WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société des Produits Nestlé S.A. v. SC Boer Romania Srl
Case No. DRO2014-0006
1. The Parties
The Complainant is Société des Produits Nestlé S.A. of Vevey, Switzerland, represented by Studio Barbero, Italy.
The Respondent is SC Boer Romania Srl of Satu Mare, Romania, self-represented.
2. The Domain Name and Registrar
The disputed domain name <bubchen.ro> is registered with ROTLD (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2014. On September 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name.
On September 22, 2014, the Center received an email communication in English from the Respondent.
On September 23, 2014, 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.
On September 29, 2014, the Center transmitted a language of the proceedings document to the parties in both English and Romanian. On September 29, 2014, the Complainant requested English to be the language of the proceedings. The Respondent replied in Romanian and objected to the Complainant’s request on the same date.
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 October 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2014. The Response in English was filed with the Center on October 28, 2014.
The Center appointed Marilena Comanescu as the sole panelist in this matter on November 4, 2014. 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 Swiss entity with a history dating back to 1867. According to the Complainant, Nestlé Group has more than 330,000 employees and it is the world’s largest food consumer products company in terms of sales. According to Fortune Magazine’s annual ranking of the world’s 500 largest companies, the “Fortune Global 500”, the Complainant was positioned in the first 50 world biggest companies in 2009 and 2010 and number 72 in 2014.
The BÜBCHEN trademark was established by the German Ewald Hermes in 1940 and since 1983, it is a part of the Complainant’s group. Currently, the Complainant markets Bübchen baby care products in around 50 countries around the world.
The Complainant holds trademark registrations for BÜBCHEN in many countries worldwide, including the International Trademark No. 705630 registered on November 25, 1998 for goods in classes 3 and 5 extended to Romania since 1999 and the Community Trademark No. 004584033 registered on September 12, 2005 for goods in classes 3 and 5.
The Complainant holds domain names including the BÜBCHEN mark in various generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”), written as “bubchen” and “buebchen”, such as <bubchen.com.tr> or <buebchen.com>.
The disputed domain name <bubchen.ro> was registered on July 19, 2006 and at the time of filing the Complaint it was redirected to an online shop where Bübchen products and third party goods were promoted.
Screenshots presenting the historical content of the website corresponding to the disputed domain name, provided as Annex 8 to the Complaint, show that Respondent used the disputed domain name to promote itself as “Bübchen Romania” featuring the figurative trademark BÜBCHEN and selling Bübchen goods alongside competing goods.
Between 1994 up to March 2012, the Respondent was the distributor of Complainant’s goods in Romania. The distribution contracts between the Respondent and the Complainant’s associated companies were provided as Annexes to the Complaint (contract in 2010) and the Response (contracts in 1994 and 2003-2004). The contract of in 2003-2004 provides that the Respondent “shall neither mention nor use in any way the name Nestle or brands used by Nestle (except BÜBCHEN) in connection with the contract products or with this agreement” (paragraph 5 (vi)), and the contract of in 2010 further stipulates that “[a]ny use of the Trademarks by the Distributor shall be subject to the prior written approval of Nestle” and “[n]othing in this Agreement grants the Distributor any right or interest in any Trademarks or in any design, emblem, symbol, Slogan, logo or other visual identity used in connection with the Products” (paragraphs 6.3 and 6.5).
Prior to commencing this proceeding, when the Complainant demanded the Respondent such use be terminated and the disputed domain name transferred to it, the Respondent redirected the disputed domain name to its own commercial website, but did not transfer the disputed domain name to the Complainant. Instead, the Respondent contested the Complainant’s rights over the disputed domain name, offered this for sale to the Complainant “for a serious price” and registered another two domain names related to Complainant’s BÜBCHEN trademark, i.e., <bubchen.ch> (with the ccTLD corresponding to Switzerland, where Complainant is headquartered) and <bubchen.de> (as mentioned by the Respondent “Germany being the country where the BÜBCHEN products are manufactured”).
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its BÜBCHEN trademarks.
The Respondent has no rights or legitimate interests in the disputed domain name. In this regard, the Complainant states that in 2010 (terminated in March 2012), the associated company of the Complainant (Nestlé Deutschland AG) executed an agreement with the Respondent appointing the Respondent as its distributor in Romania. It also contends that such agreement did not contain any provision indicating that the Complainant granted to the Respondent the right to register and use a domain name corresponding to the BÜBCHEN trademark and although the commercial agreement was terminated, the Respondent was operating their e-shop under the disputed domain name and offering for sale a variety of products, not limited to Bübchen products.
Finally, the Complainant states that the Respondent registered and uses the disputed domain name in bad faith.
The Respondent contends that it was the authorized exclusive importer of BÜBCHEN branded goods in Romania between 1994 up to March 2013. The disputed domain name is used to sell only Bübchen products.
With regard to the registration of the disputed domain name, the Respondent alleges in the Response that it has registered the disputed domain name “with his knowledge and consent in 2006, as its exclusive importer for Romania”. In the correspondence between the Parties prior to commencing this proceeding, and provided as Annex 15 to the Complaint, the Respondent states that the Complainant “…neither agreed, nor did it prevent, when we (the Respondent) informed it of the idea that we wanted to use bubchen.ro to sell the Bübchen products. It did not insist on registering the domain name bubchen.ro itself either”. Further, in another letter, provided as Annex 17 to Complaint, the Respondent asserts that “We are the ones who initiated the use of the word Bubchen in Romania for the Bübchen products, without having asked or received your Client’s agreement, but not without having notified them on the fact that we intended to sell the Bübchen products through the bubchen.ro domain. The notification was tacitly accepted, without any official response.”
The Complainant’s mark is BÜBCHEN, particularly used and reproduced in Complainant’s domain names as “Buebchen”. Further, the Respondent asserted that it has registered the <bubchen.de> and <bubchen.ch> domain names particularly in order to demonstrate such assumption.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Further, the Panel shall further analyze the eventual concurrence of all these elements in the present case.
A. Language of the proceeding
Although the language of the Registration Agreement for the disputed domain name is Romanian and the Respondent requested that German or Romanian be the language of the proceeding, at the Complainant’s request and based on paragraph 11 of the Rules, the Panel hereby decides that the language of this proceeding be English particularly because the Respondent seems to be familiar with this language as the Response provided to the present Complaint is in English and two of the contracts between the Respondent and the Complainant’s associated companies are in English as well. As such, it is fair for both Parties to have the proceeding conducted in English, the Respondent is able to understand and communicate in such language and the Complainant is not bound to incur further costs with the translation of the relevant documents.
B. Identical or Confusingly Similar
The Complainant holds worldwide trademark registrations for the BÜBCHEN trademark.
The disputed domain name is very similar to the Complainant’s BÜBCHEN trademark, especially as the trademark contains the umlaut “ü” which is not generally used outside German speaking countries and therefore is frequently replaced in other languages by either “u” or “ue”. See FC Bayern München AG v. Peoples Net Services Ltd., WIPO Case No. D2003-0464; and Dürkopp Adler AG v. Mr. Yu, WIPO Case No. D2012-2433.
Accordingly, the Panel finds that the first element of the Policy is established, and the Complainant has proven that the disputed domain name is confusingly similar to its trademark, pursuant to the Policy, paragraph 4(a)(i).
C. Rights or Legitimate Interests
The Respondent was Complainant’s authorized distributor in Romania at the time it registered the disputed domain name.
The Complainant asserts that it has given no right to the Respondent to use its trademark otherwise than to advertise and sell the contract products, the fact that the Respondent was an authorized reseller of Complainant’s products is not itself sufficient to give Respondent the right to use Complainant’s trademark in a domain name.
The Respondent alleges that it has registered the disputed domain name with Complainant’s tacit consent and used it to sell Complainant’s Bübchen baby care products exclusively.
Accordingly, the key question under this element is whether the Respondent’s use of the disputed domain name for such resale amounts to a bona fide offering of goods under paragraph 4(c)(i) of the Policy. The current state of UDRP decisions in relation to this issue is helpfully summarized in the Paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) as follows:
“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to "corner the market" in domain names that reflect the trademark.”
This summary is based on UDRP decisions such as Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; and Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095.
From the evidence before it, the Panel finds that at least one condition that it outlines has clearly not been satisfied by the Respondent in this case: on the website corresponding to the disputed domain name, the Respondent was offering for sale other goods than Complainant’s Bübchen products and therefore it could be using the trademark to bait Internet users and then switch them to other goods. Also, the Complainant provided evidence that in the past, on the website corresponding to the disputed domain name, the Respondent has falsely presented itself as “Bübchen Romania” and displayed Complainant’s BÜBCHEN trademark and logo, thus generating a likelihood of confusion for the Internet users accessing the Respondent’s website regarding its relationship with the trademark owner, as it may, for example, falsely suggest that it is the trademark owner or an official site of the Complainant.
For all these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
D. Registered and Used in Bad Faith
The Complainants alleges that the Respondent has registered and is using the disputed domain name to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of said website.
The disputed domain name incorporates the Complainant’s trademark in its entirety and it was registered in 2006 when the Parties had a contractual distribution agreement. Accordingly, there is no doubt to the Panel that the Respondent was familiar with Complainant’s business and its trademark BÜBCHEN and registered the disputed domain name with this trademark in mind.
Since the disputed domain name was registered in 2006, when the Parties had an existing business agreement based on a distribution contract, such contract being further extended in 2010, the Panel must carefully analyze particularly the circumstance of bad faith registration.
The Respondent claims that it has registered the disputed domain name with the tacit consent of the Complainant, which did not respond to its letter regarding the registration of the disputed domain name.
However, the Respondent did not provide any evidence of such communication with the Complainant.
At the same time, the Complainant strongly denies any consent given to the Respondent to incorporate its BÜBCHEN trademark in a domain name.
Further, the Respondent asserts that the Complainant is not interested in securing its trademark BÜBCHEN on the Internet reproduced as “bubchen”, but more as “buebchen”. To “demonstrate” such theory, the Respondent further registered other domain names incorporating Complainant’s trademark BÜBCHEN, <bubchen.de> and <bubchen.ch> and offered these for sale to the Complainant. Such conduct also supports an inference of bad faith under the Policy.
This Panel agrees with the reasoning in the Houghton Mifflin Co. v. The Weathermen, Inc., WIPO Case No. D2001-0211, which states that“The fact that Complainant did not register the domain name at issue before Respondent is of no moment. Trademark owners are not required to stockpile multiple domain names to prevent bad faith registration and use. To consider conservative registration as evidence against a trademark owner would create perverse incentives for owners to register every conceivable domain name related to their marks, which would harm the interests in free expression and fair competition that inform the Policy.”
As discussed under Section C above, in the Panel’s view, the Respondent has not established rights or legitimate interests in the disputed domain name as a distributor of the Complainant’s products.
All the above indicates to the Panel that the disputed domain name was registered and used in bad faith most likely to capitalize on or otherwise take advantage of the Complainant’s trademark rights, through confusion. Historical captures of the Respondent’s website presented the Respondent as “Bübchen Romania” creating the impression to the Internet users that it is the Complainant’s official website, and the Respondent, in the Panel’s view, has failed to effectively or accurately disclose its relationship with the Complainant. In view of the foregoing, the Panel concludes that the Respondent registered and has used the disputed domain names in bad faith under paragraph 4(b)(iv) of the Policy, to intentionally attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship or affiliation. See Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319.
For all these reasons, the Panel finds that the third element of the Policy is established on the record in these proceedings, and accordingly that the disputed domain name was registered and is being used in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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 <bubchen.ro> be transferred to the Complainant.
Date: November 14, 2014