WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société des Produits Nestlé S.A. v. Super Privacy Service LTD c/o Dynadot

Case No. D2019-3009

1. The Parties

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

The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America (“United States” or “USA”).

2. The Domain Name and Registrar

The disputed domain name <nestléusa.com> [xn--nestlusa-f1a.com] is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2019. On December 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 9, 2019, 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.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 2, 2020.

The Center appointed Adam Samuel as the sole panelist in this matter on January 3, 2020. 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 part of the Nestlé group of companies and is wholly owned by Nestlé S.A. The Nestlé group sells products primarily in the food industry. The Complainant owns a number of trademarks for the name NESTLÉ in a variety of countries including a United States trademark, registration number 188089 registered on August 19, 1924.

The Respondent registered the disputed domain name on October 5, 2019. In its original form, it is <nestléusa.com>. This has a Punycode form that enables it to be presented without the “é” as

<xn--nestlusa-f1a.com>. The disputed domain name currently redirects to a website offering car rental services in the United States.

The Complainant promotes its businesses through the domain name <nestle.com>, registered on October 25, 1994, and, as regards the United States, <nestleusa.com>, registered on November 19, 1998.

5. Parties’ Contentions

A. Complainant

The disputed domain name incorporates the Complainant’s NESTLÉ trademark with the addition of the non-distinctive element “USA”. The addition of a descriptive term does not prevent a domain name wholly incorporating a trademark from being confusingly similar to that trademark. The addition of the word “USA” is insufficient to distinguish the disputed domain name from the Complainant’s mark and is apt to increase confusion amongst Internet users since the Complainant sells its products in the USA.

The Respondent is not a licensee, agent of the Complainant or in any other way authorized to the use the Complainant’s trademark, NESTLÉ. The Respondent’s use of the privacy shield to conceal his identity precludes the possibility that the Respondent was previously commonly known by the disputed domain name before receiving notice of this dispute. The disputed domain name is being used to divert and attract users to a commercial website offering car rental services in the USA unrelated to the Complainant. The Complainant has not replied to a cease and desist letter and reminder of that letter. The Respondent’s failure to counter the allegations contained in the Complainant’s cease and desist letter amounts to an admission by the Respondent of these allegations.

The misappropriation of a well-known trademark as a domain name itself constitutes bad faith registration. As a result of the substantial identity of the disputed domain name with the Complainant’s domain name <nestleusa.com>, users for the Complainant and its product in the United States might well be diverted to the Respondent’s website and misled as to the source, sponsorship or affiliation of a website and/or the services promoted there. The Respondent has been intentionally attempting to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website and the business promoted there.

The use of a privacy shield by the Respondent is a clear indication of its intention to evade the consequences of registering and using for profit a domain name in which it has no legitimate interest.

It is possible that the disputed domain name could also be used for sending scam or phishing emails claiming to be sent by or on behalf of the Complainant.

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 as regards the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name in this case, <nestléusa.com>, consists of the Complainant’s well-known trademark, NESTLÉ, followed by the letters “usa” and the generic Top-Level Domain (“gTLD”) “.com”. The gTLD is irrelevant here because it is a standard registration requirement. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The addition of ordinary meaning words, such as the well-known initials of a country to a trademark does not prevent the disputed domain name from being confusingly similar to that trademark. As section 1.8 of the WIPO Overview 3.0 explains:

“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”

Here the ordinary meaning word, “usa”, also corresponds to a feature of the Complainant’s business in that the Complainant does a substantial amount of business in the USA.

As other Panels have decided before under the Policy, internationalized domain names and their Punycode translations are equivalent. For example, in Württembergische Versicherung AG v. Emir Ulu, WIPO Case No. D2006-0278, the opinion was: "finding that the <xn--wrttembergische-versicherung16c.com> should be considered as equivalent to the <württembergischeversicherung.com> domain name”.

For these reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent has not claimed to be called “Nestlé” or anything similar. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. Based on the available record, and in the absence of any response on this point, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The disputed domain name redirects to a website offering car rental services in the USA. These have nothing to do with the Complainant’s trademark or anything that could be associated with it. The Respondent registered the disputed domain name incorporating prominently a world-renowned trademark which itself suggests bad faith in both registration and use. It is inconceivable that, when it registered the disputed domain name, the Respondent was unaware of the Complainant’s trademark, particularly in the light of the fact that the disputed domain name incorporates the Complainant’s trademark in full with only the addition of a country’s initials and a gTLD.

Without a Response, though, one cannot be certain why the Respondent registered the disputed domain name. However, the knowing use of the Complainant’s world-renowned trademark in the disputed domain name suggests that the Respondent’s motive in registering and using the disputed domain name was one or more of: disrupting the Complainant’s relationship with its actual or potential customers, attempting to attract Internet users to the car rental website to which the disputed domain name resolves for potential gain, or persuading the Complainant to buy the disputed domain name from it for an amount in excess of the Respondent’s out-of-pocket expenses. These all constitute evidence of registration and use in bad faith: paragraph 4(b)(i), (ii), and (iii) of the Policy. See also sections 3.1.4, 3.2.1 of the WIPO Overview 3.0.

For all these reasons, the Panel concludes that the disputed domain name was registered and is being used in bad faith. This makes it unnecessary for the Panel to deal with the other points made in support of the Complaint.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <nestléusa.com> [xn--nestlusa-f1a.com] be transferred to the Complainant.

Adam Samuel
Sole Panelist
Date: January 14, 2020