WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société des Produits Nestlé S.A. v. Perfect Privacy, LLC / Manuel camacho
Case No. D2016-2557
1. The Parties
The Complainant is Société des Produits Nestlé S.A. of Vevey, represented by Studio Barbero, Italy.
The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States of America / Manuel Camacho of Caracas, Venezuela.
2. The Domain Name and Registrar
The disputed domain name <nestle-mexico.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 16, 2016. On December 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 23, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 27, 2016.
The Center verified that the Complaint together with the amendment to 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 December 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 24, 2017.
The Center appointed Kaya Köklü as the sole panelist in this matter on January 25, 2017. 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 based company and owns the majority of the trademarks used under license by the Nestlé Group of companies. The group has more than 330,000 employees and markets its products worldwide. It is one of the world's leading food consumer products company. It owns trademark registrations for NESTLÉ in a large number of countries since many decades, including in Mexico. For instance, the Complainant is the owner of the Mexican Trademark Registration No. 119592, registered on October 1, 1964 in, inter alia, classes 5, 29 and 30.
According to the current record, the disputed domain name <nestle-mexico.com> was created on October 27, 2016 by the Respondent.
The Respondent is composed of a domain name privacy registration service and an individual person apparently from Venezuela (both of them jointly referred to as "the Respondent" in the following decision).
At the time of the decision, the disputed domain name did not resolve to an active website. However, the provided screenshots of the website in Annex 7 of the Complaint show that at least until the beginning of December 2016 the Respondent not only prominently used the Complainant's NESTLÉ trademark in various forms, but also copied advertising campaigns and text from the official website of the Complainant in Mexico, namely from <nestle.com.mx>. In addition, the website at the disputed domain name advertised and offered for sale pre-owned cars, purportedly offered by the Complainant and its subsidiary companies.
According to the available record, the Respondent did not reply to the cease-and-desist letter sent by the Complainant on December 2, 2016 claiming the immediate cease of use and the transfer of the disputed domain name to the Complainant.
5. Parties' Contentions
The Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is confusingly similar to the Complainant's NESTLÉ trademark.
The Complainant argues that the main difference between the disputed domain name and the Complainant's trademark is that the disputed domain name additionally comprises a country indication, namely "Mexico". The Complainant is of the opinion that the addition of the country name "Mexico" does not negate the confusing similarity with its NESTLÉ trademark.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant states that the Complainant has never granted a permission or license to the Respondent to use its NESTLÉ trademark. The Complainant further alleges that the Respondent has never used and does not intend to use its trademark in connection with a bona fide offering of goods and services or any other legitimate interest.
Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant believes that the Respondent must have known the Complainant's NESTLÉ trademark, when registering the disputed domain name. The Complainant is further of the opinion that the Respondent apparently tries to attract Internet users for illegitimate purposes and to cause damage to the Complainant and/or its customers. Documents provided in Annex 8.1 and 8.2 indicate that a mislead Internet user has already been a victim of fraud committed by the Respondent or its accomplices.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraphs 14(a) and 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
It is further noted that the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") and, where appropriate, will decide consistent with the WIPO Overview 2.0.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the NESTLÉ trademark of the Complainant.
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights in NESTLÉ. As evidenced in the Complaint, the Complainant is the owner of the well-known NESTLÉ mark, which is registered in many jurisdictions worldwide, including Mexico.
Although not identical, the disputed domain name fully incorporates the Complainant's NESTLÉ trademark.
The disputed domain name differs from the Complainant's NESTLÉ trademark only by the addition of the country name "Mexico". In the Panel's view, the addition of "Mexico" as a country name does not negate the confusing similarity between the Complainant's trademark NESTLÉ and the disputed domain name. The Panel finds that this additional incorporation is purely descriptive and does not distinguish the disputed domain name from the Complainant's NESTLÉ trademark. Quite the opposite, the full inclusion of the Complainant's trademark in combination with "Mexico", even enhances the false impression that the disputed domain name is officially related to the Complainant. The Panel concludes that the disputed domain name is likely to confuse Internet users into their believing that the disputed domain name is affiliated or endorsed by the Complainant or that the use of the disputed domain name is at least authorized by the Complainant.
In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel further finds that the Respondent has not demonstrated any rights or legitimate interests in the disputed domain name.
While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent's lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name to meet the requirements of paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
With its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant's NESTLÉ trademark in the disputed domain name.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or convincing argument to demonstrate a right or legitimate interest in the disputed domain name according to the Policy, paragraph 4(a)(ii) and 4(c).
In the absence of a response by the Respondent, there is no indication in the case file that the Respondent might be commonly known by the disputed domain name. Furthermore, the Respondent has failed to demonstrate any of the other nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or any other evidence of a right or legitimate interest in the disputed domain name. Particularly, the Respondent has failed to show that the disputed domain name has been or is intended to be used in connection with a bona fide offering of goods or services. Indeed, given the circumstances of this case, where the website at the disputed domain name advertised and offered for sale pre-owned cars, leading Internet users to believe that this business is managed by the Complainant and its subsidiary companies, the Panel finds it hard to conceive of any use of the NESTLÉ trademark by the Respondent, which would qualify as a legitimate use.
Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.
The Panel is of the opinion that the Respondent intentionally attempted to create a likelihood of confusion among customers and/or to tarnish the Complainant's NESTLÉ trademark, apparently for illegitimate commercial gain, particular for the following reasons.
First, the Panel believes that the Respondent must have been aware of the Complainant's trademarks when it registered the disputed domain name on October 27, 2016. At the date of registration of the disputed domain name, the Complainant's NESTLÉ trademark was already well-known worldwide, including in Mexico, for many years.
Second, it is the Panel's view that the Respondent deliberately tried to conceal the lack of relationship with the Complainant, to mislead Internet users who were searching for the official website of the Complainant in Mexico. Documents in the case file indicate that a misled consumer had made payment for a van advertised on the website at the disputed domain name that was never delivered to him, and that the Respondent was already involved in fraudulent action.
Third, the Panel notes that the Respondent used a privacy service when creating the disputed domain name. Although privacy services might be legitimate in many cases, it is for the Panel difficult to see in the present case why the Respondent should need to protect its identity except to make it difficult for the Complainant to protect its trademark against him. The Panel rather believes that the choice of the disputed domain name (which fully incorporates the Complainant's trademark) and the content as well as the design of the Respondent's corresponding website rather indicates that the Respondent deliberately opted for a privacy shield in order to prevent an efficient enforcement of legitimate trademark rights by the Complainant.
Fourth, the Respondent preferred not to respond to the Complainant's warning letter of December 2, 2016 and its contentions within the pending administrative proceedings.
As it has been the case in several previous UDRP cases, the fact that the disputed domain name is currently inactive does not prevent a finding of bad faith use and does not change the Panel's views in this respect.
Taking all facts of the case into consideration, the Panel believes that this is a typical cybersquatting case, which the UDRP was designed to stop.
All in all, the Panel concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, 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, <nestle-mexico.com> be transferred to the Complainant.
Date: January 31, 2017