to launch production. However, despite the alleged progress of such project, the Respondent does not submit any document to prove her affirmations. It is the Panel’s opinion that if the described project was real, and as advanced as the Respondent says, the Respondent would have submitted at least some evidence of the preparations allegedly underway. Moreover, the Respondent’s apparent willingness to sell the disputed domain name in January 2015 is difficult to reconcile with her affirmation that a change of name would be disastrous at this point.

The Respondent’s failure to provide convincing explanations regarding the intended use of the disputed domain name, her attempt at eliciting a purchase offer exceeding her out-of-pocket costs, combined with the timing of the registration (days after the launch of the Complainant’s “Shakissimo” product was announced) and the Respondent’s links to a competitor of complainant are circumstances that, taken together, justify in this Panel’s opinion a finding of passive holding in bad faith.

Therefore, the Panel finds that the Complainant has satisfied the condition set forth in paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that that the disputed domain name <shakissimo.com> be transferred to the Complainant.

Anne-Virginie La Spada-Gaide
Sole Panelist
Date: March 10, 2015