WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société des Produits Nestlé S.A. v. Domains By Proxy, LLC, Registration Private / Emanuel Medeiros, VirtualOffice
Case No. D2018-1479
1. The Parties
Complainant is Société des Produits Nestlé S.A. of Vevey, Switzerland, represented by Studio Barbero, Italy.
Respondent is Domains By Proxy, LLC, Registration Private of Scottsdale, Arizona, United States of America ("USA" or "United States") / Emanuel Medeiros, VirtualOffice of New Bedford, Massachusetts, USA.
2. The Domain Name and Registrar
The disputed domain name <nestleusa.info> (the "Domain Name") is registered with Wild West Domains, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 3, 2018. On July 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 5, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 6, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on the same day.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on July 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 1, 2018.
The Center appointed Marina Perraki as the sole panelist in this matter on August 10, 2018. 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
According to the Complaint, Complainant is a wholly owned subsidiary of Nestlé S.A ("Nestlé"). As per Complaint, Nestlé is one of the largest food consumer products companies in the world, in terms of sales. Nestlé was founded in 1866 and today the Nestlé group sells its goods and services in more than 190 countries, including the United States, employs approximately 328,000 employees and holds more than 400 production centers worldwide.
The NESTLÉ mark has been widely used by Complainant for more than one 140 years and is repeatedly recognized as a famous trademark enjoying a worldwide reputation (Société des Produits Nestlé SA v. Telmex Management Services, WIPO Case No. D2002-0070; Société des Produits Nestlé SA v. Peter Carrington, c/o Party Night Inc.; WIPO Case No. D2002-0954, Société des Produits Nestlé S.A. v. Sonia de Ferrero, WIPO Case No. D2016-1300).
Complainant is the owner of the majority of the numerous NESTLÉ trademark registrations of the Nestlé group. These include:
- United States trademark registration No. 0188089 (word mark) filed on January 4, 1924, registered on August 19, 1924, with priority date October 2, 1905 and first use on 1878, for goods in international class 29;
- International registration No. 479,337 (word mark), registered on August 12, 1983, for goods and services in international classes 1, 5, 29, 30, 31, 32, 33; and
- International registration No. 400,444 (word and figurative elements), registered on July 16, 1973 for goods and services in international classes 1, 5, 29, 30, 31, 32, 33.
Complainant is also the owner of numerous domain name registrations including the domain names <nestleusa.com>, <nestle.info> and <nestle.com>. Complainant's affiliates in the United States operate a website under the domain name <nestleusa.com>.
The Domain Name was registered on January 17, 2018 and resolves to an inactive page. If entered without the "www" it redirects to the home page of Complainant's website "www.nestleusa.com".
Complainant became aware of the Domain Name when a third party reported that it received several emails from an email address that included the Domain Name, similar to the real email address of an employee of Complainant's affiliate in the USA, by someone purporting to be such employee inviting the third party to submit quotations for the sale of printer ribbons, providing also the related purported purchase orders that appeared to be official ones, with information to be filled in by the recipient.
5. Parties' Contentions
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.
Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has demonstrated rights through registration and use on the NESTLÉ mark.
The Panel finds that the Domain Name <nestleusa.info> is confusingly similar with the NESTLÉ trademark of Complainant.
The Domain Name incorporates the said trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The word "usa" which is added in the Domain Name is disregarded as it is a geographic, non-distinctive term (BHP Billiton Innovation Pty Ltd v. Oloyi, WIPO Case No. D2017-0284, Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin, WIPO Case No. D2015-0135; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.8).
The generic Top-Level Domain ("gTLD") ".info" is also disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson InternationalLicensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).
The omission of the "accent aigu" from the last letter "e" of the "nestle" portion of the Domain Name is also immaterial for the purpose of comparison (Société des Produits Nestlé S.A. v. Sonia de Ferrero, WIPO Case No. D2016-1300).
The Panel finds that the Domain Name <nestleusa.info> is confusingly similar to the NESTLÉ trademark of Complainant.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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 or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.
Respondent did not demonstrate any prior to the notice of the dispute use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.
On the contrary, as Complainant demonstrates, the Domain Name leads to an inactive website and Respondent used the Domain Name for the purpose of initiating a fraud scheme, namely to send fraudulent emails to a third-party impersonating a current employee and former senior officer of Complainant's affiliate in the USA for the only purpose of scam. The use of the Domain Name for an illegal activity such as constructing an email composition containing the Domain Name for deceiving purposes cannot confer rights or legitimate interests on the Respondent (L' Oréal v. Cimpress Schweiz GmbH, WIPO Case No. DCO2017‑0021; Accenture Global Services Limited v. Jean Jacque / Luck Loic, supra; Syngenta Participations AG v. Simon Laidler / Who Is Agent, WhoIs Privacy Protection Service, Inc., WIPO Case No. D2014-1702; Groupe Lactalis v. John Kleedofer / Privacy Protection Service INC d/b/a Privacy Protect.org, WIPO Case No. D2014-0133; Twitter, Inc. v. Moniker Privacy Services / accueil des solutions inc, WIPO Case No. D2013-0062; Inter-Continental Hotels Corporation v. Louise Lane / WhoisGuard, WIPO Case No. D2012-2037; Haas Food Equipment GmbH v. Usman ABD, Usmandel, WIPO Case No. D2015-0285).
Furthermore, as Complainant demonstrates, the Domain Name entered in the web browser without the "www.", redirected users to Complainant's USA affiliate's website "www.nestleusa.com". A respondent's use of a complainant's mark to redirect users would not support a claim to rights or legitimate interests (WIPO Overview 3.0, section 2.5.3). This, along with the fact that the Domain Name was registered with a privacy shield service, speaks against any rights or legitimate interests held by Respondent (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625; Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533).
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation", are evidence of the registration and use of the Domain Name in "bad faith":
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. Because the NESTLÉ mark is so well-known and had been widely used for more than 140 years and registered at the time of the Domain Name registration, the Panel finds it more likely than not that Respondent had Complainant's mark in mind when registering this Domain Name (Société des Produits Nestlé SA v. Kayvan Sadeghi, WIPO Case No. DIR2007-0002; Société des Produits Nestlé SA v. Stuart Cook, WIPO Case No. D2002-0118; Société des Produits Nestlé SA v. Myongjin Kim, WIPO Case No. D2005-0509; Société des Produits Nestlé SA v. Telmex Management Service, WIPO Case No. D2002‑0070; Société des Produits Nestlé SA v. Peter Carrington, c/o Party Night Inc., WIPO Case No. D2002-0954).
Furthermore, the Domain Name incorporates in whole Complainant's mark plus an additional term "usa" that corresponds to the presence of Complainant's group in the USA and it is practically identical to an existing domain name of Complainant, namely <nestleusa.com> widely used for Complainant's USA affiliate' s website as per Complaint. Use of the word "usa" in the Domain Name therefore creates a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Domain Name.
The redirection of the Domain Name to Complainant' s USA affiliate's website "www.nestleusa.com", when entered without the "www.", also supports registration in bad faith (WIPO Overview 3.0, section 3.1.4), reinforcing the likelihood of confusion, as Internet users are likely to consider the Domain Name as in some way endorsed by or connected with Complainant (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, supra; Marie Claire Album v. Whoisguard Protected, Whoisguard, Inc. / Dexter Ouwehand, DO, WIPO Case No. D2017-1367).
As regards bad faith use, Complainant demonstrated that the Domain Name leads to an inactive website and it was used for purposes other than to host a website. As Complainant demonstrated, the Domain Name was used to create an email address similar to a real email address of Complainant and send emails, impersonating a current employee and former Vice President & Chief Procurement Officer of Complainant's USA affiliate, to a third party inviting it, inter alia, to submit an offer for the purported delivery of ID card printer ribbon items. The email was sent on January 29, 2018, namely a few days after the date that the Domain Name was registered. The purpose of this email was to trick its recipient into believing that they were dealing with Complainant and, thus, providing the requested information. Use of a domain name for purposes other than to host a website may also constitute bad faith. Such purposes include sending deceptive emails, phishing, identity theft, or malware distribution (WIPO Overview 3.0, section 3.4). This pattern can be used in support of bad faith registration and use (Arla Foods Amba v. Michael Guthrie, M. Guthrie Building Solutions, WIPO Case No. D2016-2213; Yahoo! Inc. v. Aman Anand, Ravi Singh, Sunil Singh, Whois Privacy Corp., Domains By Proxy, LLC, WIPO Case No. D2016-0461; Minerva S.A. v. Whoisguard Protected, Whoisguard, Inc., / GREYHAT SERVICES, WIPO Case No. D2016-0385; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; L' Oréal v. Cimpress Schweiz GmbH,WIPOCaseNo. DCO2017-0021;Accenture Global Services Limited v. Jean Jacque / Luck Loic, supra; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin, supra; Syngenta Participations AG v. Simon Laidler / Who Is Agent, WhoIs Privacy Protection Service, Inc.,supra; Monarch Airlines Limited v. Richard Nani, WIPO Case No. D2012-2484; La Française des Jeux v. MichaelE Wilkins, WIPO Case No. D2009-0898; and WIPO Overview 3.0, sections 3.3 and 3.4).
The Panel considers the following factors: (i) the reputation of Complainant's mark, (ii) the failure of Respondent to submit a response, (iii) the concealment of the Domain Name holder's identity through use of a privacy shield (BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364; Fédération Internationale de Football Association ("FIFA") v. Whois Privacy Shield Services / Winsum Wong, WIPO Case No. D2016-2310; The Uder Company Pty Ltd and Stay In Bed Milk & Bread Pty Ltd (trading as Aussie Farmers Direct) v. PrivacyProtect.org, Domain Admin, ID # 10760, WIPO Case No. D2012-0924), and (iv) the implausibility of any good faith use to which the Domain Name may conceivably be put, given that as Complainant has demonstrated the corresponding website is inactive and it was used for purposes other than to host a website, namely to send fraudulent emails, while, when entered without "www.", it redirected to Complainant' s USA affiliate's website.
Under these circumstances and on this record, the Panel finds that Respondent registered and is using the Domain Name in bad faith.
Complainant has established Policy paragraph 4(a)(iii).
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 <nestleusa.info> be transferred to Complainant.
Date: August 24, 2018