WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société des Produits Nestlé S.A. v. Elchapo Guzman, Turkticaret.net
Case No. D2016-1660
1. The Parties
The Complainant is Société des Produits Nestlé S.A. of Vevey, Switzerland, represented by Studio Barbero, Italy.
The Respondent is Elchapo Guzman, Turkticaret.net of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <nidonestle.com> is registered with Reg2C.com Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2016. On August 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 18, 2016, 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.
Pursuant to the Complaint submitted in English and the Registrar’s confirmation that Turkish is the language of the registration agreement, on August 30, 2016 the Center requested Parties to submit their comments on the language of the proceeding. On August 30, 2016, the Complainant submitted its request for English to be the language of the proceeding, by reference to the Complaint. The Respondent did not submit any comment on the language of the proceeding.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 25, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 26, 2016.
The Center appointed Dilek Üstün Ekdial as the sole panelist in this matter on September 28, 2016. 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.
Nestlé Group provides products and services all over the world in various industries, primarily in the food industry, including baby foods, breakfast cereals, chocolate and 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 has more than 330,000 employees and markets its products worldwide. It is one of the world's largest food consumer products companies in terms of sales.
Nestlé Group is present in more than 80 countries with 436 factories. The Complainant began its presence in Turkey in 1909. After opening its first sales office in Karaköy, Nestlé opened its first chocolate factory in Feriköy, in 1927. Nestlé Group has been active in Turkey for 107 years, employing more than 3,800 people. From its production hub in Turkey, Nestlé exports to the neighboring countries, particularly to the Middle East and North Africa.
The Respondent registered the disputed domain name on April 19, 2016.
5. Parties’ Contentions
According to the Complainant; the disputed domain name registered by the Respondent is confusingly similar to the trademarks NESTLE and NIDO in which Complainant has rights.
The addition of the top level “.com” to the trademarks NIDO and NESTLE of the Complainant does not prevent the finding of confusing similarity, since the generic Top-Level Domain (“gTLD”) “.com” is merely instrumental to the use of Internet.
NESTLE and NIDO trademarks are fully incorporated in the disputed domain name. The disputed domain name directly and entirely incorporates the Complainant’s well-known, registered trademarks NESTLE and NIDO.
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. No license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademarks.
The Complainant states that the disputed domain name was resolved to a website that reproduced the content and look and feel of the Complainant’s official website for NIDO products as well as the Complainant’s trademarks, including the figurative trademark NESTLE NIDO.
Furthermore, the corresponding website was used by the Respondent in connection with fraudulent activities, namely to collect Internet users’ personal data via the form published on the Respondent’s website and to support the conclusion of commercial agreements in which the Respondent pretended to be the Complainant or one of its affiliated companies, along the lines of the contract.
The Complainant sent a cease-and-desist letter to the Respondent on May 2, 2016. However, the Respondent did not deem appropriate to reply to the formal communication of the authorized representative of the Complainant.
Reminders of the cease-and-desist letter, requesting compliance with the Complainant’s requests, have also been sent to the Respondent on May 10 and 16, 2016 but no response was received.
Although, at the time of the filing of the Complaint, the infringing website previously available at the disputed domain name is no longer active, the Complainant submits that the Respondent’s passive holding constitutes bad faith use of the disputed domain name. As also established in a number of previous UDRP cases, as of the leading case Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the concept of “bad faith use” in paragraph 4(b) of the Policy includes not only positive action but also passive holding.
The Respondent should be considered to have registered and to be using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
According to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11(a) is to ensure fairness in the selection of the language by giving full consideration to the parties’ level of comfortability with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
In the present case, the Complainant requested for English to be the language of the proceeding. The registration agreement for the Domain Name is in Turkish language. However, the Respondent did not submit any comment regarding the language of the proceeding even though it was invited to do so in both Turkish and English. In addition, the Complainant is not able to communicate in Turkish and therefore, if the Complainant were to submit all documents in Turkish, the administrative proceeding would be unduly delayed and the Complainant would have incurred substantial expenses for translation. Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under paragraph 11(a) of the Rules, that English shall be the language of the administrative proceeding in this case.
6.2. Substantive Issues
Paragraph 15(a) of the Rules requires the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the disputed domain name 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 disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has registered the trademarks NESTLE and NIDO in several classes in different countries including Turkey. The trademarks were registered long before the registration of the disputed domain name.
The Complainant is the owner of several international and national trademark registrations worldwide including the following :
International Registration No. 400444 of July 16, 1973, NESTLÉ (word and device mark), in classes 01, 05, 29, 30, 31, 32, 33;
International Registration No. 479337 of August 12, 1983, NESTLÉ (word mark), in classes 01, 05, 29, 30, 31, 32, 33;
International Registration No. 490322 of November 27, 1984, NESTLÉ (word and device mark), classes 01, 05, 29, 30, 31, 32, 33;
International Registration No. 511513 of April 3, 1987, NESTLÉ (word mark), in classes 03, 16;
International Registration No. 793804 of December 10, 2002, NESTLE (word mark), in classes 01, 02, 03, 04, 05, 06, 07, 08, 09, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43 and 44, designating also Turkey;
International Registration No. 189877 of January 9, 1956, NIDO (word mark), classes 05, 29, 30 and 31;
International Registration No. 398904 of July 18, 1973, NIDO (word mark) in class 21;
Turkish Trademark Registration No. 2010/78913 of January 18, 2012, NESTLE NIDO (figurative mark), in classes 5, 29 and 30.
The Panel concurs with the opinion of several prior UDRP panels which have held that, when a domain name wholly incorporates a complainant’s registered mark, that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises,Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615.
Finally, the Respondent has brought no argument to contend that the disputed domain name is not identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the disputed domain name. It is clear for this Panel that the Respondent has not demonstrated any bona fide offering of goods and services by its use of the disputed domain name. Nor has the Respondent shown that it has been commonly known by the disputed domain name. The Complainant showed, inter alia, that the Respondent has neither a license nor any other permission to use the disputed domain name.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests. The Panel finds that given the use of the disputed domain name, when the Respondent registered the disputed domain name, it knew that NIDO and NESTLE were the trademarks of the Complainant, and that it registered the disputed domain name because it would be recognized as such.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Accordingly, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a list of indicative circumstances that suggest bad faith registration and use; however, such list is not exhaustive and a finding of bad faith depends on the circumstances of each case. Based on the circumstances, in the Panel’s view, it is reasonable to infer that when the Respondent registered the disputed domain name, it purposefully chose the disputed domain name incorporating the trademarks of the Complainant and registered them in order to take advantage of the strength of the trademarks. The Panel, in accordance with previous UDRP decisions issued under the Policy, is of the opinion that this knowledge of the Complainant’s trademarks may be considered as an indication of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
The Respondent has never been granted permission to register the disputed domain name. The Respondent takes advantage of the NESTLE and NIDO trademarks by intentionally attempting to attract visitors to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Panel notes that the disputed domain name is currently inactive. However, the disputed domain name was previously connected to a Turkish website and the Respondent’s publication of the Complainant’s trademarks NESTLE, NIDO and NESTLE NIDO on the website to which the disputed domain name resolved and the reproduction of the look of the official website of the Complainant for NIDO Products (“www.nestlenido.com”), clearly indicate that the Respondent knew of the Complainant’s trademarks.
Consequently, the Respondent is using the dispute domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website.
In view of the above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith, in accordance with paragraph 4(a)(iii) 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 disputed domain name <nidonestle.com> be transferred to the Complainant.
Dilek Üstün Ekdial
Date: October 14, 2016