WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Société des Produits Nestlé SA v. Robert Sianturi

Case No. D2002-0889

 

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 Robert Sianturi, Sumut, Indonesia. The Respondent is unrepresented and has filed a Response by online submission only.

 

2. The Domain Name and Registrar

The disputed domain name is <dancow.com>. It is registered with Network Solutions Inc. (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 September 27, 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 September 30, 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 20, 2002, by online submission. Despite the informal nature of the Response, which did not comply with the Rules, the Panel has decided to consider the Respondents submission.

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 manufacturer of food, including confectionery 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 a broad range of 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 power, condensed milk, skim milk and other dairy products, etc.

The word DANCOW is a contraction of DANISH COW and, thus, is an invented word. The word has no meaning or connotation in the Indonesian language, nor in any other language, other than as the trademark of Complainant. Apart from its trademark rights, Complainant can also claim 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 in that country to the brand in the last two years. In 2002, the Complainants turnover with DANCOW products in Indonesia will exceed US$150 million, making the company the leading Indonesian producer of powder milk with a market share for the last two years above 40%. The trademark DANCOW is widely and intensively used in advertising in Indonesia.

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 illustrated by a number of UDRP Panel decisions (e.g. <nestlefoods.com> (Société des Produits Nestlé SA v. Telmex Management Services, D2002-0070), <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, Nestlé Indonesia discovered that the disputed domain name had been registered by the Respondent. Nestlés Indonesian legal representative on March 27, 2002, sent a cease and desist letter to the Respondent, requesting him to withdraw the registration. The Respondent replied on April 3, 2002, claiming that the aim and objective of the cease and desist letter was unclear, as well as the proposed way of settling the case. The Complainants representative sent two additional notices to the Respondent, again requesting him to withdraw the registration (on April 11, 2002, and on April 29, 2002). In his replies, the Respondent sought payment for the transfer of the domain name, including US$199 for the transfer and related costs, registration fees over eight years, as well as the cost of Web Hosting services. The Respondent claimed that he did not know "anything about law or trademark law and the status of the domain name", that he was not acting in "ill-faith" and that he wanted to reach a "win-win- solution", since:

"You [Complainant] control the domain name dancow.com and I [Respondent] do not lose it since I earn my living there. Just consider it domain name registration fee you have to incur if it is not yet registered. It is even much more inexpensive than legal fee you have to pay."

The Complainant made a last effort to settle the case amicably on September 2, 2002, by offering to pay a compensation equivalent to the costs for the registration of the domain name for eight years and to bear the transfer costs of the disputed domain name. The Respondent answered on September 11, 2002, requesting further items i.e. (a) compensation for 2 emails POPS email account @ US$30 per year for 8 years and (b) cost of one UNIX webdating account equal to local Indonesia provider of Rp690,000. The disputed domain name is inactive.

 

5. Parties Contentions

Complainant

Identical or Confusingly Similar

The Complainant is the legitimate owner of all rights arising out of and in connection with the trademark DANCOW. The distinctive element of the disputed domain name is identical with the trademark DANCOW.

Rights or Legitimate Interests in the Domain Name

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

The Respondent is domiciled in Indonesia, where DANCOW is a well-known and highly distinctive mark. The Respondent has knowingly registered a domain name that infringes the Complainants trademark rights and must be aware that the disputed domain name corresponds to this trademark. The domain name is inactive and there is no evidence of the Respondents use of the 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 domain name.

There are no indications 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; the Complainant can claim exclusive authorship. Thus, the Respondent cannot rely on a right of his own or on any legitimate interest to use the word DANCOW.

The Domain Name Registered And Used in Bad Faith

The Respondent must have been aware of the Complainants trademark and that 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 disputed domain name is because he knew of the Complainants business and trademark.

Because the trademark DANCOW is well-known, the Respondent must have been aware of the considerable value the domain name has for the Complainant. Indonesian consumers, as well as others interested in information about DANCOW, will enter the disputed domain name in their webbrowser in order to find the Complainants website. There is no doubt that the Respondent acquired the domain name primarily for the purpose of selling the registration to the Complainant for valuable consideration in excess of his out-of pocket costs directly related to the domain name.

The letter and email correspondence between the Respondent and the Complainant evidences that the Respondents claim exceeds his out-of-pocket-costs directly related to the domain name. For the transfer of an inactive domain name, he requested registration fees for eight years, the costs for webhosting and two email accounts plus costs related to the transfer. Even though the Complainant has already offered a sum exceeding the Respondents actual costs relating to the domain name, the Respondent requested a higher compensation.

Examining the communications between Respondent and Complainant, the Registrant is "playing a game" with the Complainant, by trying to delay the proceedings and increase the Complainants costs for legal counsel and translations. He alleges that the Complainants demands are not clear, pretends that he knows "nothing about law or trademark law", and claims to have only limited knowledge of transfer technicalities. At the same time, he indicated know-how regarding registration issues and domain name maintenance, and made straightforward demands, thereby implying that he actually had a very clear knowledge about a trademarks purpose and the domain names value. For instance, in his letter dated May 3, 2002, the Respondent explicitly stated that his offer and solution "is even much more inexpensive than legal fee".

These elements demonstrate the Respondent registered the domain name for selling the registration to the Complainant for valuable consideration in excess of his out-of-pocket costs directly related to the domain name.

Respondent

He has never used the website for a commercial purpose. He has never asked for money, just a fair barter. The Complainant should have registered domain names with an Indonesian country suffix when registration of such was available. The Complainant is neglectful of its own interests. The Respondent would have accepted any domain name with 8 years of registration.

 

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.

Rights or Legitimate 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, should demonstrate a Respondents rights or legitimate interests to a domain name. None of these has been demonstrated. The second criterion is therefore proved.

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. Paragraph 4(b)(i) of the Policy gives, as an indication of bad faith, the fact that a Respondent is prepared to transfer a disputed domain name for excess of the Respondents out-of-pocket costs directly related to the domain name. The Respondents last offer takes a broad view of the term out-of-pocket costs.

However, even if Respondents claims were confined to those in the letter, the inescapable inference from all the evidence is that he registered and used the disputed domain name which he must have known belonged to the Complainant. The categories of bad faith in paragraph 4(c) of the Policy are not exclusive. He had no right to use the name. Its mere existence on an inactive site underscores the lack of legitimacy. The Respondents contentions are without substance or relevance.

 

7. Decision

For the foregoing reasons, the Panel decides:

(a)That the domain name <dancow.com> 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.com> be transferred to the Complainant.

 


 

Hon. Sir Ian Barker, QC
Sole Panelist

Dated: December 3, 2002