WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Société des Produits Nestlé SA v. Stuart Cook

Case No. D2002-0118

Complainant is Société des Produits Nestlé SA, a corporation organised and existing under the laws of Switzerland.

Respondent is Mr. Stuart Cook, London, England, United Kingdom.

The domain names at issue are <nestle-purina.com>, <nestle-purina.net>, <nestle-purina.org> and <nestlepurina.net>.

The registrars are GKC.NET, INC., and Easyspace Ltd.

A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") in hard copy on February 5, 2002, and subsequently in electronic format on February 11, 2002. The WIPO Center sent an Acknowledgement of Receipt to the Complainant on February 6, 2002.

The Respondent contacted the WIPO Center via e-mail and expressed his surprise that the Complaint had been filed, since he had offered to sell the domain names to the Complainant. The WIPO Center referred the Respondent to file a formal Response in accordance with the Policy and the Rules.

On February 11, 2002, a Request for Registrar Verification was transmitted to the Registrar mentioned in the Complaint, GKC.NET, who the next day informed the WIPO Center that they were only the Registrar of the domain names <nestle-purina.com> and <nestlepurina.net>. The Registrar later forwarded the requested WHOIS details.

The WIPO Center informed the Complainant of this deficiency on February 12, 2002, and the Complaint was subsequently amended with the name of the Registrar for the two other contested domain names, Easyspace Ltd.

On February 13, 2002, a Request for Registrar Verification was transmitted to Easyspace Ltd., who the next day provided the WIPO Center with the necessary verification details.

A Formal Requirements Compliance Checklist was completed by the assigned WIPO Center Case Administrator on February 14, 2002. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules").

The fees for a single-member Panel were paid on time and in the required amount by the Complainant.

All formal deficiencies having been cured, on February 14, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent by the required means, setting a deadline of March 6, 2002, by which the Respondent could file a Response to the Complaint.

On March 14, 2002, having received no Response from the designated Respondent, the WIPO Center transmitted to the parties a Notification of Respondent Default.

In view of the Complainant’s designation of a single Panelist (but without prejudice to any election to be made by the Respondent) the WIPO Center invited Knud Wallberg to serve as a Panelist in the Case, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.

Having received Knud Wallberg’s Statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted on March 28, 2002, to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Knud Wallberg was formally appointed as the Sole Panelist. The Projected Decision Date was April 12, 2002. Due to some administrative problems, the decision was issued on April 15, 2002.

The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.

The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Uniform Rules, the WIPO Supplemental Rules, but without the benefit of a Response from the Respondent.

Complainant's Business and Website

Complainant is a leading manufacturing company in the area of food, including confectionery and beverages. With a total workforce of approximately 224,541 people and some 479 factories worldwide, Nestlé is not only Switzerland's largest company, but it is also the world's largest food company.

Complainant operates a website under the domain name <nestle.com>. This is a promotional website which is primarily designed to attract possible customers of Nestlé's products, and to allow the public to obtain information about the Complainant's worldwide business. The website "www.nestle.com" has become a very well known and frequently visited website.

This Complaint is based on the Complainant's rights in the following trademarks:

The Complainant is the owner of a broad range of trademark registrations worldwide for NESTLE, alone or in combination with other word and/or device elements. Full list of all current trademark registrations and applications for NESTLE (with or without additional elements) in the United Kingdom were attached as Annex 3.

NESTLE is a famous trademark. It enjoys a worldwide reputation and goodwill as one of the leading manufacturers of food. Complainant uses its housemark NESTLE for food products in more or less all of the countries worldwide.

PURINA is a well-known trademark for pet food and is owned by Nestlé Purina PetCare Company, formerly by change of name Ralston-Purina Co., St. Louis, Missouri, USA. Complainant has acquired Ralston-Purina Co. for more than € 10 billion in January 2001. Complainant therefore effectively controls Ralston-Purina Co. and its intellectual property assets in form of trademarks, even though title to these trademark rights has not been transferred to Complainant but is with Complainant's subsidiary Ralston-Purina Co.

Ralston-Purina Co. does not join in this UDRP Complaint but it explicitly agrees to and supports Complainant's action, cf. Annex 4.

The four domain names concerned commence with the famous trademark NESTLE and end with the well known trademark PURINA, which belongs to a subsidiary of the Complainant.

In WIPO Case No. D2000-0433Time Warner Inc. and EMI Group plc v. CPIC Net, CPIC had registered five different combinations of the trademarks WARNER and EMI following the first press announcement of the merger of these two companies. The Panelist found that the dissimilarities in the registered domain names did not preclude finding likelihood of confusion and the overall impression left suggested the names belonged to the Complainants and would inevitably result in confusion.

It is clear from the above that Respondent has registered the domain names, which are confusingly similar with Complainant's trademarks.

It becomes clear from the above that Respondent does not have any rights or legitimate interest in respect of the domain names <nestle-purina.com>, <nestle-purina.net>, <nestle-purina.org> and <nestlepurina.net>. NESTLE is a famous mark, and Respondent is evidently and has always been aware that the domain names <nestle-purina.com>, <nestle-purina.net>, <nestle-purina.org> and <nestlepurina.net> correspond to this trademark. A person or company would not register the relevant domain names if it had not known that Nestlé is one of the world's leading food companies which has acquired one of the world's largest pet food manufacturers called Ralston-PURINA. Neither the Complainant nor its subsidiary Ralston-Purina have given their consent to the Respondent to use its trademark and tradename. Respondent has nothing to do with Complainant or Complainant's business, and there are absolutely no indications whatsoever that Respondent would have rights or legitimate interests in respect of the domain names.

In December 2001, Complainant became aware that the Respondent, Stuart Cook, has registered the four domain names <nestle-purina.com>, <nestle-purina.net>, <nestle-purina.org> and <nestlepurina.net>. Any person going to these sites does not find any information about Nestlé or about food manufactured by Nestlé, but is rather a website of a third party which in all likelihood seeks to exploit the goodwill and notoriety which is attached to the trademark NESTLE and the trademark PURINA.

Immediately after having discovered that a combination of its famous trademark NESTLE and the well-known trademark PURINA of its subsidiary Ralston-Purina Co. was used as a domain name of a third party’s website, Complainant's Authorized Representative sent a demand letter to Respondent. A copy was attached as Annex 6. Complainant's Representative has not yet received any answer to this letter. Respondent is responsible for the website under construction under the domain names <nestle-purina.com>, <nestle-purina.net>, <nestle-purina.org> and <nestlepurina.net>. Respondent is aware that Complainant's website "nestle.com" enjoys great popularity among many consumers of Nestlé food products and others interested in information about Nestlé, such as potential investors, people looking for professional opportunities, journalists and many others. Respondent intends to exploit the fame and goodwill of the Nestlé and PURINA trademarks by diverting Internet traffic intended for Complainant to its website. It is clear that this causes great and irreparable harm to Complainant and its trademark as some of the individuals who are going to the website "nestle-purina.com", "nestle-purina.net", "nestle-purina.org" and "nestlepurina.net" could assume that there is some kind of relationship between the Complainant and the Respondent. It is, therefore, a typical case of domain name squatting and which causes substantial harm to the Complainant.

In the case L’Air Liquide v. MIC,WIPO Case No. D2001-1246 which concerned a domain name consisting of a combination of "airliquide" and "suez" to <suezairliquide.com>, the Respondent had also registered the domain name because of merger discussions between the two companies Air Liquide and Suez Lyonnaise Des Eaux. There had been considerable publicity around these discussions, which however did not result in a merger. In that case, the Administrative Panel has decided the registration showed a pattern of conduct aiming at unduly exploiting the commercial value of the domain name. The Panel found that on the evidence of prior WIPO proceedings, such a domain name registration has been made in order to prevent the owner of the trademark from reflecting the trademark in a corresponding domain name. As in that case, the Respondent's bad faith is absolutely evident and manifest.

As mentioned above in section 3, the Respondent has not filed a Response in accordance with the Rules, Paragraph 5 and regrettably no other information on or by the Respondent has been presented to the Panel.

According to Paragraph 15(a) of the Rules the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

1)that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

2)that the Respondent has no legitimate interests in respects of the domain name; and

3)that the domain name has been registered and used in bad faith.

The contested domain names contains a combination of the registered trademark NESTLE with the addition of PURINA, which is one of the dominant and distinctive parts of the tradename of the company Ralston Purina. No proof has been put before the Panel as to whether PURINA in itself is a registered trademark but on the other hand there are clear and uncontested information that the name has been used as trade name or trademark in the USA for a number of years.

Although the combination of the two signs is not registered or used as a trademark, the contested domain names must nevertheless be considered confusingly similar to the marks in which the Complainant has rights. This is in particular true as far as the mark NESTLE is concerned since this mark is included in its entirety as the first and dominant part of the domain names. Reference is made to those previous cases mentioned in the Complaint and to WIPO Case No.D2000-0135 <maersksealand.com> et al.

The prerequisites in the Policy, Paragraph 4(a)(i) are therefore fulfilled.

The Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating the mark.

Before the actual business transaction took place, the idea of putting the two names together would have been far-fetched. It is therefore not credible that the Respondent registered the contested domain names without knowledge of the transaction. The Panel finds the Respondent did have such knowledge.

That knowledge would not, of itself, necessarily lead to the conclusion that the Respondent has no legitimate interest in the names. However, the Respondent has not been and even today does not seem involved in any business using those domain names. It has offered no evidence of the kind contemplated by paragraphs 4 (c) (i), (ii) or (iii) of the Policy to demonstrate its rights or legitimate interest in the domain names.

Consequently, the Respondent has not demonstrated that he has any prior rights or legitimate interests in the domain name, and it seems very unlikely that such interest could be demonstrated.

The prerequisites in the Policy, Paragraph 4(a)(ii), cf. 4 (c) are also considered fulfilled.

Paragraph 4(a)(iii) of the Policy further provides registration and use in bad faith. Paragraph 4(b) regulates, by way of example, the kind of evidence that is required.

The trademark NESTLE is registered in many countries around the world including in the country of residence of the Respondent, England. In addition, the mark must be considered world famous. The Panel finds that Complainant has proved that the merger between the two companies was widely publicised also in England before the date of the registration of the domain names. The Panel, therefore, finds that it is unlikely that the Respondent did not know of the said merger and of the two dominant housemarks when he registered the domain names. The registration of the domain names must be considered done in bad faith.

Also, the fact that Respondent hold "passive" websites under the contested domain names gives the wrong impression to the users of the Internet, that the new company does not have a current presence on this media, a behaviour that is able to create confusion on the market and that prevents the Complainant from reflecting the natural combination of the marks in a corresponding domain name.

With regard to the present case, it is also important to state that the mere holding of a domain name that is identical or confusingly similar to a trademark belonging to someone else, in itself can be considered disrupting to the business of the rightholder. The Panel agrees that it is within the scope of the rights conferred to a trademark to regard "passive use" as "use", cf. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and several other subsequent decisions.

Bearing these facts and the above arguments in mind, the Panel finds that the domain names have been registered and are being used in bad faith, cf. Paragraph 4(a)iii and 4(b) of the Policy.

Consequently, all the prerequisites for cancellation or transfer of the domain names according to Paragraph 4(a) of the Policy are fulfilled.

The Complainant has requested the transfer of the domain names.

In view of the above circumstances and facts the Panel decides, that the domain names registered by Respondent are identical or confusingly similar to the trademarks in which the Complainant has rights, that the Respondent has not shown to have any rights or legitimate interests in respect of the domain names, and that the Respondent’s domain names have been registered and are being used in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names <nestle-purina.com>, <nestle-purina.net>, <nestle-purina.org> and <nestlepurina.net> be transferred to the Complainant.