The Complainant is Société des Produits Nestlé S.A. (“Nestlé SA”) of Vevey, Switzerland, represented by Studio Barbero, Italy.
The Respondent is Tang Zhou of China.
The disputed domain names <nestlehealthscience.net> and <nestleinstituteofhealthsciences.com> (“the Domain Names”) are registered with Hangzhou E-Business Services Co., Ltd (“the Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2011. On July 4, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On July 7, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On July 7, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 July 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2011.
The Center appointed Karen Fong as the sole panelist in this matter on August 5, 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.
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the Respondent and the Registrar in relation to the Domain Names (“the Registration Agreement”), the language of the proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings.
The language of the Registration Agreement is Chinese. However, having considered the Complainant’s submissions in paragraph 11 of the Complaint and its email to the Center on July 7, 2011, the Panel accepts that the Respondent has a strong command of the English language as he/she has demonstrated in email communications with the Complainant’s legal representative and a marketing company. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. Furthermore, the Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English, and the Respondent did not comment on the language of the proceeding by the specified due date. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
The Complainant is a company incorporated in Switzerland which was founded by Henri Nestlé in 1866. The Complainant sells products and services all over the world in the food, pharmaceutical and pet care industries. It is the owner of numerous international registrations worldwide for the trade mark NESTLÉ (the “Trade Mark”) dating back to 1973. The Complainant is also the owner of numerous domain names comprising the Trade Mark. The Complainant has through extensive use of the Trade Mark acquired substantial reputation and goodwill in the Trade Mark. It is the world's largest food consumer products company in terms of sales and the 44th largest company in the world according to Fortune Magazine’s 2010 ranking of the world’s 500 largest companies. According to Interbrand’s annual Best Global Brands ranking for 2010, the Trade Mark is worth USD6.548 million making it the 57th most valuable trade mark in the world. As a result of the above, the Trade Mark is famous and well-known.
On September 27, 2010, at a global press conference, the Complainant announced the creation of Nestlé Health Science along with a new research institute, the Nestlé Institute of Health Sciences. On that day the Complainant formally announced its plans “to pioneer a new industry between food and pharma”, with plans to develop nutritional products to treat and help prevent grave health conditions such as diabetes, obesity, cardiovascular disease, and Alzheimer’s disease.
The Domain Names were registered on September 27 and 28, 2010. In addition to registering the Domain Names, the Respondent also appears to have registered the domain name, <nestlehealthscience.in> (“the Additional Domain Name”) on September 28, 2010.
The Complainant contends that the Domain Names are identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and used in bad faith. The Complainant requests transfer of the Domain Names.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and are being used in bad faith.
The Panel accepts that the Complainant has rights to the name NESTLÉ through use and registration that pre dates the Domain Names by more than 100 years.
The Domain Names integrate the Complainant’s registered trade mark NESTLÉ with the descriptive terms “institute of health sciences”, “health science” and the generic “.com” and “.net” domain suffixes. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic domain suffix. Further, the addition of the descriptive terms “institute of health sciences” and “health science” do not negate the confusing similarity encouraged by the Respondent’s integration of the NESTLÉ trade mark in the Domain Names. E.g. N.V. Organon Corp. V. Vitalline Trading Ltd., Dragic Veselin / PrivacyProtect.org, WIPO Case No. D2011-0260; Oakley, Inc. v. Wu bingjie aka bingjie we/ Whois Privacy Protection Service, WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic, WIPO Case No. D2010-0207.
The Panel finds that the Domain Names are confusingly similar to the well-known NESTLÉ trade mark of the Complainant, and that the requirements of paragraph 4(a)(i) of the Policy are therefore fulfilled.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
The Complainant alleges that the Respondent has held the Domain Names passively since registration. The Respondent is not a licensee or authorised agent of the Complainant nor is he/she in any way authorised by the Complainant to use the Trade Mark. The Respondent is not commonly known by either of the Domain Names.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. In the absence of a response from the Respondent, the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names. Filing no response, the Respondent has not invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the Domain Names.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
To succeed under the Policy, a complainant must show that the domain name has been both registered and used in bad faith. It is a double requirement.
The Panel recognizes that the NESTLÉ mark is a world famous and well-known trade mark which has been used for more than 100 years. Coupled with the fact that the registration of the Domain Names took place almost immediately after the announcement by the Complainant of its creation of Nestlé Health Science along with the new research institute, the Nestlé Institute of Health Science on September 27, 2010, it is inconceivable that the Respondent was not fully aware that the Domain Names would correspond to the Complainant’s business and services. The Panel is satisfied that the Respondent deliberately registered the Domain Names in bad faith.
On January 18, 2011, a marketing company presumably at the behest of the Complainant wrote to the Respondent to ascertain the intentions of the Respondent in connection with the Domain Names and the Additional Domain Name. In response, the Respondent offered to sell the Domain Names for USD11,000 and a further USD3,500 to sell the Additional Domain Name. This offer to sell was repeated in an email from the Respondent on March 15, 2011 in response to a cease and desist letter by the Complainant’s legal representatives. This offer to sell the Domain Names for a sum substantially more than the Respondent’s out of pocket expenses is clear evidence that the Domain Names were registered and are being used in bad faith.
The fact that Domain Names are not connected to active websites does not prevent the finding of bad faith even where no active steps have been taken to sell the domain names. Paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) says this:
“The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”
In this case, the Respondent offered to sell the Domain Names; the Domain Names comprise the Complainant’s world famous Trade Mark; the Domain Names were registered almost immediately after the Complainant made its announcement of the formation of two bodies, the names of which are reflected in the Domain Names and the Respondent failed to file a Response. These circumstances are indicative of bad faith. The Panel therefore also finds that the actual use of the Domain Names by the Respondent is in bad faith.
Accordingly, the Panel finds that paragraph 4(c)(iii) of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <nestlehealthscience.net> and <nestleinstituteofhealthsciences.com>, be transferred to the Complainant.
Dated: August 18, 2011
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