WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société des Produits Nestlé S.A. v. Withheld for Privacy ehf, Privacy Service Provided by Withheld for Privacy ehf / Lori Forrer
Case No. D2021-3561
1. The Parties
The Complainant is Société des Produits Nestlé S.A., Switzerland, represented by Studio Barbero, Italy.
The Respondent is Withheld for Privacy ehf, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Lori Forrer, United States of America.
2. The Domain Name and Registrar
The disputed domain name <usa-nestle.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 October 26, 2021. On October 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 26, 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 October 29, 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 November 3, 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 November 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2021.
The Center appointed Gareth Dickson as the sole panelist in this matter on December 21, 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 a wholly owned subsidiary of the multinational food and drink business, Nestlé S.A., which was founded in 1866 by Henri Nestlé and has grown to be one of the biggest companies in the world, with the Fortune Global 500 listing Nestlé as the 78th largest company in the world in 2021. The Nestlé Group has over 270,000 employees, over 400 production centres globally and is present in more than 80 countries. Both the Complainant and Nestlé S.A. are based in Switzerland.
The Nestlé Group has offered goods and services under the “NESTLÉ” trade mark (the “Mark”) for over 140 years and in 2021 the Mark was valued at USD 10,252 million by Interbrand’s annual Best Global Brands ranking and listed as the 63rd most valuable trade mark in the world.
The Complainant is the owner of over 2,250 international and national trade mark registrations for the “Mark” around the world, including:
- International trade mark registration number 400444, registered on July 16, 1973;
- International trade mark registration number 479337, registered on August 12, 1983;
- International trade mark registration number 490322, registered on November 27, 1984;
- International trade mark registration number 511513, registered on April 3, 1987;
- United States of America trade mark registration number 0188089, filed on January 4, 1924 (claiming a priority date of October 2, 1905 and indicating 1878 as first use);
- United States of America trade mark registration number 1105743, filed on March 27, 1978 (claiming first use of January 1, 1973);
- European Union trade mark registration number 002977569, filed on December 13, 2002;
- United Kingdom trade mark registration number 00000294777, filed on July 22, 1907; and
- Iceland trade mark registration number V0013996, registered on January 22, 1986.
It is also the registrant of domain names incorporating the Mark, including <nestleusa.com> and <nestle-usa.com>. The Complainant’s use and registration of the Mark pre-dates the registration of the disputed domain name, which was registered on April 6, 2021. The disputed domain name currently directs Internet users to a webpage featuring what appear to be sponsored links mainly to products for which the Mark is registered which, in turn, direct Internet users to parties other than the Complainant.
5. Parties’ Contentions
The Complainant argues that it has rights in the Mark by virtue of its ownership of various trade mark registrations for the Mark around the world, including those set out in section 4 above, and its longstanding use of the Mark, such that it can be considered to be a “household name”. It contends that the disputed domain name is confusingly similar to the Mark since it incorporates the Mark (which is recognisable within the disputed domain name) in its entirety with the addition of only the geographical term “usa”, which will be understood to refer to the United States of America (where the Complainant has substantial operations, being the Nestlé Group’s largest market in the world), together with a hyphen before the Mark, under the generic Top-Level Domain (“gTLD”) “.com”. The Complainant notes that the “é” in the Mark has been replaced in the disputed domain name with an unaccented “e”, but contends that this substitution has been held by previous UDRP decisions to be immaterial for the purposes of the comparison.
The Complainant confirms that the disputed domain name was registered by the Respondent without its permission and that the Respondent is not a licensee of the Complainant. It alleges that the Respondent has been using the disputed domain name to intentionally attract Internet users to the website, which contains click-through links, by creating a likelihood of confusion as to the source, sponsorship, affiliation and/or endorsement of the domain, to trade off the goodwill of the Complainant and for the Respondent’s commercial gain.
The Complainant submits that there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name; is making, or intends to make, a legitimate noncommercial or fair use of it; or has ever used or demonstrated preparations to use it in connection with a bona fide offering of goods or services.
The Complainant submits that the Respondent must have known of the Complainant and the Mark when it registered the disputed domain name on the basis that the Mark is inherently distinctive and a “household name”, having been used by the Nestlé Group for over 140 years and being well-known throughout the world. In addition, the Respondent’s own use of the disputed domain name to attempt to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Mark is contrary to the Policy and further confirms beyond any doubt that the Respondent knew of the Mark and the Complainant’s interest in it when it registered the disputed domain name and that it registered it in bad faith.
The Complainant notes too that the Respondent has arranged for the email functions of the disputed domain name to be activated, which enable it to use the disputed domain name to imitate the Complainant in communications with Internet users, has used a privacy service to conceal its identity for as long as possible and has failed to respond to the Complainant’s correspondence formally putting the Respondent on notice of the Complainant’s objection to the use of the Mark in the disputed domain name.
Together, the Complainant submits that the Respondent is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
c) the disputed domain name has been registered and is being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark. Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that: “[I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
Section 1.8 of the WIPO Overview 3.0 further provides that: “Where the relevant trademark 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 Panel therefore finds that the disputed domain name is confusingly similar to the Mark, since the Mark is recognisable within the disputed domain name. The addition of the term “usa”, which will be perceived to be a geographical term referring to the United States of America (where the Complainant undertakes substantial commercial activity), the use of a hyphen in the disputed domain name and the substitution of “é” with “e” does not prevent a finding of confusing similarity, nor does the addition of the gTLD “.com”.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
In the current proceeding, the Complainant has established its prima facie case. The evidence before the Panel is that the Mark is neither generic nor descriptive but enjoys a degree of inherent distinctiveness that makes a coincidental adoption by the Respondent highly unlikely. The Complainant states that it has not given the Respondent permission to use the Mark, in a domain name or otherwise, and submits that the Respondent has not been commonly known by the disputed domain name.
There is no evidence that the Respondent has acquired any common law rights to use the Mark, is commonly known by the Mark or has chosen to use the Mark in the disputed domain name in any descriptive manner or is making any use of the disputed domain name that would establish rights or legitimate interests as a result of a noncommercial or fair use of it.
The redirection of Internet users to a website offering pay-per-click links to competitors does not constitute a bona fide sale of goods or services or a legitimate noncommercial or fair use within the meaning of the Policy. Section 2.9 of the WIPO Overview 3.0 states that: “Panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”. This is relevant here since the Respondent’s selection of the disputed domain name for its similarity to the Mark is intended to create confusion and to reap commercial gain by trading on the Complainant’s goodwill in the Mark.
By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element.
As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, 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 Panel notes that the disputed domain name was registered many years after the Mark was registered and accepts that the disputed domain name was chosen by reference to the Mark.
As a result, and in the absence of evidence from the Respondent that the similarity of the disputed domain name to the Mark is coincidental, the Panel must conclude that the Respondent knew of the Complainant’s rights in the Mark when it registered the disputed domain name.
The Panel therefore finds that the Respondent’s registration of the disputed domain name was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorisation of the Complainant, rights in the Complainant’s Mark.
The disputed domain name is also being used in bad faith.
It is being used for a commercial purpose that involves redirecting Internet users (in particular those seeking the Complainant) to competitors of the Complainant.
The Panel notes that it is possible that the Respondent has used (or is preparing to use) the disputed domain name to send emails that will inevitably, and intentionally, confuse recipients of such communications as to their genuine origin. Furthermore, the Respondent has not sought to explain its registration and use of the disputed domain name, has attempted to conceal its identity, and has not participated in these proceedings.
Therefore, and on the basis of the information available to it, the Panel finds that the Respondent’s use of the disputed domain name is without justification and is inconsistent with the Complainant’s exclusive rights in the Mark. Consideration of these and other factors militates in favour of a finding of bad faith.
The Panel finds that the Respondent has 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, <usa-nestle.com> be transferred to the Complainant.
Date: January 5, 2022