Complainant is Société des Produits Nestlé SA, Vevey, Switzerland, represented by Studio Barbero, Italy.
Respondent is Meechai RJ, Bangkok, Thailand.
2. The Domain Name and Registrar
The disputed domain name <nesvita.com> is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2008. On July 7, 2008, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On July 7, 2008, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response, confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 Respondent of the Complaint, and the proceedings commenced on July 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 31, 2008.
The Center appointed Gregory N. Albright as the sole panelist in this matter on August 19, 2008. 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.
On September 3, 2008, the Panel issued Procedural Order No. 1, which requested additional information from Complainant and gave Respondent an opportunity to file a reply.
4. Factual Background
Complainant is an international seller of products and services in the food industry among others.
Complainant has submitted evidence that it is the owner of numerous trademark registrations for the mark NESVITA, including the following:
- April 12, 1984 Swiss registration No. 337052 in classes 5, 29, 30, and 32, renewed on April 12, 2004;
- September 21, 2001 Swiss registration No. 493677 in classes 5, 29, 30, and 32;
- January 11, 2002 international registration No. 777640 in classes 5, 29, 30, and 32;
- March 20, 2003 community registration No. 2391340 in classes 5, 29, 30, and 32;
- January 24, 1996 Thai registration No. 56740 in class 5;
- January 24, 1996 Thai registration No. 54548 in class 29;
- January 24, 1996 Thai registration No. 54576 in class 30; and
- January 24, 1996 Thai registration No. 53613 in class 32.
Respondent registered the disputed domain name <nesvita.com> on May 2, 2001.
5. Parties’ Contentions
A. Complainant
A. 1. Background
Complainant is a Swiss company founded in 1866 by Henri Nestlé. Complainant sells products and services all over the world in the food industry, including baby foods, breakfast cereals, chocolate and confectionery, beverages, bottled water, dairy products, ice cream, prepared foods, and food services. Complainant is also active in the pharmaceutical and pet-care industries. Complainant has over 250,000 employees and more than 470 factories around the world.
The NESVITA brand is a range of wellness products that includes NESVITA Cereal Milk Drink, a healthy combination of wheat and milk filled with calcium and fiber for a healthy breakfast; NESVITA Pro-Heart which has Acticol that helps lower bad cholesterol; NESVITA Pro-Digestion, a delicious non-fat milk with Actifibras, soluble dietary fiber that helps cleanse the digestive system; NESVITA Pro-Bone Protection, a high-calcium non-fat milk wit Calci-Lock that helps lock calcium in your bones to keep them healthy; and NESVITA Pro-Weight Management, a delicious non-fat milk for a fit, healthier body.
Complainant has used the NESVITA mark in many countries around the world, including Thailand where Respondent is based, for over twelve years in connection with health and wellness products. As discussed above in Section 4, Complainant has obtained a number of registrations of the NESVITA mark around the world. In reply to the Panel’s September 3, 2008 Order, Complainant submitted copies of four January 24, 1996 registrations of the NESVITA mark in Thailand, in classes 5, 29, 30, and 32.
Complainant has also registered several domain names that include “nesvita”, including <nesvita.co.th>, to promote the products and services that Complainant offers under the NESVITA mark. Complainant has invested a substantial amount of time and resources to promoting and advertising products and services in connection with the NESVITA mark. In particular, Complainant has spent millions of dollars advertising on such advertising in Thailand since 2003.
In 1996, Complainant adopted the NESVITA mark for a cereal beverage previously marketed under the Carnation brand. Since 1996, Complainant has pursued an intensive media plan to promote the new NESVITA brand, including advertisements on national television. Complainant has spent substantial sums on advertising in Thailand since at least 1996.
Complainant did not authorize Respondent to register the domain name <nesvita.com>. At the time of the Complaint, traffic to <nesvita.com> was redirected to a website where Internet users could find a number of sponsored links to wellness and fitness content websites, including sponsored links to the websites of Complainant’s competitors. By Complainant’s definition, a “sponsored link” is generating revenues for the registrar and/or for the domain name holder.
The disputed domain name was also offered for sale on the home page of the website linked to the domain name. Complainant attempted to contact Respondent by email and requested a transfer of the disputed domain name, but did not receive a response.
A.2. Identical or Confusingly Similar
The disputed domain name is identical to trademarks in which Complainant has rights. The NESVITA mark is strongly distinctive and does not have any meaning in any language. Thus, Respondent’s use of an identical word for the disputed domain name is evidence of Respondent’s use of the domain name in bad faith to profit from Complainant’s reputation.
Respondent’s domain name <nesvita.com> is also identical to Complainant’s domain name <nesvita.co.th>. Complainant asserted in its Complaint that it was using the domain name <nesvita.co.th> to promote NESVITA products. In reply to the Panel’s September 3, 2008 Order, Complainant clarified that the website at <nesvita.co.th> is, at present, temporarily offline for technical reasons.
A.3. Rights or Legitimate Interests
Respondent has not provided any evidence of Respondent’s use of or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before receiving notice of the dispute. At the time of the Complaint the disputed domain name was pointed to a website consisting of a page displaying sponsored links which generate revenues via the pay-per-click system to Respondent and at the same time tarnishing Complainant’s mark.
The use of the disputed domain name to redirect traffic to a website where services of third parties are advertised and sponsored links are published is not a legitimate noncommercial or fair use of the disputed domain name.
Respondent is not a licensee, an authorized agent of Complainant, or in any way authorized to use Complainant’s NESVITA mark.
Complainant is informed and believes that Respondent is not commonly known by the domain name as an individual, business, or other organization, and “Nesvita” is not Respondent’s family name.
Respondent did not reply to Complainant’s cease and desist letter, thus suggesting that Respondent does not dispute Complainant’s assertions.
Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name, and the burden of proof has, therefore, shifted to Respondent.
A.4. Registered and Used in Bad Faith
The NESVITA mark is well-known, and Complainant used the mark intensively in Thailand, where Respondent is based, for many years before the disputed domain name was registered. In light of Complainant’s intense use of the mark and extensive advertising, Respondent could not have ignored the existence of Complainant’s trademark registration for a mark identical to the disputed domain name.
The disputed domain name was, at the time of the Complaint, linked to a webpage where Internet users could find a number of sponsored links to various websites related to fitness and wellness products, among other things. Respondent earns a commission whenever an Internet user visits the website and clicks on one of the sponsored links. Respondent’s use of the disputed domain name for commercial gain indicates Respondent’s bad faith.
In addition, the disputed domain name is offered for sale on the website linked to the disputed domain name. An offer to sell the disputed domain name is evidence of bad faith, as is Respondent’s failure to respond to Complainant’s cease and desist letter.
A prior UDRP panel found that the same Respondent was acting in bad faith in Dr. Ing. h c. F. Porsche AG v. Meechai,
WIPO Case No. D2006-1116. Evidence that Respondent has engaged in similar conduct in the past supports a finding of bad faith in this proceeding as well.
B. Respondent
Respondent did not file a Response or otherwise respond to the Complaint, nor did it file a sur-reply to Complainant’s reply to the Panel’s September 3, 2008 Order.
6. Discussion and Findings
Under Paragraph 4(a) of the Policy, Complainant has the burden of proving all of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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.
A respondent may demonstrate that it has rights or legitimate interests in respect of the domain name, e.g., by proving those circumstances identified in Paragraph 4(c) of the Policy.
Evidence of bad faith registration and use of a domain name may be proven by, among other things, the circumstances identified in Paragraph 4(b) of the Policy.
A. Identical or Confusingly Similar
The evidence shows that Complainant owns rights in the NESVITA mark and that Complainant acquired rights in the mark before Respondent’s May 2, 2001 registration of the disputed domain name.
Complainant obtained registration of the mark in Switzerland in 1984. Complainant also obtained four registrations of the mark in Thailand in 1996. Complainant has also adduced evidence of its use of the mark in connection with substantial advertising of its good and services, including in Thailand, prior to the May 2, 2001 registration of the disputed domain name.
The disputed domain name <nesvita.com> is identical to Complainant’s NESVITA mark.
B. Rights or Legitimate Interests
Paragraph 4(a) of the Policy requires a complainant to prove that the respondent has no rights or legitimate interests in respect of the domain name – i.e., to prove a negative by at least prima facie evidence. Paragraph 4(c) of the Policy contemplates that the respondent will come forward with evidence to demonstrate its rights or legitimate interests and lists non-exclusive ways this might be shown.
Respondent in this proceeding is in default, having filed no response to the Complaint and no reply pursuant to the Panel’s September 3, 2008 Order. In these circumstances, Respondent’s default permits an inference that Respondent cannot show rights or legitimate interests in the disputed domain name. The Vanguard Group, Inc. v. Lorna Kang,
WIPO Case No. D2002-1064 (in the event of default, a Panel’s decision is properly “based upon the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to reply”). Moreover, for reasons discussed below, the Panel is satisfied that Complainant has carried its initial burden of presenting prima facie evidence that Respondent has no rights or legitimate interests in the disputed domain name.
The certified Complaint asserts that Complainant has not authorized or licensed Respondent to make use of the mark or to register the disputed domain name.
Complainant’s evidence also shows that Respondent has used the disputed domain name for commercial purposes, and to redirect Internet traffic to a website where services of third parties, some of them Complainant’s competitors, are published. Complainant also asserts that the nature of Respondent’s use of the disputed domain name is generating revenues by making use of Complainant’s mark, without Complainant’s consent, in a manner that tarnishes Complainant’s reputation. Respondent has not come forward to challenge these assertions.
In addition, the Panel reviewed the website at the domain name <nesvita.com> after the filing of the Complaint, and the content shown on the website to which the domain name now resolves differs from the content in evidence in this proceeding as submitted in the Complaint. The initial webpage at “www.nesvita.com” now provides a number of links apparently related to Nintendo games, including “Nes Games,” instead of links associated with Complainant. Respondent’s post-Complaint alteration of its website to remove content complained of in this proceeding itself permits an inference that Respondent may thereby acknowledge a lack of rights or legitimate interest in using the disputed domain name in the manner evidenced by the certified Complaint.
For these reasons, the Panel finds Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services under Paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use under Paragraph 4(c)(iii) of the Policy. There also is no evidence that the NESVITA mark corresponds to Respondent’s family name, and the fanciful nature of the distinctive mark itself strongly suggests otherwise. Accordingly, there is no basis for finding rights or legitimate interests under Paragraph 4(c)(ii) of the Policy.
C. Registered and Used in Bad Faith
The evidence submitted by Complainant shows that it registered its NESVITA mark before Respondent registered the disputed <nesvita.com> domain name in May 2001. Notably, Complainant’s trademark registrations include four 1996 registrations for the NESVITA mark in Thailand, where Respondent is located. The evidence also shows that Complainant extensively advertised its products in Thailand in connection with the NESVITA mark both before and after Respondent’s registration of the disputed domain name. The Panel, therefore, finds it likely that Respondent knew about Complainant’s rights in the NESVITA mark when Respondent registered the disputed domain name and that Respondent registered the <nesvita.com> domain name for the purpose of trading on Complainant’s goodwill in the mark and creating a likelihood of confusion as to the association of Respondent’s website with Complainant.
The Panel also finds evidence of bad faith in this matter because of an emerging pattern of Respondent’s bad faith registration and unauthorized use of other party’s trademarks in domain names registered by Respondent. As the Complaint pointed out, the Respondent in this proceeding was also the respondent in Dr. Ing. h.c. F. Porsche AG v. Meechai,
WIPO Case No. D2006-1116. In that case, the Panel ordered transfer of the domain name <porschedesign.net>, which had been registered and used by the same person who is Respondent in this proceeding. As in this matter, there was evidence in the Porsche case that Respondent used the disputed domain name to lead to a parking page with sponsoring links and placed a notice on the parking page stating that the domain name was for sale.
The Panel also finds that Respondent’s post-Complaint alteration of the page to which <nesvita.com> resolves is tantamount to an admission by Respondent that Respondent’s prior use of the disputed domain name was improper. Moreover, Respondent’s replacement of sponsored links that Complainant has challenged in this proceeding with sponsored links that may infringe upon the rights of yet another trademark owner is viewed by the Panel as further evidence of an emerging pattern of misconduct, particularly since Respondent has not seen fit to participate in this proceeding or offer any justification for Respondent’s conduct.
Accordingly, the Panel finds the existence of bad faith registration and use pursuant Paragraph 4(b) 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 domain name <nesvita.com> be transferred to Complainant.
Gregory N. Albright Sole Panelist
Date: September 18, 2008
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