WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société des Produits Nestlé S.A. (“Nestlé SA”) v. Hayk Asatryan
Case No. DAM2013-0001
1. The Parties
The Complainant is Société des Produits Nestlé S.A. (“Nestlé SA”) of Vevey, Switzerland, represented by Studio Barbero, Italy.
The Respondent is Hayk Asatryan of Yerevan, Armenia.
2. The Domain Name and Registrar
The disputed domain name <nespresso.am> (“the Domain Name”) is registered with NETSYS JV LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2013. On April 4, 8 and 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification and reminders in connection with the Domain Name. On April 11, 2013, 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. Following a request for clarification of the Center to the Registrar, the Registrar confirmed that English is the language of the Registration Agreement.
On April 4, 2013, the Respondent sent an email communication to the Center. The Center informed the Parties on April 11, 2013 of the possibility to suspend the proceedings in order to find a possible settlement. The Complainant replied on April 15, 2013, requesting the Center to continue the proceedings.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 27, 2013. The Respondent did not file a formal Response.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on June 7, 2013. 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 worldwide company and its NESPRESSO trademark is famous and well-known all around the world.
The Complainant is the owner of over 100,000 international and national trademark registrations worldwide including the following:
· International Trademark Registration No. 499589 of December 10, 1985 NESPRESSO in class 30.
· International Trademark Registration N. 508100 of November 6, 1986 NESPRESSO in classes 7, 9, 11, 21 and 30.
· International Trademark Registration No. 640683 of June 27, 1995, NESPRESSO in classes 35, 37, 39, 41 and 42.
· International Trademark Reg. No. 777873 of March 14, 2002, NESPRESSO in classes 7, 9, 11, 21, 30 and 38.
· International Trademark Registration N. 1054554 of September 13, 2010 NESPRESSO in classes 9, 11, 16, 21, 29, 30, 35, 37, 39, 40, 41, 42 and 43.
· International Trademark Registration N. 1030712 of February 2, 2010 NESPRESSO in classes 35 and 43.
· Community Trademark Registration No. 2793792 of July 13, 2006 NESPRESSO in classes 7, 9, 11, 21, 30, 35, 37, 39, 41 and 43.
The Domain Name <nespresso.am> was registered on February 16, 2011.
5. Parties’ Contentions
The Domain Name <nespresso.am> is identical to the trademarks in which the Complainant has rights pursuant to paragraph 4(a)(i) of the Policy.
Since the Domain Name was initially redirected to a website offering for sale NESPRESSO-branded products without any authorization of the Complainant and suggesting to the Internet users an affiliation which was not existing, this use should be considered neither as a bona fide offering of goods or services nor as a legitimate noncommercial or fair use of the Domain Name. Thus, the Respondent was not interested in using the Domain Name in connection with any legitimate purpose and having ceased such use upon receipt of the cease and desist letter from the Complainant’s authorized representative confirms the lack of legitimate interest.
The Respondent is not a licensee or authorized agent of the Complainant or, in any way, legally has been permitted to use the Complainant’s trademarks NESPRESSO, neither the registrant is commonly known by the <nespresso.am> as an individual, business, or other organization.
The registered trademark NESPRESSO is well-known and the Respondent could not have been unaware of its existence when he registered the Domain Name. The well-known nature of a trademark to which a Domain Name is confusingly similar is, in itself, evidence of bad faith registration.
Furthermore, the trademark NESPRESSO was misappropriated by the Respondent on the website corresponding to the Domain Name and the entire website was clearly an attempt to appear similar to the Complainant’s official website.
The Complainant deems paragraph 4(b)(iv) of the Policy applicable to the present case since the Respondent intentionally attracted Internet users for commercial gain to the Respondent’s 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.
Finally, in consideration to the above mentioned, the Complainant requested transfer of the Domain Name <nespresso.am>.
The Respondent did not file a formal Response, however it sent an email communication on April 4, 2013, stating that “Dear all, I just want to inform I’ve contacted Russian Nestle, because no official representative in Armenia with this issue. I’ve just requested them to pay only my expenses I spent on the site and waiting to their reply.”
6. Discussion and Findings
In order for the Panel to decide to grant the remedy of transfer of a domain name to a complainant under the Policy it is necessary that the complainant must prove, as required by paragraph 4(a) of the Policy, that:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under paragraph 14(a) of the Rules in the event of such a “Default” the Panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”. The UDRP procedure is accepted by the domain name registrant as a condition of registration. Therefore, a registrant should not gain any evidentiary benefit from its failure to participate.
Thus, where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts (Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004; State of Wisconsin v. Pro-Life Domains, Inc., WIPO Case No. D2003-0432; La Caixa D’Estalvis I Pensions de Barcelona v. José Antonio Bernal, WIPO Case No. D2006-1637). Here, the Respondent has defaulted, and it is appropriate in the present case for the Panel to accept the facts asserted by the Complainant and to draw adverse inferences of fact against the Respondent.
A. Identical or Confusingly Similar
The Complainant has made continuous use of its registered and incontestable marks since 1985, thus has spent much time, money and effort promoting the marks and has established significant goodwill and has to be recognized as well-known trademarks.
The Domain Name incorporates the Complainant’s entire trademarks, so the Domain Name is therefore identical to the Complainant’s registered and incontestable marks.
The Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent has filed no formal response to the Complaint, and thus has made no assertion of rights or legitimate interests in the Domain Name as provided for in paragraph 4(c) of the Policy. As stated by previous and numerous UDRP decisions the burden of production shifts where the Complainant presents a prima facie showing, as has occurred in the instant case.
No evidence that is before this Panel suggests that the Respondent has any rights or legitimate interests in the Domain Name: The Respondent is not known by the Domain Name, nor the Complainant has granted any license or authority to use the Complainant’s trademark, neither the Respondent has made a legitimate noncommercial or fair use of the Domain Name as it appears to the Panel that the Respondent has allegedly profited revenues generated by offering NESPRESSO’s capsules in a purported Complainant’s website.
The Panel thus finds that the Respondent does not have any rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registrations and use of the Domain Name in bad faith. By not submitting a Response, the Respondent has failed to invoke any circumstances that could demonstrate that it did not register and use the Domain Name in bad faith. Besides, the communications between the parties before and during the administrative procedure does not assist to find a Respondent’s bona fide in any case.
Having the Complainant established that its trademarks are known throughout the world and that the Complainant's trademarks are famous and valuable, it is very unlikely or inconceivable that the Respondent would have chosen the term “nespresso” as a domain name unless he knew either the existence of the trademark NESPRESSO or that the Domain Name might be of some type of economic advantage. Thus, never by accident.
Therefore, the registration of a domain name incorporating a famous mark by a party that has no legitimate connection with the mark or relationship with the owner of the mark, generally constitutes bad faith registration and this is the approach of the Panel in the present case (Ints It Is Not The Same, GmbH v. Carlos Gil Belmonte, WIPO Case No. D2010-0456, Encyclopaedia Britannica, Inc. v. Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330; eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 and Ellerman Investments Limited and The Ritz Hotel Casino Limited v. Antonios Manessis (trading as .com and manessis.com), WIPO Case No. D2001-1461)
In respect to the use of the Domain Name, the Complainant has proved to the satisfaction of the Panel, by mean of the printouts of the website to which the Domain Name resolved at the time of the cease and desist letter, that the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement. Additionally, the offer to sell the Domain Name is likewise a further evidence of bad faith registration and use.
For this Panel, the above is clearly bad faith under paragraph 4(b)(iv) of the Policy and the Panel concludes that the Respondent’s registration and use of the Domain Name are 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 Domain Name <nespresso.am> be transferred to the Complainant.
Date: June 19, 2013