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 / Godwin R
Case No. D2021-2864
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 / Godwin R, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <nestleurope.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 August 31, 2021. On August 31, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 31, 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 September 1, 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 amendment to the Complaint on September 2, 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 the Respondent of the Complaint, and the proceedings commenced on September 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2021.
The Center appointed Benjamin Fontaine as the sole panelist in this matter on November 14, 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 is one of the world’s largest food consumer products company. It sells products and services all over the world in various industries, primarily in the food industry, including baby foods, breakfast cereals, chocolate & confectionery, coffee & beverages, bottled water, dairy products, ice cream, prepared foods, food services as well as pet food. The sales metrics of the Complainant in 2020 were 84.3 billion Swiss Francs (CHF) worldwide. The Complainant markets its products worldwide in over 185 countries, including in the United Kingdom – the country where the Respondent has impersonated a fictitious C.E.O. in its scam communications).
According to Interbrand’s annual Best Global Brands ranking for 2020 (in Annex 4.2), the trademark NESTLÉ represents the 63rd most valuable trademark in the world.
As a basis for this Complaint, the Complainant relies on numerous trade mark registrations, including:
- EU Registration No. 002977569 (word mark) of December 13, 2002, in all classes;
- UK Registration No. 00000294777 (word mark) of July 22, 1907, in classes 29 and 30;
In support of its activities, the Complainant also owns and uses a vast portfolio of domain names, including the domain name <nestle.com>, and <nestle.co.uk>.
The disputed domain name was registered on July 3, 2021, and resolves to a parking page.
The identity of the Respondent was disclosed by the Registrar in the course of this UDRP proceeding.
The Respondent used the disputed domain name to configure emails sent from a person alleging to be the Executive Director of Nestle Plc, a non-existent subsidiary of the Complainant. These emails informed Internet users - which had applied to a purported Nestlé Internship offer via the website “www.erasmusintern.org” - that they had been selected for a 6-month paid internship with Nestlé Plc in London. In such email, users were requested to provide their personal information and to make arrangements to secure in advance an accommodation and a health insurance. These candidates were required to make a bank transfer to confirm the reservation of the accommodation or pay the health insurance.
The Complainant has provided a copy of all these phishing communications, and of the complaints or warnings sent to the Complainant thereafter by six internship candidates, who were unfortunately initially abused by the Respondent.
Failing any response from the Respondent to a cease-and-desist letter sent on August 25, 2021, and a reminder a few days later, the Complainant decided to initiate this proceeding.
5. Parties’ Contentions
The detailed arguments of the Complainant can be summarized as follows:
Regarding the first element of the Policy, the Complainant states in particular that “The Domain Name <nestleurope.com> incorporates the whole Complainant’s NESTLÉ trademark. The addition of the non-distinctive term “urope” does not affect the confusingly similarity. As result of the phonetical phenomenon of crasis between the last letter of the term NESTLE, i.e. the vowel “e”, with the term “urope”, that contains 5 of the 6 letters the word “Europe” is composed of, users are certainly led to understand <nestleurope> as composed of the two terms “NESTLE” and “Europe”, which share the last and the first vowel “e”.” Regarding the omission of the accent from the last letter of NESTLE, the Complainant adds that “previous Panels have considered that the addition or deletion of grammatical marks such as hyphens, apostrophes and circumflexes are irrelevant changes, insufficient to reduce the identity or confusing similarity, as set out in paragraph 4(a)(i) of the Policy. As stated, inter alia, in 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”.”
Regarding the second element of the Policy, the Complainant indicates that the Respondent “Godwin R” is not an employee, licensee, affiliated person or authorized agent of the Complainant or in any other way authorized to use the NESTLÉ trade mark. Likewise, the Respondent is not commonly known by the disputed domain name. Finally, the use of the disputed domain name in connection with scam/phishing activities can be considered neither as a bona fide offering of goods or services nor as a legitimate non-commercial or fair use of the disputed domain name.
Regarding the third element of the Policy, the Complainant adduces that the Respondent registered the disputed domain name with the intention of misappropriating its well-known trade mark. Subsequently, the use of the disputed domain name misusing the Complainant’s trade marks and impersonating a fictitious representative of a non-existent Nestlé company amounts to use in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark 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 was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant, under the first requirement of paragraph 4(a) of the Policy, needs to establish that the disputed domain name is identical or confusingly similar to a trade mark or a service mark in which it has rights.
The Complainant has shown that it holds rights over the trade mark NESTLE.
The disputed domain name <nestleurope.com> includes the Complainant’s trade mark in its entirety, combined with the geographical term “europe”. The merger of the final letter “e” of NESTLE, and of the first letter “e” of “Europe”, is hardly noticeable and does not affect this finding. Likewise, the absence of the “accent aigu” at the end of NESTLE is irrelevant. It is common knowledge that domain names do not include accents.
Also, the addition of the geographical term “europe” does not prevent the Complainant’s trade mark from being recognizable in the disputed domain name. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Where the relevant trade mark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”
As the disputed domain name includes the Complainant’s trade mark in its entirety combined with a geographical term that does not prevent the Complainant’s trade mark from being recognizable in the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.
Therefore, the first element of the Policy is satisfied.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, the Complainant has argued that the Respondent is not commonly known by the disputed domain name, and has not been authorized by the Complainant to register and use the disputed domain name. Furthermore, the use of the disputed domain name in connection with a fraudulent phishing scheme does not qualify as fair use.
Accordingly and absent specific allegations by the Respondent, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In order to prevail under the third element of paragraph 4(a) of the Policy, the Complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances, which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed 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.
The Respondent has registered and used the disputed domain name <nestleurope.com> in order to impersonate the Complainant’s well-known trade marks. Emails were configured on this basis in order to conduct illegal activities. The Complainant has satisfactorily demonstrated that the Respondent has configured a scheme to abuse students with the offer of alleged paid internship agreements with students, supposedly in London, and has asked for payment in advance of accommodation and health insurance.
A finding of bad faith use and registration results obviously from the operation of this fraudulent phishing scheme. Diverting Internet users for fraudulent purposes of this nature amounts to use in bad faith. See WIPO Overview 3.0, section 3.4.
Accordingly, the Panel finds that the third element set out in paragraph 4(a) of the Policy is also satisfied.
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 <nestleurope.com> be transferred to the Complainant.
Date: November 29, 2021