Complainant is Société des Produits Nestlé S.A., Switzerland, represented by Studio Barbero, Italy.
Respondent is Jose Luis Flores, Mexico.
The disputed domain name <nescafeshop.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2020. On August 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 14, 2020, the Registrar 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” 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 Respondent of the Complaint, and the proceedings commenced on August 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 6, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 7, 2020.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on September 10, 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.
Complainant Société des Produits Nestlé S.A. is one of the world’s largest food consumer products company in terms of sales and markets its products in over 190 countries, including Mexico, where Respondent is based.
Complainant is the owner of hundreds of international and national trademark registrations around the world for the marks NESCAFE and NESCAFÉ, as used on coffee. The NESCAFE brand was launched in Switzerland in April 1938, and then exported to France, Great Britain, and the United States of America. Currently, NESCAFE coffee is consumed extensively around the world; over 15,000 cups of NESCAFE coffee are consumed every minute. The NESCAFE mark is widely promoted via the Internet and Complainant has registered the word “nescafe” as a domain name in numerous generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”). Complainant operates the website “www.nestle.com” as its primary web portal for global promotion while the official website dedicated to NESCAFE coffee is found at “www.nescafe.com”.
The disputed domain name was registered on November 6, 2019, and resolves to a website that, according to Complainant, imitates the look and feel of Complainant’s “www.nescafe.com” site, displaying, without any disclaimer and authorization, the NESCAFE mark and official product visuals and offering for sale various NESCAFE products. The “www.nescafeshop.com” website includes a copyright notice stating, “Design and development by Nestle MX” and reproduces text posted by Complainant on its Mexican portal.
On November 25, 2019, Complainant’s representative sent a cease and desist letter to the registrant’s email address and to the contact email indicated on the website at the disputed domain name. According to Complainant, it was not possible to send the letter to Respondent since the postal address associated with the disputed domain name seemed false or incomplete. Complainant did not receive any response to the cease and desist letter and reminder emails were sent on December 23, 2019, January 24, 2020, and August 11, 2020. There was no response to any of the reminder emails.
Complainant submits that the disputed domain name is confusingly similar to trademarks in which Complainant has rights. It points out that the disputed domain name incorporates the whole of the NESCAFE mark and asserts that the addition of the non-distinctive element “shop” does not affect the confusing similarity.
Complainant next maintains that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant indicates that Respondent is not a licensee, authorized agent, or in any other way authorized to use the NESCAFE trademark.
Complainant asserts that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. In support of such assertion, Complainant notes that the disputed domain name resolves to a site featuring Complainant’s NESCAFE mark and official product visuals, the history of NESCAFE copied from Complainant’s official local portal, and a misleading copyright notice.
Complainant argues that Respondent is not commonly known by the disputed domain name.
Finally, Complainant contends that the disputed domain name was registered and is being used in bad faith. Given the widespread use of the NESCAFE mark throughout the world, including in Mexico, Complainant argues that “it is inconceivable that Respondent was unaware of the existence of NESCAFE and its worldwide reputation at the time of registration of the Domain Name”. Complainant further asserts that “the actual knowledge of Complainant’s trademarks by Respondent is clearly demonstrated by the fact that on the website corresponding to the Domain Name Complainant’s trademarks and official contents are featured prominently and the history [of] NESCAFE (taken from the official portal…) is published”.
Further, according to Complainant, in view of the terms encompassed in the disputed domain name and the contents found at the disputed site, “Respondent clearly intended to impersonate Complainant or one of its affiliated entities, in order to attract users willing to purchase NESCAFE products to his own website”.
In light of the above, Complainant declares, it is clear that Respondent, in registering the disputed domain name, intentionally attempted to attract Internet users to his website for commercial gain by causing confusion as to the source, sponsorship, affiliation or endorsement of his website, within the meaning of paragraph 4(b)(iv) of the Policy.
As further evidence of the requisite bad faith, Complainant points out Respondent failed to respond to the cease and desist letter and registered the disputed domain name by using incomplete and/or false contact information.
Respondent did not reply to Complainant’s contentions.
The Panel concludes that the disputed domain name, <nescafeshop.com>, is confusingly similar to the NESCAFE trademark. As noted by Complainant, the disputed domain name incorporates in full the NESCAFE mark adding only the non-distinctiveterm “shop” and the gTLD “.com.” These additions are insufficient to avoid a finding of confusing similarity. See, inter alia, Philip Morris Products S.A. v. Galati Ivesti, Serbia srl / Gold Hands, IQOSSHOP.NET, WIPO Case No. D2020-1219, where the Panel held that the addition of the word “shop” after the trademark does nothing to avoid the conclusion that the domain name is confusingly similar to the trademark. See, also, paragraph 1.11 of the WIPO Jurisprudential Overview 3.0, holding that “The applicable Top Level Domain (“TLD”) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”.
The evidence also supports a determination that Complainant, through its longstanding use of the NESCAFE trademark and its national and international registrations covering such mark, has rights in the NESCAFE trademark.
The Panel determines that Complainant has produced prima facie evidence to the effect that Respondent has no rights or legitimate interests in the disputed domain name and that Respondent has produced no evidence to rebut such prima facie case.
The evidence establishes that Respondent is not a licensee of Complainant or otherwise authorized to use the NESCAFE trademark as part of a domain name. Further, the evidence indicates that Respondent is not making a bona fide use of the disputed domain name in connection with the offering of goods or services. To the contrary, the evidence shows that the disputed domain name resolves to a site that will lead Internet users to the mistaken impression that such site is sponsored or authorized by Complainant. The disputed sitemakes repeated reference to the NESCAFE mark and includes visuals of actual NESCAFE products and a copyright notice that references Nestle MX. See Balanced Health Botanicals LLC v. Sona Disongo, Steriod, WIPO Case No. D2019-2414 (“The Respondent used the disputed domain name to host a website that mimicked the look and feel of the Complainant’s website, even copying (without authority) the Complainant’s layout, texts and contact information. This cannot be considered as a bona fide offering of goods or services or a noncommercial use.”).
There also is no evidence that Respondent is commonly known by the disputed domain name.
The Panel finds that the disputed domain name was registered and is being used in bad faith. The evidence supports a determination that the NESCAFE mark has been used extensively since 1938. As advanced by Complainant, “[t]he misappropriation of a well-known trademark as [a] domain name by itself constitutes bad faith registration for the purposes of the Policy”. See, inter alia, Aktiebolaget Electrolux v. Domain ID Shield Service Co., LTD / Dorian Cosentino, Planeta Servidor, WIPO Case No. D2010-1277; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556.
The fact that NESCAFE is a well-known trademark was explicitly established in several UDRP decisions, including Société des Produits Nestlé S.A. v. Ranjan Agrawal and Domain Admin / Neil P / Indus Domains LLC, WIPO Case No. D2016-2371 (“The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for and well-established reputation in the NESCAFE brand”) and Société des Produits Nestlé, S.A. v. Whois ID Theft Protection, WIPO Case No. D2006-1154, related to the domain name <masnescafe.com>, where the panelist found that “the Complainant and its mark NESCAFE enjoy a considerable reputation with regard to food and beverages in Switzerland and in many countries all over the world. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the domain name”.
The Panel further determines that the disputed domain name is being used in bad faith. As determined above, the disputed domain name is confusingly similar to the NESCAFE mark. Moreover the disputed domain name resolves to a website that mimics the look and feel of Complainant’s NESCAFE website, insofar as it makes prominent use of the NESCAFE mark, displays NESCAFE products, includes the history of the NESCAFE brand taken from Complainant’s site, and includes a copyright notice that references Nestle MX.
In view of the above, the Panel concludes that Respondent, by registering and using the disputed domain name, intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the site and/or of the products found on such site, within the meaning of paragraph 4(b)(iv) of the Policy.
The fact that Respondent did not respond to Complainant’s cease and desist letter and registered the disputed domain name by using incomplete or false contact information further supports a determination of the requisite bad faith.
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, <nescafeshop.com>, be transferred to Complainant.
Jeffrey M. Samuels
Date: September 24, 2020
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