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 / Robert Perez
Case No. D2021-3971
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 / Robert Perez, Spain.
2. The Domain Name and Registrar
The disputed domain name <nespresscafe.online> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2021. On November 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 30, 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 December 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 December 3, 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 December 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2022.
The Center appointed William F. Hamilton as the sole panelist in this matter on February 15, 2022. 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 the registered owner of trademarks utilized by the Nestle Group (“Nestlé”). Nestlé sells food products and services around the world including baby foods, breakfast cereals, chocolates and confectionery, coffee and beverages, bottled water, dairy products, ice cream, prepared foods, food services as well as pet food. Nestlé has more than 270,000 employees located in more than 80 countries.
The Complainant owns over 600 trademark registrations worldwide. The Complainant owns numerous registrations for the mark NESPRESSO (the “Mark”) such as International trademark registration No. 499589 registered on December 10, 1985. The Complainant’s machines and coffee products are sold to customers worldwide through ”nespresso.com” or via luxurious Nespresso shops located in major metropolitan cities around the world.
The Complainant is also the owner of the figurative trademark registered under International trademark registration No. 1122907 on June 18, 2012.
The disputed domain name was registered on August 3, 2021. The disputed domain name resolves to a website showing pictures of the Complainant’s branded products and purportedly offering the Complainant’s coffee making machines for sale after the creation of a “customer account”.
5. Parties’ Contentions
The Complainant asserts the disputed domain name is confusingly similar to the Mark because the disputed domain name is composed by merely dropping the letter “o” from the Mark and adding the word “cafe”.
The Complainant asserts that the Complainant never authorized the Respondent to use the disputed domain name, that the Respondent is not generally known by the disputed domain name, and that the Respondent has never engaged in any bona fide commercial activity in connection with the disputed domain name.
The Complainant asserts that the Respondent registered and used the disputed domain name in bad faith as the disputed domain resolves to a website prominently featuring the Mark and the distinctive trademark logo and offering for sale coffee products that purport to be the Complainant’s branded products, yet Internet users are unable to purchase said products when interacting with the website. The Complainant asserts that mail exchange records are active and that the disputed domain name might be used for fraudulent activities. The Complainant further asserts that the Respondent did not reply to a cease and desist letter dated August 12, 2021, and subsequent reminders sent on September 7, 2021, September 23, 2021, and October 14, 2021.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 Panel finds that the disputed domain name is confusingly similar to the Complainant’s Mark.
The disputed domain name is composed by dropping the character “o” from the Mark and the adding the term “cafe”. A domain name which wholly incorporates a complainant’s registered mark is sufficient to establish confusingly similarity for the purposes of the Policy when, as here, the Mark is clearly recognizable within the disputed domain name notwithstanding the addition of a term or minor character changes. Here the visual impact of the Mark in the disputed domain name is apparent and obvious. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographic, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”; Regeneron Pharmaceuticals, Inc. v. Registration Private, Domains by Proxy, LLC / Regeneron Careers, WIPO Case No. D2017-0013; Bombas LLC v. Domain Administrator, See PrivacyGuardian.org / Maryellen J Dillard, Maryellen Dillard, WIPO Case No. D2021-0609.
The generic Top-Level Domain (“gTLD”) of the disputed domain name, in this case “.online”, may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1; Monster Energy Company, a Delaware Corporation v. J.H.M. den Ouden, WIPO Case No. D2016-1759; International Business Machines Corporation v. Sledge, Inc. / Frank Sledge, WIPO Case No. D2014-0581.
The Complainant has met its burden under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has specifically disavowed providing the Respondent with permission to use the disputed domain name or the Mark. The Respondent is not affiliated with the Complainant in any way and does not have any business relationship with the Complainant. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain name or is commonly known by the disputed domain name. Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.
The Complainant has thus established a prima facie case in its favor, which shifts the burden of production on this point to the Respondent. The Respondent, however, has failed to come forth with any evidence showing any rights or legitimate interests in the disputed domain name.
Furthermore, the nature of the disputed domain name, which highly resembles the Mark, carries a risk of implied affiliation. Compagnie Générale des Etablissements Michelin v. PrivacyDotLink Customer 1197652 / Alex Hvorost, WIPO Case No. D2016-1923 (legitimate use unlikely given the resemblance of the disputed domain name with the widely known trademark of the complainant); see WIPO Overview 3.0, section 2.5.1.
Even assuming that the Respondent is re-selling Complainant’s genuine products, the Respondent has not accurately and prominently disclosed Respondent’s relationship with the Complainant. Indeed, the Respondent’s website lacks any such required disclosure, and the Complainant has not provided the Respondent with permission or authorization to use the Mark.Starwood Hotels & Resorts Worldwide Inc., The Sheraton LLC, Sheraton International Inc., Societe des Hotels Meridien, Westin Hotel Management L.P. v. Media Insight a/k/a Media Insights, WIPO Case No. D2010-0211; see WIPO Overview 2.3.
Finally, it appears that the disputed domain name resolves to a website whose principal purpose is the collection of personally identifying and credit card information from website visitors. The use of a domain name for fraudulent activity can never confer rights or legitimate interests upon a respondent. See WIPO Overview 3.0, section 2.13.
The facts and circumstances presented to the Panel demonstrate that the Respondent does not have any rights or legitimate interests in the disputed domain name.
The Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, bad faith may be established by any one of the following scenarios:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the 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 domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line 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 Panel finds the disputed domain name was registered and is being used in bad faith.
A simple Internet search, normally undertaken before registering a domain name, would have disclosed the Complainant’s Mark. Common sense compels the conclusion that the Respondent was quite aware of the Complainant’s Mark when registering the disputed domain name. The addition of the word “cafe” is compelling evidence that the Respondent was aware of the Complainant’s rights and interests when registering the disputed domain name. Even if one were to accept the unbelievable proposition that the Respondent was unaware of the Mark, willful blindness is no excuse and does not avoid a finding of bad faith registration and use. Instagram LLC v. Contact Privacy Inc. / Sercan Lider, WIPO Case No. D2019-0419.
Noting the composition of the disputed domain name, it is difficult to conceive of any use that the Respondent might make of the disputed domain name without the Complainant’s consent that would not involve bad faith. Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003; Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909 (where the reputation of a complainant in a given mark is significant and the mark bears strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred); DPDgroup International Services GmbH & Co. KG v. Wise One, Wilson TECH, WIPO Case No. D2021-0109; Monster Energy Company v. PrivacyDotLink Customer 116709 / Ferdinand Nikolaus Kronschnabl, WIPO Case No. D2016-1335.
Finally, under the evidence presented, the disputed domain name appears to resolve to a website whose principal purpose is to obtain personal and credit card information from unsuspecting Internet visitors and to serve as a vehicle for improper email communications. American Society of Hematology, Inc. v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Pranaey H, WIPO Case No. D2021-1381; Tetra Laval Holdings & Finance S.A. v. Himali Hewage, WIPO Case No. D2020-0472 (configuration of MX record discloses the possibility that the disputed domain name may be aimed at phishing activities).
The Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
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 <nespresscafe.online> be transferred to the Complainant.
William F. Hamilton
Date: March 1, 2022