WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société des Produits Nestlé S.A. v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Caleb Jude, Blog design
Case No. D2021-1202
1. The Parties
Complainant is Société des Produits Nestlé S.A., Switzerland, represented by Studio Barbero S.p.A., Italy.
Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Caleb Jude, Blog design, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <nestleminingfirm.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2021. On April 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 20, 2021, 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 Complainant on April 21, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on April 22, 2021.
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 Respondent of the Complaint, and the proceedings commenced on April 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 18, 2021. The Response was filed with the Center on April 29, 2021, and a further email communication was sent on April 30, 2021.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on May 10, 2021. 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.
On April 21, April 23, April 27, and April 28, 2021, Respondent sent email communications concerning the dispute, and asking for the termination of the proceeding. In particular, the Panel notes that in response to communications from the Center regarding initiation of this dispute, Respondent transmitted an email to the Center on April 23, 2021 indicating that Respondent had suspended its website and requesting that the disputed domain name be terminated by the host provider or ICANN.
By email of April 27, 2021, the Center advised the parties regarding the possibility of suspending the proceeding for purposes of exploring a settlement. By email of April 27, 2021, Complainant advised the Center that it did not wish to explore a settlement in light of its previous unsuccessful efforts to contact Respondent, as well as Respondent’s previous conduct in connection with its website. The Center thereafter proceeded with notification of the Complaint and appointment of the Panel.
Recognizing that Respondent in its Response (see below) has expressed its wish to end its association with disputed domain name, the Panel will render its determination in a somewhat abbreviated manner.
4. Factual Background
Complainant is the owner of the well-known NESTLÉ trademark. Complainant has submitted evidence of a substantial number of registrations of the aforesaid trademark in various jurisdictions, including International Registration Number 400,444, registration dated July 16, 1973, in international classes 1, 5, 29, 30, 31, 32 and 33.
Complainant markets and sells products and services worldwide, including in Nigeria, primarily in the food industry. Complainant operates a commercial website at “www.nestle.com”, among other web addresses.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, the disputed domain name was registered by Respondent on December 24, 2020.
Respondent used the disputed domain name to direct Internet users to a website headed with Complainant’s trademark and logo, with the terms “Mining Firm” below that in small font. The home page of Respondent’s website displayed in large font “NESTLEMININGFIRM.COM”. The website offered financial and trading services and investments related to bitcoin. There was no disclaimer of affiliation with Complainant on the website.
Complainant transmitted several cease and desist demands to Respondent beginning on December 29, 2020, to which Respondent did not reply.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges that it owns rights in the NESTLÉ trademark, and that the disputed domain name is confusingly similar to that trademark.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith.
Respondent transmitted several preliminary responses to the Complaint. In what it characterized as its “complete response”, Respondent states that it actually developed the website for a client, that it did not receive correspondence from Complainant, that the website has been “dormant and was never in use “until Respondent received mail from the UDRP Center “which necessitated the deletion of the content from the [I]nternet”, and “on reception of the complaint, the website was immediately destroyed. The complainant can terminate or transfer the domain as they wish.” Respondent requested that the proceedings be terminated.
6. Discussion and Findings
Respondent received notice of the Complaint and the commencement of the proceeding from the Center, and replied to that notice.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of rights in the trademark NESTLÉ based on use in commerce and as evidenced, inter alia, by registration under the Madrid System. Respondent has not challenged Complainant’s rights in the NESTLÉ trademark. The Panel determines that Complainant owns rights in the trademark NESTLÉ.
The disputed domain name incorporates Complainant’s NESTLÉ trademark in full, adding “miningfirm”. Complainant’s well-known trademark is readily identifiable in the disputed domain name. This is sufficient to establish confusing similarity between Complainant’s trademark and the disputed domain name under the Policy.
The Panel determines that Complainant owns rights in the trademark NESTLÉ and that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent in its Response did not attempt to rebut Complainant’s prima facie showing or otherwise provide grounds for a finding that it has rights or legitimate interests in the disputed domain name. The Panel does not discern any grounds for finding rights or legitimate interests in favor of Respondent.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”. These include that “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark 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”.
Respondent used Complainant’s well-known and distinctive trademark to direct Internet users to a website headed with Complainant’s trademark and logo. It used Complainant’s trademark in large font on its home page without any disclaimer of affiliation with Complainant. Respondent used the disputed domain name to attract funds from Internet users (ostensibly intended for investment in cryptocurrency) based on its apparent affiliation with Complainant. Respondent has disclaimed ownership of the website associated with the disputed domain name, stating that it is only the developer of the website. Such a claim, assuming for the sake of argument that it is true, does not insulate Respondent as registrant of the disputed domain name from a finding of bad faith registration and use. Respondent bears responsibility for registration and use of the disputed domain name even if it acted on behalf of a third party.
The Panel determines that Respondent registered and is using the disputed domain name in bad faith by intentionally attempting to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
The Panel will direct the Registrar to transfer the disputed domain name to Complainant.
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, <nestleminingfirm.com>, be transferred to Complainant.
Frederick M. Abbott
Date: May 24, 2021