WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société des Produits Nestlé S.A. v. Rova Andrianjohany c/o Locmad
Case No. D2014-0271
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 Rova Andrianjohany c/o Locmad of Antananarivo, Madagascar.
2. The Domain Names and Registrar
The disputed domain names <cafe-dolce-gusto.com> and <cafe-nespresso.com> (the “Disputed Domain Names”) are registered with FastDomain, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2014. On February 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On March 3, 2014, 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.
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 March 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 1, 2014.
The Center appointed Lynda M. Braun as the sole panelist in this matter on April 9, 2014. 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 is a Swiss company founded in 1866 by Henri Nestlé. The Complainant markets and sells products and services throughout the world primarily in the food industry. The products include, among many others, coffee products, beverages, prepared foods, and food services. The Complainant produces and distributes coffee under its well-known brands, including, among others, Nespresso, Nescafé and Taster’s Choice. The Complainant, one of the world’s largest food consumer products company in sales, has over 283,000 employees and markets its products in over 200 countries
The Complainant launched Nescafé coffee in 1938, in a few years became an instant success and today, is the world’s leading coffee brand. Nescafé is available around the world in different blends and flavors and price points, from more affordably priced products to premium products such as Nescafé Gold and Nescafé Dolce Gusto. The Nescafé Dolce Gusto system is an award winning single-cup coffee machine that uses capsules that are available in stores, supermarkets and on the Internet. Launched in 2006 in the United Kingdom of Great Britain and Northern Ireland, Germany and Switzerland, by the end of 2011, it was sold in over 50 countries. The Complainant owns numerous trademarks throughout the world for DOLCE GUSTO (the “DOLCE GUSTO Mark”).
Launched in 1986, the Nespresso and Nespresso System is the Complainant’s well-known product and service line for the preparation of coffee, targeting the high end of the consumer and professional market. The Complainant owns numerous trademarks throughout the world for NESPRESSO (the “NESPRESSO Mark”). Over the last twenty years, the Complainant and its subsidiaries have invested a substantial amount of money in research and design, manufacturing and marketing of products and services bearing the NESPRESSO Mark. The Complainant and its subsidiaries operate many luxurious Nespresso shops in major metropolitan cities around the world where customers purchase products and receive services bearing the NESPRESSO Mark. Indeed, the Complainant is the owner of over 100,000 international and national trademark registrations worldwide for both the NESPRESSO and DOLCE GUSTO Marks.
The Complainant has registered numerous domain names that incorporate the NESPRESSO and DOLCE GUSTO Marks in many generic top-level domains (“gTLD”) and country code top-level domains. The Complainant operates the websites “www.nespresso.com” and “www.dolce-gusto.com” as its primary websites on the Internet. Most of the other domain names registered by the Complainant, including <nescafe-dolce-gusto.com> and <nescafedolcegusto.com> are redirected to the websites referenced above.
The Respondent registered the Disputed Domain Names <cafe-dolce-gusto.com> and <cafe-nespresso.com> respectively on September 25, 2009 and September 27, 2009.
The Disputed Domain Name <cafe-dolce-gusto.com> resolves to a website that offers for sale the Complainant’s products without authorization. The website also includes the same images and designs as those on the Complainant’s official website. Moreover, the website contains hyperlinks to the Complainant’s brands, and when an Internet user clicks on the links, the user is directed to the Respondent’s websites where the Respondent sells products competing with those of the Complainant.
The Disputed Domain Name <cafe-nespresso.com> resolves to a pay-per-click website containing sponsored links to third party commercial websites primarily related to coffee products that belong to competitors of the Complainant.
After the Complainant discovered the Respondent’s registration and use of the Disputed Domain Names, the Complainant had a web agency contact the Respondent on August 9, 2013 in an attempt to reclaim the Disputed Domain Names. On August 9, 2013, the Respondent replied that if interested, the Respondent would sell to the Complainant the Disputed Domain Names, plus a few other related domain names, for EUR 6500. Through the agent, the Complainant responded that it was not interested in making such a purchase. On September 12, 2013, the Complainant’s representative sent a cease and desist letter to the Respondent, requesting that the Respondent immediately transfer the Disputed Domain Names to the Complainant. On September 26, 2013, the Complainant’s representative sent a reminder to the Respondent, to which the Respondent responded the following day, reiterating that the price for the Disputed Domain Names was EUR 6500.
5. Parties’ Contentions
The Complainant contends that:
- The Disputed Domain Names are confusingly similar to the trademarks in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names;
- The Disputed Domain Names were registered and are being used in bad faith; and
The Complainant seeks the transfer of the Disputed Domain Names from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Names transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(i) The Disputed Domain Names are 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 Disputed Domain Names; and
(iii) The Disputed Domain Names were registered and are being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: First, does the Complainant have rights in a relevant trademark or trademarks and, second, are the Disputed Domain Names identical or confusingly similar to those trademarks.
It is uncontroverted that the Complainant has established rights in the both the NESPRESSO and DOLCE GUSTO Marks based on both longstanding use as well as its numerous national and international trademark registrations for the NESPRESSO and DOLCE GUSTO Marks. The Disputed Domain Name <cafe-dolce-gusto.com> consists of the DOLCE GUSTO Mark preceded by the descriptive word “cafe” connected by hyphens, and followed by the gTLD “.com”. The Disputed Domain Name <cafe-nespresso.com> consists of the NESPRESSO Mark preceded by the descriptive word “cafe” connected by a hyphen, and followed by the gTLD “.com”.
Numerous UDRP decisions have reiterated that the addition of a descriptive or generic word to a trademark is insufficient to avoid confusing similarity. Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795. See also Hoffman-La Roche, Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923 (the addition of a descriptive or generic word to a trademark will not avoid a determination that the domain name at issue is confusingly similar); Nintendo of America, Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434 (same); Weight Watchers International, Inc. v. Kevin Anthony, WIPO Case No. D2011-2067 (same). This is especially true where, as in the present case, the descriptive or generic word “cafe” is associated with the Complainant and its goods or services. See, e.g., Gateway, Inc. v. Domaincar, WIPO Case No. D2006-0604 (finding the domain name <gatewaycomputers.com> confusingly similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”).
Further, although the Disputed Domain Name <cafe-dolce-gusto.com> contains hyphens between the words “cafe” and “dolce” and “dolce” and gusto”, and the Disputed Domain Name <cafe-nespresso.com> contains a hyphen between the words “cafe” and nespresso”, this is irrelevant for purposes of the Policy, because the presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. Six Continents Hotels, Inc. v. Helen Slew, WIPO Case No. D2004-0656 (citing Six Continents Hotels, Inc. v. Georgetown, Inc., WIPO Case No. D2003-0214 (hyphens do not “serve to dispel Internet user confusion here”); Fort Knox National Company v. Ekaterina Phillipova, WIPO Case No. D2004-0281 (“[T]his Panel believes that the expression true-pay is similar to the trademark TRUEPAY”).
Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012‑0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. The Respondent’s lack of reply notwithstanding, there is no evidence in the record that the Respondent is in any way associated with the Complainant.
Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its trademarks. The name of the Respondent has no apparent connection to the Disputed Domain Names that would suggest that it is related to a trademark or trade name in which the Respondent has rights. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names. Instead, the Panel finds that the Respondent was improperly using the Disputed Domain Names for commercial gain.
The Respondent registered the Disputed Domain Names <cafe-dolce-gusto.com> and <cafe-nespresso.com>, respectively, on September 25, 2009 and September 27, 2009, long after the DOLCE GUSTO and NESPRESSO Marks had become world famous and distinctive. The only use that the Respondent has made of the Disputed Domain Names is to host websites, one that is similar to the Complainant’s own official website, and the other that is a pay-per-click website that includes links to the Complainant’s competitors. These do not give rise to a right or legitimate interest on the part of the Respondent. The Chase Manhattan Corp. v. Whitely, WIPO Case No. D2000-0346.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies the following circumstances that, if found, are evidence of registration and use of a domain name in bad faith:
(i) Circumstances indicating that a respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Circumstances indicating that a respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct; or
(iii) Circumstances indicating that a respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) Circumstances indicating that by using the domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website or location or of a product on respondent’s website or location.
The Panel finds that based on the evidence submitted by the Complainant, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraphs 4(a)(iii) and 4(b) of the Policy.
First, the Complainant has developed a worldwide reputation for the DOLCE GUSTO and NESPRESSO Marks in the coffee industry for decades and its trademarked products are sold worldwide. The Respondent’s unauthorized advertising and sale of the Complainant’s products through its websites strongly suggests that the Respondent knew of the Complainant’s trademarks prior to registration of the Disputed Domain Names. Thus, it is reasonable to infer from the circumstances of this case that the aim of the registration and use of the Disputed Domain Names was to exploit consumer confusion for commercial gain. It was also done for the specific purpose of trading on the name and reputation of the Complainant and its trademarks. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000‑0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain” and “[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law.”). The Panel finds that this conduct constitutes bad faith registration and use of the Disputed Domain Names under the Policy. See Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763. The fact that the websites to which each of the Disputed Domain Names resolve offer for sale products of the Complainant’s competitors is another indication of bad faith.
Second, the registration of the Disputed Domain Names reproducing in their entirety the registered trademarks of the Complainant is clearly aimed to disrupt the Complainant’s business by diverting Internet users who are searching for the Complainant’s products from its genuine website as well as to prevent the Complainant from registering the Disputed Domain Names. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552. The Panel thus concludes that the Respondent has registered and is using the Disputed Domain Names in bad faith.
Third, the website to which the Disputed Domain Name <cafe-dolce-gusto.com> resolves contains a website almost identical to the Complainant’s official website, with hyperlinks that direct Internet users to websites in which the Respondent offers its own products. The website to which the Disputed Domain Name <cafe-nespresso.com> resolves includes hyperlinks that are pay-per-click sponsored ads that promote, among other things, coffee products and services, including those of the Complainant’s competitors. As such, the Respondent is not only trading on consumer interests in the Complainant in order to generate Internet traffic to its own website and to commercially benefit from the sponsored links that appear on the Respondent’s website, but the Respondent also derives commercial advantage in the form of referral fees. In the Panel’s view, this constitutes bad faith. Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; Lewis Black v. Burke Advertising, LLC, WIPO Case No. D2006-1128. Further, when the links on pay-per-click pages are based on the trademark value of a complainant’s domain name, the trend in UDRP decisions is to recognize that such practices constitute bad faith. See, e.g., Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006 (pay-per-click landing page not legitimate where ads are keyed to the trademark value of the domain name); The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340 (same); Brink’s Network, Inc. v. Asproductions, WIPO Case No. D2007-0353 (same).
Fourth, the Respondent’s reply to the Complainant’s representative’s cease and desist letter, requesting EUR 6500, indicates that the Disputed Domain Names were registered, among other reasons indicated above, for the purpose of selling or otherwise transferring its registrations to the Complainant for valuable consideration in excess of any documented out-of-pocket costs directly related to the Disputed Domain Names. The Respondent produced no evidence to establish that the actual cost of registration and maintenance of the Disputed Domain Names could approach EUR 6500, nor is it likely that such evidence could be provided. Moreover, in its reply, the Respondent stated that it also registered additional domain names associated with the Complainant’s coffee products, although not part of the present case, which is another indication of bad faith.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names <cafe-dolce-gusto.com> and <cafe-nespresso.com> be transferred to the Complainant.
Lynda M. Braun
Date: April 16, 2014