WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société des Produits Nestlé S.A. v. Amit, Aarthas Interior
Case No. D2021-4373
1. The Parties
The Complainant is Société des Produits Nestlé S.A., Switzerland, represented by Studio Barbero, Italy.
The Respondent is Amit, Aarthas Interior, India.
2. The Domain Name and Registrar
The disputed domain name <nestledealership.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 24, 2021. On December 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 28, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 January 6, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2022. Aside from three informal communications, the Respondent did not submit any substantial response. Accordingly, the Center notified the Commencement of the Panel Appointment Process on February 1, 2022.
The Center appointed Antony Gold as the sole panelist in this matter on February 3, 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 a company within the Nestlé Group which is an international manufacturer and seller of a wide variety of foods and a provider of a number of associated services. The Nestlé Group markets its products in over 185 countries and has more than 270,000 employees. In 2020 its global sales were CHF 84.3 billion.
The Complainant owns many trade mark registrations for Nestlé and NESTLE.1 These marks include, by way of example, European Union Trade Mark, registration number 2977569, registered on May 25, 2004 in multiple classes.
The disputed domain name was registered on December 8, 2021. As at the time of filing the Complaint, it resolved to a website purporting to be that of the Complainant’s Indian entity, which promoted ostensible opportunities for distributorships with the Complainant. The home page prominently featured the Complainant’s mark and a section, headed “About Dealership”, opened as follows: “Nestlé is one of the Leading Brand in FMCG Industry. WE have Wide range of products like Maggi, Milk, Celerac, Chocolates etc, Now we are looking for Responsible and professional Partners from all over India for Distributorship/dealership/Franchise”. Internet users interested in applying for a distributorship were invited to complete an online form. The website contact address was stated to be Nestlé India Ltd, at an address in Gurgaon, India.
Following notification of the Complaint, the Respondent sent an email to the Center, on January 26, 2022, in the following terms; “We are small Digital Marketing Agency in India, We booked this Domain name for our client on his request. We have some proof as well. When We got first mail from Nestle then I forward same mail to client and closed his website on same time. I dont think there is any fault from our side, So if you need Domain access we can provide domain access to the Trademark company”.
The Respondent’s email was forwarded by the Center to the Complainant’s representatives, who replied to the Respondent on January 28, 2022 seeking documents to support the Respondent’s assertions and details of any other domain names under the control of the Respondent or its purported client which incorporated the Complainant’s trade marks. It explained that these were believed to include <nestleesfranchise.in>, <nestledealership.in> and <nestledistributor.in>.
On January 29, 2022, the Respondent replied stating that the only domain names it had registered for its client were the disputed domain name and <nestleesfranchise.in>, the website for which had also now been closed by it. It repeated that it did not consider it had done anything wrong but added “Anyways, Please let me know if you need any help from our side”.
On January 31, the Complainant’s representatives replied, repeating its earlier request that the Respondent provide the identity and contact details of the client on whose behalf it claimed to have secured the domain names and to provide correspondence and documents, omitting any confidential information, to support its claims.
On February 1, 2022, the Respondent replied, stating that its client had contacted it in November 2021 and providing a numeric reference, which it said was a contact reference for the client in question. The Respondent said that it had records of emails and WhatsApp chats of communications with its client which substantiated its claims, albeit this information was not provided.
The disputed domain name does not currently resolve to an active website.
5. Preliminary issue – Respondent’s informal consent to transfer
The Respondent’s three emails, summarised above, suggested that it may be willing to consent to a transfer of the disputed domain name to the Complainant. Section 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) deals with the issues which arise where a respondent has indicated a willingness to surrender the domain name in issue outside of the standard settlement process and explains that in these circumstances, many panels will order the requested remedy solely on the basis of the respondent’s consent, that is without proceeding to a decision on the merits.
Despite such consent, UDRP panels will, in certain circumstances, consider it appropriate to proceed to a substantive decision on the merits. Section 4.10 explains that the scenarios in which a panel may find it appropriate to do so include; (i) where the panel finds a broader interest in recording a substantive decision on the merits, (ii) where, whilst consenting to the requested remedy, the respondent has expressly disclaimed any bad faith, (iii) where the complainant has not agreed to accept such consent and has expressed a preference for a recorded decision and (iv) where there is ambiguity as to the scope of the respondent’s consent.
In these circumstances, the following factors lead the Panel to proceed to a decision on the merits. First, there may be a broader interest in recording a substantive decision, in the event that, by way of example, proceedings are brought under the .IN Domain Name Dispute Resolution Policy (INDRP) in respect of the domain name <nestleesfranchise.in>, which has also been registered by the Respondent. Second, the Respondent has expressly disclaimed any bad faith. Third, it is not entirely clear that the Respondent has unequivocally agreed to transfer the disputed domain name to the Complainant. Finally, the Panel notes that the Respondent has not provided either the information the Complainant requested from it concerning the identity and contact details of the client on whose behalf the Respondent claims to have secured the disputed domain name, nor indeed any evidence that such a party existed.
6. Parties’ Contentions
The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark in which it has rights. It refers to its trade marks for NestlE, full details of one of these marks having been set out above, and says that the disputed domain name contains the whole of its mark and adds to it the non-distinctive term “dealership”, which does not affect the degree of confusing similarity.
The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not a licensee, or authorized agent of the Complainant, nor in any other way authorized to use the Complainant’s NestlE mark. In the absence of any such permission, no bona fide use of the disputed domain name could reasonably be claimed. The Complainant is unaware of the existence of any evidence demonstrating that the Respondent might commonly be known by a name corresponding to the disputed domain name. The disputed domain name was intentionally registered by the Respondent for fraudulent purposes, namely in order to resolve to a website creating the impression that it is an official portal of the Complainant operated by its entity in India. Furthermore, the Respondent’s website invites Internet users to submit personal and sensitive data in order to enter into a fake distributors’ network. This clearly demonstrates that the Respondent does not intend to use the disputed domain name in connection with any legitimate purpose.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The Complainant’s NestlE mark has such widespread notoriety that it would be nearly impossible for the Respondent not to have known of it and, in fact, the use of the Complainant’s NestlE marks on the Respondent’s website establishes that it was well aware of them. The misappropriation of a well-known trade mark as a domain name by itself constitutes bad faith registration. By inviting Internet users to apply for an allegedly official distributorship with the Complainant upon submission of personal information, the Respondent is impersonating the Complainant and/or its affiliated companies and exploiting the reputation and goodwill associated with its NestlE marks in order to promote its fraudulent activities. The Respondent is therefore using the disputed domain name to intentionally attract Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of its website. Additionally, another domain name confusingly similar to the Complainant’s NestlE mark, namely <nestleesfranchise.in>, which hosts content substantially identical to the Complainants’ mark, has also been registered by the Respondent, which further evidences the Respondent’s bad faith.
The Respondent did not serve a formal response to the Complaint. Its email exchanges with the Complainant subsequent to the notification of the Complaint have been summarized above.
7. Discussion and Findings
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided details of its trade mark registrations for NestlE, including the mark in respect of which details are set out above, which thereby establish its rights in it.
As a technical requirement of registration, the Top-Level Domain (gTLD), that is “.com” in the case of the disputed domain name, is typically disregarded when assessing confusing similarity. The disputed domain name comprises the Complainant’s NestlE trade mark in its entirety, followed by the word “dealership”. This additional term does not prevent the disputed domain name from being found confusingly similar to the Complainant’s mark. As explained at section 1.8 of the 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 Complainant’s NestlE mark is recognizable within the disputed domain name and the Panel accordingly finds that it is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides, without limitation, examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used, or made demonstrable preparations to use, the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name or a name corresponding to the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.
The use which has previously been made of the disputed domain name, namely to resolve to a website which purports to be operated by the Complainant’s entity in India and invites applications for a distributorship with the Complainant, is calculated to mislead Internet users into parting with personal data and may form part of a broader dishonest scheme. The Respondent has claimed that the registration of the disputed domain name was undertaken at the request of a client. However, the website to which the disputed domain name resolved appears to have been created by the Respondent and presumably has remained under its direct control because apparently it was able to take it down on receiving notification of the Complaint. Indeed, the Respondent’s reply to the Complainant’s initial claim letter, dated December 18, 2021, made no mention of any client involvement and stated only that the Respondent was going to shut the website. Nor has the Respondent provided any credible evidence to substantiate its more recent assertion that its actions were undertaken on behalf of a client. Finally, for the Respondent to suggest that it was unaware that it might be problematic for it to have created a website, whether for itself or a client, which misleadingly purported to be operated by the Complainant’s corporate entity in India is, to say the least, implausible.
As explained at section 2.13.1 of the WIPO Overview 3.0; “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, in similar circumstances, Hero MotoCorp Limited v. Domains By Proxy, LLC, DomainsByProxy.com / Moien Ali, WIPO Case No. D2018-1744. The Respondent’s website did not therefore comprise a bona fide offering of goods and services.
There is no evidence to indicate that the Respondent has been commonly known by the disputed domain name and the second circumstance set out at paragraph 4(c) of the Policy is therefore inapplicable. Nor is the Respondent making a legitimate noncommercial use of the disputed domain name and its characteristics are strongly suggestive of an affiliation or connection with the Complainant (which does not exist), which prima facie prevents its use from being considered fair. Lastly, the current inactive use of the disputed domain name comprises neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use of it; see Skyscanner Limited v. WhoisGuard Protected, WhoisGuard, Inc. / petrov petya, WIPO Case No. DCC2020-0003.
The Panel therefore finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Respondent’s website, purporting offer dealerships in India on behalf of the Complainant, was created very shortly after registration of the disputed domain name. This provides strong evidence that the Respondent was aware of the Complainant’s NestlE mark as at the date of registration and that the disputed domain name was registered in order to target the Complainant and take advantage of its repute in its mark. As explained at section 3.1.4 of the WIPO Overview 3.0. “[p]anels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith”. See also Bytedance Ltd. v. WhoisGuard Protected, WhoisGuard, Inc. / Lawal Babatunde, WIPO Case No. DCO2020-0096. As explained earlier, no credible evidence by the Respondent has been produced to suggest that one of its clients was in some way responsible for either the registration or use of the disputed domain name. The Panel therefore finds the registration of the disputed domain name to have been in bad faith.
Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstances set out in paragraph 4(b)(iv) of the Policy are if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. The use to which the Respondent has put the disputed domain name falls within these circumstances in that it resolved to a website which masqueraded as that of the Complainant or its associated Indian entity in order to solicit personal data which it is very likely to have intended to misuse in some manner. The belief of Internet users that the website was that of the Complainant’s group of companies will have been reinforced because of the confusing similarity between the disputed domain name and the Complainant’s NESTLE mark. See also Hero MotoCorp Limited v. Domains By Proxy, LLC, DomainsByProxy.com / Moien Ali (supra).
The current inactive status of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding. In this respect, see section 3.3 of the WIPO Overview 3.0, which explains that; “[f]rom the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding”. The factors that are typically considered when applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealment of its identity or its use of false contact details and (iv) the implausibility of any good faith use to which the domain name may be put. See also VOLKSWAGEN AG v. Danny de graaf, WIPO Case No. D2020-1940.
Applying these factors to the current circumstances: (i) the Complainant has established the repute of its NestlE trade mark; (ii) the only use made of the disputed domain name to date has been in bad faith. Additionally, the fact that the Respondent has indicated an apparent willingness to transfer the disputed domain name to the Complainant tends to affirm the absence of any basis on which it could advance a claim of good faith registration and use; (iii) the Respondent has not sought to conceal its identity and the Complainant has not asserted that the Respondent’s contact details are false. However, in isolation, this factor does not point clearly away from bad faith passive holding, particularly in the light of the earlier use made of the disputed domain name; (iv) there is no plausible good faith use to which the disputed domain name could be put by the Respondent. Accordingly, the circumstances of the Respondent’s holding of the disputed domain name support a finding of bad faith under the doctrine of passive holding.
The Panel therefore 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 <nestledealership.com> be transferred to the Complainant.
Date: February 17, 2022
1 The slight difference between these marks is immaterial for the purpose of these proceedings and, for consistency, the unaccented form is used in the remainder of this Decision.