WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Société des Produits Nestlé SA v. HAES Inc.

Case No. D2002-0887

 

1. The Parties

The Complainant is Société des Produits Nestlé SA of Vevey, Switzerland represented by Dr Michael Treis of Baker & McKenzie, Zurich, Switzerland.

The Respondent is HAES Inc. of Patembang, Indonesia. The Respondent is unrepresented but a Response by email was filed by one Bayu Krisna, claiming to be the beneficial owner of the disputed domain name.

 

2. The Domain Name and Registrar

The disputed domain name is <dancow.net>. It is registered with Domain People Inc. of Vancouver, B.C., Canada (the "Registrar").

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 24, 2002. On September 25, 2002, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On October 9, 2002, 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 for the administrative, billing, and technical contact. 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 the Respondent of the Complaint, and the proceedings commenced on October 14, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2002. A Response was filed with the Center on October 21, 2002, by email only by Bayu Krisna. He was advised by the Center of deficiencies in the Response. Although he has failed to remedy these deficiencies, the Panel has considered the matters raised in this informal Response.

The Response was filed by Bayu Krisna who claimed to have been the previous owner of the disputed domain name. He stated: "I am now again the owner after the domain name have been dropped and re-registered by HAES Inc. I just received a forwarded mail containing your complain about the domain name".

He further claimed that he had an agreement with HAES Inc. to change ownership of the disputed domain name "back home". "I didnt change the identity of the registrant because I think that my financial loss is enough and I didnt want to make another expense".

The Panel must regard HAES Inc. as the proper Respondent, although the Panel has taken into account Mr. Krisnas representations. The integrity of the registrar must be preserved and third parties cannot be bound by an agreement about registration which does not find expression in the registrar which is publicly available. In other words, the Panel must consider the Registrant as the legal owner of the disputed domain name, not somebody claiming to be the beneficial unregistered owner.

The Center appointed the Honourable Sir Ian Barker, QC of Auckland, New Zealand as the sole Panelist in this matter on November 25, 2002. 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 administrative proceeding is English.

 

4. Factual Background

The Complainant is a leading manufacturing company in the area of food, including confectionary and beverages. With a total workforce of approximately 225,000 people and some 479 factories worldwide, the Complainant is Switzerlands largest company and the worlds largest food company.

The Complainant is the owner of many trademark registrations worldwide. In particular, Complainant has several registrations for the trademark DANCOW in the Republic of Indonesia. The first registration was on February 18, 1985, (renewed on November 6, 1995, under No. 347870) for the trademark DANCOW (Word & Device). The trademark DANCOW (Word) was registered in 1986, and DANCOW STAMINA in 1996. These trademarks are mainly used for sterilized milk, steamed milk, milk powder, condensed milk, skim milk and other dairy products.

The word DANCOW is a contraction of DANISH COW and thus an invented word. It does not have any meaning or connotation in Indonesian language, nor in any other language, other than as the trademark of Complainant. Apart from its trademark rights, Complainant also claims exclusive authorship.

In Indonesia, the trademark DANCOW (alone or in combination with other word and/or device elements) enjoys a high reputation and goodwill. Three awards have been given to the brand in the last two years in that country. In 2002, the Complainants turnover with DANCOW products in Indonesia will exceed US$150 million, making it the leading Indonesian producer of powdered milk with a market share for the last two years above 40%. The trademark DANCOW is widely and intensively used in advertising in Indonesia.

The Complainant operates various websites dedicated to popular brands primarily designed to attract possible customers of Complainants products. These websites are frequently visited. Complainants websites and trademarks have been the target of cyber-squatters, as can be illustrated by a number of UDRP Panel decisions (e.g. <nestlefoods.com> (Société des Produits Nestlé SA v. Telmex Management Services, WIPO Case No. D20020070), <nestle-purina.com> et al (Société des Produits Nestlé SA v. Stuart Cook, WIPO Case No. D2002-0118), <rowntrees.com> (Société des Produits Nestlé S.A v. Matthew Harper, WIPO Case No. D2001-0278), <crossandblack-well.com> (Société des Produits Nestlé SA v. DRCT Limited, WIPO Case No. D2001-1213).

In March 2002, the Complainants Indonesian branch discovered that the disputed domain name had been registered by a Mr. Bayu Krisna. Its legal representative sent a "cease and desist" letter to him on March 20, 2002. Instead of complying with the demands or answering the letter, Mr. Bayu Krisna immediately transferred the domain name to the Respondent, HAES Inc.

The Respondents contact in the WHOIS database on the line below the new registrants name includes a sentence (Susu Ibu Lebih Indah Susu Dancow), which, in English translation, means: "Her breasts are more beautiful than Dancows". Under technical contact, it is stated four times that the domain name is for sale.

A person going to the site "http://www.dancow.net" does not find any information about the Complainants DANCOW products, but is forwarded to a site titled "Young Teen Series, #1 Bookmark For Your Teen Pleasure!", including "Links to high quality *free* Teen Galleries", "Hardcore Teen Pics & Movies", etc. The websites and links are of pornographic character and even include sexually explicit movies and pictures of women that are under age. Additionally, when the Complainants representative accessed the website on September 5 and September 13, 2002, the virus called JS.Exception.Exploit was automatically downloaded from the website.

 

5. Parties Contentions

Complainant

Identical or Confusingly Similar

The Complainant is the legitimate owner of the trademark DANCOW. The distinctive element of the disputed domain name is identical to the trademark DANCOW.

Rights or Legitimate Interests in the Domain Name

The Respondent cannot claim any rights or legitimate interest in respect of the disputed domain name because:

The Respondent is domiciled in Indonesia, where DANCOW is a well-known and distinctive mark. The Respondent knowingly registered a domain name that infringes the Complainants trademark rights and must be aware that the disputed domain name corresponds to this trademark. There is no evidence of the Respondents use of the disputed domain name in connection with a bona fide offering of goods or services.

The Respondent is not authorized by and has no other links to the Complainant or the Complainants business, and is not commonly known, as an individual, business or organization, by the disputed domain name.

There is no evidence that the Respondent makes a legitimate non-commercial or fair use of the domain name. DANCOW is, unlike many generic and descriptive terms that may be used legitimately to describe a website or its content, an invented word. It does not exist in any language, in particular not in Indonesian, and the Complainant can claim exclusive authorship. Thus, the Respondent cannot rely on any right or legitimate interest in respect of the word DANCOW.

The Domain Name Registered And Used in Bad Faith

The disputed domain name has been registered and is being used in bad faith:

Products labeled with the trademark DANCOW enjoy great popularity among Indonesian consumers. The Complainant is market-leader in the relevant business sector with a market share for DANCOW products of more than 40%, and the trademark DANCOW is widely used in advertisements on TV, in magazines, etc. The trademark has become well-known in Indonesia and therefore must have been known by the Respondent (who is also domiciled in that country) at the time of registration.

The Complainants trademark is an invented word and highly distinctive. The word DANCOW does not have any meaning or connotation in any language other than as trademark of the Complainant. Thus, the only explanation why the Respondent would register the domain name is because it knows of the Complainant or the Complainants business and trademark.

When accessing information about Respondent through the WHOIS database, the user encounters, below the registrants name, the sentence "Her breasts are more beautiful than Dancows". The phrase clearly shows that the Respondent must have been aware of the Complainants trademark.

Because the trademark DANCOW is well-known, the Respondent must have been aware that Indonesian consumers, as well as others interested in information about DANCOW will try to enter the domain name address in order to find the Complainants website. The Respondent intentionally exploits the fame and goodwill of the DANCOW trademark by diverting Internet traffic intended for Complainant to its pornographic website.

The Respondents use of the mark is improper. Customers purchasing DANCOW products are mainly families with young children. Such persons, as well as every regular user, will be directed to a website displaying sexually explicit material related to "teens". Some of the individuals who visit this website could assume that there is some kind of relationship between the Complainant and a pornographic website. In addition, the website attempts to install a virus called JS.Exception.Exploit on the users computer, which is able to perform, according to the virus description, almost any malicious action. The Respondents behaviour causes great and irreparable harm to the Complainant and its trademark, and will significantly disrupt the Complainants business.

The disputed domain name is offered for sale four times in the "Technical contact". This is proof that the Respondent has acquired the domain name primarily for the purpose of selling the domain name registration to Complainant or to a competitor.

There is a typical case of domain name squatting, significantly worse than most cases, since it causes substantial harm to the Complainant, as well as to Internet users.

Respondent

The Respondent offered to negotiate a transfer with the Complainants Indonesian representative, but that representative did not respond to Mr. Krisnas overtures. Nor did it take up the registration when it expired. The Complainant, as a multi-national, should have registered the name then. He wants Complainant to compensate him for his loss on his agreement with HAES Inc. (amount unspecified). He had no bad intention towards the Complainant or its products.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

"decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these rules and any rules and principles of law that it deems applicable."

The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:

- that 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

- that the Respondent has no legitimate rights or interests in respect of the domain name; and

- that the domain name has been registered and is being used in bad faith.

Identical or Confusingly Similar

The disputed domain name is identical to the Complainants registered trademarks. The Panel considers the first criterion proved.

Legitimate Rights & Interests

As to the second criterion, the Complainant gave the Respondent no legitimate rights or interests in respect of the domain name. The fact, on its own, can be sufficient to prove the second criterion. Paragraph 4(c) of the Policy sets out matters which a Respondent is entitled to raise which, if found by a Panel to be proved based on an evaluation of all evidence presented, could demonstrate a Respondents rights or legitimate interests to a domain name. None of these has been demonstrated. The second criterion is therefore proved. The arguments of Mr. Krisna have no substance or relevance.

Bad Faith Registration

As to bad faith registration and use, the Panel considers this criterion proved for the reasons set out in the Complainants submissions which the Panel accepts. The linkage to a pornographic site and the offer to sell the name reinforces this view. The Panel agrees with the Complainants assertion that this is a bad case of cyber-squatting.

 

7. Decision

For the foregoing reasons, the Panel decides:

(a) That the domain name <dancow.net> is identical to the trademark to which the Complainant has rights; and

(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and

(c) That the domain name has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <dancow.net> be transferred to the Complainant.

 


 

Hon. Sir Ian Barker, QC
Sole Panelist

Dated: December 3, 2002