WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société des Produits Nestlé S.A. v. Pedro Flores
Case No. D2014-2220
1. The Parties
The Complainant is Société des Produits Nestlé S.A. of Vevey, Switzerland, represented by Studio Barbero, Italy.
The Respondent is Pedro Flores of Zapopan, Mexico.
2. The Domain Name and Registrar
The disputed domain name <nestlemexico.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2014. On December 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 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 December 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 13, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2015.
The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on January 20, 2015. 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 wholly owned company of Nestlé S.A. and owns the majority of the trademarks used under license by the Nestlé Group of companies. The Nestlé group sells products and services all over the world in various industries, primarily in the food industry, including baby foods, breakfast cereals, chocolate & confectionery, beverages, bottled water, dairy products, ice cream, prepared foods, food services and is also active in the pharmaceutical and pet-care industries.
Nestlé Group is a gigantic company, with 330,000 employees, with a worldwide presence. It is the world’s largest food consumer products company in terms of sales.
The Complainant is the owner of over 100,000 international and national trademark registrations worldwide including the following (Annexes 3.1 through 3.11 of the Complaint):
International Reg. No. 400444 of July 16, 1973, NESTLÉ (word and device mark), in classes 01, 05, 29, 30, 31, 32 and 33 (Annex 3.1);
International Reg. No. 479337 of August 12, 1983, NESTLÉ (word mark), in classes 01, 05, 29, 30, 31, 32 and 33 (Annex 3.2);
International Reg. No. 490322 of November 27, 1984, NESTLÉ (word and device mark), classes 01, 05, 29, 30, 31, 32 and 33 (Annex 3.3);
International Reg. No. 511513 of April 03, 1987, NESTLÉ (word mark), in classes 03, 16 (Annex 3.4);
Mexican Trademark Registration No. 119592 of May 16, 1964, NESTLE (word mark), in classes 02, 05, 29, 30, 31 and 32 (Annex 3.5);
Mexican Trademark Registration No. 176325 filed on February 2, 1973 NESTLÉ (word and device mark), classes 01, 02, 03, 04, 06, 13, 17, 18, 19, 20, 21, 22, 25 and 31 (Annex 3.6);
Mexican Trademark Registration No. 176362 filed on February 2, 1973 NESTLE (word mark) in classes 31, 32 and 33 (Annex 3.7);
Mexican Trademark Registration No. 360526, filed on November 18, 1988 NESTLE (word mark) in classes 35 and 38 (Annex 3.8);
Mexican Trademark Registration No. 417974, filed on January 7, 1991 NESTLE (word mark) in class 33 (Annex 3.9).
Nestlé Group’s presence in Mexico goes back to 1930 and, in 1935 the first Nestlé factory was established. Today it has 12 factories in the country and the company Nestlé México, S.A. de C.V. manufactures and markets chocolate and confectionery products and operates as a subsidiary of Nestlé S.A.
For the protection of the NESTLÉ trademark on the Internet, the Complainant registered the word NESTLÉ in numerous gTLDs and ccTLDs, including “.mx” for consumers based in Mexico (Annex 5 of the Complaint). The Complainant operates the website “www.nestle.com” as its primary web portal for global promotion, while its subsidiary Nestlé Mexico S.A. de C.V. mainly operates through a dedicated website, in the Spanish language (Annex 6 of the Complaint).
The Respondent registered the disputed domain name on November 27, 2014, without consent of the Complainant. The Complainant became aware of the infringing registration of the disputed domain name because a consumer reported that the trademark NESTLÉ and the company Nestlé Mexico, S.A. de C.V. were used by the Respondent for fraudulent purposes and activities.
Such fraudulent use of the domain name forced the Complainant to publish a press release on its web portal to warn its consumers of the reported fraudulent activities. In addition, the Complainant addressed, on December 5, 2014, a cease and desist letter to the Respondent demanding to immediately cease any use of the disputed domain name and transfer it to the Complainant.
On December 5, 2014, a separate complaint with the Registrar was also submitted through the abuse report form available online, demanding their cooperation to obtain the suspension of the disputed domain name as a result of its unlawful use by the Respondent. In response to such complaint, the Registrar confirmed to have forwarded the complaint to the Respondent.
An abuse report was also sent to the hosting provider “Wix.com” and a cease and desist letter was addressed to its attention, demanding to immediately disable access to the corresponding website. In response to such letter, the hosting provider confirmed, on December 10, 2014, to have removed the disputed domain name from its servers.
In addition, a reminder of the cease and desist letter was sent to the Respondent on December 16, 2014, but, for the time being, no reply was received.
5. Parties’ Contentions
The Complainant contends that the three requirements of paragraph 4(a) of the Policy are met:
1. The disputed domain name is confusingly similar to a mark in which it has rights, only differing from it due to the addition of the non-distinctive element “mexico”, which does not diminish the confusing similarity between the disputed domain name and the Complainant’s trademark. On the contrary, it refers to a country where the Complainant operates and where the subsidiary Nestlé Mexico, S.A. de C.V. is based, leading consumers to assume that the Respondent is the entity authorized to promote and commercialize the Complainant’s products in Mexico.
2. The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent had not been licensed or otherwise permitted to use the Complainant’s trademark or any variations thereof by the Complainant, it is not commonly known by that name, and it has no rights or legitimate interests for registering the Complainant’s mark as its domain name. The Complainant further alleges that there is evidence that the disputed domain name is not being used in bona fide, since, without the Complainant’s authorization and misusing the company name and address of Nestlé Mexico, S.A. de C.V., the disputed domain name was being used for fraudulent, thus, unlawful activities.
3. The Respondent has registered and is using the disputed domain name in bad faith. The Complainant points out that the trademark NESTLÉ is a well-known trademark all over the world as well as the company Nestlé Mexico, S.A. de C.V., and that the Respondent must have been aware of this fact when it deliberately registered the disputed domain name. The Complainant adds that the Respondent’s obvious intent was to misleadingly divert the consumers to the website, causing confusion among consumers in the way of creating the impression of relation with the Complainant. According to the Complainant, it is apparent that the intent of the Respondent was to exploit the reputation and goodwill of the Complainant and the NESTLÉ trademarks to defraud third parties and attract Internet users to such website. Also, the Complainant alleges that the Respondent’s failure to reply to the Complainant’s cease and desist letter may be an evidence of bad faith. In conclusion, the Complainant argues that the Respondent is using the disputed domain name in bad faith and, in particular, that the disputed domain name was registered and is being used for gaining profits from the creation of likelihood between its activity and the activity of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to obtain the transfer of a domain name, a complainant must prove the three Policy elements, regardless of whether the respondent files a response to the complaint. The first element is that the “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights”. Policy, paragraph 4(a)(i). The second element a complainant must prove is that the respondent has “no rights or legitimate interests in respect of the domain name”. Policy, paragraph 4(a)(ii). The third element a complainant must establish is that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii).
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant establishes that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”. There are therefore two conditions in paragraph 4(a)(i) that the Complainant must meet: first, that it has “rights in a trade or service mark”, and, secondly, that the disputed domain name is “identical or confusingly similar” to that mark.
The Complainant provided evidence that it has prior registered rights in the mark NESTLÉ around the world, including in Mexico, where the Respondent is located. From the evidence on the record, the Panel finds that NESTLÉ is a well-known mark and that the Respondent simply added the geographical term “mexico” to the Complainant’s trademark. Therefore, the Panel finds that the first condition of paragraph 4(a)(i) of the Policy is met, in line with other previous UDRP decisions (see Compagnie Générale des Etablissements Michelin and Michelin Recherche et Technique S. A. v. Eijiobara Obara, WIPO Case No. D2012-0047, Merck Sharp & Dohme Corp. v. GlobalCom, Henry Bloom, WIPO Case No. D2011-0700, and Fluor Corporation v. KMLOLO, WIPO Case No. D2010-0377).
In respect to the second condition of paragraph 4(a)(i) of the Policy, the disputed domain name incorporates the Complainant’s NESTLÉ trademark in its entirety. Furthermore, it increases the confusing similarity as it also refers to a country or market where the Complainant operates and where the subsidiary NESTLÉ Mexico, S.A. de C.V. is also based. The addition of the term “mexico” does not prevent or mitigate the confusion between the disputed domain name and the Complainant’s trademark, because, as ruled in Arthur Guiness Son & Co. (Dublin) Limited v Dejan Macesic, WIPO Case No. D2000-1698, by the time Internet users arrive at the website, they have already been confused by the similarity between the disputed domain name and the Complainant’s mark into thinking they are accessing the Complainant’s website.
Thus, the Panel finds that the first element of the Policy has been satisfied.
B. Rights or Legitimate Interests
Following Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666, in order for a complainant to prove that a respondent has no rights or legitimate interests in the disputed domain name, previous UDRP panels have consistently held that it is sufficient for a complainant to prove a prima facie case (see, amongst others, Croatia Airlines, d.d. v. Modern Empire Internet Limited, WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). Once a prima facie case is shown, the burden of production shifts to the respondent, who must demonstrate its rights or legitimate interests in the domain name to the Panel.
Three non-exhaustive circumstances are identified to assess the existence of rights or legitimate interests: (i) bona fide prior use of the disputed domain name; (ii) common association with the disputed domain name; and (iii) legitimate non commercial use of the disputed domain name.
It is clear for the Panel that, in this case, there is no evidence that the Respondent has ever been known by the disputed domain name, which demonstrates that the Respondent has no rights or legitimate interests in the disputed domain name.
Furthermore, the Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the NESTLÉ mark in a domain name or in any other manner.
Since the Respondent is using the disputed domain name solely in connection with a website, it is apparent that the only reason the Respondent registered and is using the disputed domain name is that it knew of and wanted to trade on the Complainant’s fame and not for any legitimate noncommercial or fair use purpose (see Chinmoy Kumar Ghose v. ICDSoft.com & Maria Sliwa, WIPO Case No. D2003-0248).
As ruled in Red Bull GmBH v. Affiliate Master, WIPO Case No. D2013-0804, it is clear for the Panel that the Complainant has made a prima facie case that none of the above mentioned three circumstances apply. It is also evident, from the absence of response to the Complaint, that the Respondent has failed to rebut the prima facie case made by the Complainant or advance any other arguments supporting its rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the second element of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b)(i) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) the 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 you have engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business or competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on his website or location.”
As previous UDRP panels have decided, and given the established well-known identity of the NESTLÉ trademark, the Panel finds it very likely that the Respondent was aware of the Complainant’s trademark at the time it registered the disputed domain name. It is established by previous UDRP panels that there is bad faith when the complainant’s trademark was shown to be well-known or in wide use at the time of registration of the domain name (see SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092; and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
Additionally, the Panel finds it apparent that the intention of the Respondent was to take advantage of the reputation of the Complainant and its trademarks, attracting Internet users to the website at the disputed domain name, by causing an erroneous association with the Complainant, its activities and products.
As decided in Société pour l’Oeuvre et la Memóire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v Perlegos Properties, WIPO Case No. D2005-1085, registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to use the mark is a strong indication of bad faith.
Therefore, the Panel finds that the third element of the Policy has been satisfied.
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 name <nestlemexico.com> be transferred to the Complainant.
Gonçalo M. C. Da Cunha Ferreira
Date: January 27, 2015