WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société des Produits Nestlé S.A. v. Cess De Los Reyes

Case No. D2011-0020

1. The Parties

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

The Respondent is Cess De Los Reyes of Boracay Island, Malay, Aklan, the Republic of the Philippines.

2. The Domain Names and Registrars

The disputed domain names <nespressoboracay.com> and <nespressophilippines.com> are registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2011. On January 6, 2011, the Center transmitted by email to GoDaddy.com, Inc a request for registrar verification in connection with the disputed domain names. On January 6, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain names.

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 January 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 2, 1011.

The Center appointed Derek M. Minus as the sole panelist in this matter on February 4, 2011. 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, Nestlé SA, is a Swiss limited liability company founded in 1866 by Henri Nestlé which today sells products and services all over the world in various industries, primarily the food industry, including coffee products, baby foods, breakfast cereals, chocolate & confectionery, beverages, bottled water, dairy products, ice cream, prepared foods, and food services. In particular, the Complainant is well known for producing and distributing coffee under its brand names NESPRESSO and NESCAFE.

The Complainant has over 283,000 employees and is the world’s largest food consumer products company in terms of sales, marketing its products in over 200 countries. According to Fortune Magazine’s “Fortune Global 500”, an annual ranking of the world’s 500 largest companies, the Complainant was in 2010, the 44th biggest company in the world.

Over the last twenty years, the Complainant has developed a fully-integrated product and services line for the preparation of coffee, targeting the higher end of the consumer and professional market which it has promoted under the NESPRESSO and NESPRESSO SYSTEM brands. The Complainant and its subsidiaries own several hundred patents in relation to the manufacture of coffee, coffee-related products, and coffee machines that are incorporated in the Nespresso products and services.

These products are promoted under the NESPRESSO trademark. The Complainant operates up-market Nespresso shops in major metropolitan cities across the world to promote its NESPRESSO brand and where its customers can purchase Nespresso products and services. It publishes a Nespresso magazine to provide its customers with related news and information and which regularly promotes the Complainant. The Complainant also uses the Internet in the marketing of NESPRESSO products as customers are encouraged to purchase the related products online for home delivery. The Complainant operates the website “www.nespresso.com” as its primary web portal for global promotion. It has also registered well over 200 distinct domain names that incorporate the NESPRESSO trademark in numerous gTLDs and ccTLDs.

The Complainant is the owner of over 100,000 international and national trademark registrations worldwide. Of particular importance are the Trademarks for “NESPRESSO” and its unique stylized mark held by the Complainant Internationally and in the Philippines, including the following:

Specifically, in the Philippines, the Complainant holds registrations for the NESPRESSO trademark for: coffee and coffee extracts, electric coffee pots and percolators and their spare parts, coffee and coffee extracts, electric coffee grinders, machines for extracting coffee, i.e., extraction cells, coffee machines, non-electric coffee grinders, non-electric coffee pots and percolators and their spare parts, automatic coffee and coffee capsule dispensing machines, filters and capsules containing coffee.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that:

The Respondent registered the disputed domain names on March 8, 2010 without the Complainant’s authorization, and the disputed domain names currently direct users to web pages published by the Respondent.

The Complainant’s legal representative sent a letter on May 26, 2010 by email and registered mail to the known address of Kidd Keifer, the Administrative Contact indicated in the WhoIs database at the time, requesting the transfer of the disputed domain names. On June 23, 2010, subsequent WhoIs database monitoring by the Complainant’s legal representative revealed that the Respondent had edited the WhoIs information, substituting the Respondent, Cess De Los Reyes for Kidd Kiefer.

A comparison of the old and new WhoIs database reports reveals that the physical location of both entities remains on the island of Boracay in the Philippines and that the Registrant’s telephone number remained the same, with the only exception being a change in the extension. Neither Mr. Keifer nor the Respondent responded to the Complainant “cease and desist” letter requesting it to transfer the disputed domain names to the Complainant.

The content published on the websites corresponding to the disputed domain names remained unchanged.

(a) The disputed domain names <nespressoboracay.com> and <nespressophilippines.com> are confusingly similar to the names and trademarks in which the Complainant has extensive rights. Each of the disputed domain names includes the Complainant’s NESPRESSO trademark, which it has registered both internationally and in the Philippines.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain names.

(c) The disputed domain names were registered and are being used in bad faith.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving, on the balance of probabilities, each of the following three elements:

(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant holds rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith by the Respondent.

As the Respondent did not file a Response or otherwise reply to the Complainant’s contentions, the Panel shall decide the Complaint on the basis of the Complainant’s submissions and such inferences that can be reasonably drawn from the failure to submit a Response as the Panel considers applicable (Rules, paragraph 14(b)).

A. Identical or Confusingly Similar

The Panel finds that the Complainant is the owner of the trademark NESPRESSO both by extensive registration and reputation, to the extent that it can legitimately claim NESPRESSO to be a well-known mark.

The Complainant submits that the disputed domain names are confusingly similar to the names and trademarks in which the Complainant has extensive rights. Here, the disputed domain names <nespressophilippines.com> and <nespressoboracay.com> both incorporate the Complainant’s NESPRESSO trademark but add separate geographic identifiers for the “Philippines” and “Boracay” (the name of a small resort island in the Philippines’ archipelago) with the top level “.com” identifier at the end.

Whether a domain name that incorporates a Complainant’s trademark together with a prefix or suffix is confusingly similar to the trademark has been considered in a number of UDRP decisions. It has been held that a domain name consisting of the Complainant’s trademark and ending with the “.com” gTLD is confusingly similar to the Complainant’s trademark (see Sanofi-Aventis v. The Counsel Group, LLC, WIPO Case No. D2005-0650).

The incorporation of a trademark in its entirety has been held to be sufficient to establish that a domain name is identical or confusingly similar to a Complainant’s registered trademark (see Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201). It was decided by the panel in Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525, that “when a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy”.

The incorporation of a trademark in its entirety, followed by a common term can be sufficient to establish that a domain name is identical or confusingly similar to a trademark, see PepsiCo, Inc v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696. Several cases under the UDRP indicate this is the same whether the common term is a geographical location.

In Port of Helsinki v. Paragon International Products Ltd, WIPO Case No. D2001-0002, the panel found that the Complainant had established no trademark. It had merely a geographical indication.

In Brisbane City Council v. Warren Bolting Consulting Pty Ltd, WIPO Case No. D2001-0047, the statutorily established body for the governance of the City of Brisbane failed to establish that it had a right to have the domain name <brisbanecity.com> transferred to it. The panel defined the issue to be determined as, whether “an unregistered mark that is a geographical location … is indeed performing the function of a trademark – that is to say, whether the unregistered mark is distinguishing the goods or services of the Complainant in trade from the goods or services of any other person in trade”. It held that “the evidence on the record is not sufficient to persuade this Administrative Panel that the unregistered mark BRISBANE CITY is performing the function of a trademark and so is a trademark for the purposes of the Uniform Policy”.

Merely adding a country (or regional) name and the top-level gTLD “.com” at the end, would similarly not be sufficient to create a distinctive domain name, and does not distinguish the disputed domain names from the Complainant’s trademark.

In Société des Produits Nestlé SA v. Peter Carrington, c/o Party Night Inc., WIPO Case No. D2002-0954 it was held with respect to the domain name <nestleusa.com> that:

[A]nyone with any knowledge of the Internet accessing the website would be reasonably likely to regard the domain name in dispute as being equivalent to “Nestle’s USA” in standard written English. The name Nestle is clearly the dominant element of the domain name. The Panel has had little difficulty in finding that the domain name is confusingly similar to the trademark NESTLE, as the additional elements are, in a trademark sense, banal.

The panel in Société des Produits Nestlé S.A. (“Nestlé SA”). v. Transure Enterprise Ltd., WIPO Case No. D2009-1666 reached a similar conclusion, in regard to the geographic indicator used in the domain name <wwwnestleusa.com> finding that:

The domain name <wwwnestleusa.com> is confusingly similar to the Complainant’s mark NESTLE. The addition of the geographical designation “usa” and the generic top-level domain suffix “.com” does not change this finding. These elements are insufficient to distinguish the Domain Name as referring to an entity other than the Complainant.

In Patties Foods Limited v. Studio Support, Peter Lock, Ian Cameron, WIPO Case No. D2009-0930 the panel was dealing with the iconic Australian brand (Four’n Twenty) for the marketing of meat pies. It found that the Domain Name <fourntwentyusa.com> was identical to the Complainant’s mark apart from the addition of the geographical designation “usa” and the generic top-level domain suffix. The panel held that, “[t]hese elements are insufficient to distinguish the Domain Name as referring to an entity other than the Complainant. On the contrary, many Internet users would suppose that this Domain Name had been registered by the Complainant or an affiliate of the Complainant to promote its business in the USA.” Likewise, it can be inferred that Internet users would conclude that the disputed domain names had been registered by the Complainant to promote its business in the Philippines and Borocay. The Panel finds that the NESPRESSO mark is the distinctive part of the disputed domain dames and the additional generic terms do not diminish the confusing similarity between the disputed domain names and the Complainant’s trademarks.

The disputed domain names are confusingly similar to the Complainant’s registered trademark in which the Complainant has rights, as neither the addition of the geographic words “careers” nor the gTLD “.com” nor both together, are sufficient to prevent confusion with the Complainant’s unique registered NESPRESSO trademark. Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain names. Paragraph 4(c) of the Policy provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name, as follows:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent is not a licensee or authorized agent of the Complainant or in any way authorized to use the Complainant’s trademark NESPRESSO. As was stated in Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134 “mere registration [of a domain name] does not establish rights or legitimate interests in the disputed domain name”.

The Complainant is not in possession of, nor has the Respondent provided the Complainant with any evidence demonstrating that the Respondent might be commonly known by either of the disputed domain names as an individual, business, or other organization, or that NESPRESSO is the family name of the Respondent.

According to the submissions of the Complainant, at all relevant times the disputed domain names pointed to websites that did not demonstrate or advance any legitimate interests the Respondent might have. The domain name <nespressophilippines.com> directed users to a website unrelated to NESPRESSO, displaying an “off-color” joke. Also published on the website is the link “Click here see the most crazy kicking ass video” which directs users to the website published at <nespressoboracay.com>. On this site copyright material belonging to Complainant was published, including images of the Complainant’s NESPRESSO product and its stylized NESPRESSO logo, which together gave the impression that the site was an official NESPRESSO site.

As identified above, the Complainant holds registrations in the Philippines under the NESPRESSO trademark for an array of coffee-related products. Images of those identical products are featured on the website to which the disputed domain name <nespressoboracay.com> is directed.

There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. There is no evidence that the Respondent is making legitimate, noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark. Rather, the use of the Complainant’s copyright material incorporated into the Respondent’s website precludes the assessment of it making a bona fide offering of goods or services or a legitimate noncommercial, or fair use, of the disputed domain names. The Panel therefore finds that the Complainant has made a prima facie case of the Respondent’s lack of rights to or legitimate interests in the disputed domain names.

Given that the Complainant has satisfactorily made out a prima facie case that the Respondent lacks rights or legitimate interests, the burden is on the Respondent to establish its right or legitimate interest in the disputed domain names (see PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174). The Respondent has not demonstrated or established any such right or legitimate interest.

The Respondent has not provided evidence of circumstances illustrated by paragraph 4(c) of the Policy, or any other circumstances evidencing any rights to or legitimate interests in the disputed domain names. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances, which “in particular but without limitation”, shall be evidence of the registration and use of a domain name in bad faith. These four circumstances, which are framed in the alternative are:

(i) circumstances indicating that you have registered or you have 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 complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.

The list of four circumstances set out in paragraph 4(b) of the Policy, which are deemed to indicate bad faith, are expressly non-exclusive.

The NESPRESSO trademark is in global use and predates the Respondent’s recent registration of the Domain Names. It is therefore highly unlikely that the Respondent was unaware of the Complainant’s trademark when it registered the disputed domain names. The registration of the disputed domain names by the Respondent without authorization is evidence of its bad faith registration, see Heineken Brouwerijen B.V. v. Mark Lott, WIPO Case No. D2000-1487 (where the panel found that the international fame of a trademark precludes innocent registration of a confusingly similar domain name).

In Société Des Produits Nestlé SA v. Kayvan Sadeghi, WIPO Case No. DIR2007-0002, dealing with the domain name <nestle.ir>, the panel found that “[e]ven without evidence of the Complainant’s registered rights, it is apparent that the Complainant’s mark is so famous that, as such, a Panel could legitimately take the equivalent of ‘judicial notice’ of that fact. Judicial notice is a rule of evidence that allows a matter to be taken as proven, because it is so well-known that it cannot reasonably be contested.”

The Respondent used the disputed domain name <nespressoboracay.com> to access a website on which the Complainant’s copyrighted images of the Nespresso coffee capsule products and the statement “The art of espresso” are published. The trademarked NESPRESSO logo is used as background art on that website which gives the overriding impression that the website has been established by the Complainant to promote its products. The disputed domain name <nespressophilippines.com> contained links that encourage the visitor to “click through” and which redirects them to the “www.nespressoboracay.com” site where the NESPRESSO trademarks and copyrighted images are displayed.

The Panel finds that the Respondent has intentionally attempted to attract Internet users to its websites by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its websites.

Furthermore, as stated in Kelley Blue Book Company, Inc. v. Nikolay Golovin aka Buy-movie.net, WIPO Case No. D2005-0837 “[e]ven if the Panel is not convinced that the texts posted on Respondent’s web site directly infringe on Complainant’s copyrighted web content, it is satisfied that such content leads Internet users into confusion. Because the disputed domain name is almost identical to Complainant’s mark, users searching for Complainant’s web site and inadvertently misspelling ‘Kelley’ may connect to Respondent’s web site, and after seeing its content, they may believe that it is Complainant’s web site. The resulting confusion provides a ground for a finding of bad faith use.”

The Panel accepts that the disputed domain names were registered and are being used in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

7. Decision

For all 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, <nespressoboracay.com> and <nespressophilippines.com> be transferred to the Complainant.

Derek M. Minus
Sole Panelist
Dated: February 18, 2011