WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société des Produits Nestlé S.A. v. Mohammadreza Radmanesh
Case No. DIR2017-0023
1. The Parties
Complainant is Société des Produits Nestlé S.A. of Vevey, Switzerland, represented by Studio Barbero, Italy.
Respondent is Mohammadreza Radmanesh of Tehran, Islamic Republic of Iran.
2. The Domain Names and Registry
The disputed domain names <nespressoworld.ir> and <nespresso-world.ir> are registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 14, 2017. On December 15, 2017, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain names. On December 16, 2017, IRNIC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on January 3, 2018.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the "Policy" or "irDRP"), the Rules for .ir Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 9, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2018. On January 30, 2018, the Center notified Respondent's default.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on February 14, 2018. 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
Complainant is a company organized under the laws of Switzerland and belongs to the Nestlé group of companies owning their majority of trademarks used under license. Complainant has provided evidence that it is the registered owner of numerous trademarks relating to the designation "Nespresso", including the following which enjoy protection, inter alia, in the Islamic Republic of Iran:
- Word mark NESPRESSO, World Intellectual Property Office (WIPO), Registration No. 777873, Registration Date: March 14, 2002, extended to the Islamic Republic of Iran, Status: Active;
- Device mark NESPRESSO (transliteration in Persian characters), WIPO, Registration No. 995035, Registration Date: December 31, 2008, extended to the Islamic Republic of Iran, Status: Active;
- Device mark NESPRESSO, WIPO, Registration No. 1054554, Registration Date: September 13, 2010, extended to the Islamic Republic of Iran, Status: Active.
Moreover, Complainant evidently owns numerous domain names relating to the designation "Nespresso", inter alia, the domain name <nespresso.com> which redirects to Complainant's official website at "www.nespresso.com" promoting Complainant's products and business.
Respondent, according to the WhoIs information for the disputed domain names, is a resident of the Islamic Republic of Iran. The disputed domain name <nespressoworld.ir> was created on April 16, 2017, whereas the disputed domain name <nespresso-world.ir> was created on August 8, 2016 and registered by the Respondent on January 14, 2017. As of the time of the rendering of this decision, the disputed domain names redirect to a website at "www.nespreso.ir" which displays Complainant's official NESPRESSO logo and apparently offers, in the Persian language, Complainant's official NESPRESSO products for online sale, claiming to have received in 2016 the exclusive representation of NESPRESSO in the Islamic Republic of Iran.
Complainant sent a first cease-and-desist letter to Respondent on August 23, 2017; by that time, Respondent apparently owned, inter alia, the domain names <nespressoworld.com>,
<nespresso-world.com>, <nespressoworld.de> and <nespresso-world.de>. After Complainant achieved to have Respondent's Internet presence at "www.nespresso-world.com" temporarily deactivated, Respondent apparently moved its online store to websites under the disputed domain names <nespressoworld.ir> and <nespresso-world.ir>. A second cease-and-desist letter sent by Complainant to Respondent on November 8, 2017, remained unanswered, as did the first one.
Complainant requests that the disputed domain names be transferred to Complainant.
5. Parties' Contentions
A. Complainant
Complainant contends that its NESPRESSO trademark, which dates back to 1986, is meanwhile well-known in many countries worldwide as a fully integrated product and services line for the preparation of coffee targeting the higher end of the consumer and professional market.
Complainant submits that the disputed domain names are confusingly similar to Complainant's NESPRESSO trademark as they both wholly incorporate the latter with the mere addition of the
nondistinctive element "world" and, with respect to the disputed domain name <nespresso-world.ir>, a hyphen, which both do not affect the confusing similarity. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain names, since (1) Respondent is not Complainant's authorized reseller and has not been authorized to register and use the disputed domain names, (2) Respondent redirects the disputed domain names to a commercial website where, in absence of any disclaimer of non-affiliation between the parties and the failure to disclose the real name of the website administrator, Complainant's NESPRESSO device trademarks and official advertising images/videos are prominently featured, thus the look and feel of Complainant's official website at "www.nespresso.com" is imitated, and unauthorized NESPRESSO products are promoted and offered for online sale, (3) Respondent registered many domain names in various Top Level Domains relating to the NESPRESSO trademark, obviously in an attempt to corner the market in order to prevent Complainant from reflecting its own NESPRESSO trademark in corresponding domain names, (4) Respondent is not commonly known by the disputed domain names as an individual, business or other organization and "Nespresso" is not Respondent's family name, but an invented word with no meaning in foreign languages, and (5) Respondent did not reply to Complainant's cease-and-desist letters of August 23, 2017 and November 8, 2017.
Finally, Complainant argues that Respondent registered and is using the disputed domain names in bad faith since (1) the NESPRESSO trademark is irrefutably well-known and Respondent could not have been unaware of their existence when he registered the confusingly similar disputed domain names, (2) the way in which Respondent actually uses the disputed domain names clearly demonstrates that Respondent registered them with the clear intention to refer to Complainant's NESPRESSO trademark, (3) using the disputed domain names in connection with a website that publishes Complainant's NESPRESSO trademark and official advertising materials, and also offers unauthorized products bearing Complainant's trademarks for online sale while imitating the look and feel of Complainant's official website at "www.nespresso.com", clearly demonstrates that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website, creating a likelihood of confusion with the endorsement of Complainant's website and, thus, to take unfair advantage from the well-known character of the NESPRESSO trademarks for Respondent's personal profit.
B. Respondent
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) That the disputed domain names have been registered or are being used in bad faith.
Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent's failure to submit a Response.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain names <nespressoworld.ir> and <nespresso-world.ir> are confusingly similar to the NESPRESSO trademark in which Complainant enjoys rights.
The disputed domain names incorporate the NESPRESSO trademark in its entirety. Numerous UDRP panels under the Uniform Domain Name Dispute Resolution Policy ("UDRP") have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see, e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),
WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.8), that the addition of a generic or descriptive term or geographic wording to a trademark in a domain name is normally insufficient, in and of itself, to avoid the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the generic term "world" in both disputed domain names as well as the hyphen in the disputed domain name <nespresso-world.ir>, does not dispel the confusing similarity arising from the incorporation of Complainant's NESPRESSO trademark in the disputed domain names.
Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel is further convinced on the basis of Complainant's undisputed contentions that Respondent has not made use of the disputed domain names in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain names, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent obviously is not Complainant's authorized reseller for the Islamic Republic of Iran and also has not been authorized to use Complainant's NESPRESSO trademark, either as domain name or in any other way. Also, there is no reason to believe that Respondent's name somehow corresponds with the disputed domain names and Respondent does not appear to have any trademark rights associated with the designation "Nespresso", which is not a dictionary word, but an invented term. Finally, Respondent has not used the disputed domain names in connection with a bona fide offering of products or services nor for a legitimate noncommercial or fair purpose. On the contrary, Respondent apparently uses the disputed domain names for redirection to a website at "www.nespreso.ir", set up in the Persian language and promoting Respondent as Complainant's official representative in the Islamic Republic of Iran, while offering unauthorized NESPRESSO products for online sale through a website that imitates the look and feel of Complainant's official website at "www.nespresso.com". Though UDRP panels generally recognize that resellers using a domain name containing the complainant's trademark to undertake sales related to the complainant's goods or services may be making a bona fide offering of goods or services and, thus, have a legitimate interest in such domain name, the site under the disputed domain name at least must accurately and prominently disclose the registrant's relationship with the trademark holder (so-called "OKI Data Test", see WIPO Overview 3.0, section 2.8). Here, Respondent is claiming a position, namely to be the official Complainant's representative in the Islamic Republic of Iran, which apparently is not the case, thus, the website under the disputed domain names is not accurately disclosing the non-existing business relationship between the parties to this case.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain names. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, Respondent has not met that burden.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
C. Registered or Used in Bad Faith
The Panel finally holds that the disputed domain names were registered and are being used by Respondent in bad faith.
The use of the disputed domain names, which are confusingly similar to Complainant's NESPRESSO trademark, to resolve to a website at "www.nespreso.ir", which is imitating the look and feel of Complainant's official website at "www.nespresso.com" in the Persian language und presents Respondent as Complainant's official representative in the Islamic Republic of Iran, which it is not, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainant's NESPRESSO trademark as to the source, sponsorship, affiliation or endorsement of Respondent's website. Such circumstances are evidence of registration and making use of the disputed domain names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
In connection with this finding, it also carries weight in the eyes of the Panel that Respondent had been contacted twice by Complainant's cease and desist letters of August 23, 2017 and November 8, 2017 and that Respondent's only reaction thereupon apparently was to move its online store from Respondent's former Internet presence at "www.nespresso-world.com" to a website that could be reached under the disputed domain names. This fact at least throws a light on Respondent's behavior which supports the conclusion of registration and use of the disputed domain names in bad faith.
Therefore, the Panel finds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).
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 <nespressoworld.ir> and <nespresso-world.ir> be transferred to Complainant.
Stephanie G. Hartung
Sole Panelist
Date: February 21, 2018
