WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société des Produits Nestlé S.A. v. Host Master, Transure Enterprise Ltd
Case No. D2020-0745
1. The Parties
The Complainant is Société des Produits Nestlé S.A., Switzerland, represented by Studio Barbero, Italy.
The Respondent is Host Master, Transure Enterprise Ltd, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <nestleghana.com> (the “Disputed Domain Name”) is registered with Above.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2020. On March 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 31, 2020, 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 March 31, 2020, 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 March 31, 2020.
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 April 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 22, 2020.
The Center appointed Michael D. Cover as the sole panelist in this matter on May 6, 2020. 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 part of the Nestlé company founded in 1866 and is the registered proprietor of the majority of the trademarks of the Nestlé group of companies. These registered trademarks include some 2,250 International and national registered trademarks for NESTLÉ (or variations thereof), including International registrations going back to 1973, a United States trademark registration as set out in Annex 3 to the Complaint No. 188,089 filed on January 4, 1924 and registered on August 19, 1924, as well as a number of registered trademarks for NESTLÉ as a word or figurative trademark dating from 1976 in Ghana.
The Complainant has registered the word “Nestle” as part of numerous domain names, as more particularly set out in Annex 5 to the Complaint. The Complainant operates the website at “www.nestle.com” as its primary web portal for promoting its business around the world and, “www.nestle-cwa.com/en”, for Central and West Africa.
The Nestlé group sells products and services all over the world, primarily in the food industry, including baby foods, breakfast cereals, confectionery, coffee and beverages, dairy products and ice cream, as well as pet food. The Complainant markets and sells its products in over 190 countries, including Ghana and is one of the largest food consumer products company, with revenues in 2017 of just under CHF 90 billion.
The Complainant began trading in Ghana in 1957 and operates 9 factories in Central and West Africa. In addition, products sold under the NESTLÉ trademark have been widely promoted via the Internet and through social media and are also supported by advertising in television and other media.
According to Interbrand’s annual Best Global Brands ranking for 2017 (Annex 4.2 to the Complaint), the trademark NESTLÉ was valued at USD 8,728 million and represented the 59th most valuable trademark in the world and, for 2018, the corresponding figures were USD 8,938 million and 62nd.
The Disputed Domain Name was registered on December 26, 2011. At the time of the Complaint, the Disputed Domain Name redirects to “ww31.nestleghana.com”, a parking page with commercial links, mainly related to the NESTLÉ trademark and the Nestlé group or job opportunities with the same entity, as set out in the screenshots in Annex 7 to the Complaint. By clicking on, for example, “Nestle Drinks”, Internet users are redirected to third parties’ online stores offering for sale the Complainant’s and competing products. There is also a link stating that “the domain name is offered for sale” and, on a different platform, the Disputed Domain Name is offered for sale with a minimum offer of USD 500.
5. Parties’ Contentions
Identical and confusingly similar to a trademark in which the Complainant has rights
The Complainant submits that, in light of the Nestlé Group’s significant investments in research & development, marketing and sales and the regular use of the NESTLÉ trademark for over 140 years, the trademark NESTLÉ is indisputably a well-known trademark worldwide, including in Ghana.
The Complainant states that the Disputed Domain Name was registered by the Respondent without the authorization of the Complainant and that, as soon as it became aware of the Disputed Domain Name, it took action to pursue what it calls reclaiming the Disputed Domain Name. The Complainant notes that the Registrar of the Disputed Domain Name refused to provide the underlying registrant’s details. The Complainant continues that a cease and desist letter and a reminder followed but no responses were received. The Complainant states that there also exists a risk of possible use of the Disputed Domain Name in connection with the sending emails, including possible scam communications.
The Complainant then submits that the Disputed Domain Name is confusingly similar to the NESTLÉ trademarks, in which the Complainant has rights. In particular, the Complainant states that the Disputed Domain Name incorporates the whole of the Complainant’s NESTLÉ trademark and that it is a well-established principle that a domain name that wholly incorporates a trademark is confusingly similar for the purposes of the Policy, notwithstanding the fact that it may also contain a descriptive or generic term, such as “Ghana”. The Complainant also notes that previous Panels have found that a domain name will be confusingly similar to a trademark, despite the inclusion of the generic Top-Level domain “.com”.
The Complainant concludes that the Disputed Domain Name is confusingly similar to the prior registered rights in which the Complainant has rights, pursuant to paragraph 4(a)(i) of the Policy.
Rights and Legitimate Interests
The Complainant commences its submission under this heading by stating that it is well-settled principle that, once a complainant is able to establish a prima facie case, the burden shifts to the Respondent.
The Complainant continues that the Respondent is not a licensee, authorized agent or in any other way authorized to use the Complainant’s trademark NESTLÉ and that it is well-established that, in the absence of any license or permission from a trademark owner, no bona fide or legitimate use of the relevant domain name could reasonable be claimed.
The Complainant also states that it is not in possession of or aware of the existence of any evidence that the Respondent might be commonly known by a name corresponding to the Disputed Domain Name and points out that, because of the use of the privacy shield to conceal its identity, the Respondent cannot have been commonly known by the Disputed Domain Name before any notice of the dispute. Nor, says the Complainant, has the Respondent provided any evidence of use or demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services before or after any notice of the dispute.
The Complainant notes that the Disputed Domain Name had been redirected to sponsored links, which generate revenue for the Respondent, viathe pay-per-click system. The Complainant submits that, as found in numerous UDRP decisions, such use is not to be considered as bona fide offering of goods or services nor as a legitimate noncommercial use of the Disputed Domain Name, without intent for commercial gain.
The Complainant also draws the Panel’s attention to the Respondent’s willingness to sell the Disputed Domain Name for more than the Respondent’s out of pocket costs and submits that this is additional evidence that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
For all these reasons, the Complainant concludes that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
Registered and Used in Bad Faith
The Complainant submits that it is inconceivable that that the Respondent was unaware of the existence of the Complainant’s registered trademark NESTLÉ and its worldwide reputation at the time of the registration of the Disputed Domain Name. The Complainant states that the misappropriation of a well-known trademark as a domain name constitutes bad faith registration for the purposes of the Policy and that this is well established from previous UDRP decisions.
With regard to the Disputed Domain Name being used in bad faith, the Complainant states that the Disputed Domain Name is and has nearly always been linked to the web page “ww31.nestleghana.com/”, where, states the Complainant, banners are published and Internet users can find a number of sponsored links to various commercial websites, with resulting commission opportunities for the Respondent. This is particularly the case, continues the Complainant, in view of the link to goods that compete with those of the Complainant.
The Complainant also submits that the Disputed Domain Name is diverting traffic from the Complainant’s website and that paragraph 4(b)(iv) of the Policy is applicable in this case.
Finally, the Complainant reminds the Panel that the Respondent has been offering the Disputed Domain Name both on the website linked to the Disputed Domain Name as well as on the other platform, in fact “sedo.com”.
In the light of the above, the Complainant respectfully submits that the Disputed Domain Name was registered and is being used in bad faith.
The Complainant requests that the Panel issue a decision that the Disputed Domain Name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant must demonstrate on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has established registered rights in its NESTÉ trademark, which has been registered since at least as early as 1924 and the Panel accepts the NESTLÉ trademark has become well known throughout the world, including in Ghana.
The Panel also accepts that the Disputed Domain Name is confusingly similar to the Complainant’s trademark NESTLÉ. The Disputed Domain Name incorporates the Complainant’s well-known trademark NESTLÉ in its entirety, minus the accent.
It is well established that the addition of a geographical term, in this case “Ghana”, does not avoid a finding that a disputed domain name is confusingly similar to a complainant’s trademark. The gTLD “.com” is disregarded under the first element confusing similarity test as it is viewed as a standard registration requirement.
The Panel accordingly decides that the Disputed Domain Name is confusingly similar to the Complainant’s NESTLÉ trademark, in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been met.
B. Rights or Legitimate Interests
The Panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has not licensed or authorized the Respondent to use its NESTLÉ trademark. The Complainant having established a prima facie case, the burden of production then passes to the Respondent.
The Respondent has not met that burden, not least as it has not responded to the Complaint. It has not demonstrated use or demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services, that it has been commonly known by the Disputed Domain Name nor that it has been making legitimate noncommercial use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the NESTLÉ trademark of the Complainant. In fact, the use of the Disputed Domain Name that has taken place and the offering of the Disputed Domain Name for sale add weight to the Complainant’s case on this heading.
The Panel concludes that the provisions of paragraph 4(a)(ii) of the Policy have been met.
C. Registered and Used in Bad Faith
The non-exhaustive list of evidence of registration and use in bad faith in paragraph 4(b) of the Policy includes (i) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.
The Panel finds that the above circumstance has been established here by the Complainant. This is a reasonable inference from the evidence before the Panel, which has accepted that the Complainant’s trademark NESTLÉ is well known. This finding is also supported in this case by the Complainant’s trademark, NESTLÉ, being well known, and the failure of the Respondent to submit a Response and hence provide any evidence of actual or contemplated good faith use, together with the offering for sale of the Disputed Domain Name at a starting price of more than the Respondent’s out of pocket expenses.
The Panel therefore finds that the provisions of paragraph 4(a)(iii) of the Policy have been met.
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 <nestleghana.com> be transferred to the Complainant.
Michael D. Cover
Date: May 11, 2020