WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

N.V Nutricia v. Ho Nim

Case No. D2010-1465

1. The Parties

The Complainant is N.V. Nutricia, Zoetermeer, Netherlands, represented by Dreyfus & Associés, France.

The Respondent is Ho Nim, Shanghai, Pudong, the People’s Republic of China.

2. The Domain Name and Registrar

The domain name at issue is <klubnutricia.com> (“the disputed domain name”) and it is registered with Above.com, Inc. (“Above.com”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2010. On September 1, 2010, the Center transmitted by email to Above.com, a request for registrar verification in connection with the disputed domain name. On September 8, 2010, Above.com 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 September 13, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 6, 2010.

The Center appointed a panelist on October 19, 2010, however it later became necessary, due to a previously unidentified conflict, for that panelist to recuse itself. Accordingly, the Center appointed an alternate panelist, Mr. David H. Tatham, on November 2, 2010 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 provided a great deal of information about itself and its history. It is an internationally active food company. It was first established in the Netherlands in 1901 to produce specialized milk products, but its origins can be traced back to 1896. Although now part of the Danone Group, it is considered to be the world’s leading manufacturer of infant formula.

Among others, the Complainant is the owner of the following three International trade mark registrations comprising or containing the word mark NUTRICIA (hereafter “the NUTRICIA marks”)

No. 736052, CRÈME NUTRICIA, dated May 19, 2000 in Classes 5, 29, 30.

No. 746226, NUTRICIA, dated August 2, 2000 in Classes 5, 10, 16, 29, 30, 35, 41, 42.

No. 880306, NUTRICIA @HOME dated January 18, 2006 in Classes 5 and 10.

In addition, the Complainant owns several domain name registrations containing the word “nutricia”.

Absent any reply from the Respondent, the Panel is in no position to comment on him, other than the fact that he is a citizen of the People’s Republic of China and owner of the disputed domain name which was first registered on February 17, 2010.

The Complainant made several attempts to contact the former owner of the disputed domain name before it was transferred to the current Respondent but without any response.

5. Parties’ Contentions

A. Complainant

The Complainant has provided a lengthy and comprehensive history of itself, from it origins in 1901 as a partnership between two brothers in the Netherlands up to the present day as a subsidiary of Danone, which it describes as being a global leader in the consumer goods industry. The Complainant itself claims to be a worldwide leader in the manufacture and sale of infant formula.

The Complainant contends that the disputed domain name <klubnutricia.com> is identical to its registered and highly distinctive trademark NUTRICIA as it incorporates this trademark together with the generic word ‘klub’ and the gTLD “.com”. The Complainant alleges that it has frequently been found by panels that the addition of a generic term to a domain name is not sufficient to give any distinctiveness to a disputed domain name. Similarly, panels have also frequently found that the addition of a gTLD is not a distinguishing feature and does not change the likelihood of confusion.

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. Specifically, the Complainant contends that:

- The Respondent is not affiliated with the Complainant in any way and the Complainant has not authorized the Respondent to register or use its trademark or seek the registration of any domain name incorporating said mark.

- The Respondent has no prior rights or legitimate interests in the disputed Domain Name. The Respondent has never used the term “nutricia” in any way before or after the Complainant started its business. The registration of numerous NUTRICIA trademarks preceded the registration of the disputed domain name by many years.

- The Respondent is not currently known, nor has he been known, by the name “nutricia” and since the disputed domain name is so similar to the Complainant’s well-known trade mark, the Respondent cannot reasonably pretend that it was intending to develop a legitimate activity.

- The name “Nutricia” has no special meaning in Chinese – which is apparently the language of the Respondent – or indeed in any language.

- The Respondent is a cybersquatter as he has been the Respondent in several previous cases under the Policy, and copies of these were annexed to the Complaint.

- The Respondent’s use of the disputed domain name cannot be legitimate as the website at the disputed domain name contains a variety of subjects.

The Complainant contends that the Respondent has registered the disputed domain name and is using it in bad faith because –

- The Respondent is a cybersquatter who registers and acquires domain names which reproduce or imitate well-know or famous marks (see above).

- The Complainant is a worldwide leader in the field of healthy nutritional, baby and medical food and therefore is the owner of a trademark which is well-known throughout the world, including in the People’s Republic of China.

- A previous UDRP decision stated that "NUTRICIA is a world-wide leading infant formula brand and it is used in many countries as a housemark for health and medical products. It is highly unlikely that the Respondent happened to inadvertently select the identical term "nutricia" […] when creating its domain name". See N.V. Nutricia v. svemirNet Emir Mujezinovic, WIPO Case No. D2009-0876.

- A trademark search at the date of registration of the disputed domain name would have revealed Complainant’s trademark registrations, and annexed to the Complaint were copies of previous UDRP decisions in which it was held that the registration of a domain name containing a well-known mark may be proof of bad faith.

- Taking into account the Complainant’s worldwide reputation, as well as its use of the NUTRICIA marks in the Chinese market, it is hard to believe that the Respondent was unaware of the existence of the Complainant and its trademark when the disputed domain name was registered, and it has been held that knowledge of a corresponding trade mark at the time of registration suggests bad faith.

- The word “Nutricia” has no meaning in Chinese, it is a coined word, so the Respondent could not have chosen the disputed domain name randomly.

- The Respondent uses the disputed domain name to operate a pay-per-click device whereby the owners of other websites pay a commission to him for any traffic redirected to them. Thus he must have registered the disputed domain name in order to create traffic by taking advantage of the notoriety of the Complainant’s name and trade mark.

- The previous owner of the disputed domain name never responded to Complainant’s cease-and desist-letter or several subsequent reminders, and it is likely that he transferred the disputed domain name to Respondent not only for money but also in order to avoid a proceeding under the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i). 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

(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and

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

A. Identical or Confusingly Similar

The Complainant has provided copies of the documents for three of its International registrations of the NUTRICIA marks. The Panel concludes that the Complainant, as the registered owner of the NUTRICIA mark pursuant to these registration documents, has established rights in a trademark, sufficient for the purposes of paragraph 4(a)(i) of the Policy.

The disputed domain name is not identical to the Complainants’ name and trademark, but it is clear to the Panel that it is confusingly similar. It contains the word “klub” which is phonetically identical to the dictionary word “club” which has the same meaning in English and Dutch (the language of the Complainant).

It was held in America Online, Inc. v. East Coast Exotics, WIPO Case No. D2001-0661 that the incorporation of a generic term in a domain name does not defeat any similarity with a complainants trademark. It was also said in Covance inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206 that the addition of a descriptive word “does nothing to distinguish the Disputed Domain name from the Complainant’s registered trademark.”

Also, as has been found in numerous decisions under the Policy, a suffix referring to a top-level domain such as “.com”, “.net”, or “.org” need not be taken into consideration when determining the identity or confusing similarity of a domain name to a trademark or service mark.

It is also worth noting that the Complainant’s parent company, Numico Beheer B.V. owns the nearly identical domain name <clubnutricia.com>.

In all these circumstances, the Panel therefore finds that paragraph 4(a)(i) is proved.

B. Rights or Legitimate Interests

To demonstrate its rights or legitimate interests to the disputed Domain Name, the Respondent may establish any of the following elements:

(i) that the Respondent used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services;

(ii) that the Respondent has been commonly known by the Domain Name;

(iii) that the Respondent is 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 of the Complainant.

By not filing a Response, the Respondent has failed to do any of the above. However it is well established that a complainant must first make out a prima facie case that a respondent lacks rights and legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy, and then the responsibility of coming forward with evidence shifts to respondent to show that it does have rights or legitimate interests. It is said, in the publication WIPO Overview of WIPO Panel Views on Selected UDRP Questions that, while the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative. Therefore a Complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. See also Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 741828 in which it was held that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name.

In this case, the Panel is satisfied that the Complainant has made out a strong prima facie case.

As noted above, the Respondent has provided nothing to support an argument that he has any rights or legitimate interests in the disputed domain name. The name incorporates the whole of the Complainant’s (invented) trademark together with a dictionary word.

The Complainant has no relationship with the Respondent and has not given him permission to use its name.

Under paragraph 14(b) of the Rules, a Panel is entitled, in the absence of exceptional circumstances, to draw such inferences, from e.g. the absence of a Response, as it considers appropriate. In the circumstances of this case, the Panel has concluded that the Complainant has more than established the absence of any right or legitimate interest on the part of the Respondent to use the its trade mark in the disputed domain name and the Panel finds that paragraph 4(a)(ii) is proved.

C. Registration and Use in Bad Faith

The Complainant is renowned world-wide as the manufacturer of infant formula under the name and trade mark NUTRICIA. This name is used in many countries as a house mark for health and medical products. As was held in two previous decisions under the Policy in which the Complainant was involved and in which the domain name contained the word “nutricia” in its entirety, it is highly unlikely that the respondent included this name in the disputed domain names inadvertently. See N. V. Nutricia v. sevemirNet Emir Mujezinovic, WIPO Case No. D2009-0876 and N. V. Nutricia v. Riglobal, Haider Bilal. WIPO Cases No. D2009-0602.

A simple search on the Internet would have allowed the Respondent to find the Complainant, and a trademark search at the date of registration of the disputed domain name would have revealed the Complainant’s trademark registrations.

The Complainant has alleged that the Respondent is a cybersquatter and this was confirmed by the panel in Take Two Interactive software, Inc. v. Ho Nim a/k/a/ Lu Lan, WIPO Case No. D2010-0485 where the following was said: “The Panel also considers Respondent’s history of cybersquatting, having registered other domain names that reflect third-party trademarks in the past, and in at least four instances, having been found by a previous UDRP panel to have registered and used a domain name in bad faith.”

The Policy was designed specifically to deal with the problem of cybersquatting, which is defined as a pattern of registration and misuse of disputed domain names and may constitute evidence of bad faith registration and use of the domain pursuant to paragraph 4(b)(ii) of the Policy. See Sony Kabushiki Kaisha v. Anderson, NAF Claim No. 198809 (finding a pattern of registering domain names in bad faith pursuant to paragraph 4(b)(ii) of the Policy where a respondent previously registered domain names incorporating well-known third party trademarks); see also N.H. Sweepstakes Communication v. We Web Well, Inc., NAF Claim No. 197499 (finding that evidence that listed a respondent as the registrant of other domain names incorporating third-party trademarks was sufficient to establish that that respondent had shown a pattern of registering and using domain names in bad faith pursuant to paragraph 4(b)(ii) of the Policy).

Therefore, taking into consideration these arguments, as well as the fact that in the Panel’s view it is highly likely that Respondent must have had some knowledge of the Complainant’s trademark at the time of the registration of the disputed domain name (see L’Oreal v. Domain Park Limited), WIPO Case No. D2008-0072, the Panel finds that the Respondent has registered the disputed domain name in bad faith.

The Panel notes that the disputed domain name has been used for a landing page to display pay-per-click links, many of which appear unrelated to the Complainant’s goods and services. As the Complainant has demonstrated, however, the word “nutricia” has no known dictionary meaning in any language, making it highly unlikely, in this Panel’s view, that the domain name was selected for any dictionary or descriptive value. Accordingly, the Panel accepts the Complainant’s argument that the domain name was chosen to attract Internet traffic based on the strength of the Complainant’s mark, in order to generate click-through revenue. In the circumstances, the Panel finds that the Respondent has used the disputed domain name in bad faith, with the intent to target the Complainant and its NUTRICIA marks.

In all the circumstances of this case, and in view of the above facts, the Panel finds that paragraph 4(a)(iii) is proved.

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 domain name, <klubnutricia.com> be transferred to the Complainant.

David H Tatham
Sole Panelist
Dated: November 11, 2010