WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NutraSweet Property Holdings, Inc. v. Zhao Jiafei
Case No. D2014-1253
1. The Parties
1.1 The Complainant is NutraSweet Property Holdings, Inc. of Chicago, Illinois, United States of America ("US"), represented by Ladas & Parry, US.
1.2 The Respondent is Zhao Jiafei of Huai'an, Jiangsu, China.
2. The Domain Name and Registrar
2.1 The disputed domain name <nutrasweet.info> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 22, 2014. On July 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 22, 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.
3.2 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").
3.3 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 July 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 14, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 15, 2014.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on August 25, 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
4.1 The Complainant is a company incorporated in the US and based in Chicago. It is the company (or forms part of a group of companies) that markets and sells a well known sweetener and sugar substitute under the name "NutraSweet". The sweetener is sold in over 100 countries around the world and is used in over 5,000 products.
4.2 The Complainant is the owner of numerous trade marks around the world that either comprise or incorporate the term "NutraSweet". They include:
(i) US registered trade mark no 1262746 for the word mark NUTRASWEET in class 1 filed on August 1, 1980 and with a registration date of January 3, 1984; and
(ii) Chinese registered trade mark no 231558 for the word mark NUTRASWEET in class 1 filed on November 3, 1984 and with a registration date of August 15, 1985.
4.3 The Respondent would appear to be an individual based in China. That individual has been involved in a large number of cases under the Policy. They include the following cases, in which the relevant domain name was ordered to be transferred to the complainant:
(i) The Gillette Company v. Zhao Jiafei, WIPO Case No. D2013-1954 (<duracell.info>),
(ii) Somfy SAS v. Zhao Jiafei, WIPO Case No. D2013-1741 (<somfy.info>)
(iii) NVIDIA Corporation v. Zhao Jiafei, WIPO Case No. D2013-1014 (<nvidia.biz>); and
(iv) HID Global Corporation v. Zhao Jiafei, WIPO Case No. D2014-0343 (<hidglobal.info>).
4.4 In the NVIDIA Corporation case supra the panel stated as follows:
"…, the Panel finds that the Respondent is clearly a sophisticated Internet user who has created various aliases in order to circumvent legal liability, or is potentially involved in a large network of cybersquatters."
4.5 The Domain Name was first registered on April 20, 2014. It has been used since that date to display a pay-per-click page displaying various "related links" and "sponsored listings". As at July 10, 2014, when this page was visited by the Complainant or one of its representatives, the links displayed all appeared to be in one way or another health related.
4.6 Further, the following text was displayed at the top of the pay-per-click page:
"The domain Nutrasweet.info is listed for sale. Click here to inquire about this domain name."
4.7 A pay-per-click page continues to operate from the Domain Name as at the date of this decision and continues to display text stating the Domain Name is "listed for sale".
5. Parties' Contentions
5.1 The Complainant claims that "Nutrasweet" is the most widely recognised sweetening ingredient in the world.
5.2 It contends that the Domain Name incorporates in its entirety the Complainant's NUTRASWEET mark and that the Panel should therefore find that it is confusingly similar to Complainant's trade marks.
5.3 The Complainant also contends that the Domain Name was registered without the Complainant's consent and that none of the examples of rights or legitimate interests set out in paragraph 4(c) of the Policy apply. Further, it relies upon the Respondent's use of the Domain Name for a page that contains advertisements for third parties and sponsored links as well as the offer for sale of the Domain Name on that page. This is said to demonstrate that the Respondent has no rights or legitimate interests in the Domain Name.
5.4 So far as bad faith registration and use is concerned, the Complainant refers to the previous cases under the Policy in which the Respondent has been involved. It also brings forward evidence that is said to show that the Respondent "is associated with" approximately 451 domain names, which include domain names that incorporate "well-known third party marks".
5.5 Further, it contends that the pay-per-click use of the Domain Name falls within the scope of paragraph 4(b)(iv) of the Policy and that the offer for sale of the Domain Name on that page means that the Respondent's activities also fall within the scope of paragraph 4(b)(ii) of the Policy.
5.6 The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the present dispute based upon the Complaint, notwithstanding the failure of any person to lodge a Response.
6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (Policy, paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel shall "draw such inferences therefrom as it considers appropriate".
A. Identical or Confusingly Similar
6.4 The Complainant clearly has trade mark rights in the mark NUTRASWEET and the Panel accepts that the Domain Name can only sensibly be read as the term "Nutrasweet" in combination with the ".info" generic Top-Level Domain. Given this, the Complainant has established that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights. The Complainant has, therefore, made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.5 The registration of a Domain Name for use in connection with a page that displays pay-per-click links does not provide a right or legitimate interest if that use is intended to capitalise on the reputation and goodwill of a third party's trade mark (as opposed to descriptive or generic terms in the domain name). In the respect see paragraph 2.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). Indeed, such activity will usually constitute positive evidence of a lack of rights or legitimate interests (see, for example, this Panel's decision in Premier Farnell Corp. v. BlueHost.com, Bluehost Inc / Newark del Peru S.A., WIPO Case No. D2010-2111).
6.6 For the reasons that are set out under the heading "Registered and Used in Bad Faith" below, the Panel finds that the Domain Name has been registered with either this use in mind or some other use that would take unfair advantage of the reputation of the Complainant's NUTRASWEET marks. In the circumstances, the Complainant has sufficiently shown that the Respondent has no rights or legitimate interests in the Domain Name and made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.7 The Panel accepts, given the reputation of the Complainant's products and the fact that the term "Nutrasweet" is not obviously generic or descriptive, that the Domain Name was registered with knowledge of the Complainant's marks.
6.8 Further, the Panel accepts that the use then made of the Domain Name appears to fall within the scope of paragraph 4(b)(iv) of the Policy. This does not appear to be a case where the links displayed refer to the Complainant's product or link to competitors of the Complainant. However, the Panel does not consider this to be significant, where, as here, it is difficult to conceive of any use of a term incorporated into a domain name, other than as referring to a third party's trade mark. Users are still being drawn to the pay-per-click page by reason of the reputation of the mark alone. Further, someone (whether that be the Respondent and/or the operator of the pay-per-click page) is commercially gaining by reason of that use.
6.9 The Panel also notes the fact that the Domain Name has been, and continues to be, offered for sale. Whether or not that was the "primary" purpose of registration of the Domain Name so that the Respondent's activities strictly fall within the scope of paragraph 4(b)(ii) of the Policy, is not clear. Nevertheless, it is a fact that supports a finding that the Domain Name was registered with the intention (whether than by sale or otherwise) to take unfair advantage of the reputation of the Complainant's trade mark.
6.10 Further, this is a case where the nature of the Domain Name is such that it is difficult to conceive of any use that the Respondent might make of the Domain Name without the Complainant's consent that would not involve bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 as elaborated upon by the three person panel in Mr. Talus Taylor, Mrs. Anette Tison v. Vicent George Warning/Fayalobi Interaction Management, WIPO Case No. D2008-0455).
6.11 This is sufficient for the Panel to reach a finding of bad faith registration and use. However, there is also the evidence that the Complainant has brought forward as that the Respondent is a serial cybersquater who has in bad faith registered and used numerous domain names that incorporate the trade marks of others. The Panel accepts that the registration of the Domain Name is yet another example of such conduct.
6.12 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
7.1 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 <nutrasweet.info> be transferred to the Complainant.
Matthew S. Harris
Date: August 26, 2014