WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société des Produits Nestlé S.A. v. Mohsen Gholami

Case No. DIR2020-0003

1. The Parties

The Complainant is Société des Produits Nestlé S.A., Switzerland, represented Studio Barbero S.p.A., Italy.

The Respondent is Mohsen Gholami, Islamic Republic of Iran.

2. The Domain Name and Registrar

The disputed domain names <inestle.ir>, <nestlecenter.ir>, <nestleland.ir>, <nestlemarket.ir>, and <nestleshop.ir> are registered with IRNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2020. On April 28, 2020, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain names. On April 29, 2020, IRNIC 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 .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir 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 5, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2020. On May 27, 2020, the Center notified the Respondent’s default.

The Center appointed Tuukka Airaksinen as the sole panelist in this matter on June 4, 2020. 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 owner of the trademark NESTLÉ and figurative variations thereof. The Complainant’s trademark is registered in many countries worldwide, including in the Islamic Republic of Iran under number 43611, registered on September 10, 1975. The Complainant’s trademark is also included in several of its domain names, including <nestle.com> and <nestle.ir>.

The Complainant’s group of companies was originally founded in 1866 and today markets its products in over 190 countries, including the Islamic Republic of Iran where the Respondent is based. The Complainant’s group of companies has about 328,000 employees and had a turnover of CHF 89.8 billion in 2017.

The Complainant first sent a cease and desist letter to the Respondent on June 27, 2019, concerning the Respondent’s registration and use of the disputed domain name <nestlemarket.ir>, registered on December 25, 2017. The disputed domain name <nestlemarket.ir> resolved to a website where the Complainant’s figurative trademarks and official images featured prominently and NESTLÉ products were promoted and offered for sale. After the Complainant’s cease and desist letter, the website was modified by removing the NESTLÉ trademark and products and promoting third-parties’ items. In reply to the Complainant’s cease and desist letter, the Respondent registered the other four disputed domain names (on September 21, 2019 and January 17, 2020, respectively), and proposed to transfer the disputed domain names to the Complainant for the sum of USD 6,000.

More recently, the disputed domain names were redirecting to “www.banoopaz.ir” where third-party goods were promoted. Currently, none of the disputed domain names resolve to any active websites.

5. Parties’ Contentions

A. Complainant

The disputed domain names include the Complainant’s trademark in its entirety combined with non-distinctive elements “market”, “i”, “center”, “land” and “shop”. These generic additions do not remove the similarity of the disputed domain names with the Complainant’s trademark, but instead increase the confusion with it.

The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not commonly known by the disputed domain names, they are not used for the bona fide offering of goods or services and the Respondent is not making any legitimate or noncommercial fair use of the disputed domain names. The Complainant has not authorized the Respondent to register the disputed domain names.

The disputed domain name <nestlemarket.ir> has been directed to a commercial website where, in the absence of any disclaimer and failing to disclose the Respondent’s real name, the Complainant’s trademarks and official images are featured prominently and unauthorized products bearing the Complainant’s trademark are promoted and offered for sale together with third parties’ products. Following the Complainant’s cease and desist letter, the four additional disputed domain names were registered by the Respondent and all disputed domain names started redirecting to “www.banoopaz.ir” where third-party goods were promoted. Currently, the disputed domain names do not resolve to any active websites.

The Complainant’s trademark is well-known all over the world, which has been recognized by many previous UDRP panels, and is registered extensively around the world, including in the Islamic Republic of Iran. The Respondent must have been aware of the Complainant’s trademark when registering the disputed domain name <nestlemarket.ir> and the other disputed domain names were registered by the Respondent only after he was put on formal notice of the Complainant’s trademark rights.

The disputed domain names were used in connection with a website publishing the Complainant’s trademark and offering for sale or promoting unauthorized products bearing the Complainant’s trademark. This demonstrates that the disputed domain names were used to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating likelihood of confusion with the Complainant’s trademark.

The disputed domain names were also offered for sale to the Complainant for the amount of USD 6,000, which is clearly in excess of the Respondent’s documented out-of-pocket costs related with the registration of the disputed domain names.

The disputed domain names also prevents the Complainant from reflecting its trademark in corresponding domain names and The Complainant also requests the Panel to find that the Respondent has engaged in a pattern of such conduct, in accordance with paragraph 4(b)(ii) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith.

The Panel agrees with the views of panels in previous decisions issued under the irDRP that, given the similarities between the irDRP and the UDRP (upon which the irDRP is based), it is appropriate to refer to UDRP jurisprudence, including reference to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). See Inter IKEA Systems BV (IISBV) v. Mohammadreza Mohammadian, WIPO Case No. DIR2018-0003.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain names are identical or confusingly similar to this trademark.

All the disputed domain names include the Complainant’s trademark in its entirety combined with non-distinctive words or a letter – “market”, “i”, “center”, “land”, and “shop”. It is well-established practice that the addition of non-distinctive elements to a trademark does not remove similarity with that trademark and the addition of such terms does not prevent the finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0.

Accordingly, the Panel finds that the disputed domains name are confusingly similar to the Complainant’s respective trademark and hence the first element of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain names.

It is widely accepted among UDRP panels that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 and section 2.1 of WIPO Overview 3.0.

The Complainant has credibly submitted that the Respondent is neither affiliated with the Complainant in any way nor has he been authorized by the Complainant to use and register the disputed domain names, that the Respondent has no prior rights or legitimate interests in the disputed domain names, and that the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain names and is not commonly known by the disputed domain names in accordance with paragraph 4(c)(ii) of the Policy.

The disputed domain name <nestlemarket.ir> resolved to a website offering the Complainant’s unauthorized products and also products of third parties. The disputed domain name <nestlemarket.ir> therefore created the impression that the website concerned offers the Complainant’s products, without the Respondent being an authorized representative or affiliated in any way with the Complainant. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”). The Respondent’s website fails the Oki Data test in two aspects: it does not prominently disclose the Respondent’s relationship with the Complainant as there is no disclaimer at all; and the Respondent does not use the website to sell only the Complainant’s goods – several of the Complainant’s competitors are mentioned and some of their goods are offered for sale on the Respondent’s website.

In addition, after the Respondent was put on formal notice of the Complainant’s rights, he registered the other four disputed domain names (namely <inestle.ir>, <nestlecenter.ir>, <nestleland.ir>, and<nestleshop.ir>) and all the disputed domain names redirected to “www.banoopaz.ir”, where third-party goods were promoted. There was no disclaimer on those websites either and the latter use of the disputed domain names similarly would not support a claim to rights or legitimate interests.

Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Considering the Panel’s findings below, the Panel finds that there are no other circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain names. Therefore, the Panel finds that the second element of the Policy is fulfilled.

C. Registered or Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain names have been registered or are being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that [the Respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that the 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 or competitor; or

(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other online 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 Complainant has submitted that its trademark is well-known and this fame is so well-known that it cannot be reasonably contested. See Société des Produits Nestlé SA v. Kayvan Sadeghi, WIPO Case No. DIR2007-0002 (<nestle.ir>). The Panel agrees that the Complainant’s trademark is well-known. Hence, and considering that the Respondent has offered for sale the Complainant’s goods, the Panel finds that the Respondent must have been aware of the Complainant’s trademark when registering the disputed domain name <nestlemarket.ir>.

The other disputed domain names have been registered after the Respondent was put on notice of the Complainant’s rights. It is evident that the Respondent had actual knowledge of the Complainant’s rights when registering the disputed domain names <inestle.ir>, <nestlecenter.ir>, <nestleland.ir>, and <nestleshop.ir>.

The disputed domain name <nestlemarket.ir> had been used to offer the Complainant’s goods and the goods of third parties. This means that the disputed domain name was used to attract, for commercial gain, Internet users to the Respondent’s website by creating confusion with the Complainant trademark in accordance with paragraph 4(b)(iv) of the Policy. After the Respondent was put on formal notice of the Complainant’s rights, he registered the other four disputed domain names and all the disputed domain names redirected to “www.banoopaz.ir”, where third-party goods were promoted.

The Respondent has offered to transfer the disputed domain names to the Complainant for the amount of USD 6,000. This clearly exceeds the Respondent’s out of pocket costs related to the registration of five domain names and hence is evidence of registration and use in bad faith in accordance with paragraph 4(b)(i) of the Policy.

Such conduct, as the described above, clearly demonstrates that the Respondent did not intend to use the disputed domain names in connection with any legitimate or bona fide purpose. The current apparently inactive use of the disputed domain names does not change the Panel’s findings.

The Panel also finds that by registering five domain names that are confusingly similar to the Complainant’s trademark, to which the Respondent has no rights or legitimate interests, and which have been registered and are being used in bad faith constitutes a pattern of such abusive conduct in accordance with paragraph 4(b)(i) and (ii) of the Policy and that the Respondent has registered the disputed domain names in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name.

Hence, the Panel finds that the disputed domain names were registered and are being used in bad faith. Therefore, the Panel finds that the third element of the Policy is fulfilled.

7. Decision

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 names <inestle.ir>, <nestlecenter.ir>, <nestleland.ir>, <nestlemarket.ir>, and <nestleshop.ir> be transferred to the Complainant.

Tuukka Airaksinen
Sole Panelist
Date: June 18, 2020