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 / Fred Shile
Case No. D2021-1359
1. The Parties
The Complainant is Société des Produits Nestlé S.A., Switzerland, represented by Studio Barbero, Italy.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Fred Shile, United States of America (“United States” and “U.S.”).
2. The Domain Name and Registrar
The disputed domain name <nestle-global.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 May 3, 2021. On May 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 3, 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 the Complainant on May 6, 2021 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 amended Complaint on May 10, 2021.
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 the Respondent of the Complaint, and the proceedings commenced on May 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 1, 2021.
The Center appointed Felipe Claro as the sole panelist in this matter on June 11, 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.
4. Factual Background
The Complainant owns over 2250 International and National trademark registrations for NESTLÉ (or variations thereof), including the following:
- International Registration. No. 400444 (word and device mark) of July 16, 1973, in classes 01, 05, 29, 30, 31, 32, 33;
- International Registration No. 479337 (word mark) of August 12, 1983, in classes 01, 05, 29, 30, 31, 32, 33;
- International Registration No. 490322 (word and device mark) of November 27, 1984, classes 01, 05, 29, 30, 31, 32, 33;
- International Registration No. 511513 (word mark) of April 03, 1987, in classes 03, 16;
- Eurpoean Union (“EU”) Registration No. 002977569 (word mark) of December 13, 2002 in all classes;
- United Kingdom (“UK”) Registration No. 00000294777 (word mark) of July 22, 1907, in classes 29 and 30;
- U.S. Registration No. 0188089 (word mark) of January 04, 1924, claiming a priority dating back to October 02, 1905 and indicating 1878 as first use, in class 29;
- U.S. Registration No. 1105743 for NESTLÉ (word and device mark) of March 27, 1978, claiming first use as of January 1, 1973 in class 30;
- Mexico Trademark Registration No. 176325 (word and device mark) of February 02, 1973 in classes 01, 02, 03, 04, 06, 13, 17, 18, 19, 20, 21, 22, 25 and 31;
- Mexico Trademark Registration No. 119592 (word mark) of May 16, 1964, in classes 02, 05, 29, 30, 31 and 32;
- Canada Trademark Registration No. TMDA36039 (word mark) of December 19, 1923 in classes 29 and 30.
The Complainant is part of Nestlé company, founded in 1866 by Henri Nestlé, and it is wholly owned by Nestlé S.A.. The Complainant is the registered owner of the majority of the trademarks of the Nestlé Group. Today Nestlé Group sells products and services all over the world in various industries, primarily in the food industry. The Complainant markets its products in over 185 countries, the Nestlé Group has more than 270,000 employees and it is present in more than 80 countries with more than 400 production centers worldwide. The Complainant is the world’s largest food consumer products company in terms of sales. The trademark NESTLÉ is strongly supported by global advertising campaigns through television and other printed and virtual media.
The Complainant registered well before the Respondent the word “Nestle” and variations thereof as domain names in numerous generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”), including <nestle.us>, <nestle.ca>, <nestle.mx> and <nestle.com.mx>.
5. Parties’ Contentions
The Respondent registered the disputed domain name without the Complainant’s authorization. The disputed domain name is redirected to a website publishing sponsored links mainly related to the goods for which NESTLÉ trademarks are secured.
The Complainant became aware of the registration of the disputed domain name because a customer reported to have received messages from a person alleging to be the Executive Vice President and Chief Executive Officer Zone Americas, written from “[name]@nestle-global.com” and requesting to transfer, allegedly on behalf of the Complainant, an undefined amount of money (in Mexican Pesos) to a Complainant’s Mexican partner, adducing some internal setbacks to motivate the request and promising a purported reimbursement of the payment in a week.
A cease-and-desist letter was sent to the Respondent on April 12, 2021 by email, requesting it to immediately transfer the disputed domain name and cease any use of it; no response from the Respondent was received.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In view of the lack of a response filed by the Respondent as required under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(e), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding based on the Complainant’s undisputed representations. In that regard and apart from judging this proceeding through mere default of the Respondent, the Panel makes the following specific findings.
A. Identical or Confusingly Similar
The disputed domain name registered by the Respondent is confusingly similar to the trademarks in which the Complainant has rights.
The disputed domain name incorporates the Complainant’s NESTLÉ trademark. The fact that the disputed domain name differs from the Complainant’s trademark by the addition of the non-distinctive element “global” and of a hyphen does not affect the confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8; and BASF SE v. Whois Privacy Protection Service, Inc. / Tah Teche, Cranium Developers, WIPO Case No. D2016-1902 (<basf-global.com>): “The disputed domain name takes the trademark and links to it, by hyphenation, the word ‘global’, a generic term of no source-distinguishing value. The trademark is the only distinctive part of the disputed domain name and the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.” See also Sodexo v. Larry Johnson, Arvato Global Group, WIPO Case No. D2019-1773 (<sodexo-global.com>): “the addition of the dictionary word ‘global’ does not dispel confusing similarity between the disputed domain name and the Complainant’s trademark.”; Philip Morris Products S.A. v. Rich Ardtea, WIPO Case No. D2020-0528 (<global-iqos.com>) and KPMG International Cooperative v. Juan, WIPO Case No. D2021-0305 (<global-kpmg.com>).
With regard to the omission in the disputed domain name of the accent from the last letter of NESTLÉ, previous Panels have considered that the addition or deletion of grammatical marks such as hyphens, apostrophes and circumflexes are irrelevant changes. See Société des Produits Nestlé S.A. v. Sonia de Ferrero, WIPO Case No. D2016-1300 (<nestle-negocios.com>): “The only difference between the NESTLÉ Mark and the first (and dominant) portion of the Disputed Domain Name is the presence of the ‘accent aigu’ in the NESTLÉ mark. This difference is immaterial to the purpose of the comparison”; 'Oréal and Lancôme Parfums et Beauté et Compagnie v. Deco Trends & Art, K. Plooyer, WIPO Case No. D2011-0524; Credit Agricole S.A v. Dick Weisz., WIPO Case No. D2010-1683; and Universal City Studios, Inc. v. HarperStephens, WIPO Case No. D2000-0716.
As consistently found in several decisions, including, Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc., WIPO Case No. D2014-1919 (<bentleymotorcars.com>) and also stated in section 1.11 of the WIPO Overview 3.0, the gTLD “.com” is merely instrumental to the use of the Internet so the disputed domain name remains confusingly similar despite its inclusion.
Considering the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not a licensee, authorized agent of the Complainant or in any other way it is related or authorized to use the Complainant’s trademark NESTLÉ. It is well-established that typically in the absence of any license or permission from a complainant to use the complainant’s trademarks, no bona fide or legitimate use of the disputed domain name could reasonably be claimed. See, LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com, Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138, Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134: “the mere registration, or earlier registration, does not establish rights or legitimate interests in the disputed domain name”, and Amanresorts Limited v. WWW Enterprise, Inc., WIPO Case No. D2005-0384, and N.C.P. Marketing Group, Inc. v. Entredomains, WIPO Case No. D2000-0387.
The Respondent is not commonly known by a name corresponding to the disputed domain name as an individual, business, or other organization.
The Respondent has not provided evidence of use or preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
The disputed domain name is being used for fraudulent purposes, since the Respondent created an email address to impersonate the Complainant’s Executive Vice President and Chief Executive Officer Zone Americas and dispatched email communications to third-parties to request unauthorized payment on behalf of Nestlé Group, which is not a legitimate purpose. As stated in WIPO Overview 3.0, section 2.13, “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”. See also KPMG LLP v. Whoisguard, Inc., WIPO Case No. D2016-0051; and Bayerische Motoren Werke AG v. Gipol Kaip, WIPO Case No. D2016-0906: “The Respondent’s use of the disputed domain name in connection with fraudulent transactions […] and the Respondent posing as an employee of the Complainant do not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under the UDRP.”
The redirection of the disputed domain name to a webpage displaying several sponsored links related to Complainant and competitors’ products, which generate revenues, viathe pay-per-click system, is not to be considered neither as a bona fide offering of goods or services nor as a legitimate noncommercial or fair use of the disputed domain name.
The Respondent did not reply to the cease-and-desist letter sent by the authorized representative of the Complainant. See The Great Eastern Life Assurance Company Limited v. Unasi Inc., WIPO Case No. D2005-1218; and Ally Financial, Ally Detroit Center Inc. v. Rick Wedel, WIPO Case No. D2018-0332.
Considering the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The mark NESTLÉ is well-known worldwide and has been used extensively since 1866. The Respondent was surely aware of the existence of the Complainant’s registered trademark and its worldwide reputation at the time of registration of the disputed domain name.
The misappropriation of a well-known trademark as domain name by itself constitutes bad faith registration for the purposes of the Policy. See Société des Produits Nestlé SA v. Kayvan Sadeghi, WIPO Case No. DIR2007-0002 (<nestle.ir>): “[e]ven without evidence of the Complainant’s registered rights, it is apparent that the Complainant’s mark is so famous that, as such, a Panel could legitimately take the equivalent of ‘judicial notice’ of that fact. Judicial notice is a rule of evidence that allows a matter to be taken as proven, because it is so well-known that it cannot reasonably be contested.” The fact that NESTLÉ is a well-known trademark was also explicitly established also in several additional UDRP decisions: Société des Produits Nestlé SA v. Telmex Management Service, WIPO Case No. D2002-0070; and Société des Produits Nestlé SA v. Peter Carrington, c/o Party Night Inc., WIPO Case No. D2002-0954, where the Panel noted that “Complainant is the owner of the trademark NESTLÉ both by extensive registration and reputation, to the extent that it can legitimately claim NESTLÉ to be a well-known mark”.
The Respondent’s actual knowledge of the Complainant and its trademark NESTLÉ at the time of the registration of the disputed domain name is also demonstrated by the fact that the Respondent sent emails from a fake address based on <nestle-global.com> and impersonated an employee of the Complainant’s group. See CAE Participations v. Daphne Moyer, Multimedia Connect, WIPO Case No. D2013-1078: “Respondent’s fraudulent use of the disputed domain name, which began almost immediately after its registration, confirms the possibility that the disputed domain name was registered to conduct a ‘social engineering’ attack or other type of scam.” For such reasons, the Panel finds that the Respondent must have been fully aware of the Complainant’s trademarks and activities when it registered the disputed domain name. See also Virgin Enterprises Limited v. Vincent Battista, WIPO Case No. D2018-1416; Halliburton Energy Services, Inc. v. Registration Private, Domains By Proxy, LLC / Name Redacted, WIPO Case No. D2015-2094: “Respondent appears to have used the Disputed Domain Name to engage in a ‘phishing’ identity theft scheme and fraud upon complainant and its vendors, by sending emails using the Disputed Domain Name and purporting to be from complainant. That alone amounts to bad faith.”; B&H Foto & Electronics Corp. v. Whois Privacy Protection Service, Inc./Jackie Upton, WIPO Case No. D2010-0841: “finding the disputed domain name was both registered and used in bad faith when the disputed domain name was used in a fraud scheme to send email orders immediately following registration to vendors that would appear to come from complainant, using the names of complainant’s employees and an email domain name differing by only two letters from complainant’s domain name”; OLX, Inc. v. J D Mason Singh, WIPO Case No. D2014-1037; and The Royal Bank of Scotland Group plc v. Secret Registration Customer ID 232883 / Lauren Terrado, WIPO Case No. D2012-2093. See also Société des Produits Nestlé SA v. Peter Carrington, c/o Party Night Inc., WIPO Case No. D2002-0954: “Falsely impersonating one of the Complainant’s senior executives in order to solicit payments of fraudulent invoices from the Complainant’s employees is in the Panel’s opinion illegal activity and as such cannot be considered as a legitimate noncommercial or fair use nor does it constitute a bona fide offering of goods and services”; bioMérieux v. Joseph Gullett, Digicel, WIPO Case No. D2017-2268; Allen & Overy LLP v. Name Redacted, WIPO Case No. D2019-1148; and Deckers Outdoor Corporation v. Registration Private, Domains By Proxy, LLC / Eric Mafolo, WIPO Case No. D2019-2042: “The fraudulent email messages created by Respondent incorporate the Domain Name and Complainant’s email signature block and contact information to unlawfully obtain payments from Complainant’s customers. In the view of the Panel, such circumstances, taken together, clearly indicate that Respondent used the Domain Name in bad faith.”
The redirection of the disputed domain name to a web page where Internet users can find a number of sponsored links to various commercial websites also signals bad faith. The Respondent is intentionally attracting Internet users for commercial gain to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. See Autodesk, Inc. v. Private Registration (EXP), Private Registration DO, WIPO Case No. D2011-2001; and section 3.5 of WIPO Overview 3.0.
In particular, the use of a website incorporating another party’s trademark to display also links to goods which compete with those sold under the trademark at issue demonstrates a deliberate effort to trade off the goodwill associated with the trademark. See Guccio Gucci S.p.A., v. Bravia Stoli, WIPO Case No. D2009-1170: “The disputed domain name resolves to a landing page featuring links to competitive fragrance and beauty products. The unmistakable intent of the Respondent to trade on the good will of the GUCCI brand could not be more apparent”; and Guccio Gucci S.p.A. v. Zhao Ke / Yeli / Corporate Domains, Inc / Li Ye, WIPO Case No. D2012-0357.
The Respondent’s failure to respond to a cease-and-desist letter and its use of a privacy protection service to conceal its identity is also a token of bad faith. See HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062. Even if the use of a shield company per se does not constitute a bad faith use, it can in certain circumstances constitute a factor indicating bad faith, depending on the manner in which such service is used (See WIPO Overview 3.0, section 3.6).
The use by the Respondent of the privacy shield is a clear indication as to its intention to evade the consequences of registering the disputed domain name in which it does not have any legitimate interest and which is used for clearly infringing purposes. See BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364.
Considering the above, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
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-global.com> be transferred to the Complainant.
Date: June 25, 2021