WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société des Produits Nestlé S.A v. Domain Admin, FBS Inc, Whoisprotection.biz / Ibrahim Halil Yildirim

Case No. D2020-1072

1. The Parties

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

The Respondent is Domain Admin, FBS Inc, Whoisprotection.biz, Turkey / Ibrahim Halil Yildirim, Turkey.

2. The Domain Names and Registrar

The disputed domain names <nescafekahvemakinesi.com> and <nescafemakinasi.com> are registered with FBS Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2020. On May 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 3, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 4, 2020, 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 May 6, 2020.

The Registrar also indicated that the language of the Registration Agreement was Turkish. The Center sent an email communication in English and Turkish, to the Complainant on May 4, 2020, inviting the Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of the proceeding, a Complaint translated into Turkish, or a request for English to be the language of the proceeding. The Complainant filed a request for English to be the language of the proceeding on May 5, 2020. The Respondent sent email communications in both English and Turkish on May 5 and 6, 2020, but it did not comment on the language of the proceeding.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2020. The Respondent sent an email communication in English on May 14, 2020, but it did not submit any formal response. Accordingly, the Center notified to the Parties that it was proceeding to panel appointment on June 4, 2020.

The Center appointed E. K. Yardimci as the sole panelist in this matter on June 17, 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 a Swiss food company founded in1866 and markets its products in 190 countries and has production sites in more than 80 countries with 328,000 employees.

The Complainant owns multiple national, International and/or regional trademark registrations for NESCAFÉ/NESCAFE (the “NESCAFE trademark”) including the following:

- Turkish Trademark Registration No. 129911, registered on October 19, 1971, in class 30;
- International Trademark Registration No. 718381, registered on August 24, 1999, in classes 29, 30, 32, 35, and 42, designating, amongst others, Turkey;
- International Trademark Registration No. 189879, registered on January 9, 1956, in class 30;
- International Trademark Registration No. 208358, registered on March 22, 1958, in class 30;
- International Trademark Registration No. 300360, registered on July 21, 1965, in classes 5, 29, 30, 31, and 32;
- International Trademark Registration No. 638767, registered on June 28, 1995, in classes 35, 39, 41, and 42;
- European Union Trade Mark Registration No. 003346053, registered on April 21, 2005, in classes 9, 11, 14, 16, 18, 21, 24, 25, 28, 29, 30, 32, 35, 41, and 43.

The Complainant’s NESCAFE trademark has been recognized as a well-known trademark in previous UDRP decisions. The Complainant’s NESCAFE trademark has also been recognized as a well-known trademark in Turkey. The Complainant, among others, owns and operates the domain name <nescafe.com> and <nescafe.com.tr>.

The disputed domain names were both registered on November 8, 2016.

The Panel visited the disputed domain names on July 6, 2020, and observed that the disputed domain names were active and resolved to a website with similar content where the Respondent was marketing coffee machines for sale or for rent.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain names are confusingly similar to the Complainant’s NESCAFE trademark and that the addition of the combination of descriptive words “makina” and “kahve makinesi” – which means “machine” and “coffee machine” in Turkish – reinforces the association between the respective disputed domain names and the Complainant’s trademark.

The Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain names, mainly because the Complainant has neither licensed nor otherwise authorized the Respondent to use its marks or to register or use any domain name incorporating the NESCAFE trademark.

The Complainant further asserts that the Respondent’s use of the disputed domain names cannot be considered as a right or legitimate interest in the disputed domain names’ use according to the principles set out in Oki Data Americas, Inc. v. ASD, Inc.WIPO Case No. D2001-0903 (“Oki Data”).

Finally, in addressing the question of registration and use of the disputed domain names in bad faith, the Complainant claims that the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark.

The Complainant observes that the Respondent is well aware of the Complainant’s well-known trademark considering that it sells or offers for rent coffee machines including machines for NESCAFE products.

The Complainant contends that the Respondent requested EUR 2,000 for each disputed domain name, which is a sum greater than its out-of-pocket expenses and is a clear indication of bad faith according to the paragraph 4(b)(i) of the Policy.

Lastly, the Complainant claims that the use of privacy shield is a clear indication of bad faith under the circumstances of the case.

B. Respondent

The Respondent did not submit any formal response to the Complainant’s contentions. The Center, however, received email communications in both English and Turkish on May 5, 6 and 14, 2020 from the Respondent with no substantive allegations relevant to this proceeding.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three elements, which the Complainant must prove, during the administrative proceeding, to merit a finding that the disputed domain names be transferred to the Complainant:

(a) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(c) the disputed domain names have been registered and are being used in bad faith.

Pursuant to paragraph 15(a) of the Rules, the Panel shall decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

6.1. Preliminary Issue: Language of the Proceedings

Although the language of the registration agreement of the disputed domain names is the Turkish language, the Panel finds that it would be unnecessary, given the circumstances of this case, to conduct the proceedings in Turkish and to request the submission of costly and time-consuming translations of documents by the Complainant. Especially considering the email communications in English received from the Respondent, the Panel concludes that the Respondent must be well able to read and understand the English language. In addition, the Respondent did neither comment on the language of the proceeding, nor object to English being the language of the proceeding.

In light of the above, the Panel comes to the conclusion that the Respondent will not be prejudiced by a decision being rendered in English.

Hence, the Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of these administrative proceedings shall be the English language.

6.2. Substantive Issues

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A trademark registration provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. As indicated above, the Complainant holds several trademark registrations for the NESCAFE trademark.

The disputed domain names integrate the Complainant’s NESCAFE trademark in its entirety.

The disputed domain names differ from the registered NESCAFE trademark by the additional descriptive words “makina” and “kahve makinesi”.

The combination of descriptive words “makina” and “kahve makinesi” – which mean “machine” and “coffee machine”– does not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s trademark.

Several UDRP panels have ruled that the mere addition of a descriptive element does not prevent a finding of confusing similarity where the relevant trademark is recognizable within the disputed domain name, see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

As regards the generic Top-Level Domain (“gTLD”) “.com”, it is typically disregarded under the confusing similarity test according to section 1.11 of the WIPO Overview 3.0.

Consequently, the Panel finds that the Complainant has shown that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The onus is on the Complainant to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and it is then for the Respondent to rebut this case.

Although the Respondent did not file a formal Response, it does not automatically result in a decision in favor of the Complainant. See WIPO Overview 3.0, section 4.3 and the cases cited therein.

However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

As there are no exceptional circumstances for the failure of the Respondent to submit a formal Response, the Panel infers that the Respondent does not deny the facts asserted and contentions made by the Complainant. See, Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.

The Panel notes that the disputed domain names resolve to the respective websites (which are almost identical in content) offering for sale coffee machines for NESCAFE and other related products.

As to the question of when a reseller’s use of a domain name incorporating a mark constitutes a bona fide offering of goods and services; the consensus view was articulated in Oki Data. See WIPO Overview 3.0 at section 2.8. In that case, the authorized reseller’s domain name <okidataparts.com> incorporated the complainant’s OKIDATA trademark in full.

The panel in Oki Data concluded that for a respondent to demonstrate that a resale offering was bona fide, the following conditions must be met:

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the corresponding website to sell only the trademarked goods, otherwise there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods;

- the site itself must accurately disclose the respondent’s relationship with the trademark owner, i.e., respondent may not falsely suggest that it is the trademark owner, or that the website is the official site, if that is not the case; and

- the respondent must not try to “corner the market” in all relevant domain names or deprive the trademark owner of reflecting its own mark in a domain name.

In this case, it appears from the websites that the Respondent has been operating its business of selling coffee machines or offering coffee machine rental services while not exclusively selling the Complainant’s products but also other third-party products.

The Panel notes that there is no disclaimer disclosing the lack of relationship between the Respondent and the Complainant.

Moreover it is the Panel’s view that using a descriptive word (i.e. ”coffee machine and machine” in Turkish) together with a registered trademark strengthens the impression that the disputed domain names are in some way connected to the Complainant’s trademark and carries a risk of implied affiliation (see, e.g., Société des Produits Nestlé S.A. v. MrToys.com LLC, WIPO Case No. D2012-1356; Allianz SE v. Roy Lee / Traffic-Domain.com, WIPO Case No. D2012‑1459; Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150; Swarovski Aktiengesellschaft v. www.swarovski-outlet.org, WIPO Case No. D2013-0335; and section 2.5.1 of the WIPO Overview 3.0).

For these reasons, the Panel concludes that the Respondent is clearly not making use of the disputed domain names in connection with a bona fide offering of goods or services.

In the Panel’s view the Complainant has made out its prima facie case under this element of the Policy and the Respondent has failed to rebut it. Accordingly, the Complaint succeeds in relation to the second element of the Policy.

C. Registered and Used in Bad Faith

Finally, the Complainant must show that the disputed domain names have been registered and are being used in bad faith under paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, 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 as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

Considering the Panel’s finding under the second element, the Panel finds that the registration and use of the disputed domain names falls under the circumstances described under paragraph 4(b)(iv) of the Policy, namely, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by seeking to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Moreover, the Complainant sent several cease-and-desist letters to the Respondent’s privacy shield company. No replies were received. The Panel finds the Respondent’s conduct in failing to reply to the Complainant’s cease-and-desist letters to be further evidence of bad faith (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).

Lastly, the Panel observed that the Respondent’s request of EUR 2,000 per disputed domain name for the transfer of the disputed domain names falls under paragraph 4(b)(i) of the Policy.

In conclusion, the Respondent’s use of the disputed domain names, the Respondent’s failure to respond to the cease-and-desist letters, the Respondent’s request of payment of a sum greater than its out-of-pocket expenses for the transfer of the disputed domain names, the use of privacy service, and lastly, the Respondent’s failure to provide a formal response, or any substantive allegations or evidence, all lead to the conclusion that the Respondent registered and used the disputed domain names in bad faith.

Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met by the Complainant.

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 names <nescafekahvemakinesi.com> and <nescafemakinasi.com> be transferred to the Complainant.

E. K. Yardimci
Sole Panelist
Date: July 7, 2020