Société des Produits Nestlé S.A. v. Private Registration
Case No. D2009-1021
1. The Parties
The Complainant is Société des Produits Nestlé S.A. of Vevey, Switzerland, represented by Studio Barbero, Italy.
The Respondent is Private Registration of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <nestle-cereales.com> (the “Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2009. On July 30, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the Domain Name. On August 6, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 7, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 12, 2009. The Center verified that the Complaint together with the amendment to 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 August 13, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 2, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 3, 2009.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on September 9, 2009. 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 over 100,000 (one hundred thousand) international and national trademark registrations worldwide consisting in or including the sign NESTLÉ such as:
- International Reg. N. 400444 of July 16, 1973 NESTLÉ (word and device mark), in classes 01, 05, 29, 30, 31, 32, 33 – duly extended to Benelux;
- International Reg. N. 479337 of August 12, 1983 NESTLÉ (word mark), in classes 01, 05, 29, 30, 31, 32, 33 - duly extended to Benelux;
- International Reg. N. 490322 of November 27, 1984 NESTLÉ (word and device mark), classes 01, 05, 29, 30, 31, 32, 33 - duly extended to Benelux;
- International Reg. N. 511513 of April 03, 1987 NESTLÉ (word mark), in classes 03, 16 - duly extended to Benelux;
- International Reg. N. 638768 of June 28, 1995 NESTLÉ (word mark), in classes 35, 39, 41, 42, - duly extended to Benelux;
- International Reg. N. 649928 of January 4, 1996 NESTLÉ (word and device mark), in classes 03, 05, 29, 30, 32 - duly extended to Benelux;
- International Reg. N. 651791 of February 19, 1996 NESTLÉ (word and device mark), in classes 29, 30 - duly extended to Benelux;
- International Reg. N. 653196 of March 29, 1996 NESTLÉ (word and device mark), in class 5 - duly extended to Benelux;
- International Reg. N. 655463 of March 13, 1996 NESTLÉ (word and device mark), in classes 05, 29, 30 - duly extended to Benelux;
- International Reg. N. 655692 of January 25, 1996 NESTLÉ (word and device mark), in classes 05, 30 - duly extended to Benelux;
- International Reg. N. 704989 of November 12, 1998 NESTLÉ (word and device mark), in class 32 - duly extended to Benelux;
Complainant is a Swiss limited liability company founded in 1866 by Henri Nestlé. Complainant sells products and services all over the world in various industries, more in particular in the food industry, including baby foods, breakfast cereals, chocolate & confectionery, beverages, bottled water, dairy products, ice cream, prepared foods, and food services. Furthermore, the Complainant is active in the pharmaceutical and the pet-care industry.
Complainant has over 283,000 employees worldwide and commercializes its products in over 200 countries, being one of the world's largest food consumer products companies in terms of sales and the 57th biggest company in the world, according to Fortune Global 500 of 2008.
Complainant has also registered the word “nestle” in domain names under several different gTLDs and ccTLDs. In this connection, the Complainant operates the website “www.nestle.com” as a main portal aimed at promoting its activities worldwide.
5. Parties' Contentions
A. Complainant
According to InterBrand Best Global Brands List 2008, the trademark NESTLÉ alone is worth USD 5,592 million and it is ranked number 63 among the most valuable trademarks in the world. NESTLÉ is a well-known trademark worldwide.
The Respondent has registered the Domain Name in September 2008, without authorization of the Complainant, and the Domain Name – at the time of the drafting of the Complaint – was pointing to the website “wwwnestle-cereales.com” where Internet users could find several sponsored links (pay-per-click pages) redirecting mainly to third parties' websites.
There was also a link on Respondent's website reproducing the “Nestlé” brand, and by clicking on it Internet users were redirected to an additional pay-per-click page (the “redirected first page”), where other dedicated links also displaying the brand “Nestlé” were published.
For instance, by clicking on the first “Nestle” sponsored results of the redirected first page, Internet users were then redirected to a web page (the “redirected second page”) displaying a further link (in the “redirected third page”) to one of the Complainant's official websites, but also, in a clearly seeable section called “sponsored results”, the Internet users were also further redirected to competitor's websites.
Besides, when Internet users clicked on the “Chocolate” link of the redirected first page, they were also redirected to another web page from which users could have access to several other pages of the Complainant's competitor's products.
As soon as the Complainant became aware of such a registration and willful use of the Domain Name confusingly similar to its registered and well-known trademark NESTLÉ, a legal representative from the Complainant sent to the Domain Name holder a Cease and Desist letter on May 12, 2009.
Such letter was addressed to the known address of the Respondent, indicated in the WhoIs, via email and registered mail requesting the Respondent to transfer the Domain Name. The Respondent did not reply.
The Complainant states that the three elements of the Policy were satisfied.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the 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 respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The burden of proving these elements is on the Complainant.
A. Identical or Confusingly Similar
In the present case, the Domain Name incorporates the whole of the Complainant's NESTLÉ trademark and the fact that it includes the descriptive term “cereales” (which means cereals in Spanish) does not in this case exclude the confusing similarity.
It is a well established principle that the addition of a descriptive term to a trademark is insufficient in itself to remove the confusing similarity between the trademark and the domain name. Among many others decisions in Caesars Entertainment, Inc. v. Michael Ulrich/HardcoreDVD.com,WIPO Case No. D2004-0463 (concerning the domain name < flamingo-club-online.com>) the panel found that “The terms ‘club' and ‘online' are merely descriptive as ‘club' refers to a group of people organized for a common purpose, in this case gambling, and ‘online' is a description of the specific sales channel employed. Therefore, when the Domain Name inserts the descriptive words ‘club' and ‘online' after ‘flamingo', it creates the same commercial impression as the Complainant's Marks. Internet users are likely to believe the domain name is related to, associated with, or authorized by Complainant, perhaps as an on-line representation of its other facilities. It is precisely because of this association with Complainant's Marks that Respondent registered the Domain Name”.
In fact, the addition of a generic term does not serve to distinguish the domain name from the trademark, but rather, reinforces the association of the complainant's trademark with the domain name (see e.g.Viacom International Inc. v. Frank F. Jackson and Nancy Miller,
WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet, Ltd.,
WIPO Case No. D2000-0275).
In light of the above, the Panel finds the Domain Name confusingly similar to the prior registered trademark in which the Complainant has rights, according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant states that it has not authorized the Respondent to use the NESTLÉ trademark. The Panel infers from the record that the Respondent is not commonly known by the name “Nestlé” or by the Domain Name, <nestle-cereales.com>.
The Complainant has provided evidence that the Respondent used the Domain Name in a web page with several sponsored links, in what has been commonly called a “link farm”. From the Complainant's exhibits showing the website, it is apparent that the Respondent used the Domain Name to trade off of the reputation of the Complainant – thus, the Respondent did not use the Domain Name to make a bona fide offering of goods or services.
The Panel is satisfied that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent, by failing to provide a response, has failed to demonstrate such rights or legitimate interests. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
According to Paragraph 4(a)(iii) of the Policy, the Complainant must prove registration and use in bad faith. Paragraphs 4(b)(i)-(iv) of the Policy contain a non-exhaustive list of circumstances, which shall constitute evidence of registration and use of a domain name in bad faith.
It has been proven to the Panel's satisfaction that the Complainant's trademark NESTLÉ is well-known, and the Panel accepts that the Respondent could not likely reasonably ignore the marks high reputation of the products they identify.
It has been also shown that in the website in operation under the Domain Name Respondent hosts a “link farm”, i.e., a list of sponsored links, which in the circumstances amounts to unduly taking advantage of the well-known nature of the Complainant's mark to attract more Internet users and generate revenue presumably to the Respondent's benefit in the form of “pay-per-click”.
In this sense, there is little doubt that the Respondent intended to earn profit from the confusion created with Internet users, who believe to be accessing the Complainant's websites. In this regard, see Molmed S.p.A. v. Prof. Asif Ahmed, WIPO Case No. D2002-0177: “Indeed, by redirecting Internet users looking for the web site of Molmed S.p.A. to its own pages, Respondent is attempting to attract them for commercial gain, while creating a likelihood of confusion with Complainant's trademark.”
As a further element evidencing the bad faith, the Panel notes that there has been an attempt by the Respondent to avoid submission to this UDRP proceeding, apparently by means of a privacy service. The initial Respondent as per the Complaint submitted on July 29, 2009 was “PrivacyProtect.org”, of the Netherlands, who has been involved in prior UDRP proceedings, all of them decided for the transfer of the disputed domain name. See Research In Motion Limited v. PrivacyProtect.org / berry store, hery santosa, WIPO Case No. D2009-0469, Crown Trophy, Inc. v. PrivacyProtect.org / Pluto Domain Services Private Limited,
WIPO Case No. D2009-0061, Société Air France v. PrivacyProtect.org / Rob McGee,
WIPO Case No. D2008-1917, F. Hoffmann-La Roche AG v. PrivacyProtect.org / Contact Id 7065280, Shutikhin Sergey,
WIPO Case No. D2008-0765.
The WhoIs details of the Domain Name having been changed to “Private Registration”, of Panama, as confirmed by the Registrar, the Complainant chose to file an amendment to the Complaint on August 12, 2009.
A change in the ownership of a domain name after a cease and desist letter has already been dispatched by a trademark owner is often an indication of bad faith, i.e., a way to create difficulties for a trademark owner to assert its rights in a UDRP proceeding. There is no information in the docket of this case of when exactly the change in WhoIs details occurred, if before or after a copy of the Complaint had been sent by e-mail by Complainant to Respondent, but in any case it is clear that such change occurred after Complainant had sent a cease and desist letter to Respondent, on May 12, 2009.
This change in WhoIs details is another evidence of bad faith as it has already been decided in several cases. In that regard see Starline Publications, Inc. v. Gioacchino Zerbo,
WIPO Case No. D2008-1822: “The Complainant correctly notes that the domain name registration was changed after these proceedings were initiated. Such attempts to avoid or delay judicial or UDRP proceedings by changing domain registration details or registrars after learning of the complaint have been referred to as cyberflight, see PREPADOM v. Domain Drop S.A.,
WIPO Case No. D2006-0917.”
Thus, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website or other on-line location, by creating a likelihood of confusion with the Complainant's mark and that the Complainant has proven that the Respondent's registration and use of the disputed domain name was in bad faith, according to paragraph 4(a)(iii) under 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 <nestle-cereales.com> be transferred to the Complainant.
Gabriel F. Leonardos Sole Panelist
Dated: September 22, 2009
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