WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société des Produits Nestlé S.A. v. Ranjan Agrawal and Domain Admin / Neil P / Indus Domains LLC
Case No. D2016-2371
1. The Parties
The Complainant is Société des Produits Nestlé S.A. of Vevey, Switzerland, represented by Studio Barbero, Italy.
The Respondents are Ranjan Agrawal of Gurgaon, India , represented by Wadhwa Law Chambers, India and Domain Admin / Neil P / Indus Domains LLC of Lewes, Delaware, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <nescafe.org> (the “Domain Name”) is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2016. On November 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 23, 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.
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 November 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2016. The Response was filed with the Center on December 15, 2016.
The Center appointed Ellen B Shankman as the sole panelist in this matter on December 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.
The Complainant requests that the background procedural information provided not be counted as against the 5000 word limit to the Complaint, as it is necessary to understand the complex chain of events in order to fully understand the circumstances of the Complaint. The Respondent argued that the Complaint is an attempt to circumvent the 5000 word limit and thus should be dismissed. The Panel allows the Complainant to provide the extra background and holds it reasonable in the circumstances of this case. This finding is consistent with other cases, see, e.g., Talal Abu-Ghazaleh International, Talal Abu Ghazaleh & Co., Abu Gazaleh Intellectual Property and Aldar Audit Bureau v. Fadi Mahassel, WIPO Case No. D2001-0907, Société des Technologies de l’Aluminium du Saguena Inc. v. Success Inc., WIPO Case No. D2008-0268, and Boutique Tristan & Iseut Inc. v. B & B, WIPO Case No. D2007-1816.
4. Factual Background
The date of the actual registration of the Domain Name is itself in dispute regarding the timing. The date of the Domain Name registration is unclear but is confirmed by the evidence to be at least as early as October 14, 2016 by the Respondent Agrawal, the same date that the cease and desist letter was sent by the Complainant to the holder of the Domain Name. The Complainant provided evidence of multiple trademark registrations for the mark NESCAFE including, inter alia, United Kingdom Trademark No. 585860 (registered on May 26, 1938), and European Union Registration No. 003346053 of September 10, 2003, in Classes 9, 11, 14, 16, 18, 21, 24, 25, 28, 29, 30, 32, 35, 41, 43 , and Indian Registration. No. 850604 of April 9, 1999 in class 30, that predate the date of the Domain Name registration for a wide variety of goods and services.
The Panel also conducted an independent search to determine that the Domain Name is currently active, and resolves to the Respondent’s website “The Unofficial Nescafe Complaints & Feedback Forum”. While the content appears to claim to collect posts, there is no additional identifying information to corroborate who is behind the website, and makes no identification with the Respondent or other source of the website, other than simple forums. Furthermore, there is no specific contact page and the invitation to register does not provide any information, and appears to be only set up to collect information.
Since Wadhwa Law Chambers is responding for the Respondent Ranjan Agrawal, references to the Respondent in this Decision refer primarily to Ranjan Agrawal unless otherwise indicated. Since the additional Respondents did not file any response, the statements regarding the correspondence between the parties other than those addressed by the Respondent Agrawal are taken from the Complaint and are generally accepted as true in the circumstances of this case.
5. Parties’ Contentions
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 history of the Nestlé Group begins back in 1866, when the first European condensed milk factory was opened in Cham, Switzerland, by the Anglo-Swiss Condensed Milk Company. 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 and confectionery, beverages, bottled water, dairy products, ice cream, prepared foods, food services and is also active in the pharmaceutical and pet-care industries. The Complainant alleges that Nestlé Group has more than 330,000 employees and markets its products worldwide. The Nestlé Group is present in more than 80 countries with 436 factories. 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 fourty-eighth biggest company in the world in 2009 and grew to the fourty-fourth largest in 2010. The NESCAFE brand was initially launched in Switzerland on April 1, 1938 and then eventually exported worldwide.
Currently, the NESCAFE brand is consumed extensively worldwide, with over 15,000 cups of NESCAFE drunk every minute. According to Interbrand’s annual Best Global Brands ranking for 2016, the trademark NESCAFE – that is included in the list since 2001 ̶ is worth USD 12,517 million, making it the thirty-sixth most valuable trademark in the world.
The Complainant argues that in light of the foregoing, NESCAFE is undisputedly famous and a well-known trademark worldwide. In order to further support the protection of this well-known trademark on the Internet, the Complainant registered the word “Nescafe” as domain name in numerous generic Top-Level Domains (“gTLDs”) and country-code Top-Level Domains (“ccTLDs”), including “.us” and “.in”. The Complainant operates the website “www.nestle.com” as its primary web portal for global promotion, while the official website dedicated to the NESCAFE brand is “www.nescafe.com”. The Complainant also has websites dedicated to American and Indian consumers of NESCAFE, respectively available at “www.nescafeusa.com” and “www.nestle.in/brands/nescafe”.
The Complainant, through a long, complex and detailed factual section of the Complaint, names both Indus Domains LLC and Ranjan Agarwal as Respondents in this case, since the Complainant alleges that the circumstances of the case clearly indicate that the WhoIs information of the Domain Name and or transfer of the Domain Name was done upon receipt of the Complainant’s Cease and Desist letter in order to specifically build a defense in the event of a possible UDRP procedure – all done in bad faith. The pertinent facts highlighted include acquisition of the Domain Name by Indus as early as September 22, 2016 if not earlier, unsolicited emails sent to the Executive Vice President and Senior Vice-President of Nestle S.A. on October 7, 2016, by a “Elsa McDonald”, who claimed to have the Domain Name and offering to sell it. On October 19, 2016, after the alleged transfer of the Domain Name, Ms. McDonald sent additional correspondence regarding the sale of the Domain Name to the Complainant. Based on investigation by the Complainant, it was discovered that the source of the email address was in Gurgaon, Haryana, India – where also the current Respondent is located. Further investigation showed that the postal address and telephone number of the domain broker is one street number different from the current registrant (i.e., the Respondent). The Complaint further alleges that “[n]otwithstanding the fact that an express offer for the Domain Name was not made by Complainant to the ‘broker’ Ms. McDonald – as well as to Indus Domains and Mr. Agrawal, on November 10, 2016 Ranjan Agrawal indicated to Complainant’s representative that ‘the broker who sold me this name presented an offer to me of $500 on behalf of your client company’s CEO’, requesting also: ‘Is it a legit offer made by him?’”, and then subsequent request of USD 1,500 for the Domain Name by the Respondent, thus showing a close connection between the parties.
Furthermore, the Complainant alleges that the Respondent, the Director of Indus Domains Prakhar Bindal and his companies Axsiom Domains Pvt Ltd and Discover Domains – which are clearly connected to Indus Domains – have been the subject of several prior proceedings under the Policy in which they have been found to have abusively registered and used domain names corresponding to trademarks of third parties, citing those decisions. The Complainant also alleges that in his attendance at the Internet Corporation For Assigned Names and Numbers (“ICANN”) meeting in Hydrabaad the Respondent Agrawal demonstrated his knowledge of the domain name system and the UDRP.
The Complainant also alleges that the use of the Simple Machines Forum by the Respondent Agrawal in the current website under the Domain Name has only a single post published by the administrator. Further, as of November 9, 2016, a post displaying adult content and a link to “www.sexoloszenia.co” redirected users to pornographic websites – the second and only additional post to the date of the Complaint.
To summarize the Complaint, the Complainant is the owner of numerous registrations for the trademark NESCAFE, in respect of broad goods and services. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the gTLD “org” does not preclude such finding. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that there is no fair use of the trademark. The Respondent was aware of the rights of the Complainant in the trademark and the value of the trademark at the point of registration. The Respondents deliberately transferred the Domain Name between them upon receipt of the Cease and Desist letter and to deliberately create a potential defense to the anticipated UDRP proceeding. The Respondent has demanded an amount in excess of his documented out-of-pocket expenses for transfer of the Domain Name. The Respondent has used the Domain Name to attract individuals/users for commercial gain by that continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, and not as a legitimate gripe site. The Domain Name was registered and is being used in bad faith. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.
The Respondent’s representative supplied a response on behalf of Ranjan Agarwal, the current registrant of the Domain Name, and argues that Ranjan Agarwal purchased the Domain Name from Indus Domains, but is not connected with Elsa McDonald, Indus Domains or Axsiom. (An I.D. for Ranjan Agarwal was supplied, to counter argue the Complainant’s contention that Ranjan Agarwal is not a real person). The Respondent claims that Ranjan Agarwal is a well-reputed Professor of Economics at RSM PG College, Dhampur, India, who set up the site as a social activist, researcher and professor for public policy research regarding consumer grievances and their impact on brands. The Respondent claims that it set up the site to analyze responses collected, having noticed a rising number of grievances against Nescafe products and in view of his personal dissatisfaction with the products. The Respondent claims that he “couldn’t find a proper forum to discuss these growing issues and therefore (…) decided to come up with a website to focus on Nescafe products specifically.” Further, the Respondent “got in touch with Indus Domains/Prakhar Bindal, a domain name broker, in the month of September 2016 who arranged the domain nescafe.org for us.” The Respondent claims he was told by Indus that it was a “safe buy” for the intended purpose, and in addition to closing the deal claims to have invested in a website developer and that “[i]n the interim the simple machine page was uploaded.” Without explanation of the discrepancy, the Respondent says the Domain Name was registered on October 14, 2016, although his plans for use of the website were from the “3rd week in September”.
The Respondent further argues that by marking “unofficial” website and with a disclaimer, there is no confusion. The Respondent also denies any responsibility for the post of adult content on the website, as it was published by “third parties” and/or “by an automated BOT”. The Respondent claimed that it has removed the post and “ensures that it will keep a stricter check on third party posts in the future”.
The Respondent says that after registration of the Domain Name he “was put to notice by the broker of a cease and desist notice received” for the Domain Name. The Complainant also contacted the Respondent through brokers with an offer of USD 500 to purchase the Domain Name. The Respondent said he made it clear that it was purchased for a consumer portal and not with an intention to resell, but that in order to avoid legal proceeding, the Respondent offered to amicably settle the dispute – to which the Complainant refused and threatened and harassed the Respondent. The Respondent states that “since immediately after the purchase of the domain the Respondent was made aware of a dispute being raised by the Complainant, Mr. Agarwal met Prakhar Bindal in Hyderabad to discuss the issue.”
Notwithstanding, the Respondent says in an email dated November 14, 2016 that: “I did not purchase this name to resell. That said, I can let it go for $1500. Your client’s offer of $500 doesn’t compensate my emotional investment in the name, let alone the actual amounts I paid for it in the auction plus the development fees” which the Respondent argues is a legitimate amicable settlement response and “not with the intention to sell the disputed domain”.
The Respondent argues that the Domain Name is not identical or confusingly similar to a trademark or service mark in which the Complainant has rights, because it is being used for a consumer portal for legitimate noncommercial purpose and thus amounts to fair use. The Respondent claims that there is an absence of any advertising links (a point refuted by the Complainant). The Respondent argues that he has legitimate rights and interests in the Domain Name since the information to be collected is intended to be used by the Respondent “for his research work.” The Respondent purchased the Domain Name “to be used for bona fide criticis and thus results in a legitimate interest.”
The Respondent further argues that it commenced legitimate use of the Domain Name before any notice of the dispute, which it claims it was communicated to him on November 25, 2016. The Respondent is making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. The Respondent argues that he has not registered, nor is he using, the Domain Name in bad faith. The Respondent further accuses the Complainant of Reverse Domain Name Hijacking.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for and well-established reputation in the NESCAFE brand and that, even though not a prerequisite under the first element of the Policy, these rights precede the date of the Respondent’s obtaining the Domain Name. This finding is consistent with the fact that the fame of the trademark has been confirmed in numerous previous UDRP decisions, see, e.g., Societe des Produits Nestle, S.A. v. Whois ID Theft Protection, WIPO Case No. D2006-1154. Further, the Respondent Argawal admits quite freely that the choice of the Domain Name associated with the Complainant trademark was done deliberately.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the mere addition of the gTLD “.org” in the Domain Name does not change the overall impression of the designation as being connected to the trademark of the Complainant, and which does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark - and if anything, enhances it. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered domain name is considered sufficient to find the domain name confusingly similar to the Complainant’s trademark.” In Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488, it was stated that it is a long-established precedent that confusing similarity is generally recognized when well-known trademarks are paired up with different kinds of generic prefixes and suffixes. In this case, said term does not detract from the overall impression.
“The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the Domain Name.” Moreover, the gTLDs are typically disregarded under the confusing similarity test. See paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). Ignoring the gTLD, the Domain Name is identical to the Complainant’s NESCAFE mark.
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel notes that this case provided a close challenge under this second element of the test. That having been said, the Panel may look to the circumstances of the case as a whole in order to determine whether the second element of the Policy is met.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondents have no rights or legitimate interests in respect of the Domain Name and that they are not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondents to use its mark – collectively or individually.
The Panel finds that no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademark NESCAFE. Further, the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. This was stated by the panel as a factor in the finding of non-legitimate interest with the Respondent in Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312.
As identified above, the complex and convoluted chain of events, and the timing of the facts informs both this and the third elements of the Policy. The Panel notes that the Respondent raised some serious and cogent arguments in defense. However, the Panel does not find them compelling, and finds that neither Respondent have any rights or legitimate interests in the Domain Name.
The Respondent is clearly not an authorized user or licensee of the Complainant. The Panel finds that the Respondent’s evidence of use of the Domain Name, trying to justify that such use is a legitimate gripe site is not compellingly persuasive. The Panel notes that the website provides no information about who is collecting the data, nothing to identify the source as the respected university professor, with only a place to collect and get in-putted data from others. Accordingly, while the legal argument of legitimate fair use ̶ if supported by adequate evidence ̶ may provide a legitimate defense by the Respondent, which the Panel agrees is shown in the other UDRP cases with distinguished panelists cited by the Respondent, the Panel does not find it to be present in this case. The Panel finds that the Respondent did not sufficiently demonstrate rights or legitimate interests in the name. This is consistent with the holding in Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 “the right to express one’s views is not the same as the right to use another’s name to identify one’s self as the source of those views. (..) Here the Respondent is using a domain name which falsely conveys an association with the Complainant to lead Internet users to his website. He is thus illegitimately identifying himself as the Complainant and attracting visitors to his site by trading off the Complainant’s goodwill in its (…) trademark. By the time users reach the disclaimers on the website they have already been exposed to the misrepresentation inherent in the disputed domain name.”
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which the Panel was not satisfactorily persuaded was refuted, that the Respondent lacks rights or legitimate interests in the Domain Name. The Panel further finds this to be the case whether or not there is actual connection between the Respondents. In the case of the Respondent Indus, there is certainly no rights or legitimate interests. And with regard to the Respondent Agrawal, the Panel is not persuaded that the Domain Name is being used for a legitimate noncommercial interest (and which also informs the third element of the Policy discussed further below).
Therefore, the Complainant has satisfied the second requirement that the Respondents have no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel notes that this case provided a close challenge under this third element of the test as well, and it is here that the circumstances of the case as a whole were particularly persuasive in determining that the third element of the test was met. Here too the Respondent raised some serious and cogent arguments. However, the Panel does not find them sufficiently compelling, and the Panel finds the Complainant’s version more likely than the Respondent’s to be true.
First, there is the issue of whether or not the Respondents are even connected, and if so, how this affects this third element of the test. If the Panel accepts the Complainant’s case that the Respondent Argawal is associated with the Respondent Indus Domains LLC, i.e., that both Respondents are connected ̶ and it’s compelling to do so given the too many apparent coincidences in timing and facts ̶ then the Panel finds that there is clear evidence of registration and use in bad faith. The Complainant supplied evidence to show that the Respondent Indus is a serial bad-actor, that the “broker” representative of the holder approached the Complainant to offer for sale the Domain Name which contains its own mark, and that the transfer of the Domain Name in the timing of the Cease and Desist letter is likely “domain flight”.
However, even if the Panel accepts the Respondent Argawal’s argument that the Panel should not find any connection between the Respondents, and thus the case for any connection with prior bad faith acts cannot be impugned to the Respondent, the Panel is not persuaded that the Respondent Argawal registered and used the Domain Name legitimately.
The Panel wishes to emphasize that since the defense raised here is that the Domain Name was registered and used for legitimate criticism, the Panel came prepared to view the evidence through the lens of providing the benefit of doubt to be resolved in the direction of supporting legitimate fair use, if persuaded this was the case. However, the Panel is not so persuaded.
Even if the Panel accepts the Respondent’s contention that there is no connection between the two Respondents (which appears unlikely and at best questionable), the Panel is persuaded that the Domain Name was registered and used in bad faith by the Respondent Argawal standing alone as well. The Respondent was clearly aware of the Complainant’s mark – it is why he says he picked it. The Respondent was also aware of the USD 500 offer, and continued negotiating with it – thus making the denial of any awareness of the previous domainer’s contact with the Complainant questionable. The Panel finds it more likely to believe that when he bought the Domain Name, the “seller” would have provided the same statistics provided to the Complainant about the value of the Domain Name, even if they are not connected.
Further, the Panel finds in this case that the Respondent’s counter-offer to sell the Domain Name to the Complainant for USD 1,500, higher than reasonable “out of pockets” and evidence of bad faith. The Respondent having the website up in a week, even by his own admission, makes it difficult to believe that he had such “emotional attachment” to the Domain Name. The evidence that this sum reflects legitimate investment in the website in order to support his claim that the price is justified and not evidence of bad faith by the Respondent is non-existent.
In addition, the Respondent’s evidence of use of the website, trying to justify that it is a legitimate gripe site is not compelling. As the Panel noted in its own review of the website, there is no information about who is collecting the data – only a place to collect and get inputted data from others. Nothing to identify the source as the respected university professor. Rather, the Panel finds that it is more likely than not that the Respondent put up a Simple Machine Forum site as a pretext following the Complainant’s Cease and Desist letter, likely in anticipation of this proceeding. The timing of the Respondent’s meeting at ICANN in Hyderabad is additional evidence that the Respondent is knowledgeable about the UDRP and its boundaries, and works in favor of the Panel’s finding of deliberate misconduct.
The Respondent further argues that by marking the website as “unofficial” and with a disclaimer, there is no confusion. The Respondent also denies any responsibility for the publication of adult content on the website, as it was published by “third parties” and/or “by an automated BOT”. The Respondent claimed that it has removed the post and “ensures that it will keep a stricter check on third party posts in the future”. The lack of postings on the website also argues to this being a farce. The denial of responsibility regarding the posting that had sexual content might have been a more persuasive ̶ “I don’t know anything about the Bot” ̶ if it had perhaps been buried in hundreds of postings, not when it is one of less than a single handful. Thus, there was commercial linking that the Panel does not find accidental, and may be distinguished from what was found in the cases cited by the Respondent’s counsel. Many previous UDRP decisions have held that the use of a disputed domain name to divert consumers to a pornographic site is generally a commercial activity and evidence of registration and use in bad faith, regardless of the registrant’s motivation. See, e.g., Hartsfield Area Transportation Management Association, Inc. v. Max Davidovich, WIPO Case No. D2006-0743, citing Six Continents Hotels v. Seweryn Nowak, WIPO Case No. D2003-0022. According to paragraph 3.8 of the WIPO Overview, a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content ̶ for example, in the case of advertising links appearing on an “automatically” generated basis. To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks.
The Respondent does not make a persuasive case for the choice of this Domain Name that is identical with the Complainant’s well-known trademark, and could have made the point that it is a “gripe site” with domain names that were not the stand alone trademark of the Complainant. For example, the Respondent did not go with <IdontlikeNescafe.org> or <consumercomplaintsaboutnescafe.org>. The Panel also finds relevant the relative weighing of the harms to the parties. In the balance of harms and needs, the Panel finds for the Complainant. The Complainant being deprived of the Domain Name suffers a much greater harm than the Respondent (assuming for argument’s sake that he would be acting in a bona fide manner) being deprived of the Domain Name that appears to have been used for a matter of weeks. The Complainant has provided evidence of third party recognition and of its mark and Domain Name, and even evidence that would argue to third party reliance on the association of the products with the Complainant. In sharp contrast, on the present record there is no apparent reason that the Respondent would be connected with this particular Domain Name. This is consistent with holdings in other cases, see, e.g., The Math Works, Inc. v. Amir Alipour, Refah Cultural Foundation, WIPO Case No. D2014-2063, “there would have been a variety of other domain names available to the Respondent to offer any of its alleged teaching services”, and Future Publishing Limited v. DomainsByProxy.com, Robert Lamb, WIPO Case No. D2010-1526, “There are many other domain names which the Respondent could choose.”
With regard to the Respondent’s claim that this is a case of Reverse Domain Name Hijacking, the Panel does not feel the need to go into greater analysis of this, since the Panel believes this a legitimate case filed by the Complainant.
In this case, the Panel finds that there is circumstantial evidence of the bad faith registration and use of the Domain Name by the Respondent. Given the evidence of the Complainant’s prior rights in the mark, the timing of the registration of the Domain Name by the Respondent, together with little evidence of legitimate use, the offering the Domain Name for sale in excess of reasonable costs, together with providing no information about the Respondent on the “Contact Us” page of the website and the unidirectional collection of information, even though it appears to pose as an “unofficial” complaint site, are all indicia that generally cast doubt on the Respondent’s bona fides and support a finding of bad faith. Accordingly, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under 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 <nescafe.org> be transferred to the Complainant.
Ellen B Shankman
Date: January 9, 2017