WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nestlé Waters France S.A. v. Anonymous Corp, Ken
Case No. D2011-0714
1. The Parties
The Complainant is Nestlé Waters France S.A. of Issy les Moulineaux, France represented by Studio Barbero of Italy.
The Respondent is Anonymous Corp, Ken of Macao.
2. The Domain Name and Registrar
The disputed domain name <hépar.com> [xn--hpar-bpa.com] is registered with Name.com LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2011. On April 26, 2011, the Center transmitted by email to Name.com LLC. a request for registrar verification in connection with the disputed domain name. On April 27, 2011, Name.com LLC. 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. Name.com LLC also filed an Informative Filing which was forwarded to the parties on the same day. The Center sent another email communication to the Complainant on April 27, 2011 providing the registrant and contact information disclosed by the Name.com LLC, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 29, 2011.
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 April 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2011.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on May 30, 2011. 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 following summary sets out the uncontested factual submissions made by the Complainant:
4.1 The Complainant owns several international and national trademark registrations worldwide, including the following trademarks:
International Trademark Registration No. 506202 of September 5, 1986, HÉPAR in Class 32;
Community Trademark Registration No. 304584 of October 11, 1999, HÉPAR in Class 32;
Community Trademark Registration No. 2869030 of June 03, 2005, HÉPAR in Class 32;
France National Trademark Registration No. 1355281 of March 13, 1986, HÉPAR in Class 32;
Japan National Trademark Registration No. 2161233 of August 31, 1989, HÉPAR in Class 32;
Canada National Trademark Registration No. 336403 of January 29, 1988, HÉPAR in Class 32;
Sweden National Trademark Registration No. 223522 of May 10, 2011, HÉPAR in Class 32;
Tunisia National Trademark Registration No. 062035 of September 5, 1986, HÉPAR in Class 32;
Andorra National Trademark Registration No. 8670 of December 4, 1997, HÉPAR in Class 32.
4.2 Nestlé S.A., the parent company of Nestlé Waters France S.A. and Nestlé Waters S.A., is a Swiss limited liability company founded in 1866 by Henri Nestlé. Nestlé S.A. sells products and services all over the world in various industries, primarily the food industry, including bottled water, coffee products, baby foods, breakfast cereals, chocolate & confectionery, beverages, dairy products, ice cream, prepared foods, and food services, and is also very active in the pharmaceutical and pet-care industries.
4.3 Nestlé S.A. itself employs over 283,000 people and markets its products in over 200 countries. It is the world’s largest food consumer products company in terms of sales. According to Fortune Magazine’s annual ranking of the world’s 500 largest companies, the “Fortune Global 500”, it was the 48th largest company in the world in 2009, growing to the 44th largest in 2010.
4.4 According to Interbrand’s annual Best Global Brands ranking for 2009, the trademark NESTLÉ was worth USD 6.319 billion in 2009, making it the 58th most valuable trademark in the world, increasing to USD 6.548 billion in 2010, climbing to 57th position.
4.5 Nestlé Waters S.A. is the largest bottled water company worldwide in terms of sales and is the largest in France, Belgium, Italy, and Switzerland. Its associated company, the Complainant (which changed its name from Perrier Vittel S.A. in January 2002) produces bottled water under well-known brands including Hépar, Perrier, Contrex, and Vittel, currently produces over two billion bottles of water per year. The HÉPAR brand was first used in 1920, long before Nestlé S.A. purchased approximately 30% ownership of the Complainant in 1969 and subsequently, in 1992, when it took control of the entire company for its Nestlé Waters bottled water division.
4.6 Over the twenty years since Nestlé S.A. purchased the HÉPAR brand through the acquisition exercise, the Complainant has invested substantially in the research, design, manufacturing, and marketing of products and services representing the HÉPAR brand. Nestlé Waters produced approximately 220 million bottles of HÉPAR brand water worldwide in 2010 (approximately 1.1 billion bottles over the past five years) amounting to sales after expenses (net present sales) of approximately Euro 120 million (approximately EUR 565 Millions over the past five years). To support its brand, Nestlé Waters invested approximately Eur 4 Million on advertising worldwide in 2010 and approximately EUR 14 Million over the past five years.
4.7 In order to proactively protect and market the HÉPAR trademark on the Internet, the Complainant registered <hepar.fr> and <hepar.be> and operates both domain names in order to support its French, Belgian, and global marketing initiatives.
4.8 The disputed domain name was registered on November 27, 2009 (well after the Complainant’s registration of the trademarks cited above) without the Complainant’s authorization. Under the Respondent’s control, the domain name currently directs Internet users to web pages published by the Respondent.
4.9 One of the hyperlinks on the corresponding web site of the disputed domain name redirects Internet users to an Internet gaming web site supported by pay-per-click links and other commercial advertising. Other hyperlinks redirect Internet users to the site <jouéclub.com>, registered in the name of the Respondent and another Internet gaming site, where sponsored banners for clothes and accessories are published.
4.10 The Complainant first became aware of the registration of the disputed domain name upon receiving a telephone call from a French-speaking person who represented himself as “M Hocini” offering to sell the disputed domain name to the Complainant. Mr. Hocini subsequently followed up on the conversation with an email dated January 21, 2010, written in French, and sent from the email “[…]@free.fr.”
4.11 The WhoIs records indicated that the disputed domain name was originally registered in the name of “Malek Hocini”, and the email address as shown in WhoIs, was the one used by the Respondent to confirm the content of the first unsolicited telephone conversation with the Complainant (“[…]@free.fr”). The telephone number indicated in WhoIs was +33.[…], which corresponded with the number indicated in the signature of the email. On October 28, 2010, the Complainant received another telephone call from M. Ken offering to sell the disputed domain name for EUR 6,000. The conversation was followed up with an email dated November 5, 2010, written in French and sent from the email address “[…]@voila.fr”.
4.12 The WhoIs records at September 9, 2010 indicated that the disputed domain name had been amended to Anonymous Corp, Ken and the registrant’s email address was “[…]@voila.fr”.
4.13 The Complainant thereupon instructed its legal representative to send a cease and desist letter to the domain name registrant. The Complainant’s legal representative sent the letter on January 26, 2011 to the Respondent’s known email addresses as well as by registered mail to the Administrative Contact identified in the WhoIs database. “M.Ken” replied to the cease and desist demand letter on the same day by email dated January 26, 2011 where he informed the Complainant that the disputed domain name was to be used for a project which intended to undertake. Nevertheless, he reiterated his offer to sell the disputed domain name to the Complainant at a slightly reduced price of EUR 5,000. M. Ken also cautioned the Complainant to act quickly to purchase the disputed domain name as he was then considering third-party offers as well.
4.14 M. Ken followed up on this email with a telephone call during which he reiterated his offer and maintained his position on the Complainant’s demand. The Complainant’s legal representative responded by email dated January 27, 2011 and sought details of the project which the Respondent was contemplating to undertake. M. Ken responded by email dated January 28, 2011 as follows:
“In a nutshell, it was a project of 1/ presentation of the rock "hépar" and scientific data and histroy 2/ a business of homeopathic product for the African market (north africa and ouest) like the HEPAR SULFUR and rock hépar”
The Respondent also reiterated his offer of EUR 5,000 for the sale of the disputed domain name
4.15 In the absence of a response from the Complainant, the M. Ken emailed the Complainant again on February 15, 2011, and offered a reduced price of EUR 2,500 for the sale of the disputed domain name, followed by a telephone call to the Complainant’s legal representative reasserting the same terms. The Complainant’s legal representative responded by email dated February 15, 2011 with a counter offer of EUR 300 to reimburse the Respondent for any reasonable out-of-pocket expenses. The Respondent rejected the offer on February 16, 2011 and reiterated his offer of EUR 2,500 and threatened to sell the disputed domain name to a third party as follows:
“Because we do not want to lose time and money on this project, we will wait until the 27/02/11 for your client acceptation. After that we will put it on auction and probably sell it very fast.”
4.16 On February 24 and 25, 2011, M. Ken requested an update on communications between the legal representative and the Complainant and also offered a reduced price for the sale of the disputed domain name. He insisted on moving quickly on the offer as he was purportedly travelling to Asia “soon.”
5. Parties’ Contentions
5.1 The Complainant contends that it has rights to the HÉPAR trademark and that the disputed domain name <hépar.com> [xn--hpar-bpa.com] is identical to the Complainant’s HÉPAR trademark. The disputed domain name comprises of the Complainant’s HÉPAR trademark in its entirety.
5.2 The Complainant further contends that the Respondent does not have any rights or legitimate interests to the disputed domain name because:
(a) the Respondent is not currently and has never been known as HÉPAR.
(b) the Complainant has not licensed or authorized the Respondent in any way to use the trademark
(c) the Respondent has not adduced any evidence of legitimate use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.
(d) the Complainant has never given any authorization or permission to the Respondent to register or to use the disputed domain name.
5.3 In relation to the requirement of bad faith registration and use of the domain name, the Complainant contends as follows:
(a) the Respondent was aware of the existence of the Complainant’s trademark as HÉPAR is a well-known trademark.
(b) the Respondent registered the dispute domain name for the sole purpose of commercially benefitting from Internet traffic arriving at its websites.
(c) through the registration of the disputed domain names, the Respondent has created commercial links to other websites, products and services.
(d) the Respondent’s offer to sell the disputed domain name to the Complainant is in excess of the Respondent’s out-of-pocket expenses.
(e) the original registrant of the disputed domain name, M. Hocini, has displayed a record of similar conduct of registering domain names that comprise the trademarks of third parties.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:
(a) that the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(b) that the Respondent has no rights or legitimate rights in respect of the domain name; and
(c) that the domain name has been registered and is being used in bad faith.
6.1. Identical or Confusingly Similar
The Panel is satisfied with the evidence adduced by the Complainant to evidence its rights to the trademark HÉPAR. The trademark is not only registered by the Complainant in numerous jurisdictions but it has also been used extensively over a long period and in many jurisdictions (especially in France) by the Complainant and its affiliated companies (through the Nestle Group of Companies). The disputed domain name comprises the Complainant’s trademark in its entirety.
As such the Panel finds that the disputed domain name is identical to the Complainant's HÉPAR trademark for the purpose of the Policy.
6.2. Rights or Legitimate Interests
The Complainant’s assertions had not been rebutted by the Respondent to indicate whether it has any rights or legitimate interests to the disputed domain name.
Based on the records, the Respondent had not provided any legitimate evidence of use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before or after notice of the dispute. Although the correspondences from M. Ken (whom the Panel accepts is the Respondent) indicate that the Respondent contemplated using the disputed domain name to create a web site for the sale of rocks known as “Hepar” rocks for the African market, there was no evidence whatsoever of any such activity or preparations by the Respondent to prove the sincerity of this intent. On the contrary, the evidence indicated that the intent was to sell the disputed domain name to the Complainant at a price which was considerably higher than the Respondent’s out-of-pocket costs and not to use it for a bona fide offering of goods or services. For example, the domain name continued to link to a French Internet-based gaming site and not sites that were consistent with the Respondent’s contemplated project (see Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044; F. Hoffmann-La Roche AG v. Titan Net, WIPO Case No. D2006-0424). Importantly, however, the Respondent continued with its offer and counter-offers to sell the disputed domain name to the Complainant and had threatened to sell the disputed domain name to a third party in the event the Complainant did not accept the Respondent’s offer to purchase the disputed domain name.
The Complainant had also confirmed that the Respondent is not a licensee or authorized agent of the Complainant or in any way authorized to use the Complainant’s trademark HÉPAR.
Notwithstanding the use of identity protection services, there is no evidence to also indicate that the Respondent is commonly known by the name HÉPAR. In Fry’s Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435, it was held that “[t]he use of identity protection services does not, as a Rule, prevent a respondent from being commonly known by the subject domain name. [However,] Policy 4(a)(ii) requires a showing that Respondent is commonly known by the domain name in question. Here, Respondent has failed to come forward with evidence that suggests that it is commonly known by the disputed domain name”.
Based on the above circumstances, the Panel is, therefore, satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.
6.3. Registration and Use in Bad Faith
The Panel agrees with the contention by the Complainant that the Respondent must have had knowledge of the Complainant’s HÉPAR trademark when it registered and started using the disputed domain name. The factors that were taken into account to arrive at this conclusion include the date of registration of the disputed domain name which was only as recent as 2009 when compared to the date when the Complainant started using the HÉPAR trademark, the widespread use of the HÉPAR trademark by the Complainant and the fact that the Respondent’s primary focus was to sell the disputed domain name to the Complainant at a price which was in excess of the Respondent’s out-of-pocket expenses and not to use the disputed domain name for a bona fide offering of goods or services.
In Benetton Group SpA Domain for Sale, WIPO Case No. D2001-1498, the Panel held that an amount of USD 450 was considered in excess of documented out-of-pocket costs. As such, it would fair to state that in this proceeding, the sum of EUR 6,000 and the subsequently reduced offer of EUR 2,500 would be a grossly excessive price over the Respondent’s out-of-pocket expenses.
Evidence filed in this proceeding also indicate that the Respondent is using the disputed domain name with the intention to attract Internet users for commercial gain to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent’s website contains links to web pages that contain sponsored advertisement banners and to various websites. These sponsored banners and links enable the Respondent to earn a commission whenever an Internet user visits the website and clicks on one of the sponsored links. There have been several decisions on this issue where the panels have found that such conduct amounts to bad faith (see Deutsche Telekom AG v. Gary Seto, WIPO Case No. D2006-0690; Zinsser Co. Inc., Zinsser Brands, Co. v. Henry Tsung, WIPO Case No. D2006-0413; Volvo Trademark Holding AB v. Unasi, Inc. WIPO Case No. D2005-0556; Cox Radio, Inc. v. Domain Administrator, WIPO Case No. D2006-0387; Gianfranco Ferre’ S.p.A. v. Unasi Inc., WIPO Case No. D2005-0622; L’Oreal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623; Scania CV AB (Publ) v. Unaci, Inc. WIPO Case No. D2005-0585; Volvo Trademark Holding AB v. Michele Dinoia, WIPO Case No. D2004-0911; Claire’s Stores, Inc., Claire’s Boutiques, Inc., CBI Distributing Corp. v. La Porte Holdings, WIPO Case No. D2005-0589; Members Equity PTY Limited v. Unasi Management Inc., WIPO Case No. D2005-0383).
In arriving at this decision, the Panel had also considered the pattern of conduct of M. Hocini, the first registrant of the disputed domain name (see Blédina contre Malek Hocini, WIPO Case No. D2010-1216; Carrefour v. Malek Hocini, CAC ADR No. 05709) where adverse findings were made against him. On the balance of probabilities, the Panel agrees with the Complainant assertion that despite the change of the registrant’s contact information from Malek Hocini to Anonymous Corp Ken, the underlying registrant likely remained the same. The evidence indicate that the telephone number which was indicated in the original WhoIs and in the first email sent by Mr. Hocini to the Complainant corresponds to the number disclosed in the subsequent communications addressed by the Respondent to the Complainant and to the Complainant’s representatives. The approach on the sale of the disputed domain name to the Complainant was also consistent with a finding that the underlying registrant of the disputed domain name is the same person.
In the circumstances, the Panel finds that bad faith has been demonstrated under paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <hépar.com> [xn--hpar-bpa.com] be transferred to the Complainant.
Syed Naqiz Shahabuddin
Dated: June 13, 2011